EXCELERO

Patent Trials and Appeals Board

Sep 29, 2020

2019002879 (P.T.A.B. Sep. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/724,971 05/29/2015 Yaniv Romem EXCL P0917 5925
122066 7590 09/29/2020
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
EXAMINER
HARRELL, ROBERT B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
eofficeaction@appcoll.com
michael.benshimon@gmail.com
pair@mb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANIV ROMEM, OMRI MANN,
and OFER OSHRI
Appeal 2019-002879
Application 14/724,971
Technology Center 2400
Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–27. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
EXCELERO. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed “to accessing a remote storage and
particularly to accessing a remote storage by sending commands over a
remote direct memory access.” Spec. ¶ 2. Claim 22, reproduced below, is
illustrative of the claimed subject matter:
22. A user’s client device configured to access a plurality of
remote storage devices through a controller, the plurality of
remote storage devices communicatively coupled to the
controller, the user’s client device comprising:
a processing unit;
a first network interface for communicating with the
controller;
a second interface for communicating with a plurality of
remote storage devices; and
a memory communicatively coupled to the processing unit
and containing first instructions, in response to the first
instructions being executed by the processing unit, the user’s
client device is configured to:
send from the user’s client device a request for
storage block mapping to the controller; and
receive at the user’s client device a map from the
controller, the map comprising a plurality of virtual
addresses, each virtual address corresponding to a physical
address of a data block on a storage device of the plurality
of remote storage devices, and
wherein the user’s client device is configured to
directly access the data block by mapping the virtual
address to the physical address of the data block.
REJECTIONS
Claims 1–27 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 2–12.
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Claims 1–27 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Hayden et al. (US 8,407,448 B1, issued Mar. 26, 2013) (“Hayden”). Non-
Final Act. 12–18.
ANALYSIS
Rejection of Claims 1–27 Under 35 U.S.C. § 1012
Appellant argues that the Examiner’s rejection of claims 1–27 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
Appeal Br. 14–28. To the extent Appellant has not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv) (2018). Appellant argues claims 1–
27 as a group. See Appeal Br. 14–28. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–27 based on
representative claim 22.
Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and

2 We note that the Examiner has withdrawn the patent-eligibility rejection
insofar as it was based on the claims being directed to “carrier wave”
embodiments. See Ans. 3. The Examiner has maintained, however, the
patent-eligibility rejection on the basis of the claims being directed to an
abstract idea without significantly more. See Ans. 3–7.
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
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Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), now
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incorporated in the Manual of Patent Examination Procedure (“MPEP”) in
sections 2103 through 2106.07(c) (“2019 Revised Guidance”).3
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4

