Ex Parte Gulati et al

Patent Trial and Appeal Board

Feb 26, 2016

12869878 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/869,878
36378 7590
VMWARE, INC,
DARRYL SMITH
FILING DATE
08/27/2010
03/01/2016
3401 Hillview Ave.
PALO ALTO, CA 94304
FIRST NAMED INVENTOR
Ajay GULATI
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.
A563 8698
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
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 AJAY GULATI, GANESHA SHANMUGANATHAN,
and IRF AN AHMAD
Appeal2014-003302
Application 12/869,878
Technology Center 2400
Before JOSEPH L. DIXON, JOHN P. PINKERTON,
and SCOTT B. HOWARD, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-22, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify VMware, Inc. as the real party in interest. App. Br. 3.
Appeal2014-003302
Application 12/869,878
STATEMENT OF THE CASE
Introduction
Appellants' invention generally relates to data center management,
including estimating maximum throughput of a storage unit. Spec. i-f 1. 2
Claims 1 and 13, which are reproduced below with the contested
limitations italicized, are illustrative:
1. A method of estimating throughput of a storage unit,
compnsmg:
monitoring a workload on the storage unit and a latency
of the storage unit at multiple points in time over a period of
time; and
determining a maximum throughput of the storage unit
based on a linear relationship between the monitored
workloads and the monitored latencies.
13. A method of load balancing workloads across storage
units, comprising:
selecting a workload for migration to a destination
storage unit;
determining whether or not migration of the selected
workload to the destination storage unit will cause the
destination storage unit to reach a predefined fraction of a
saturation workload; and
migrating the selected workload to the destination
storage unit if the predefined fraction of the saturation
workload of the storage unit will not be reached.
2 Our Decision refers to the Final Action mailed Jan. 24, 2013 ("Final Act."),
Appellants' Appeal Brief filed Aug. 20, 2013 ("App. Br."), the Examiner's
Answer mailed Nov. 21, 2013 ("Ans."), Appellants' Reply Brief filed Jan.
16, 2014 ("Reply Br."), and the original Specification filed Aug. 27, 2010
("Spec.").
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Appeal2014-003302
Application 12/869,878
Rejection on Appeal
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Green et al. (US 2010/0083274; published Apr. 1, 2010)
and Yang (US 2010/0281208; published Nov. 4, 2010).
ANALYSIS
Appellants contend the combination of Green and Yang does not
teach or suggest: the "determining" limitation of claim 1 (App. Br. 10-11;
Reply Br. 2-3); the "computing," "estimating," "comparing," and
"admitting" steps of claim 6 (App. Br. 12-13; Reply Br. 3--4); the
"determining" and "migrating" steps ofclaim 13 (App. Br. 14--15; Reply Br.
5---6); and, the "adjusting" and "wherein" limitations of claim 18 (App. Br.
15-16; Reply Br. 7-8). Appellants argue the Examiner's findings that the
limitations in dispute are taught by the prior art are not supported by the
disclosures in Green and Yang and, therefore, the Examiner failed to
establish obviousness with respect to claims 1, 6, 13, and 18. App. Br. 10-
16; Reply Br. 2-8. Appellants further argue the Examiner failed to make a
prima facie case of obviousness with respect to claims 13 and 18 because
they are rejected together with claims 1 and 6, respectively, in the Final
Office Action (see Final Act. 2, 4), even though the limitations in dispute in
claims 1 and 13, and in claims 6 and 18, are different. App. Br. 14, 16.
Regarding claim 1, the Examiner cites Yang as disclosing "to achieve
high throughput in RAID system, disk I/Os form data stripes across parallel
disks ... " (citing i-f 66) and finds "Examiner interpreted the parallel disks as
storage based on linear relationship. Whereas high throughput is interpreted
as maximum throughput." Ans. 4. Regarding claim 6, the Examiner (a)
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Appeal2014-003302
Application 12/869,878
refers to Appellants' argument that the combination of Green and Yang does
not disclose the three limitations at issue in claim 6, (b) states "[a ]s to
applicant's allegation Yang disclosed," and (c) then quotes paragraph 90 of
Yang. Ans. 4. Similarly, with respect to claims 13 and 18, the Examiner (a)
refers to Appellants' arguments that the limitations at issue in these claims
are not taught by Green and Yang and then (b) quotes paragraph 89 of Yang,
and duplicates Figure 2 of Green, in regard to claim 13, and ( c) quotes
paragraph 90 of Yang, and duplicates Figure 9 of Green, in regard to claim
18. Id. at 5-7.
We agree with Appellants the Examiner erred. In particular, we agree
the Examiner has not provided sufficient evidence or reasoning to establish
the combination of Green and Yang teaches or suggests the limitations in
dispute in claims 1, 6, 13, and 18.
In regard to claim 1, we agree with Appellants' argument it is unclear
how Yang's disclosure in paragraph 66 that high throughput is achieved
using "disk I/Os [that] form data stripes across parallel disk[s] with each
disk storing one chunk of data in a stripe" teaches "determining a
maximum throughput" and the claimed linear relationship between the
"monitored workloads" and the "monitored latencies." App. Br. 10-11;
Reply Br. 2. Regardless, Appellants argue, and we agree, that achieving
"high throughput," as taught in Yang, is distinguishable from "determining a
maximum throughput." App. Br. 11; Reply Br. 2. We also agree with
Appellants' argument that Yang's teaching of storing data in parallel disks
does not teach or suggest a linear relationship between "workloads" and
"latencies" being monitored during the process of storing and retrieving data
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Application 12/869,878
to determine a maximum throughput of the storage unit, as recited in claim
1. Id.
In regard to claims 6, 13, and 18, the Examiner's mere quotation of
paragraphs 89 and 90, and duplication of Figures 2 and 9 of Green, in the
Answer do not, without more, provide adequate evidence or reasoning to
support the Examiner's findings and conclusions with respect to these
claims. Because the Examiner has failed to explain how or why the quoted
portions of Yang, and the Figures of Green, teach or suggest the limitations
at issue regarding claims 6, 13, and 18, and we are unable to independently
identify any such disclosure, the Examiner has failed to carry the burden of
establishing a prima facie case of obviousness. See In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72 (Fed.
Cir. 1984 ). 3 We note, in an ex parte appeal, the Board "is basically a board
of review-we review ... rejections made by patent examiners." Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BP AI 2001 ). "The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner ... invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999).
Because we are a board of review, and not a place of initial examination, we
3 We also agree, as Appellants argue, the Examiner failed in the Final Office
Action to meet the initial burden of setting forth the basis for the rejection of
claims 13 and 18 by rejecting them together with claims 1 and 6,
respectively, even though the limitations in dispute in claims 1 and 13, and
in claims 6 and 18, are different. See Ex Parte Frye, 94 USPQ2d 1072, 1075
(BP AI 2010) ("The Examiner has the initial burden to set forth the basis for
any rejection so as to put the patent applicant on notice of the reasons why
the applicant is not entitled to a patent on the claim scope that he seeks - the
so-called 'prima facie case."' (citing Oetiker, 977 F .2d at 1445) ).
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Application 12/869,878
will not engage in the de novo examination of the prior art required to
supplement the Examiner's findings in connection with the limitations at
issue in claims 6, 13, and 18.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
6, 13, and 18, as well as dependent claims 2-5, 7-12, 14--17, and 19-22.
DECISION
We reverse the Examiner's decision rejecting claims 1-22 for
obviousness under 35 U.S.C. § 103(a).
REVERSED
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