Kaladhar Voruganti et al.

Patent Trials and Appeals Board

Oct 2, 2019

14338157 - (D) (P.T.A.B. Oct. 2, 2019)

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.
14/338,157 07/22/2014 Kaladhar Voruganti 010157.02/24061.647US01 1943
112792 7590 10/02/2019
Haynes and Boone, LLP (47415)
Attn: IPDocketing
2323 Victory Avenue, Suite 700
Dallas, TX 75219
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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 KALADHAR VORUGANTI,
STEVEN ROBERT KLEIMAN,
JAMES HARTWELL HOLL II,
GOKUL SOUNDARARAJAN, SHAILAJA KAMILA, and
SUBRAMANIAN MOHAN
________________

Appeal 2018-007924
Application 14/338,157
Technology Center 2400
________________

Before JEREMY J. CURCURI, JAMES B. ARPIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3–6, and 21–35. Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
Claims 1, 3–6, and 21–35 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. Final Act. 2–3.
Appeal 2018-007924
Application 14/338,157

2
Claims 1, 3, 4, 21–23, 26, 28–30, 33, and 35 are rejected under 35
U.S.C. § 103 as obvious over Upadhya (US 2013/0111034 A1; May 2,
2013) and Gordon (US 2015/0254150 A1; Sep. 10, 2015). Final Act. 4–11.
Claims 5, 24, and 31 are rejected under U.S.C. § 103(a) as obvious
over Upadhya, Gordon, and Oslake (US 2013/0268914 A1; Oct. 10, 2013).
Final Act. 10–12.
Claims 6, 25, and 32 are rejected under U.S.C. § 103(a) as obvious
over Upadhya, Gordon, and Lango (US 2014/0282824 A1; Sep. 18, 2014).
Final Act. 12–13.
Claims 27 and 34 are rejected under U.S.C. § 103(a) as obvious over
Upadhya, Gordon, and Agrawal (US 2008/0270971 A1; Oct. 30, 2008).
Final Act. 13–14.
We reverse.
STATEMENT OF THE CASE
Appellants’ invention relates to a “storage management framework
where storage functionality is made available to consumers in the form of
services.” Spec. ¶ 2. Claim 1 is illustrative and reproduced below:
1. A method, comprising:
selecting from a plurality of storage service level (SSL)
instances a first SSL instance for a tenant and a second SSL
instance for an application of the tenant, wherein a SSL
instance is based on resources of a storage domain assigned
according to a service level capability (SLC) template which
comprises a protection profile and a set of one or more storage
profiles and which is independent of a particular storage
domain,
wherein a protection profile comprises storage
service topology information and a first plurality of
defined service level objective (SLO) dimensions,
Appeal 2018-007924
Application 14/338,157

3
wherein the storage service topology information
comprises nodes that represent storage services and
relationships between the nodes that correspond to the
first plurality of defined SLO dimensions,
wherein the nodes are associated with the set of
one or more storage profiles which comprises a second
plurality of defined SLO dimensions;
based on an application programming interface
instruction with a first parameter that indicates a name of the
second SSL instance and a second parameter that indicates a
size, provisioning a storage object in resources of a storage
domain assigned to the second SSL instance; and
managing usage of the provisioned storage object based
on defined SLO dimensions of a SLC template corresponding
to the second SSL instance.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
THE JUDICIAL EXCEPTION REJECTION OF CLAIMS 1, 3–6, AND 21–35
The Examiner determines claims 1, 3–6, and 21–35 are directed to a
judicial exception without significantly more. Final Act. 2–3. The Examiner
determines “[c]laims 1, [21, and 29] are directed to a method[,] system and
non-transitory medium for provisioning services in a network using a
template. Such claims are directed toward methods of organizing human
activities with respect to configuration of computing networks.” Final
Act. 3; see also Final Act. 2–3 (determining the claims do not recite
significantly more than the abstract idea), Ans. 14–15.
Appeal 2018-007924
Application 14/338,157

4
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
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step 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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
Appeal 2018-007924
Application 14/338,157

5
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.” 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. (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
step 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 (citation 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. (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.
Appeal 2018-007924
Application 14/338,157

6
The U.S. Patent and Trademark Office (“USPTO”) recently published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Under
that guidance, 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look 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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. at 56.
The Examiner generally states that independent claim 1 “provision[s]
services in a network using a template. Such claims are directed toward
methods of organizing human activities with respect to configuration of
computing networks.” Final Act. 3; see also Ans. 14 (“Configuring or in
other words provisioning computing systems is a well-established human
practice. Configuring computers is a basic responsibility of network
administrators and the performing of such configuration using templates is
common.”). Contrary to the Examiner’s determinations, we determine that
the claim limitations determined by the Examiner to recite an abstract idea
Appeal 2018-007924
Application 14/338,157