2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

2019 Revised Guidance, 84 Fed. Reg. at 52–56; MPEP § 2106.04.
Step 1
Claim 22 relates to “[a] user’s client device,” which at least falls
within the machine category of § 101. See 2019 Revised Guidance, 84 Fed.
Reg. at 53–54 (citing MPEP §§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that the claims recite the abstract idea of
“virtual to real address mapping.” Ans. 5; Non-Final Act. 2. The Examiner
analogized this abstract idea to “asking for a telephone book so a caller can
convert a name to a phone number or street address in order to make a direct
call without the aid of an operator.” Ans. 5.
Appellant argues that the claims do not fall within any of the three
main categories of abstract ideas identified in the 2019 Revised Guidance.
Reply Br. 2. Appellant also argues that “[t]he Examiner does not take the
claim as a whole. Rather the Examiner is looking at the claim elements
individually and in particular to see if such elements contain or mention an
abstract concept.” Appeal Br. 18–19.
We are not persuaded that the Examiner erred in determining that
claim 22 recites an abstract idea. Claim 22 recites “send . . . a request for
storage block mapping,” “receive . . . a map . . . , the map comprising a
plurality of virtual addresses, each virtual address corresponding to a
physical address of a data block,” and “mapping the virtual address to the
physical address of the data block.” These limitations cover requesting and
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receiving a mapping, and using the mapping to determine a correspondence
between a virtual address and a physical address. The Examiner correctly
recognizes that this mapping is similar to looking up a phone number or
address based on a person’s name (see Ans. 5)—i.e., a mental process.
Accordingly, the claimed mapping can be fairly categorized within the
mental processes category of abstract ideas, in particular, an evaluation. See
2019 Revised Guidance, 84 Fed. Reg. at 52. This conclusion is supported by
Federal Circuit precedent holding that a mapping or translation that can be
performed mentally is a patent-ineligible abstract idea. See, e.g., Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139 (Fed. Cir. 2016)
(claims were directed to abstract idea of “translating a functional description
of a logic circuit into a hardware component description of the logic circuit,”
which could be “performed mentally or by pencil and paper”).
Appellant’s argument that the Examiner is looking at individual claim
elements, rather than the claim as a whole (Appeal Br. 18–19), is unavailing.
Under the 2019 Revised Guidance, we first look to see whether a claim
recites an abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 54. Then
we look to see whether any additional elements in the claim integrate any
recited abstract idea into a practical application. Id. As discussed above, we
determine that claim 22 recites an abstract idea in the mental processes
category. We address the additional elements of claim 22 below to
determine “whether the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” Id.
Because we agree with the Examiner that claim 22 recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
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integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements, along with the limitations that
recite a judicial exception, individually and in combination to determine
whether they integrate the exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 22, the additional elements include
the limitations “user’s client device,” “remote storage devices,” “controller,”
“processing unit,” “first network interface for communicating with the
controller,” “second interface for communicating with a plurality of remote
storage devices,” “memory communicatively coupled to the processing
unit,” and “wherein the user’s client device is configured to directly access
the data block.”
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
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exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
Here, the “user’s client device,” “remote storage devices,”
“controller,” “processing unit,” “first network interface,” “second
interface,” and “memory” limitations are all generic computer components
that amount to implementing the abstract idea in a generic computing
environment. The Specification confirms the generic nature of these
limitations. See, e.g., Spec. ¶¶ 42, 43, 45, 46, 49, 51, 53, 57. These
limitations, therefore, do not meaningfully limit the abstract idea beyond
generally linking the abstract idea to a particular technological environment,
and thus do not integrate the abstract idea into a practical application. See
Alice, 573 U.S. at 221 (“[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.”); MPEP § 2106.05(e).
Further, the “directly access the data block” limitation is merely an
instruction to apply the abstract idea, and thus also fails to meaningfully
limit the abstract idea. In other words, the “directly access” limitation uses
the result of the mapping to perform the data access, but does not use a
particular machine or any improved technology for actually accessing
physical memory—i.e., it is a generic data access limitation. This generic
data access limitation does not lend patent-eligibility to the otherwise
ineligible abstract idea of performing a mapping to determine the physical
address to be used in the data access. See Alice, 573 U.S. at 221 (“[A]
patent-eligible application requires ‘more than simply stat[ing] the [abstract
idea] while adding the words “apply it.”’”); MPEP § 2106.05(f).
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Appellant argues that the claims “are focused on specific means or
methods” and “not an effect or result.” Appeal Br. 15 (citing Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed.
Cir. 2017)). Appellant also argues that the claims “are directed to a specific
improvement to the way computers operate, in particular a user’s client
device and the way it accesses storage over the network, thereby improving
the user experience.” Id. at 16; see also id. at 17. Further, Appellant argues
that
[t]he claims are directed to a particular solution for providing a
user’s client device, which is communicatively connected to a
controller, access to a plurality of remote storage devices
communicatively connected to the controller and to the user’s
client device. Thus, the claims provide a particular method for
providing a device access to remote storage.

