Ex Parte Liu et al

Patent Trial and Appeal Board

May 16, 2017

13873787 (P.T.A.B. May. 16, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/873,787 04/30/2013 Deng LIU A909 4259
36378 7590
VMWARE, INC.
DARRYL SMITH
3401 Hillview Ave.
PALO ALTO, CA 94304
05/18/2017 EXAMINER
WU, STEPHANIE
ART UNIT PAPER NUMBER
2133
NOTIFICATION DATE DELIVERY MODE
05/18/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipteam @ vmware. com
ipadmin@vmware.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENG LIU and THOMAS A. PHELAN
Appeal 2016-008495
Application 13/873,787
Technology Center 2100
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008495
Application 13/873,787
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—11, and 13—20, which constitute all the claims
pending in this application. Claims 2 and 12 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a trim support for a solid-state drive in a
virtualized environment. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. In a computer system having a virtual machine executed
therein and a hypervisor supporting execution of the virtual
machine, a method of issuing trim commands to invalidate data
blocks stored in a physical solid-state memory device, wherein a
trim command to invalidate a data block stored in a solid-state
device informs the solid-state memory device that the data block
is no longer considered in use and can be reclaimed internally
through garbage collection, the method comprising:
receiving at the hypervisor, a trim command to invalidate
a virtual data block, which is a data block of a virtual solid-state
memory device that is mapped to a portion of the physical solid-
state memory device;
translating by the hypervisor, the received trim command
into an interim command to
release the virtual data block;
translating by the hypervisor, the interim command into a
block operation to invalidate a physical data block, which is a
data block of the physical solid-state memory device
corresponding to the virtual data block; and
2
Appeal 2016-008495
Application 13/873,787
issuing by the hypervisor, a trim command to invalidate
the physical data block to the physical solid-state memory
device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Vaghani US 2009/0300301 A1
(hereinafter Vaghani ’301)
Vaghani et al. US 2012/0054746 A1
(hereinafter Vaghani ’746)
Rosenband et al. US 2012/0059976 Al
Ito et al. US 8,190,817 B2
Stenfort WO 2010/111694 A2
REJECTIONS
The Examiner made the following rejections:
Claims 1, 4—9, 11, and 14—20 are rejected under 35 U.S.C. § 103 as
being unpatentable Vaghani ’301, Vaghani ’746, and Rosenband.
Claims 3 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Vaghani ’301, Vaghani ’746, and Rosenband further in
view of Stenfort.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
Vaghani ’301, Vaghani ’746, and Rosenband further in view of Ito.
Dec. 3, 2009
Mar. 1,2012
Mar. 8, 2012
May 29, 2012
Sept. 30, 2010
ANALYSIS
With respect to independent claims 1,11, and 17, Appellants present
arguments to the claims together. (App. Br. 8). Consequently, we select
independent claim 1 as the representative claim for the group and will
3
Appeal 2016-008495
Application 13/873,787
address Appellants’ arguments thereto. We note that Appellants do not set
forth separate arguments for patentability of dependent claim 10. Asa
result, we group this claim as falling with parent representative independent
claim 1.
With respect to independent claim 1, Appellants generally contend
that the teachings of the Vaghani (’301 and ’746) references are directed to
physical disks and not solid-state memory devices. (App. Br. 8—10).
Additionally, Appellants’ argue that the cited prior art references do not
teach the claimed “receiving at [a] hypervisor, a trim command to invalidate
a virtual data block ... of a virtual solid-state memory device.” (App. Br.
10—13). Appellants further argue the cited references do not teach
“translating by the hypervisor, the received trim command into an interim
command to release the virtual data block.” (App. Br. 13, 14, and 16)
(emphasis omitted).
With respect to Appellants’ general arguments against the
combination of the Vaghani (’301 and ’746) and Rosenband references
(App. Br. 13—16), we disagree. The Supreme Court stated that an explicitly
stated motivation to combine the references is seen as “helpful insight,”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, but that the combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results. Id. at 416. Appellants have
not demonstrated that the Examiner’s proffered combination of references
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor have Appellants
provided objective evidence of secondary considerations which our
4
Appeal 2016-008495
Application 13/873,787
reviewing court guides “operates as a beneficial check on
hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Systems, 725
F.3d 1341, 1352 (Fed. Cir. 2013).
