VMware, Inc.Download PDFPatent Trials and Appeals BoardFeb 25, 20212019006223 (P.T.A.B. Feb. 25, 2021) Copy Citation 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. 14/416,970 01/23/2015 Matthew Conover C206 7058 152691 7590 02/25/2021 Setter Roche LLP 1860 Blake Street Suite 100 Denver, CO 80202 EXAMINER WANG, HANNAH S ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 02/25/2021 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): ipadmin@vmware.com uspto@setterroche.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MATTHEW CONOVER and SHAUN COLEMAN ____________________ Appeal 2019-006223 Application 14/416,970 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 5, 6, 8–11, 14, 15, 17, 18, 23, and 24.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.3 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The real party in interest is VMware, Inc. (Appeal Br. 2.) 2 Claims 3, 4, 7, 12, 13, 16, and 19–22 were canceled. (Final Act. 1–2.) 3 Our Decision refers to the Specification (“Spec.”) filed January 23, 2015, Final Office Action (“Final Act.”) mailed December 12, 2018, the Appeal Brief (“Appeal Br.”) filed April 11, 2019, the Examiner’s Answer (“Ans.”) mailed June 20, 2019, and the Reply Brief (“Reply Br.”) filed August 20, 2019. Appeal 2019-006223 Application 14/416,970 2 CLAIMED INVENTION The claims are directed to a method and computer instructions for operating an application distribution system by “receiving a selection indicating at least one application of [] one or more attachable applications to be attached to a virtual machine,” and attaching the selected application to the virtual machine by “identifying at least one storage volume based on the at least one application and attaching the at least one storage volume to the virtual machine.” (Spec. ¶¶ 6–8; Abstract.). Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of operating an application distribution system, comprising: providing a list of one or more attachable applications; receiving a user selection indicating at least one application of the one or more attachable applications to be attached to a virtual machine; identifying at least one storage volume based on the user selection, wherein the at least one storage volume stores the at least one application; attaching the at least one storage volume to the virtual machine; overlaying files and registry keys of the at least one storage volume into the virtual machine; in the virtual machine, executing the at least one application from the attached at least one storage volume; and in response to a user logoff of the virtual machine, detaching the at least one storage volume from the virtual machine. (Appeal Br. 13–15 (Claims App.).) Appeal 2019-006223 Application 14/416,970 3 REJECTIONS & REFERENCES Claims 1 and 10 stand rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. (Final Act. 6.) Claims 1, 2, 5, 6, 8–11, 14, 15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) based on Weerts et al. (US 2012/0096077 A1, published Apr. 19, 2012) (“Weerts”), Brooker et al. (US 9,110,600 B1, issued Aug. 18, 2015) (“Brooker”), Ahiska et al. (US 2012/0278439 A1, published Nov. 1, 2012) (“Ahiska”), and Das et al. (US 2013/0073703 A1, published Mar. 21, 2013) (“Das”). (Final Act. 7–20.) Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) based on Weerts, Brooker, Ahiska, Das, and Ish et al. (US 2013/0232290 A1, published Sept. 5, 2013) (“Ish”). (Final Act. 20–21.) ANALYSIS Standard of Review We undertake a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential). Section 112(a) Rejection Section 112(a) requires that [t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.4 4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (September 16, 2011) (“AIA”), included revisions to 35 U.S.C. § 112 that Appeal 2019-006223 Application 14/416,970 4 The written description must reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); D Three Enterprises, LLC v. SunModo Corp., 890 F.3d 1042, 1047 (Fed. Cir. 2018). The Examiner finds the Specification lacks written description support for “overlaying files and registry keys of the at least one storage volume [that stores the at least one application] into the virtual machine,” as recited in claim 1, and similarly in claim 10. (Final Act. 6; Ans. 4.) In particular, the Examiner asserts “there is no written description to support that the attached storage volume contains files and registry keys” and that the “selected application and the registry keys are from the same storage volume,” because Appellant’s Specification only discloses that the attached volume contains the selected application (¶ [0031–0032] of the specification[)]. . . . [and] only has written description for overlaying files and keys into virtual machines without disclosing where the files and keys are located and whether the files and keys are from the same attached storage volume as the attached