Id. at 16.
We disagree with Appellant that claim 22 is directed to specific
means, a specific improvement, or particular method in the way a device
accesses remote storage. As stated above, claim 22 recites generic computer
components to perform a generic data access. The fact that “the user’s client
device is configured to directly access the data block by mapping the virtual
address to the physical address of the data block” in claim 22 does not
change the analysis. The mapping is the abstract idea, as discussed above,
and cannot be relied upon to confer patent-eligibility. Claim 22 simply uses
the information obtained from the mapping to perform a generic data access
with generic computer components. Nothing about the claimed generic
computer components, either individually or in combination, “leads to an
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improvement in the functioning of the system.” Two-Way Media, 874 F.3d at
1338.
In the Reply Brief, Appellant argues that “the individual claim
elements are ‘integrated into a practical application’ in that any
calculation/determination is not the end result but rather is used for
subsequent steps given that the claim produces a map . . . the map being sent
to the user’s client device . . . to be used in accessing remote data.” Reply
Br. 2–3.
We disagree that using the claimed map to access data integrates the
abstract idea into a practical application. Claim 22 does not specify that
using the claimed map somehow changes or improves how data is accessed
from the remote storage. Rather, as mentioned above, the data access
function is recited generically and performed by generic computer
components. Such generic computer operations, without more, do not render
the abstract idea patent-eligible.
Appellant argues that “improvements to virtual memory systems and
various arrangements that involve conversion between real and virtual
addresses are directed to patentable subject matter, in an analogous way that
the curing rubber arrangement of Diamond v. Diehr, (450 U.S. 175) was
directed to patentable subject matter even though it made use of a
mathematical equation.” Appeal Br. 17; see also Reply Br. 3.
This argument is not persuasive because claim 22 does not recite an
improvement to a virtual memory system. That the claimed “map
compris[es] a plurality of virtual addresses, each virtual address
corresponding to a physical address of a data block on a storage device of
the plurality of remote storage devices” does not constitute an improvement
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to a virtual memory system. Rather, this limitation covers the abstract idea
itself of mapping between virtual and physical addresses. There are no
claimed “rules with specific characteristics,” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016), that define the
mapping as a specific improvement to a virtual memory system. See Two-
Way Media, 874 F.3d at 1339 (holding a claim patent-ineligible where the
claim “refer[red] to certain data ‘complying with the specifications of a
network communication protocol’ and the data being routed in response to
one or more signals from a user, without specifying the rules forming the
communication protocol or specifying parameters for the user signals.”).
Moreover, claim 22 is unlike the patent-eligible claims in Diehr,
which recited the use of a mathematical formula and programmed digital
computer in a process for curing synthetic rubber. 450 U.S. at 177. In Diehr,
the claimed process “constantly recalculat[ed] the appropriate cure time
through the use of the formula and a digital computer, and automatically
open[ed] the press at the proper time.” Id. at 187. In other words, the process
of curing synthetic rubber was improved by “significantly lessen[ing] the
possibility of ‘overcuring’ or ‘undercuring.’” Here, the mapping in claim 22
results in a physical address, which is then used the same way any physical
address is used for a generic data access, without any improvement to how
data is accessed. See, e.g., Spec. ¶ 47 (“Each of the virtual addresses
corresponds to a physical address of a data block on one of the storage
devices 160. The physical addresses may be on one or more of the storage
devices 160.”).
Finally, Appellant argues that the claims do not preempt an abstract
idea, and therefore, are not directed to an abstract idea. Appeal Br. 19–23.
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We are not persuaded by Appellant’s preemption argument because
“preemption concerns are fully addressed and made moot” when a claim is
deemed patent-ineligible under the Alice framework (Two-Way Media, 874
F.3d at 1339), as is the case here, based on our analysis above, and
continued below.
Considering claim 22 as a whole, we determine that claim 22 does not
recite (i) an improvement to the functionality of a computer or other
technology or technical field; (ii) a “particular machine” to apply or use the
judicial exception; (iii) a particular transformation of an article to a different
thing or state; or (iv) any other meaningful limitation. See 84 Fed. Reg. at
55. Rather, claim 22 recites an abstract idea as identified in Step 2A(i),
supra, and none of the limitations integrates the judicial exception into a
practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that claim 22 is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
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U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the additional elements in claim 1 “are
nothing more than generic general purpose component(s) and function(s) . . .
which are well understood, routine, and conventional activities previously
known in the industry; which, when analyzed as a whole . . . adds nothing
significant . . . .” Non-Final Act. 2–3.
Appellant argues that “the claims are directed to resolving a particular
Internet-centric problem, e.g., how to access remote storage in a satisfactory
manner, and so the claims also embody an inventive concept.” Appeal
Br. 15. Appellant further argues that “[t]he instant claims are directed [to] a
particular, practical application of virtual addressing that is not
conventional.” Id. at 16.
We are not persuaded by Appellant’s arguments because claim 22
simply uses the result of performing the abstract idea—a physical address—
to perform a conventional data access function. Appellant does not direct our
attention to anything in the Specification that indicates the computer
components perform anything other than well-understood, routine, and
conventional functions, such as sending data, receiving data, comparing
data, or retrieving stored data. See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
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to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept).
The Specification describes the additional elements as conventional
computer components in general terms, without describing the particulars,
for example: “[t]he client device may be a personal computer (PC), a laptop,
a smartphone, a smart watch, a tablet computer, and the like” (Spec. ¶ 46);
“remote storage device 160 may be a solid state drive (SSD), a hard disk
drive (HDD), or a hybrid storage drive (HSD)” (Spec. ¶ 43); “[t]he first
network interface may be an RDMA interface” which “may be implemented,
in exemplary embodiments as iWARP, RDAM over Converged Ethernet
(RoCE), and Infiniband” (Spec. ¶ 51); “[t]he second interface 304 may be,
for example, NVM Express” (Spec. ¶ 49). We, therefore, conclude that the
additional limitations may be broadly but reasonably construed as reciting
conventional computer components and techniques, particularly in light of
Appellant’s Specification, as cited above. See Berkheimer Memo5 § III.A.1.
We conclude claim 22 does not have an inventive concept because the
claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 22 and grouped claims 1–21 and 23–27.

