Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardMay 16, 201713873787 (P.T.A.B. May. 16, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation