Ex Parte SATNUR et alDownload PDFPatent Trial and Appeal BoardMay 21, 201814461454 (P.T.A.B. May. 21, 2018) Copy Citation 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: 2 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 3 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 4 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 5 Copy with citationCopy as parenthetical citation