application. (Final Act. 6; see also Ans. 4.) Appellant argues the Specification provides written description support under § 112 for the claimed “files and registry keys of the at least one storage volume [that stores the at least one application]” and “overlaying files and registry keys of the at least one storage volume [that stores the at became effective on September 16, 2012. Because the present patent application was filed on July 24, 2013 (as PCT/US13/51842), AIA § 112 applies to this application. Appeal 2019-006223 Application 14/416,970 5 least one application] into the virtual machine.” (Appeal Br. 6–7 (citing Spec. ¶¶ 31–32); Reply Br. 2 (citing Spec. ¶ 30).) We agree with Appellant’s arguments. The originally-filed Specification discloses requesting attachment of a storage volume to a target virtual machine (VM) and detecting when a storage volume has been attached to virtual machine 320, and [o]nce a new storage volume has been detected, a volume overlay software agent will be invoked (“volume overlay agent 326”). . . . The volume overlay agent is responsible for exposing the applications contained in the storage volume and making it available to virtual machine 320. Volume overlay agent 326 may accomplish this by overlaying the content (such as files and registry keys) into the VM so that the content can be seamlessly integrated into the VM. In addition, if one or more applications contained in a storage volume are meant to start automatically, then the VM agent can enumerate the contents of the volume and automatically start the relevant services or drivers. (Spec. ¶¶ 30–32 (emphases added).) In other words, the Specification describes processing a storage volume (that contains an application and has been attached to the VM) by (i) a volume overlay agent that exposes the application contained in the storage volume to make that application available to the VM by “overlaying the content (such as files and registry keys) into the VM so that the content can be seamlessly integrated into the VM” and (ii) a “VM agent [that] can enumerate the contents of the volume and automatically start the relevant services or drivers.” (See id. (emphases added).) These Specification portions, therefore, disclose that the storage volume’s application is made available to the VM by overlaying the storage volume’s “content (such as files and registry keys)” into the VM. (See id.) Appeal 2019-006223 Application 14/416,970 6 Thus, Appellant’s Specification demonstrates Appellant possessed the claimed “at least one storage volume” that (i) “stores the at least one application” and (ii) also contains “files and registry keys” that are overlaid into a virtual machine as the storage volume is attached to the virtual machine, as recited in claims 1 and 10. Accordingly, the Examiner has not shown that the Specification fails to convey to one of ordinary skill in the art that the inventors were in possession of the claimed invention as of the filing date. We thus do not sustain the Examiner’s rejection of claims 1 and 10 under the written description requirement of § 112(a). Section § 103 Rejection Title 35, section 103, provides A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) where present, objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006). We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced Appeal 2019-006223 Application 14/416,970 7 thereon. Ex parte Frye, 94 USPQ2d at 1075 (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”)). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. With respect to independent claim 1, Appellant contends “the combination [of Weerts and Brooker] fails to teach the identification of a storage volume based on the user selection of a particular application,” as recited in claim 1. (Appeal Br. 7.) In particular, Appellant argues “Weerts only describes the execution of an application on a virtual machine without consideration of the storage location of the application” and B[r]ooker fails to indicate that a volume may be selected by a computing element based on a user selection of content in the volume. . . . . . . B[r]ooker teaches that the volume is identified merely by the user selecting the specific volume for attachment and fails to teach that an application system may determine an appropriate storage volume for attachment based on a user request for specific content (such as an application) that could be stored across one or more storage volumes. (Appeal Br. 8 (citing Brooker 2:36–48).) Appellant further argues “Ashika [sic] fails to teach or suggest overlaying the files and registry keys of the at least one storage volume into the virtual machine” as claimed, and only teaches “a configuration where application components, such as files and registry keys, are streamed to a Appeal 2019-006223 Application 14/416,970 8 machine and overlaid in the machine.” (Appeal Br. 9–10 (citing Ahiska ¶¶ 41, 65, 83, 163).) Appellant argues that Ahiska’s “[s]treaming objects to a computing system is neither equivalent nor suggestive to overlaying objects from a storage volume attached to the computing system” because (i) “application streaming is a software distribution methodology designed to accelerate software distribution by delivering only currently-required program data to a target device” and (ii) “Ashika [sic] fails to teach that any storage subsystem or volume is attached to a computing system to provide the streamed files.” (Id.) Appellant additionally argues “the prior art fails to teach, in the virtual machine, executing the at least one application from the attached at least one storage volume” as claimed. (Appeal Br. 10.) More particularly, Appellant argues “Weerts merely teaches that the applications are stored on a storage device and fails to teach that the applications are executed from volumes that are attached to the virtual machine, as required by claim 1.” (Id. (citing Weerts ¶ 21).) We are not persuaded by Appellant’s arguments. We agree with the Examiner that the asserted combination of Weerts, Brooker, and Ahiska teaches the “identifying,” “attaching,” “overlaying,” and “executing” limitations recited in claim 1. More particularly, with respect to the claimed “identifying” and “attaching”—i.e., “identifying at least one storage volume based on the user selection [indicating an application to be attached to a virtual machine], wherein the at least one storage volume stores the at least one application” and “attaching the at least one storage volume to the virtual machine”—we agree with the Examiner the combination of Weerts and Brooker teaches the limitations. (Ans. 5–7; Final Act. 7–10.) As the Appeal 2019-006223 Application 14/416,970 9 Examiner explains, Weerts “discloses a need of attaching an application to a virtual machine to access the application,” and teaches receiving a user’s selection of an application to be attached to a virtual machine, and attaching that application to the virtual machine. (Ans. 5 (emphasis omitted) (citing Weerts ¶¶ 21, 59–62, Abstract); Final Act. 7.) The Examiner recognizes “WEERTS teaches attaching applications . . . [but] does not explicitly teach a means of attaching (namely how to attach the attachable applications),” and then finds “BROOKER discloses a means of attaching data to a virtual machine to access the data (application is one type of data) via attaching the corresponding storage volume containing the data.” (Ans. 5–6 (emphasis omitted).) More particularly, the Examiner finds Brooker enables volume selection and attachment to a virtual machine “based on selected data that a user intends to access (read, write, modify, delete, etc.),” whereby “[t]he corresponding storage volume can be identified and attached via a mapping between data and volume (namely which volume contains which data) and in this way the particular data can be attached and accessed by attaching the corresponding volume that contains the particular data.” (Ans. 6–7 (emphasis omitted).) The Examiner supports these findings with citations to Brooker’s column 2, lines 36–48, column 3, lines 40–52, column 8, lines 5– 12, column 13, lines 15–17, column 21, lines 55–57, and column 23, lines 24–31, of which column 21, lines 55–57 (and surrounding text) describe process 900 [that] may begin by detaching a data set of a first storage from a client entity. . . . the first storage may be a virtual memory drive. . . . process 900 may cause a snapshot of the data set to be stored in a second storage. . . . Additionally, the process 900 may de-allocate space of the first storage such that the data set may not be accessed and/or maintained. . . . The process . . . may then receive a request to attach the data volume. Based at Appeal 2019-006223 Application 14/416,970 10 least in part on this request, the process 900 may then end at 910 by using at least a portion of the snapshot to attach the data set of the first storage to the client entity or other computing device. (See Brooker 21:40–57 (emphases added); Ans. 6–7 (citing Brooker 2:36– 48, 3:40–52, 8:5–12, 13:15–17, 21:55–57, 23:24–31).) Thus, Brooker identifies a data volume that is to be attached based on the volume’s content that the user wishes to and requests to access, such content including a snapshot—which is a backup copy of the volume’s data that was backed up during a previous volume attachment: [A] user 102 may request that snapshots (e.g., backup copies . . .) of attached data sets be stored in additional memory spaces. For example, a snapshot request may involve backing up one or more portions of data volumes or entire data volumes on behalf of the user 102. . . . . . . . . . . [A] user 102 may make requests for attaching and/or detaching data volumes 146 from one or more virtual machine instances 140 (i.e., client entities) and/or for backing