7
do not correspond to certain methods of organizing human activity, mental
processes, or mathematical concepts. In particular, claim 1 recites
“selecting... a first SSL instance for a tenant and a second SSL instance for
an application of the tenant”; “provisioning a storage object”; and
“managing usage of the provisioned storage object.” We disagree with the
Examiner’s determination that these activities are certain methods of
organizing human activity. In the context of the invention, selecting SSL
instances, and provisioning and managing storage objects is simply not
certain methods of organizing human activity.
Appellants’ Specification discloses
The disclosed technology provides an automation engine that
can operate at scale and determine where to provision new
storage, as well as what actions to take when SLO violations
occur[]. ... Thus, the ability to describe service requirements
and monitor both resource utilization and service conformance
is useful for managing resources at scale in a cost-effective
manner.
Spec. ¶ 24.
Appellants’ Specification further discloses
At block 650, the process 600 services storage asks to use
the storage object. At block 655, the process 600 can monitor
the usage of the storage object. At decision block 660, the
process 600 determines whether the usage of the storage object
violates requirements of the SSL instance. If that is so, at block
665, the process 600 executes corrective action such that the
usage of the storage object conforms to the requirements.
Spec. ¶ 103; see also Spec. ¶ 45 (“The fourth step 140 of the workflow of
FIG. 1 is Service Management Automation. Once an application
provisions storage (e.g., step 130 in FIG. 1) of a particular SSL instance
(e.g., Premium, Standard, Value, etc.), an underlying set of internal
Appeal 2018-007924
Application 14/338,157

8
management constructs get created to monitor the SLOs, analyze potential
violations proactively or reactively, plan corrective actions, and execute the
corrective action via a workflow.”).
Selecting SSL instances, and provisioning and managing storage
objects, in the context of the invention, is not certain methods of organizing
of human activity because managing storage objects is specifically disclosed
as an automated process that only exists and has meaning within the context
of a computer environment, and is not a fundamental economic principal or
practice, a commercial or legal interaction, or managing personal behavior
or relationships or interactions between two people.
The Examiner does not sufficiently articulate why the claimed
concepts fall within the subject matter groupings of abstract ideas of
mathematical concepts, certain methods of organizing human activity, or
mental processes. See 84 Fed. Reg. 56.
Accordingly, we are persuaded by Appellants’ arguments that
[t]he present claims improve computer functionality by
provisioning storage resources via a services model based on
templates that describe storage services via measurable
attributes that are independent of vendor technology. The
disclosed technology treats different SLO dimensions in an
integrated manner and selects storage and application level
templates accordingly. The specifically claimed technology
allows services to be defined by SLOs independent of the
underlying hardware technology, which facilitates provisioning
on a large scale.
App. Br. 9; see also Reply Br. 3 (citing Spec. ¶ 24).
In addition, we note Appellants’ Specification discloses
Storage administrators face challenges in dealing with the
complexities of shared storage environments, e.g., when they
provision and de-provision hundreds or thousands of
Appeal 2018-007924
Application 14/338,157

9
applications, users or workloads. To ease this burden, the
disclosed SLO technology provides the ability to successfully
automate common provisioning and management workflows,
and monitors[] compliance with service objectives.
Spec. ¶ 24.
Because claim 1 overcomes a problem specifically arising in the realm
of computer networks, “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks,” and accordingly, the claims are not
directed to an abstract idea. DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1258–59 (Fed. Cir. 2014).
Thus, we do not sustain the rejection of independent claim 1 under 35
U.S.C. § 101. Claims 3–6 depend from claim 1. We, therefore, also do not
sustain the rejection of those claims under 35 U.S.C. § 101.
Independent claims 21 and 29 recite similar language as claim 1. We,
therefore, also do not sustain the rejection of independent claims 21 and 29
under 35 U.S.C. § 101. Claims 22–28 and 30–35 variously depend from
claims 21 and 29. We, therefore, also do not sustain the rejection of those
claims under 35 U.S.C. § 101.
THE OBVIOUSNESS REJECTION OF CLAIMS 1, 3, 4, 21–23, 26, 28–30, 33, AND
35 OVER UPADHYA AND GORDON
The Examiner finds Upadhya and Gordon teach all of the limitations
of claim 1. Final Act. 4–8.
In particular, the Examiner finds Upadhya teaches “selecting from a
plurality of storage service level (SSL) instances a first SSL instance for a
tenant and a second SSL instance for an application of the tenant,” as recited
Appeal 2018-007924
Application 14/338,157

10
in claim 1. Final Act. 4 (citing Upadhya ¶ 2). For this limitation of claim 1,
the Examiner specifically cites to the following disclosure in Upadhya:
selecting, by the application aware appliance, server computing
resources for running the requested cloud served software
application from a server computing cloud that is a subset of the
computing cloud based on the server computing resource
identification information portion of the user request for the
cloud served software application.
Upadhya ¶ 2.
Upadhya further discloses the following:
selecting, by the application aware appliance, a software
application storage template from a plurality of software
application storage templates based on the software
identification information portion of the user request for the
cloud served software application, each software application
storage template of the plurality of software application storage
templates being associated with a copyable installation of the
requested cloud served software application associated with
each software application storage template.
Upadhya ¶ 2.
Appellants present the following principal contentions:
“[T]he Office never shows any disclosure or suggestion in the
combination of selecting an SSL instance for a tenant, selecting another SSL
instance for an application of the tenant, and then provisioning a storage
object in resources of a storage domain assigned to the second SSL
instance.” App. Br. 11. Instead,
[T]he Office is interpreting the selection of the “server
computing resources” as the recited selection of SSL instances.
However, nothing in Upadhya discloses or suggests that one of
the server computing resources is selected for a tenant and
another for an application of the tenant. The statement in
Upadhya is just that server computing resources are selected for
running an application. Thus, the Office seems to overlook or
Appeal 2018-007924
Application 14/338,157

