Ex Parte Satnur et al

Patent Trial and Appeal Board

May 21, 2018

14461454 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/461,454 08/18/2014
151795 7590 05/23/2018
FISH & RICHARDSON P.C. (VMware)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
SUNIL SATNUR
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.
C003 7086
EXAMINER
CHOE, YONGJ
ART UNIT PAPER NUMBER
2135
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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):
P ATDOCTC@fr.com
ipadmin@vmware.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNIL SA TNUR and PRASANNA AITHAL
Appeal2017-010442
Application 14/461,454 1
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-27, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is VMware, Inc. (App.
Br. 1).
Appeal2017-010442
Application 14/461,454
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to improving the
performance of computer storage systems by adapting small computer
systems interface (SCSI) extended copy (XCOPY) operations based on
collected performance information (Spec. ,r 15, Abstract). Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method for adaptive offloading of data movement from a
computer system, the method comprising:
identifying response times from a plurality of historical
SCSI extended copy (XCOPY) operations associated with a
storage unit, each XCOPY operation of the plurality of XCOPY
operations including one or more parameters;
selecting, based on the identified response times, one or
more XCOPY parameters for the storage unit from the plurality
of XCOPY operations;
forming a new XCOPY operation associated with the
storage unit, the new XCOPY operation including the one or
more selected XCOPY parameters; and
transmitting the new XCOPY operation to the storage unit.
REJECTION
Claims 1-27 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement (Ans. 2).
ISSUE
35 USC§ l 12(a): Claims 1-27
Appellants argue their invention as recited in claims 1-27 complies
with the written description requirement. App. Br. 4---6; Reply Br. 1-2. The
issue presented by the arguments is:
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Appeal2017-010442
Application 14/461,454
Has the Examiner erred in finding the invention as recited in claims
1-27, fails to comply with the written description requirement?
ANALYSIS
The Examiner finds the Specification does not provide adequate
written description support for "identifying response times from a plurality
of historical SCSI extended copy (XCOPY) operations associated with a
storage unit," as recited in independent claim 1 and similarly recited in
independent claims 10 and 19 (Ans. 2; Final Act. 2). In response,
Appellants argue the Specification adequately describes the identification of
response times from historical XCOPY operations (App. Br. 4---6; Reply Br.
1-2) because the Specification discloses "that identifying performance
results from XCOPY operations associated with a storage unit encompasses
performance results identified from historical XCOPY operations" (Reply
Br. 2; App. Br. 6 (citing Spec. ,r 44)) and further discloses "that performance
results include response times" (Reply Br. 2 (citing Spec. ,r,r 49, 56); App.
Br. 5).
We are persuaded.
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue.
Nonetheless, the disclosure "must ... convey with reasonable
clarity to those skilled in the art that ... [the inventor] was in
possession of the invention." Put another way, one skilled in the
art, reading the original disclosure, must "immediately discern
the limitation at issue" in the claims. That inquiry is a factual
one and must be assessed on a case-by-case basis
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Appeal2017-010442
Application 14/461,454
(Purdue Pharma L.P. v. Paulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000)
( alterations in original) ( citations omitted)). Paragraph 44 of the
Specification discloses "analyz[ing] performance data for past XCOPY
operations ('performance results') and dynamically adjust[ing] the
parameters for upcoming XCOPY operations based on historical
performance" (Spec. ,r 44; see Spec. ,r 15). That is, the Specification
discloses "identifying" performance results "from a plurality of historical
XCOPY operations." Further, in that same paragraph, the Specification
discloses "performance results" are "e.g., response times" (Spec. ,r 44).
Similarly, the Specification discloses that "identifying 510 performance
results includes identifying response times for each XCOPY operation"
(Spec. ,r 56; see Spec. ,r 48 ("system 410 weights the performance response
times of each XCOPY ... operation")). Consequently, the Specification
discloses performance results include response time data. Moreover, the
Specification discloses identifying performance results for a plurality of
historic XCOPY operations and further discloses that performance results
include response times; therefore, the Specification adequately supports the
limitation "identifying response times from a plurality of historical SCSI
extended copy (XCOPY) operations associated with a storage unit," as
recited in independent claim 1 and as similarly recited in independent claims
10 and 19. Therefore, we are persuaded an ordinarily skilled artisan, reading
the original disclosure, would have understood the inventors were in
possession of the limitation at issue in the claims.
Additionally, we are not persuaded the Specification fails to provide
adequate written description support for the limitations reciting "forming a
new XCOPY operation" and "transmitting the new XCOPY" (see Final
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Appeal2017-010442
Application 14/461,454
Act. 2). Specifically, Figure 5 of the Specification discloses "[f]orming an
XCOPY operation including the selected XCOPY parameters" and
"[t]ransmitting the XCOPY 540 operation" (see Spec. ,r 58). Again, we are
persuaded an ordinarily skilled artisan, reading the original disclosure,
would have understood the inventors were in possession of forming an
XCOPY operation that includes the selected XCOPY parameters.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
27 under 35 U.S.C. § 112, first paragraph as failing to comply with the
written description requirement.
DECISION
The Examiner's rejection of claims 1-27 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement is reversed.
REVERSED
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