Ex Parte Tsirkin et al

Patent Trial and Appeal Board

Nov 19, 2018

15251943 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/251,943 08/30/2016
110773 7590 11/21/2018
Haynes and Boone, LLP (50833)
Attn. IP Docketing
2323 Victory A venue , Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Michael Tsirkin
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.
50833.75Tl (20161074US) 6569
EXAMINER
RUSSELL, ANDREW D
ART UNIT PAPER NUMBER
2136
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL TSIRKIN and URI LUBLIN
Appeal2018-005550
Application 15/251,943 1
Technology Center 2100
Before JOSEPH L. DIXON, ERIC S. FRAHM, and JASON M. REPKO,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, Red Hat Israel, Ltd. is the real party in interest
(App. Br. 3).
Appeal2018-005550
Application 15/251,943
INTRODUCTION
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1--4, 6, 8-12, 14, 15, and 19-26. 2
Claims 5, 7, 13, and 16-18 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
Illustrative Claim
1. A method of de-duplicating one or more memory
pages, compnsmg:
receiving, by a hypervisor, a list of read-only memory
page hints from a guest running on a virtual machine, the list of
read-only memory page hints specifying a first memory page that
the guest will not modify for a time period and that is marked as
writeable;
during a first comparison phase:
determining, by the hypervisor, whether a data
structure stores a duplicate of the first memory page; and
in response to a determination that a second
memory page stored in the data structure is a duplicate of the first
memory page:
write protecting the first memory page; and
write protecting the second memory page if
the second memory page is not write protected; and
[A] during a second comparison phase;
determining whether the first memory page matches
the second memory page;
in response to a determination that the first memory
page does not match the second memory page, reversing,
2 Although the Final Rejection mistakenly left out claims 23-26 in the
rejection, these claims were addressed on the merits in the Advisory Action,
mailed August 9, 2017, and Appellants now recognize these claims as being
rejected (see Reply Br. 3 ("[c]laims 1--4, 6, 8-12, 14, 15, and 19-26 are
pending, stand finally rejected, and are on appeal"). As such, we consider
this to be harmless error, and we have jurisdiction over the rejection of
claims 1--4, 6, 8-12, 14, 15, and 19-26.
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Application 15/251,943
by the hypervisor, the one or more write protections
applied during the first comparison phase; and
in response to a determination that the first memory
page matches the second memory page, deduplicating, by
the hypervisor, the first and second memory pages.
Claim 1 ( emphasis added). Remaining independent claims 11 and 20
recite commensurate limitations pertaining to the second comparison
phase, namely the reversal of write protections applied during the first
comparison phase.
ANALYSIS
We have reviewed the Examiner's rejection (Final Act. 5-10) in light
of Appellants' arguments (App. Br. 8-14; Reply Br. 3---6) that the Examiner
has erred, as well as the Examiner's response to Appellants' arguments in
the Briefs (Ans. 3-7). We concur with Appellants' contentions (App. Br.
11-13; Reply Br. 3--4) that the Examiner erred in finding claims 1--4, 6, 8-
12, 14, 15, and 19-26 anticipated by Waldspurger (US 6,789,156 Bl; issued
Sept. 7, 2004) because Waldspurger fails to disclose the second comparison
phase, and specifically limitation [A], including reversing write protections,
as recited in independent method claim 1, and as commensurately recited in
remaining independent claims 11 and 20.
The Examiner is required to provide Appellants reasonable notice as
to the basis of a rejection. The notice requirement is set forth by 35 U.S.C.
§ 132:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
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Application 15/251,943
propriety of continuing the prosecution of [the] application." 35
U.S.C. § 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection." Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F .2d
628, 631 (Fed. Cir. 1987). To establish anticipation, every element and
limitation of the claimed invention must be found in a single prior art
reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). "[A]bsence from the reference
of any claimed element negates anticipation." Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
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 "primafacie case." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
burden of proof is on the USPTO "to produce the factual basis for its
rejection of an application under sections 102 and 103") (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)).
In the instant case, the Examiner's notification to Appellants of the
determination of the anticipation of independent claims 1, 11, and 20 is
found at pages 5 through 6 of the Final Rejection. Notably, claims 1 and 20
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Application 15/251,943
are method claims, and contain different recitations, different scope, and a
different format, from system claim 11.
The Examiner appears to map the limitations of claim 11 to
Waldspurger in making the rejection (see Final Act. 5---6 ( discussing the
deduplication module, but notably, not the marking module), and not the
limitations of claims 1 and 20. And, the Examiner's rejection (see Final Act.
6) does not clearly address the first and second comparison phases. Most
importantly, the Examiner's rejection (see Final Act. 5---6) fails to directly
address the limitation of reversing the write protections applied during the
first comparison phase, during a second comparison phase, as recited in each
of claims 1, 11, and 20. The Examiner's attempt to clarify or correct this
error in the Answer (see Ans. 6-7) also falls short.
The Examiner's reasoning, that "in the second comparison phase,
when the pages have been determined not to match, the purpose of the
purpose of marking the pages as read-only is obviated, and the write
protections are reversed" (Ans. 6-7) is speculative and unsupported by
evidence in the record. Waldspurger is silent as to, and the Examiner has not
adequately shown Waldspurger discloses (implicitly or explicitly), reversing
the write protections applied during the first comparison phase, during a
second comparison phase, as recited in each of claims 1, 11, and 20.
Furthermore, we find no such disclosure in W aldspurger to support
the Examiner's position that the subject matter ( e.g., limitation [A] recited in
claim 1 supra, and the commensurate recitations in claims 11 and 20), is
anticipated by Waldspurger. We will not resort to speculation or
assumptions to cure the deficiencies in the Examiner's fact finding. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). As such, we find that the
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Application 15/251,943
Examiner improperly relies upon Waldspurger to disclose and anticipate the
disputed claim limitations. See Warner at 1017.
We agree with Appellants (App. Br. 11-13; Reply Br. 3--4) that the
Examiner has not shown Waldspurger anticipates at least limitation [A], the
reversing step, of the second comparison phase recited in claims 1, 11, and
20. As a result, the Examiner has not (i) made a prima facie case for the
anticipation of claims 1, 11, and 20, and ultimately, (ii) shown all of the
claim limitations of claims 1, 11, and 20 are disclosed by Waldspurger, and
(iii) made a proper showing of anticipation for claims 1, 11, and 20 (see
Final Act. 5-6; Ans. 3-7). Similarly, the Examiner has not set forth a proper
showing of anticipation with respect to dependent claims 2--4, 6, 8-10, 12,
14, 15, 19, and 21-26 depending respectively therefrom. In view of the
foregoing, we do not sustain the Examiner's rejection of independent claims
1, 11, and 20, as well as claims 2--4, 6, 8-10, 12, 14, 15, 19, and 21-26,
which depend respectively therefrom, as being anticipated by Waldspurger.
DECISION
The Examiner's rejection of claims 1--4, 6, 8-12, 14, 15, and 19-26 is
reversed.
REVERSED
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