VMware, Inc.

Patent Trials and Appeals Board

Jan 11, 2022

2020006127 (P.T.A.B. Jan. 11, 2022)

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. 15/281,684 09/30/2016 Zhikai Chen D097 2432 152691 7590 01/11/2022 Setter Roche LLP 1860 Blake Street Suite 100 Denver, CO 80202 EXAMINER PATEL, DHAIRYA A ART UNIT PAPER NUMBER 2453 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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): ipadmin@vmware.com uspto@setterroche.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ZHIKAI CHEN, ZHIBIN HE, TRACY YAN CHI, and STEPHEN YU Appeal 2020-006127 Application 15/281,684 Technology Center 2400 ____________ Before MAHSHID D. SAADAT, RICHARD M. LEBOVITZ, and JUSTIN BUSCH, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1-20 under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as VMware, Inc. and Nicira, Inc. Appeal Br. 2. Appeal 2020-006127 Application 15/281,684 2 STATEMENT OF THE CASE Claims 1-20 stand rejected by the Examiner in the Final Office Action under 35 U.S.C. § 103 as obvious in in view of Hosey (US 2014/0149361 A1, published May 29, 2014) (“Hosey”), Varadharajan et al. (US 2015/0074536 A1, published Mar. 12, 2015) (both the Examiner and Appellant use the shorthand “Vara” to refer to the Varadharajan reference, and we adopt this shorthand here), and Nomoto (US 2009/0282231 A1, published Nov. 12, 2009) (“Nomoto”). Final Act. 2. There are three independent claims on appeal, claims 1, 9, and 17. Appellant did not provide separate arguments for the independent claims. Claim 1 is selected as representative and is copied below (with the steps in the claim annotated with bracketed numbers for reference): 1. A method of handling requests for an application file shared by a plurality of applications on a computing system, the method comprising: [1] presenting a single version of the application file in a file system of the computing system when multiple versions of the application file are available on the computing system, [1a] wherein each of the multiple versions are stored in a separate application storage volume attached to the computing system; [2] identifying a request for the single version of the application file on the computing system, [2a] wherein each application in the plurality of applications is associated with an individualized version of the application file, and [2b] wherein each application of the plurality of applications is stored with a corresponding version of the application file on a separate application storage volume attached to the computing system; [3] identifying an application associated with the request; [4] identifying an application storage volume in the application storage volumes that stores the application; and [5] retrieving the application file from the identified storage volume to support the request. Appeal 2020-006127 Application 15/281,684 3 REJECTION Claim 1 is directed to a method of “handling requests for an application file shared by a plurality of applications on a computing system.” The claim has five steps, which we have numbered [1] to [5]. In the first step [1] “a single version” of the application file is presented “when multiple versions of the application file are available on the computing system” which “are stored in a separate application storage volume attached to the computing system.” The Examiner found the “presenting” step is taught by Hosey in which users A and B each are presented with a user A and a user B edited file, respectively. Final Act. 3. The Examiner also found that Hosey describes step [2] of identifying a request for a single version of the application file, where the request is for user file A by user A and file B by user B. Id. The Examiner found that Hosey discloses that [2a] “each application in the plurality of applications is associated with an individualized version of the application file.” Id. Claim 1 also recites that [1a] “each of the multiple versions are stored in a separate application storage volume attached to the computing system” and that [2b] “each application of the plurality of applications is stored with a corresponding version of the application file on a separate application storage volume attached to the computing system.” The Examiner acknowledged that Hosey does not describe these limitations, but found that Nomoto describes storing multiple versions of the application in separate application storage volumes, where the application and application file stored together. Final Act. 4. The Examiner reasoned it would have been obvious to employ Nomoto’s application/application file storage arrangement to “easily move from existing layout to new layout and for Appeal 2020-006127 Application 15/281,684 4 faster transition[,] as well [as,] services can be suitably provided for the user, therefore multiple versions of files/images are stored on separate volumes ([Nomoto] Paragraph 42).” Id. The Examiner cited Vara for steps [2]-[5] of claim 1 in which there is a request for an application file, identification of an application associated with the request, identification of an application storage volume in the application storage volumes that stores the application, and then a retrieval of the application file from the identified storage volume to support the request. Final Act. 3. The Examiner found that it would have been obvious to one of ordinary skill in the art to implement Vara in Hosey “to have a secondary copy operation on the selected virtual machine and/or its associated file for backup for archiving and snapshot purposes, therefore, the application file and different version can be used later.” Id. at 4. DISCUSSION “An examiner bears the initial burden of presenting a prima facie case of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011). The Examiner satisfies the burden when the Examiner adequately explains the rejection by “stating the reasons for such rejection . . . together with such information and references” to sufficiently inform the applicant to respond to the rejection. 