11
ignore the part of the claim element that specifies selecting one
SSL instance for a tenant and a second SSL instance for an
application of the tenant.
App. Br. 12.
In response, the Examiner explains “by selecting an application
storage temple (SLC template), the system selects a first SSL instance for
the tenant (storage volumes meeting the template requirements) and a
second SSL instance for (particular application instance specified in the
template).” Ans. 16–17
In the Reply Brief, Appellants further contends
Upadhya’s selection of one template from multiple templates
cannot be transformed into selection of two templates based on
the template being a storage volume that has an installed
application. If the Office is interpreting Upadhya’s template as
an SSL instance to reject the claim, then Upadhya needs to
disclose selecting two templates - one for a tenant and one for
an application. It does not. Upadhya discloses selecting a
template, which is a pre-provisioned volume that has an
installed application. Furthermore, the claim recites that the first
SSL instance is selected for a tenant and the second is selected
for an application of the tenant. If required to be consistent in
interpretation, the Office would have to argue that Upadhya
discloses selecting a [] first template for a tenant and a second
template for an application of the tenant. It does not. Therefore,
the Office tries to contort the application installed on
Upadhya’s selected template into an SSL instance for an
application of the tenant. That defies reason on its face.
Upadhya’s application installed in a template cannot be a
template for an application of a tenant.
Reply Br. 4.
Appellants’ contentions persuade us that the Examiner erred in
finding Upadhya teaches “selecting from a plurality of storage service level
Appeal 2018-007924
Application 14/338,157

12
(SSL) instances a first SSL instance for a tenant and a second SSL instance
for an application of the tenant,” as recited in claim 1.
Appellants’ Specification discloses
There can be multiple SSL instances for different levels
in the scheme, e.g., tenant level, application level, or storage
object level (e.g., as shown in FIGs. 13 and 14) [sic]. The
process 600 can determine which SSL instance is controlling.
For example, a first SSL instance can be selected for a tenant of
the network storage controllers, and a second SSL instance can
be selected for an application to be performed for the tenant.
The first SSL instance can be overridden by the second SSL
instance when the storage object is provisioned for the
application.
Spec. ¶ 104. Thus, Appellants’ Specification describes multiple SSL
instances, operating in a hierarchy, where one SSL instance may override
another SSL instance.
At best, Upadhya’s software application storage template describes
the “first SSL instance” as recited in claim 1, to the extent that Upadhya’s
template describes a storage service level. Nonetheless, we do not agree that
Upadhya’s associated software application describes a “second SSL
instance” as recited in claim 1, for reasons explained on page 5 of the Reply
Brief. In short, the Examiner’s analysis improperly construes “SSL instance”
two different ways in order to create a mapping between claim 1’s first and
second SSL instances and Upadhya’s software application storage template
and associated software application. To the extent that Upadhya’s software
application storage template describes an “SSL instance,” then Upadhya’s
associated software application cannot describe an additional “SSL
instance.”
Appeal 2018-007924
Application 14/338,157

13
We, therefore, do not sustain the Examiner’s rejection of claim 1. We
also do not sustain the Examiner’s rejection of claims 3 and 4, which depend
from claim 1.
Independent claim 21 recites “select from a plurality of storage
service level (SSL) instances a first SSL instance for a tenant and a second
SSL instance for an application of the tenant.” We, therefore, do not sustain
the Examiner’s rejection of claim 21 for the reasons discussed above when
addressing claim 1. We also do not sustain the Examiner’s rejection of
claims 22, 23, 26, and 28, which depend from claim 21.
Independent claim 29 recites “select from a plurality of storage
service level (SSL) instances a first SSL instance for a tenant and a second
SSL instance for an application of the tenant.” We, therefore, do not sustain
the Examiner’s rejection of claim 29 for the reasons discussed above when
addressing claim 1. We also do not sustain the Examiner’s rejection of
claims 30, 33, and 35, which depend from claim 29.
THE REMAINING REJECTIONS
The Examiner does not find that any of the additional secondary
references cures the deficiencies of Upadhya discussed above. See Final Act.
10–14.
We, therefore, do not sustain the Examiner’s rejection of claims 5, 24,
and 31 as obvious over Upadhya, Gordon, and Oslake; the Examiner’s
rejection of claims 6, 25, and 32 as obvious over Upadhya, Gordon, and
Lango; or the Examiner’s rejection of claims 27 and 34 as obvious over
Upadhya, Gordon, and Agrawal.
Appeal 2018-007924
Application 14/338,157

14
ORDER
The Examiner’s rejections of claims 1, 3–6, and 21–35 under 35
U.S.C. §§ 101 and 103 are reversed.

REVERSED