Further, in determining the differences between the prior art and the
claim at issue, the question under 35 U.S.C. § 103 is not whether the
differences themselves would have been obvious, but whether the claimed
invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983). The test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. See In re Keller, 642 F.2d 413, 425—26 (CCPA
1981). (“[0]ne cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references.”). In this case, we find that the Examiner established a prima
facie case of obviousness and provided a rational underpinning for the
combination of references, based on the knowledge of an ordinarily skilled
artisan. (See Final Act. 2—5 and Ans. 2—8).
As for Appellants’ argument that the combination of Vaghani (’301
and ’746) and Rosenband would result in Rosenband being rendered
unsuitable for its intended purpose (“changing the principle of operation of
the prior art references” and “unsatisfactory for its intended purpose” (App.
Br. 13)), we note common sense teaches that familiar items may have
obvious uses beyond their primary purposes, and persons of ordinary skill
can often fit the teachings of multiple patents together like pieces of a
puzzle. KSR, 550 U.S. at 420. Thus, it is not necessary that the references
5
Appeal 2016-008495
Application 13/873,787
be physically combinable, without change, to render obvious the invention
under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The
criterion instead is what these references would have meant to a person of
ordinary skill in the field of the invention. In re Gorman, 933 F.2d 982, 986
(Fed. Cir. 1991). Thus, we find it is irrelevant that the Vaghani references
are directed to a SCSI command and the Rosenband reference is directed to
an autonomous disk trim command because they are both directed to
garbage collection and releasing data blocks. (App. Br. 13—15).
In addition, an argument that the system is rendered “inoperable [or
unsuitable] for its intended purpose” is a “teach[ ] away” argument. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in
effect, “French teaches away from the board's proposed modification”
because “if the French apparatus were turned upside down, it would be
rendered inoperable for its intended purpose”). The Federal Circuit has held
“[a] reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” Kahn, 441 F.3d at 990 (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). On this record, we find
Appellants have not provided sufficient evidence or persuasive argument
that modifying the SCSI based virtual memory of the Vaghani (’301 and
’746) references with SSD based virtual memory of the Rosenband
reference is either explicitly or implicitly discouraged in the Rosenband
reference.
Contrary to Appellants’ argument that the combination would have
changed the references’ principle of operation, it is well settled that “a
6
Appeal 2016-008495
Application 13/873,787
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for
obviousness whether a secondary reference's features can be bodily
incorporated into the structure of the primary reference. Keller, 642 F.2d at
425.
In addition, we specifically note Appellants’ challenge to the
references individually is not convincing of error in the Examiner’s position
because all of the features of the secondary reference need not be bodily
incorporated into the primary reference, but consideration should be given to
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art. Id. Furthermore, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Moreover, the
relevant inquiry is whether the Examiner has set forth “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” Kahn, 441 F.3d at 988 (cited with approval in KSR, 550 U.S.
at 418).
In the present case, the Examiner found the proposed combination
would have resulted in using SSD memory of the Rosenband reference in
combination with modifying the SCSI based virtual memory of the Vaghani
(’301 and ’746) references. Ans. 4—5. We find this articulated rationale to
be sufficient to justify the combination.
7
Appeal 2016-008495
Application 13/873,787
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used
to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill. . . . [A] court must ask
whether the improvement is more than the predictable use of
prior art elements according to their established functions.
Id. at 417.
The Examiner explains the application of the prior art in the
combination and maintains that:
Vaghani was relied on to teach the direction of the command
being received, see Vaghani P. 0046 where the VM Kernel 208
(analogous to a hypervisor) receives a “zero out” command
(which is analogous to a TRIM command) to invalidate a file on
the virtual disk (analogous to a virtual data block). Rosenband
P. 0082 was relied on to teach the TRIM command, as Vaghani
did not explicitly state a TRIM command. The “zero out” and
TRIM commands are analogous, as Vaghani teaches in P. 0046
and FIG. 4A that a command to “zero out” files on a virtual disk
is received at the VM Kernel 208 (step 400) results in zeroes
being written to the extents on a physical disk corresponding to
the virtual disk file (step 414). Rosenband teaches in P. 0053 that
a disk trim command deletes data from specified sectors of data.
Both operations effectively delete data from storage, and are
therefore analogous.