35 U.S.C. § 131(a); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). “Once the examiner establishes a prima facie case of obviousness, the burden shifts to the applicant to rebut that case.” Kao, 639 F.3d at 1066. We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, Appeal 2020-006127 Application 15/281,684 5 1075 (BPAI 2010) (precedential) (cited with approval in Jung, 637 F.3d at 1365) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). The Examiner provided sufficient information in the Final Office Action for Appellant to understand the basis of the rejection and to respond to it. Consequently, the burden shifted to Appellant to rebut the rejection. We review the Examiner’s rejection for the errors identified in it by Appellant. Hosey Appellant states that Hosey “merely provides that a single file may be edited [b]y multiple users and that conflict markers may be used to resolve conflicts between the users.” Appeal Br. 5. Appellant argues that Hosey does not describe that “the file is presented as a single version, but rather states in paragraph 14 that ‘the client device may present, to a user, User A’s edited information and User B’s edited information.’” Id. at 6. Appellant contends that, in Hosey, “the computing system may present multiple versions of the file, not as a single version as provided for in claim 1.” Id. Appellant further contends in the Reply Brief that “Hosey never indicates that only a single version of a file is presented to a user when multiple versions of the application are available on the computing system.” Reply Br. 2. We have considered this argument, but are not persuaded that the Examiner erred. Figure 1A of Hosey shows a “Shared File” which is edited by User A and User B to create “User A Edited File” and “User B Edited File,” respectively. Hosey explains: Appeal 2020-006127 Application 15/281,684 6 As shown in FIG. 1A, a shared file, stored on a server, may be opened for editing by multiple users, such as User A and User B. User A may edit the shared file to create an edited version of the shared file that includes User A’s edits. Similarly, User B may edit the shared file to create an edited version of the shared file that includes User B’s edits. In some implementations, User A and User B may edit the same portion of the file in a different manner. User A and User B may save the edited files to the server. Hosey ¶ 13. The “single version of the application file” presented to the user “when multiple versions of the application file are available” as recited in step [1] is “User A Edited File” or “User B Edited File” and the multiple versions of the file are the User A edited file, the User B edited file, and the shared files. Appellant contends that a single version of multiple files is not presented to a user in Hosey, but Appellant does not address the explicit disclosure in Hosey that “User A may edit the shared file to create an edited version of the shared file that includes User A’s edits” and that “User B may edit the shared file to create an edited version of the shared file that includes User B’s edits,” which represent multiple files of the same application file. Hosey ¶ 13 (reproduced above). The edited file of User A is presented to User A, which represents the presentation of a single version of the available multiple application files. Nomoto The Examiner further cited Nomoto for limitations [1a] and [2b] of claim 1 in which multiple versions of the application are stored in separate application storage volumes and the application and application file are stored together. Final Act. 4. Appellant argues that “Nomoto only indicates Appeal 2020-006127 Application 15/281,684 7 that files may be duplicated into replica volume images.” Appeal Br. 6. Appellant states that Nomoto “fails to provide any motivation or suggestion that a file system would have any reason to present a single version of the file even when multiple versions of the file are present.” Id. Appellant states that Nomoto describes that the same data may exist in multiple volumes, but “fails to provide any showing that a file system would present a single version of the data within a file system.” Id. Appellant concludes that “Nomoto fails to provide any information about the structure of files within the file system, let alone that multiple versions of a file, each on a different volume, may be presented as a single version in a file system.” Id. The Examiner, as explained above, relied upon Nomoto for the storage of multiple versions of files and of the application and application file. Appellant’s arguments about Nomoto’s failure to “present a single version of a file” is misplaced because the Examiner relied upon Hosey for this element of the claim. Nomoto was cited by the Examiner for its technique of storing virtual computer images on separate storage volumes comprising the application and application file. Ans. 4-5. Appellant’s contention that “Nomoto fails to provide any information about the structure of files within the file system” (Appeal