Rejection of Claims 1–27 Under 35 U.S.C. § 102
Claims 1, 6–9, 13–16, 20–22, 26, and 27
The Examiner finds that Hayden teaches all the limitations of
independent claim 22, including that either of Hayden’s Figures 1 or 2
shows a “user’s client device.” See Non-Final Act. 13. Specifically, with
reference to Hayden’s Figure 1, the Examiner finds that “the user’s client
device also includes not only the ‘USER’ hardware but also software
components 1,2,3,4, and 11.” Ans. 7. Appellant argues that “the client
mentioned in Hayden is actually called ‘a client of the storage server’, e.g.,
in column 2, line 26, which is very different from a user’s client device as
recited in the claims.” Appeal Br. 29. Appellants’ arguments are not
persuasive of Examiner error.
Hayden teaches “a system for performing an I/O in a storage
virtualization environment consisting of a storage server, a data storage
system, and a client of the storage server.” Hayden, 2:24–26. “The storage
server includes a mapping service that organizes one or more storage objects
as a set of related objects”; “[t]he data storage system provides the physical
space to the storage server”; and “[t]he client of the storage server includes a
mapping client for the mapping service and a data cache . . . [and] [t]he
mapping client provides the mapping between a logical addressable storage
object to its physical location on the data storage system and caches the
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physical address and contents of the storage objects in the data cache.” Id. at
2:27–39; see also id. at 4:23–40, Fig. 1.
Here, Hayden’s client of the storage server (item 3 in Figure 1) has a
client-server relationship with the storage server (item 5 in Figure 1). For
example, Hayden teaches that, “[i]f in step 203, mapping for logically
addressable storage object is not present in the mapping client, the client
communicates with the mapping server included in the storage server in 204
to retrieve the logical to physical address mapping.” Id. at 10:8–12.
Moreover, client of the storage server 3, which includes mapping client 2, is
associated with what appears to be a computer labeled “USER.” Id. at Fig. 1.
The Examiner interprets client of the storage server 3 as part of the software
operating on the “‘USER’ hardware.” See Ans. 7. But, even if the “USER”
label in Figure 1 can be interpreted as identifying a separate physical device
from some other device that hosts client of the storage server 3, claim 22
does not preclude a user from accessing the “user’s client device” via some
other intermediary device.
Appellant’s argument that Hayden’s client of the storage server is
“referred to not simply as a ‘client’ but rather as ‘a client of the storage
server’, e.g., in column 2, line 26,” because “[i]t is thus part of a server, not
a client device” (Reply Br. 4), is unavailing. As the Examiner asserts,
Hayden refers to a “‘client “of” the storage server’ not ‘client “in” the
storage server.” Ans. 7. Figure 1 clearly shows that client of storage server 3
is distinct from storage server 5, and in fact includes the label “CLIENT
OS.” Hayden, Fig. 1. Thus, client of the storage server 3 is part of a user’s
client device.
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We are also not persuaded by Appellant’s arguments, with respect to
Hayden’s Figure 2, “that virtualization environment 10 is a type of server
that is separate from, but is accessed by, user 11,” and that “[u]ser devices,
because of their limited speed and resources typically do not run hypervisors
or VMWare, although servers often do.” Appeal Br. 30; see also Reply
Br. 4–5. Hayden’s Figure 2 is analogous to Figure 1 in that it shows
Mapping Client 21 on a host machine running Hypervisor 20 as distinct
from Enterprise File Servers 24–26, each of which contain a mapping server
64. See Hayden, 4:60–63, 5:39–60, Figs. 2, 3. In operation, “Mapping Client
21 residing in Hypervisor uses NFS or File Mapping Protocol to
communicate with the enterprise file server through IP network 23 for the
location of the file or to allocate space for the file and then performs an I/O
directly to the on-disk volume through IP network using SCSI protocol.” Id.
