Ex Parte Arcese et alDownload PDFPatent Trial and Appeal BoardMar 9, 201612940218 (P.T.A.B. Mar. 9, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/940,218 58139 7590 IBM CORP, (WSM) c/o WINSTEAD P.C. P.O. BOX 131851 DALLAS, TX 75313 11/05/2010 03/11/2016 FIRST NAMED INVENTOR Mauro Arcese 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 ATTORNEY DOCKET NO. CONFIRMATION NO. FR920090029US 1 7009 EXAMINER TEETS, BRADLEY A ART UNIT PAPER NUMBER 2195 NOTIFICATION DATE DELIVERY MODE 03/11/2016 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): patdocket@winstead.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAURO ARCESE, GIUSEPPE CIANO, MARCO IMPERIA, and LUIGI PICHETTI Appeal2014-004108 Application 12/940 ,218 Technology Center 2100 Before ROBERT E. NAPPI, CARLL. SILVERMAN, and SCOTT B. HOWARD, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 13, 14, 16-21, and 23-26, which constitute all of the rejected claims pending in this application. Claims 1-12 have been cancelled. Claims 15 and 22 are allowed. Adv. Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 1. Appeal2014-004108 Application 12/940,218 THE INVENTION The claimed invention is directed to a method for optimizing virtual storage size for virtual machines. In the claimed method, a target set of virtual machines for optimization is chosen based on information related to the virtual machines and on shrinking constraints. Spec 2: 1-11. Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. A computer program product embodied in a computer readable storage medium for optimizing virtual storage size in a virtual computer system comprising at least one virtual machine, each of said at least one virtual machine being allocated one or more virtual disks, the computer program product comprising the programming instructions for: determining a target set of virtual machines among said at least one virtual machine comprised in said virtual computer system based on information related to said at least one virtual machine and on shrinking constraints; for each virtual machine in said target set of virtual machines, identifying each virtual disk allocated to said virtual machine; and for each virtual disk allocated to said virtual machine, analyzing said virtual disk, estimating a virtual disk saving quantity based on the virtual disk analysis, generating a resized virtual disk based on the estimated virtual disk saving quantity, and replacing said virtual disk with said resized virtual disk. THE REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: I Rawson I US 2005/0232192 Al I Oct. 20, 2005 2 Appeal2014-004108 Application 12/940,218 THE REJECTION2 Claims 13, 14, 16-21, and 23-26 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Rawson. Final Act. 11-17. ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we consider all evidence presented and all arguments made by Appellants. We agree with Appellants that the Examiner erred in rejecting the claims. Claim 13 recites, inter alia, that a "target set of virtual machines" is determined "based on information related to said at least one virtual machine and on shrinking constraints." Claims App'x (App. Br. 25). The Examiner finds Rawson determines a target set of virtual machines subject to corrective action by excluding those machines that have a service level agreement ("SLA") requiring a certain level of service. Final Act. 11 (citing Rawson i-f 37); see also Ans. 9-10 ("Those guest operating systems which are eligible for corrective action are a subset of the operating systems, this subset is a target set as these guest operating systems will be targeted for corrective action"). The Examiner further finds Rawson discloses determining the target set based on the need to power off some of the 2 In addition to the rejection discussed infra, in the Final Action the Examiner also provisionally rejected claims 13-26 on the grounds of nonstatutory obviousness type double patenting (Final Act. 4--8) and claims 13-19 under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject manner (Final Act. 9-10). Those grounds of rejection were withdrawn following the filing of a terminal disclaimer (double patenting rejection) and amending the Specification(§ 101 rejection). Adv. Act. 1-2; Ans. 2-3. 3 Appeal2014-004108 Application 12/940,218 memory allocated to the virtual machines and the reduction of power is a shrinking constraint. Final Act. 11 (citing Rawson i-fi-1 31, 46, 4 7); see also Ans. 10-11. Appellants describe Rawson-in relevant part-as follows: Rawson discloses that corrective action is taken for each eligible guest operating system. App. Br. 4---6 (citing Rawson i137). In an embodiment, otherwise eligible guest operating systems with SLAs may be eliminated from the group that is eligible for corrective action. Id. Those guest operating systems that have been selected for corrective measures have virtual memory pages associated with the guest operating systems reassigned to occupy a more contiguous region of physical memory. App. Br. 7-8 (citing Rawson i147). According to Appellants, the "set of eligible guest operating systems" in Rawson is "not determined based on information related to the at least one virtual machine and on shrinking constraints." Reply Br. 3; see also App. Br. 6-8. More specifically, Appellants argue reassigning virtual memory is not the same as selecting a guest operating system for corrective action. App. Br. 7-8; Reply Br. 3--4. We are persuaded by Appellants' argument that the Examiner erred in finding Rawson discloses the determining step of claim 1. Claim 1 requires that the determination of the target set be based on two factors: (1) "information related to said at least one virtual machine" and (2) "shrinking constraints." Claim 13 (Claim App'x at App. Br. 25). Although Rawson discloses selecting a target set based on whether or not there is an SLA- "information related to said at least one virtual machine"-it does not disclose using a second factor-such as a shrinking constraint. Rawson 4 Appeal2014-004108 Application 12/940,218 il 3 7. Furthermore, we agree with Appellants that there is no relation between the corrective action of reassigning memory of the guest operating systems in the target set and the selection of guest operating systems to be in the target set. Accordingly, the Examiner erred in finding that the taking of corrective action on a target set to be the same as determining which virtual machines are part of the target set. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. Accordingly, we are constrained on this record to reverse the Examiner's rejection of claim 13, along with the rejection of claim 20, which is argued on the same grounds, and dependent claims 14, 16-19, 21, and 23-26. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). DECISION For the above reasons, we reverse the Examiner's rejection of claims 13, 14, 16-21, and 23-26. REVERSED 5 Copy with citationCopy as parenthetical citation