Br. 6) is unpersuasive. Nomoto describes how a storage device holds (1) a virtual computer image, which is “the template of the virtual computer provided for each user” and (2) a “virtual computer image” which is “the version provided for each user.” Nomoto ¶ 37. Nomoto also disclose that copies of the virtual computer volume are “created as required.” Id. The description of (1) a template and (2) virtual computer image “for each user” indicates that multiple versions are stored on the computer system of Nomoto as required Appeal 2020-006127 Application 15/281,684 8 by [1a] of the claim and also that a single version is presented to the user because what else would be purpose of storing virtual computer images “for each user” if not for presenting to a user? The Examiner found that the virtual computer images comprise applications and associated application files as recited in step [2b] as described in Nomoto2 (Final Act. 4; Ans. 4-5), a finding not disputed by Appellant. Appellant argues that the Examiner’s reasoning to apply Nomoto to Hosey “makes no sense.” Appeal Br. 6. Appellant contends that “while Hosey permits multiple users to access the same file, Nomoto tries to generate replica files.” Id. Appellant argues that “[g]enerating a replica file would defeat the purpose of Hosey, as Hosey permits users to access the same file without duplicating the entire file.” Id. For this reason, Appellant contends that the “advantages of Hosey would be lost if the files were duplicated as described in Nomoto.” Id. Appellant has mischaracterized the disclosure in Nomoto of storing virtual files for each user and storing replica files. Nomoto discloses: A storage device 220 holds a storage management unit 111, a volume file system management layer 120, a virtual computer volume image (release virtual computer volume image) 121 which is the release version of the virtual computer, a virtual computer volume image (template virtual computer volume image) 122 which is the template of the virtual computer provided for each user, a virtual computer volume image (user-specific virtual computer volume image) 123 which is the version provided for each user, and replica virtual 2 See also Nomoto ¶ 103: “In FIG. 6, the application data model processing logic 144a stores the application setting 601. The application setting 601 is set with the file used by the application, the name of the file, such as ‘file00l’, for example. The file 611 is a file with the file name ‘file00l’ and is stored in the user-specific virtual computer volume image 123.” Appeal 2020-006127 Application 15/281,684 9 computer volume images (replica images) 124 and 125 which are copies (replicas) of the virtual computer volume image created as required. Nomoto ¶ 37 (italics added). Nomoto in paragraph 37 specifically refers, inter alia, to (1) a template of the virtual computer provided for each user; (2) a computer volume image provided for each user; and (3) “replica virtual computer volume images (replica images) 124 and 125 which are copies (replicas) of the virtual computer volume image.” Appellant’s argument refers to the copies or replicas only, and not to the virtual computer and virtual computer volume image “for each user.” Thus, Nomoto describes files for each user stored on storage devices attached to the computing system that would provide a useful way to access the individualized User A and User B files described by Hosey. In sum, Appellant did not persuasively identify error in the Examiner’s findings and reasoning to apply Nomoto to Hosey. Vara Appellant argues that the cited references do not describe steps [2], [3], and [4] of claim 1. Appeal Br. 7. Appellant contends that “Vara never identifies where a specific application is stored for a computing system, let alone identifying that the application may be stored in a storage volume attached to the computing system.” Appeal Br. 7. Appellant’s argument is unavailing. Vara teaches that a computing device may be associated with various virtual machines (VM1, VM2, etc.). Vara ¶ 301. Files associated with each Appeal 2020-006127 Application 15/281,684 10 virtual machine are stored on storage devices. Vara ¶¶ 293,3 307.4 Vara uses a file manager application that enables users to manage and “drill down” into each virtual machine. Vara ¶¶ 7, 13. Vara specifically teaches that the file manager application has the following functionality: enabling the user to view/browse, for each virtual machine, data that is associated with storage management operations such as a back-up and/or archive operation for the respective virtual machine, including files (which may be organized into folders) associated with the virtual machine, including searching and filtering criteria for one or more virtual machines. Vara ¶ 9. Vara also teaches that an icon for each virtual machine is displayed in the file manager application, which “provide[s] the user with the ability to drill down and obtain additional details about the respective VM.” Vara ¶ 301. Based on these disclosures, it is evident that Vara describes using the file manager application to identify where files associated with a virtual machine are stored, such as in primary or second storage. Vara does not explicitly disclose that the data and files on the virtual machine can be applications, but it would be understood by one of ordinary skill in the art 3 “VM1 211 is a first virtual machine that resides and executes on a first host computing device 203-1, as is well known in the art. Files that are associated with VM1, e.g., VM1 files 221, are stored in primary storage device 104-1 as shown.” 