8
Appeal 2016-008495
Application 13/873,787
(Ans. 5—6). We agree with the Examiner that the commands for the two
different types of interfaces are “analogous” for the generalized desire for
garbage collection and reclaiming unused memory space in computer-based
systems, whether physical or virtual, because all computer systems have a
limited capacity that is generally desired to be optimized or enhanced.
The Examiner further finds as follows with respect to Appellants’
argument regarding Rosenband being rendered unsatisfactory for its
intended purpose:
The examiner respectfully notes that the SCSI commands (such
as “zero out” taught by Vaghani in P. 0046) are not
fundamentally different from a trim command, as they are both
used to communicate with disks. Additionally, applicant's claim
that SCSI commands could not be used with solid-state drives is
not based in fact. Thus the “zero out” command taught by
Vaghani in P. 0046 could be replaced by a trim command taught
by Rosenband in P. 0082. Additionally, the trim command is
being sent from the hypervisor to a virtual disk, which is just a
logical grouping of addresses and not an actual physical disk,
which is just instructing a virtual disk to free virtual blocks. This
operation could easily be performed by a “zero out” or delete
command, as they are analogous.
(Ans. 7). Again, we agree with the Examiner’s findings, and we find that
Appellants’ argument is based upon a bodily incorporation of the teachings
of the Rosenband reference into the Vaghani references. (See generally
Reply Br. 5).
The Examiner relies upon the Vaghani ’301 reference for a majority
of the basic functionality and signal processing for garbage collection with
regard to traditional hard disk drives and the clear suggestion from the
Vaghani ’746 reference that either traditional hard disk drives or SSD (solid-
9
Appeal 2016-008495
Application 13/873,787
state disk) drives may be used in a virtual computer architecture, but the
Vaghani ’746 reference limits the discussion to the traditional hard disk
drives which are SCSI based systems. (Final Act. 2—5).
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner’s reliance on the combined teachings
and suggestions of the cited prior art references to teach or suggest the
limitations of claim 1, nor do we find error in the Examiner’s resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner’s
obviousness rejection of claim 1 and independent claims 11 and 17 not
separately argued. Appellants have not set forth separate arguments for
patentability of dependent claims 4—10, 14—16, and 18—20. As a result, we
group these claims as falling with their respective independent claims.
Dependent claims 3 and 13
With respect to dependent claims 3 and 13, Appellants contend that
the cited references do not teach “wherein translating the received command
into an interim command comprises translating the trim command to an
UNMAP command,” as recited in claims 3 and 13. (App. Br. 16—17).
Appellants argue the claims together. We select claim 3 as the
representative claim. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner further explains the teachings of the Stenfort reference
in the Examiner’s Answer. The Examiner finds:
while Stenfort teaches the translation of an UNMAP command
into a TRIM command, which is opposite of what is stated in
Claim 3, P. 0251 of Stenfort explicitly states “In other
embodiments, any command or information in a first protocol
format may be converted to a second protocol format.” It is
obvious to a person skilled in the art at the time the invention was
filed that a conversion from UNMAP to TRIM could be
10
Appeal 2016-008495
Application 13/873,787
performed in the reverse order (e.g. TRIM to UNMAP). Stenfort
does not need to explicitly state this.
(Ans. 10—11). We agree with the Examiner that the Stenfort reference
teaches and suggests the relationship between an UNMAP command and a
TRIM command. Appellants argue that the Stenfort reference in paragraph
251 provides “a narrow broadening statement.” (Reply Br. 9—10).
Attorney arguments and conclusory statements that are unsupported
by factual evidence are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984). “Argument in the brief does not take the place of
evidence in the record.” In re Schulze, 346 F.2d 600, 602 (CCPA 1965)
(citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).
Although we agree with Appellants that the specific teachings in the
Stenfort reference are in regard to “translating the trim command to an
UNMAP command,” the Examiner’s rejection is based upon a combination
of the teachings as applied by the Examiner. Consequently, we find
Appellants’ general attorney arguments do not show error in the Examiner’s
findings of fact or conclusion of obviousness of representative dependent
claim 3.
CONCLUSION
The Examiner did not err in rejecting claims 1, 3—11, and 13—20 based
upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
3—11, and 13—20 based upon obviousness under 35 U.S.C. § 103.
11
Appeal 2016-008495
Application 13/873,787
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
12