at 5:34–38. For similar reasons as discussed above with respect to Hayden’s
Figure 1, we agree with the Examiner that Hayden’s Figure 2 shows a
“user’s client device.” See Non-Final Act. 13. In addition, whether Hayden’s
Hypervisor 20 requires a certain amount of resources unavailable on a
typical user device (see Appeal Br. 30) does not impact the conclusion that
Hypervisor 20 includes Mapping Client 21, and is thus part of a user’s client
device.
For these reasons, we are not persuaded that the Examiner erred in
finding that Hayden teaches the disputed limitations of claim 22.
Accordingly, we sustain the Examiner’s § 102 rejection of independent
claim 22, as well as the Examiner’s § 102 rejection of independent claims 1,
9, and 16 not argued separately with particularity. See Appeal Br. 30. We
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also sustain the Examiner’s § 102 rejection of dependent claims 6–8, 13–15,
20, 21, 26, and 27, not argued separately.
Claims 2–5, 10–12, 17–19, and 23–25
Turning to dependent claim 2, Appellant argues that the cited portions
of Hayden fail to teach “receiving storage instructions from the user’s client
device over a remote direct memory access (RDMA) interface.” Appeal
Br. 31–32. Appellant’s argument is persuasive of Examiner error.
The Examiner relies on Hayden’s disclosure of “perform[ing] an I/O
directly . . . using SCSI protocol” for teaching the RDMA limitation in claim
2. Non-Final Act. 13 (quoting Hayden, 5:37–38). As support for this finding,
the Examiner cites RFC 5046 (see id.), which is a proposed standard
document titled “Internet Small Computer System Interface (iSCSI)
Extensions for Remote Direct Memory Access (RDMA)” (See Network
Working Group, Request for Comments: 5046, available at
https://tools.ietf.org/html/rfc5046). We agree with Appellant that “the
Examiner cannot read RFC 5046 into Hayden when there is no suggestion
that RDMA is being employed, and certainly doing so is improper for an
anticipation rejection.” Appeal Br. 32.
Accordingly, we do not sustain the Examiner’s § 102 rejection of
dependent claim 2, as well as dependent claims 10, 17, and 23, which recite
similar limitations.
With respect to dependent claim 3, Appellant argues that the cited
portions of Hayden fail to teach “wherein the map further comprises a
version number.” Appeal Br. 32–33. Appellant’s argument is persuasive of
Examiner error.
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The Examiner relies on Hayden’s disclosure of a virtual machine
embodiment that includes support for different versions of files for teaching
the map version number limitation in claim 3. Non-Final Act. 13–14 (citing
Hayden, 3:61–4:21, 9:2–23). Specifically, Hayden discloses that “thousands
of virtual machines can be booted faster and requires less storage space due
to integration of version files that only keeps unique blocks” (Hayden, 4:5–
7) and that “[b]y integrating a mapping client into a Hypervisor and
extending files version semantics to the logical view of the files and
allowing virtual machines access to the special block sharing views of file
resources, it dramatically decrease[s] the amount of I/O required” (id. at 9:5–
9). This disclosure, however, relates to versions of files and the fact that
storing only differences (“unique blocks” (id. at 47)) between versions of
files saves time and space. The Examiner has not shown that Hayden teaches
versions of mappings between virtual and physical addresses.
Accordingly, we do not sustain the Examiner’s § 102 rejection of
dependent claim 3, as well as claims 4 and 5 which depend therefrom, and
dependent claims 11, 12, 18, 19, 24, and 25 which recite similar limitations.
DECISION
Because we sustain at least one ground of rejection with respect to
each claim on appeal, we affirm the overall decision of the Examiner
rejecting claims 1–27. See 37 C.F.R. § 41.50(a)(1).

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–27 101 Patent Ineligibility 1–27
1–27 102 Hayden 1, 6–9, 13–
16, 20–22,
26, 27
2–5, 10–12,
17–19, 23–
25
Overall
Outcome

1, 6–9, 13–
16, 20–22,
26, 27
2–5, 10–12,
17–19, 23–
25
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED