VMware, Inc.

Patent Trials and Appeals Board

Oct 6, 2021

2020003313 (P.T.A.B. Oct. 6, 2021)

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.
14/136,661 12/20/2013 Gabriel Tarasuk-Levin B352.02 (500105-1510) 4511
152577 7590 10/06/2021
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
MILLS, PAUL V
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
10/06/2021 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GABRIEL TARASUK-LEVIN and
JAYANTH GUMMARAJU1
________________

Appeal 2020-003313
Application 14/136,661
Technology Center 2100
________________

Before BIBHU R. MOHANTY, BRADLEY W. BAUMEISTER, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–12, 14, 16, and 18–23, which constitute all claims
pending in this application. Appeal Br. 5–9. We have jurisdiction under
35 U.S.C. § 6(b).
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies VMware, Inc. as the real party in interest. Appeal Brief 2, filed
August 6, 2019 (“Appeal Br.”).
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Application 14/136,661

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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
Embodiments support instant forking of virtual machines
(VMs) and state customization. Virtual device state and
persistent storage of a child VM are defined based on virtual
device state and persistent storage of parent VMs. After forking,
a state of the child VM is customized based on configuration
data. Customizing the state includes configuring one or more
identities of the child VM, before bootup completes on the
child VM.
Spec. Abstr.
Independent claim 1 illustrates the subject matter of the appealed
claims:
1. A system for creating customized, forked virtual machines
(VMs), said system comprising:
memory associated with a computing device, said memory
storing a virtual device state and a memory state of a suspended
first VM;
storage for the first VM, said storage further including
configuration data for a second VM; and
a processor programmed to:
suspend execution of the first VM;
tag the persistent storage of the suspended first VM
as copy-on-write (COW); define a virtual device state of
the second VM based on the virtual device state of the
suspended first VM;
define a memory state of the second VM based on
the memory state of the suspended first VM by causing the
second VM to inherit a COW reference to the memory
state on the same host;
define persistent storage for the second VM based
on the persistent storage of the suspended first VM;
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prevent the second VM from completing bootup
while configuring an identity of the second VM, wherein
preventing the second VM from completing bootup
includes preventing user-level commands from being
accepted until the identity of the second VM has been
configured;
configure the identity of the second VM based on
the configuration data for the second VM, wherein
configuring the identity of the second VM includes
specifying a domain identity to be applied to the second
VM; and
upon configuring the identity of the second VM,
complete bootup of the second VM.

STATEMENT OF THE REJECTIONS
Claims 1–9, 11, 14, 16, and 18–23 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kumar (US 2012/0110574 A1; published
May 3, 2012), Anne, “Linux Booting Process Explained” (published Apr. 5,
2013), Le (US 2012/0265959 A1; published Oct. 18, 2012), and Wang,
“Rethink the Virtual Machine Template” (published 2011). Final Action 3–
11, mailed Mar. 1, 2019 (“Final Act.”).
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kumar, Anne, Le, Wang, and Venkitachalam (US 8,151,263 B1; issued
Apr. 3, 2012). Final Act. 11.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kumar, Anne, Le, Wang, and Hiltgen (US 2008/0155223 A1;
published June 26, 2008). Final Act. 12.

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THE EXAMINER’S DETERMINATIONS
The Examiner finds that Kumar discloses most of the limitations of
claim 1 (Final Act. 3–4), but that “Kumar . . . does not describe at what point
a user can begin inputting commands and accordingly does not disclose
preventing the second VM from completing bootup includes preventing user-
level commands from being accepted until the identity of the second VM has
been configured.” Id. at 5. The Examiner finds that Anne discloses this
limitation and that one of ordinary skill would have found it obvious to
combine Kumar with the teachings of Anne. Id. at 5–6.
The Examiner finds, “Kumar discloses customizing identity values of
a cloned VM . . . , but does not explicitly list domain identity as one of the
customized identity values.” Final Act. 6 (emphasis omitted). The
Examiner finds that Le discloses this claim language and that it would have
been obvious to one of ordinary skill in the art to apply “clone identity
customization of Kumar/Anne to domain identity as taught by Le.” Id. at 6–
7 (emphasis omitted).
The Examiner finds that Kumar discloses verifying the source VM is
an interruptible state appropriate for cloning and that it is inherent that the
interruption is to suspend execution of the first VM. Final Act. 7.
The Examiner finds that Kumar does not disclose tagging the
“persistent storage of the suspended first VM as copy-on-write (COW) or
that the memory stated is defined by causing the second VM to inherit a
COW reference to the memory state on the same host.” Final Act. 7
(emphasis omitted). The Examiner further finds, “Wang, however, discloses
a method of VM cloning, analogous to that of Kumar/Anne/Le, wherein the
parent ‘substrate’ VM is ‘docked’ to be made inactive (suspended) prior to
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being cloned . . . and [the system] tags the persistent storage (base
image/disk) of the suspended first VM as COW.” Id. (citing Wang p. 39,
§ 1, ¶ 5; p. 40, § 2.2; p. 42, col. 1, ¶ 2; p. 45, Fig. 5) (emphasis omitted).
The Examiner determines,
It would have been obvious to one of ordinary skill in the
art at the time the invention was filed to augment the VM cloning
method of Kumar/Anne/Le with that taught by Wang to increase
the flexibility and efficiency of the forking procedure . . . , and to
leverage COW VM flash cloning techniques to allow for rapid
VM instantiation when limited to a single host[.]
Final Act. 8 (citing Wang p. 39, Abstr.; p. 48, col. 2; p. 1 [sic: 39], § 1, ¶ 4;
pp. 47–48, § 6, ¶ 3).

APPELLANT’S CONTENTIONS AND ANALYSIS
I.
Appellant first argues that the Examiner erred in finding that Wang,
“at pages 44–45 in the section entitled ‘Disk’[,] suggests defin[ing] a
memory state of the second VM based on the memory state of the suspended
first VM by causing the second VM to inherit a COW reference to the
memory state on the same host.” Appeal Br. 6. Appellant argues
At page 44, under the heading “Disk,” Wang states that
“Multiple COW slices can share the same read-only base image
file and all the updates are directed to those COW slices.” The
reference discusses that “the time spent on copying virtual disks
is unacceptable provided that the disk size is usually large” and
that “[d]isk copy-on-write is often used to avoid unnecessary
disk space waste.” Emphasis added. Accordingly, the portion
of Wang that is used to support the obviousness rejection is
concerned with disk image files and disk space waste rather than
a memory state of a virtual machine, as is recited by claim 1.
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The above-emphasized portion of claim 1 is concerned
with defining a memory state of the second VM rather than the
“Disk” state, as in the cited portion of Wang. The “Memory”
section of the Wang reference spans pages 43–44 of the
reference. The Memory section of Wang bears no mention of
“defin[ing] a memory state of the second VM based on the
memory state of the suspended first VM by causing the second
VM to inherit a COW reference to the memory state on the same
host.”
Appeal Br. 6–7.
The Examiner responds, explaining that the rejection does not rely
upon either of Wang’s sections labeled “Disk” or “Memory” for teaching the
disputed limitation. Examiner’s Answer 5, mailed Jan. 24, 2020 (“Ans.”).
According to the Examiner, the “Disk” section was relied upon for teaching
a different claim element, and the “Memory” section was not relied upon at
all. Id.
The Examiner proceeds to clarify, “Wang’s preferred embodiment for
creating the clone VM’s memory state does not employ COW since the
embodiment is directed to distributed cloning . . . , but Wang still teaches the
subject matter was known in the art as shown in the rejections.” Ans. 5
(citing Wang 7–8). The Examiner explains that various passages appearing
in other pages and sections of Wang “describe[] leveraging memory COW to
facilitate VM cloning on [a] single machine (same host).” Id. at 5–6 (citing
Wang p. 1 [sic: 39], § 1, ¶ 4; pp. 42–43, § 3.4; p. 47–48, § 6, ¶ 3). The
Examiner also points out that Appellant failed to address these other
passages that the Examiner did rely upon. Ans. 5.
In spite of the fact that the Examiner states that the “Memory” section
of Wang is not being relied upon for teaching the disputed limitation
(Ans. 5), Appellant subsequently reiterates, “the ‘Memory’ section of
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[Wang] spans pages 43–44 of the reference, which is also cited by the Final
Office Action[,] . . . bears no mention of ‘defin[ing] a memory state of the
second VM based on the memory state of the suspended first VM by
causing the second VM to inherit a COW reference to the memory state on
the same host.’” Reply Br. 4.
In the Reply Brief, Appellant also discusses the sections of Wang that
the Examiner does rely upon. For example, Appellant cites limited, isolated
passages of Wang’s section 3.4 “VM Fork”:
Existing VM fork leverages disk Copy-On-Write[](COW)
techniques to offer each child VM a COW slice of disk and all
the disk updates or intermediate values are preserved on the
COW disk
[ ... ]
In the case of IO intensive applications, each child VM needs to
make changes to their own disks which are actually COW slices.
Reply Br. 3 (citing Wang 42–43). Appellant argues, “the cited portion of
Wang deals with disk handling techniques rather than with disk image files
and disk space waste rather than a memory state of a virtual machine, as is
recited by claim 1.” Id. at 4.
This argument is unpersuasive because it does not address the further
disclosure of that same section that states, “[s]imilar to process level fork,
VM fork allows a child VM to inherit all the states originated from its parent
VM prior to forking, enabling creating statefull computing instance rapidly.”
Wang 42.
II.
Appellant next argues that Kumar teaches away from its combination
with Wang because Wang “indicates that a copy of the virtual disk 271 and
VMM state 262 are employed for the cloned virtual machine instance 260.”
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Appeal Br. 7. Appellant urges that the presently claimed invention differs
because “[c]laim 1 states that second VM uses a reference to the same
memory state as the first VM rather than using a copy.” Id.
Appellant’s argument is unpersuasive. As the Examiner explains
(Ans. 8), and we agree, Kumar’s silence in relation to using a reference to
the same memory state does not criticize, discredit, or otherwise discourage
the solution claimed. Furthermore, the Examiner explains,
Wang provides a detailed discussion of various benefits and
drawbacks between full-copy cloning and flash cloning in
different situations, which demonstrates that the cloning
techniques were recognized alternatives and that it was known in
the art to select amongst them depending upon the nature of the
VM workloads being executed.
Ans. 9 (citing Wang 39–44) (internal citations omitted).

CONCLUSIONS
For the foregoing reasons, Appellant does not persuade us of error in
the Examiner’s obviousness rejection of representative claim 1. We,
therefore, sustain the Examiner’s rejection of that claim and of claims 2–9,
11, 14, 16, and 18–23, which Appellant does not argue separately. Appeal
Br. 8–9.
We likewise sustain the Examiner’s obviousness rejection of claims
10 and 12 over Kumar, Anne, Le, and Wang, respectively further in view of
Venkitachalam and Hiltgen. Appellant has not particularly pointed out
errors in the Examiner’s reasoning regarding the additional teachings of
Venkitachalam and Hiltgen, but merely argues for the claims’ allowability
for the reasons that are set forth in relation to independent claim 1. Appeal
Br. 9.
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Application 14/136,661

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DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis

Affirmed Reversed
1–9, 11, 14,
16, 18–23
103 Kumar, Anne, Le,
Wang
1–9, 11, 14,
16, 18–23

10 103 Kumar, Anne, Le,
Wang, Venkitachalam
10
12 103 Kumar, Anne, Le,
Wang, Hiltgen
12
Overall
Outcome
1–12, 14,
16, 18–23