4 “At block 404, in response to the user command, file manager application 201 may determine whether the selected virtual machine is represented in secondary storage, e.g., whether it has been previously moved by a secondary copy operation to secondary storage within information management system 200.” Appeal 2020-006127 Application 15/281,684 11 that a virtual machine hosts applications5 and that the data and files accessed by Vara’s file manager application would include accessing applications. Thus, a preponderance of evidence supports the Examiner’s finding that Vara identifies where a specific application is stored on the computing system by using a file manager application, contrary to Appellant’s contention, and therefore teaching steps [3] and [4] of the claim. Appellant further argues that “the Examiner equates the ‘file manager application’ in Vara to the ‘application” in claim 1 (Final OA, page 3),” but “this interpretation would require that the file manager application is stored in an attached application volume.” Appeal Br. 7. Appellant contends that “Vara never indicates that the file manager application is stored in an attached volume to a computing system, which is a requirement of claim 1.” Id. The Examiner lists the “storage subsystem/file manager application” in step [3] of “identifying an application associated with the request.” Final Act. 3. For this step and other steps in the claim, the Examiner cites paragraphs 303-309 of Vara. These paragraphs of Vara describe opening the file manager (¶ 304), displaying the virtual machines (¶ 305), and using the file manager to identify the location of the virtual machine in storage 5 See Spec. ¶ 3 (in “Technical Background” section): “However, because multiple applications stored on multiple application volumes may be attached to a virtual machine or physical computing system, the applications may use different versions of shared libraries.” (emphasis added) Thus, the Specification acknowledges in its Technical Background that virtual machines use applications, which may be stored on application volumes. Step [2b] of claim 1 has this same requirement. Appeal 2020-006127 Application 15/281,684 12 (¶ 3076). The file manager retrieves “information about the selected virtual machine” (¶ 309). As discussed above and indicated in footnote 5, the “information” accessed in the virtual machine by the file manager would include applications and thus Vara identifies applications used on the virtual machine and stored in secondary storage, teaching step [4] of “identifying an application storage volume in the application storage volumes that stores the application.” Appellant’s denial that step [4] is met by Vara fails to address any of the specific disclosures in paragraphs 303-309 of Vara cited by the Examiner. It is true, as stated by Appellant, that the Examiner referred to the “storage subsystem/file manager application” on page 3 of the Final Office Action as “an application associated with the request” as recited in step [3] of claim 1 (emphasis added). The Examiner made this finding because the request for the application file is made through the file manager application and is therefore an application associated with the request. The previous step [2a] in the claim refers to “each application of the plurality of applications” stored on the storage volume. But the use of the term “an” in step [3] does not establish antecedence basis to “each application” in step [2] in contrast to when the term “the” is recited to indicate a reference to an earlier limitation in the claim. In other words, the “an” application in step [3] is not required to be the same application in step [2] of the claim. Consequently, the Examiner’s finding that the file manager application is associated with the request is not improper. 6 “At block 404, in response to the user command, file manager application 201 may determine whether the selected virtual machine is represented in secondary storage.” Appeal 2020-006127 Application 15/281,684 13 Appellant lists steps [3] and [4] of claim as not being described by Vara. Reply Br. 3. But Appellant only distinguishes Vara on the basis that “the file manager application 201, whose location is irrelevant to the operations in Vara, is only used to provide data about a virtual machine not a file for a specific application.” Id. This argument does not identify an error in the Examiner’s rejection because the file manager application in Vara, as explained above, drills down into the files and data on a virtual machine stored on secondary storage, and such files and data would include applications because applications are executed on virtual machines (see footnote 5). Appellant did not specifically point out how the language of the claim and the order of steps in the claim distinguishes it from the combination of cited references. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). The alleged deficiencies identified in Vara by Appellant do not demonstrate an error in the Examiner’s finding that steps [3]-[5] are not described by Vara and that the claim as a whole would not have been obvious in view of Hosey, Nomoto, and Vara. Claims 2-20 were not argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-006127 Application 15/281,684 14 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 103 Hosey, Varadharajan, Nomoto 1-20 TIME PERIOD 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)(iv). AFFIRMED