up (e.g., taking a snapshot of) data of the attached data volumes 146. For example, a user may be an application programmer testing code using a virtual machine instance 140 and an attached data volume 146 of the service provider computers 110. In this non- limiting example, while the code is being tested, the user 102 may have the data volume 146 attached to the virtual machine instance 140 and may request that one or more I/O operations be performed on the attached data volume 146. During and/or after testing of the code, the user 102 may make one or more backup (e.g., snapshot) requests of the attached data volume 146. (See Brooker 6:21–26, 8:1–15 (emphases added), 21:40–57; Ans. 6–7.) In view of Brooker’s disclosure, we are not persuaded by Appellant’s arguments that “[Brooker] fails to teach that an application system may determine an appropriate storage volume for attachment based on a user Appeal 2019-006223 Application 14/416,970 11 request for specific content (such as an application)” or “based on a user selection of content in the volume” (see Appeal Br. 8). Instead, we agree with the Examiner that Brooker uses portions of a volume’s data to identify the volume, and therefore Brooker’s “volume is selected/attached based on selected data that a user intends to access.” (Ans. 6.) The Examiner has also articulated sufficient reasoning for combining Weerts’ selection and attachment of a desired application to a virtual machine, with Brooker’s selection and attachment of volumes based on volume data desired by a user, to improve data access from storage volumes and match storage volumes to memories based on memory latency characteristics. (Ans. 5–6 (citing Brooker 1:11–18); Final Act. 8–10.) The Examiner has thus provided reasonable findings supported by citations to Weerts and Brooker, and sufficient articulation for combining the teachings of Weerts and Brooker to support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d at 988). We therefore agree with the Examiner that the combination of Weerts and Brooker teaches the “identifying” and “attaching” limitations recited in claim 1. As to Appellant’s argument that “Ashika [sic] fails to teach or suggest overlaying the files and registry keys of the at least one storage volume into the virtual machine” (see Appeal Br. 10), we note that Appellant is addressing Ahiska separately rather than the combination of teachings proposed by the Examiner. See Ans. 8. In particular, the Examiner adds Ahiska’s packaging of applications “prior to being served, to contain all of the components necessary for execution (e.g., executables, .dll’s and registry keys)” (described at Ahiska ¶ 41), and Ahiska’s overlaying, into a Appeal 2019-006223 Application 14/416,970 12 virtual machine, files and registry keys packaged with the application to run the application (described at Ahiska ¶¶ 41, 163), to the storage volume attachment taught by the combination of Weerts and Brooker. (See Ans. 8 (citing Ahiska ¶¶ 41, 163).) The Examiner has also articulated sufficient reasoning for combining Ahiska’s overlaying of an application’s files and registry keys into a virtual machine, with Weerts and Brooker’s attachment of a storage volume containing an application “to make the application runnable at the virtual machine . . . especially when AHISKA already recognizes that registry keys and files are required to run an application and overlaying these required data can make a virtual application seem physically installed in an executing machine.” (Final Act. 10–11 (citing Ahiska ¶ 163); see also Ans. 8.) Appellant’s arguments have not substantively addressed the Examiner’s combination of Ahiska’s overlaying operation with the teachings of Weerts and Brooker. We are also unpersuaded by Appellant’s argument that Ahiska’s overlaying is inapplicable to the claimed overlaying because Ahiska’s overlaying pertains to application streaming that “deliver[s] only currently- required program data to a target device” and pertains to streaming of application components “as they are required.” (See Appeal Br. 9–10 (citing Ahiska ¶¶ 65, 83).) Ahiska does not preclude virtualization of an entire application package. (See Ahiska ¶¶ 41, 83, 163, 419.) For example, Ahiska’s paragraph 83 provides that “[t]he Body or entirety of an application can be delivered by, for example, downloading,” and Ahiska’s paragraph 419 provides “[i]n some embodiments, applications are downloaded from an ADN [(Application Distribution Network)] cloud to local boxes without streaming.” (See Ahiska ¶¶ 83, 419.) Appeal 2019-006223 Application 14/416,970 13 We therefore agree with the Examiner that the combination of Ahiska with Weerts and Brooker teaches “overlaying files and registry keys of the at least one storage volume [that stores the at least one application] into the virtual machine,” as recited in claim 1. With respect to the claimed “executing,” Appellant’s arguments (Appeal Br. 10) address the references separately, rather than the combination of teachings proposed by the Examiner. (See Ans. 8–9.) In particular, Appellant argues deficiencies of Weerts (see Appeal Br. 10), but the Examiner rejects this claim limitation based on a combination of Weerts and Brooker: WEERTS modified by BROOKER . . . teaches attaching an application to a virtual machine to execute the application by attaching a storage volume containing the application to the virtual machine. . . . . . . WEERTS teaches attaching an application stored on a storage volume to a virtual machine. However, WEERTS does not disclose that the storage volume is attachable. The Examiner relies on BROOKER to teach the attachable storage volume. (See Ans. 8–9.) We agree with the Examiner’s findings, as Brooker teaches an attached storage volume (e.g., “attached data volume 146,” see Brooker 8:2–14) from which an application (e.g., code to be tested by an application programmer, see Brooker 8:5–14) is executed. In light of the arguments presented, Appellant has failed to persuasively distinguish their claimed invention over the prior art relied on by the Examiner. Therefore, we sustain the Examiner’s rejection of independent claim 1, independent claim 10 reciting similar limitations and argued for the same reasons, and dependent claims 2, 5, 6, 8, 9, 11, 14, 15, 17, 18, 23, and 24 not separately argued. (Appeal Br. 10–11.) Appeal 2019-006223 Application 14/416,970 14 DECISION SUMMARY The Examiner’s rejection of claims 1 and 10 under 35 U.S.C. § 112(a) is REVERSED. The Examiner’s rejection of claims 1, 2, 5, 6, 8–11, 14, 15, 17, 18, 23, and 24 under 35 U.S.C. § 103(a) is AFFIRMED. In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 10 112(a) Written Description 1, 10 1, 2, 5, 6, 8–11, 14, 15, 17, 18 103(a) Weerts, Brooker, Ahiska, Das 1, 2, 5, 6, 8–11, 14, 15, 17, 18 23, 24 103(a) Weerts, Brooker, Ahiska, Das, Ish 23, 24 Overall Outcome 1, 2, 5, 6, 8–11, 14, 15, 17, 18, 23, 24 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 Appeal 2019-006223 Application 14/416,970 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MATTHEW CONOVER and SHAUN COLEMAN ____________________ Appeal 2019-006223 Application 14/416,970 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 5, 6, 8–11, 14, 15, 17, 18, 23, and 24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED INVENTION The claims are directed to a method and computer instructions for operating an application distribution system by “receiving a selection indicating at least one application of [] one or more attachable applications to be attached to a virtual machine,” and attaching the selected application to the virtual machine by “identifying at least one storage volume based on the at least one application and attaching the at least one storage volume to the virtual machine.” (Spec. ¶¶ 6–8; Abstract.). Independent claim 1, reproduced below, is illustrative of the Appeal 2019-006223 Application 14/416,970 2 claimed subject matter: 1. A method of operating an application distribution system, comprising: providing a l ist of one or more attachable applications; receiving a user selection indicating at least one application of the one or more attachable applications to be attached to a virtual machine; identifying at least one storage volume based on the user selection, wherein the at least one storage volume stores the at least one application; attaching the at least one storage volume to the virtual machine; overlaying files and registry keys of the at least one storage volume into the virtual machine; in the virtual machine, executing the at least one application from the attached at least one storage volume; and in response to a user logoff of the virtual machine, detaching the at least one storage volume from the virtual machine. (Appeal Br. 13–15 (Claims App.).) REJECTIONS & REFERENCES Claims 1 and 10 stand rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. (Final Act. 6.) Claims 1, 2, 5, 6, 8–11, 14, 15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) based on Weerts et al. (US 2012/0096077 A1, published Apr. 19, 2012) (“Weerts”), Brooker et al. (US 9,110,600 B1, issued Aug. 18, 2015) (“Brooker”), Ahiska et al. (US 2012/0278439 A1, published Nov. 1, 2012) (“Ahiska”), and Das et al. (US 2013/0073703 A1, published Mar. 21, 2013) (“Das”). (Final Act. 7–20.) Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) based on Weerts, Brooker, Ahiska, Das, and Ish et al. (US Appeal 2019-006223 Application 14/416,970 3 2013/0232290 A1, published Sept. 5, 2013) (“Ish”). (Final Act. 20–21.) ANALYSIS Standard of Review We undertake a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential). Section 112(a) Rejection Section 112(a) requires that [t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same. The written description must reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); D Three Enterprises, LLC v. SunModo Corp., 890 F.3d 1042, 1047 (Fed. Cir. 2018). The Examiner finds the Specification lacks written description support for “overlaying files and registry keys of the at least one storage volume [that stores the at least one application] into the virtual machine,” as recited in claim 1, and similarly in claim 10. (Final Act. 6; Ans. 4.) In particular, the Examiner asserts “there is no written description to support that the attached storage volume contains files and registry keys” and that the “selected application and the registry keys are from the same storage volume,” because Appellant’s Specification only discloses that the attached volume contains the selected application (¶ [0031–0032] of the specification[)]. . . . [and] only has written description for overlaying files Appeal 2019-006223 Application 14/416,970 4 and keys into virtual machines without disclosing where the files and keys are located and whether the files and keys are from the same attached storage volume as the attached application. (Final Act. 6; see also Ans. 4.) Appellant argues the Specification provides written description support under § 112 for the claimed “files and registry keys of the at least one storage volume [that stores the at least one application]” and “overlaying files and registry keys of the at least one storage volume [that stores the at least one application] into the virtual machine.” (Appeal Br. 6–7 (citing Spec. ¶¶ 31–32); Reply Br. 2 (citing Spec. ¶ 30).) We agree with Appellant’s arguments. The originally-filed Specification discloses requesting attachment of a storage volume to a target virtual machine (VM) and detecting when a storage volume has been attached to virtual machine 320, and [o]nce a new storage volume has been detected, a volume overlay software agent will be invoked (“volume overlay agent 326”). . . . The volume overlay agent is responsible for exposing the applications contained in the storage volume and making it available to virtual machine 320. Volume overlay agent 326 may accomplish this by overlaying the content (such as files and registry keys) into the VM so that the content can be seamlessly integrated into the VM. In addition, if one or more applications contained in a storage volume are meant to start automatically, then the VM agent can enumerate the contents of the volume and automatically start the relevant services or drivers. (Spec. ¶¶ 30–32 (emphases added).) In other words, the Specification describes processing a storage volume (that contains an application and has been attached to the VM) by (i) a volume overlay agent that exposes the application contained in the storage volume to make that application available to the VM by “overlaying the content (such as files and registry keys) into the VM so that the Appeal 2019-006223 Application 14/416,970 5 content can be seamlessly integrated into the VM” and (ii) a “VM agent [that] can enumerate the contents of the volume and automatically start the relevant services or drivers.” (See id. (emphases added).) These Specification portions, therefore, disclose that the storage volume’s application is made available to the VM by overlaying the storage volume’s “content (such as files and registry keys)” into the VM. (See id.) Thus, Appellant’s Specification demonstrates Appellant possessed the claimed “at least one storage volume” that (i) “stores the at least one application” and (ii) also contains “files and registry keys” that are overlaid into a virtual machine as the storage volume is attached to the virtual machine, as recited in claims 1 and 10. Accordingly, the Examiner has not shown that the Specification fails to convey to one of ordinary skill in the art that the inventors were in possession of the claimed invention as of the filing date. We thus do not sustain the Examiner’s rejection of claims 1 and 10 under the written description requirement of § 112(a). Section § 103 Rejection Title 35, section 103, provides A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) where present, objective evidence of nonobviousness. Graham v. John Appeal 2019-006223 Application 14/416,970 6 Deere Co., 383 U.S. 1, 17–18 (1966). Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006). We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d at 1075 (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”)). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. With respect to independent claim 1, Appellant contends “the combination [of Weerts and Brooker] fails to teach the identification of a storage volume based on the user selection of a particular application,” as recited in claim 1. (Appeal Br. 7.) In particular, Appellant argues “Weerts only describes the execution of an application on a virtual machine without consideration of the storage location of the application” and B[r]ooker fails to indicate that a volume may be selected by a computing element based on a user selection of content in the volume. . . . . . . B[r]ooker teaches that the volume is identified merely by the user selecting the specific volume for attachment and fails to teach that an application system may determine an appropriate storage volume for attachment based on a user request for specific content (such as an application) that could be stored across one or more storage volumes. (Appeal Br. 8 (citing Brooker 2:36–48).) Appeal 2019-006223 Application 14/416,970 7 Appellant further argues “Ashika [sic] fails to teach or suggest overlaying the files and registry keys of the at least one storage volume into the virtual machine” as claimed, and only teaches “a configuration where application components, such as files and registry keys, are streamed to a machine and overlaid in the machine.” (Appeal Br. 9–10 (citing Ahiska ¶¶ 41, 65, 83, 163).) Appellant argues that Ahiska’s “[s]treaming objects to a computing system is neither equivalent nor suggestive to overlaying objects from a storage volume attached to the computing system” because (i) “application streaming is a software distribution methodology designed to accelerate software distribution by delivering only currently-required program data to a target device” and (ii) “Ashika [sic] fails to teach that any storage subsystem or volume is attached to a computing system to provide the streamed files.” (Id.) Appellant additionally argues “the prior art fails to teach, in the virtual machine, executing the at least one application from the attached at least one storage volume” as claimed. (Appeal Br. 10.) More particularly, Appellant argues “Weerts merely teaches that the applications are stored on a storage device and fails to teach that the applications are executed from volumes that are attached to the virtual machine, as required by claim 1.” (Id. (citing Weerts ¶ 21).) We are not persuaded by Appellant’s arguments. We agree with the Examiner that the asserted combination of Weerts, Brooker, and Ahiska teaches the “identifying,” “attaching,” “overlaying,” and “executing” limitations recited in claim 1. More particularly, with respect to the claimed “identifying” and “attaching”—i.e., “identifying at least one storage volume based on the user selection [indicating an application to be attached to a virtual machine], wherein the at least one storage volume stores the at least one application” and “attaching the at least one storage volume to the virtual Appeal 2019-006223 Application 14/416,970 8 machine”—we agree with the Examiner the combination of Weerts and Brooker teaches the limitations. (Ans. 5–7; Final Act. 7–10.) As the Examiner explains, Weerts “discloses a need of attaching an application to a virtual machine to access the application,” and teaches receiving a user’s selection of an application to be attached to a virtual machine, and attaching that application to the virtual machine. (Ans. 5 (emphasis omitted) (citing Weerts ¶¶ 21, 59–62, Abstract); Final Act. 7.) The Examiner recognizes “WEERTS teaches attaching applications . . . [but] does not explicitly teach a means of attaching (namely how to attach the attachable applications),” and then finds “BROOKER discloses a means of attaching data to a virtual machine to access the data (application is one type of data) via attaching the corresponding storage volume containing the data.” (Ans. 5–6 (emphasis omitted).) More particularly, the Examiner finds Brooker enables volume selection and attachment to a virtual machine “based on selected data that a user intends to access (read, write, modify, delete, etc.),” whereby “[t]he corresponding storage volume can be identified and attached via a mapping between data and volume (namely which volume contains which data) and in this way the particular data can be attached and accessed by attaching the corresponding volume that contains the particular data.” (Ans. 6–7 (emphasis omitted).) The Examiner supports these findings with citations to Brooker’s column 2, lines 36–48, column 3, lines 40–52, column 8, lines 5–12, column 13, lines 15–17, column 21, lines 55–57, and column 23, lines 24–31, of which column 21, lines 55–57 (and surrounding text) describe process 900 [that] may begin by detaching a data set of a first storage from a client entity. . . . the first storage may be a virtual memory drive. . . . process 900 may cause a snapshot of the data set to be stored in a second storage. . . . Additionally, the process 900 may de-allocate space of the first storage such that the data set may not be Appeal 2019-006223 Application 14/416,970 9 accessed and/or maintained. . . . The process . . . may then receive a request to attach the data volume. Based at least in part on this request, the process 900 may then end at 910 by using at least a portion of the snapshot to attach the data set of the first storage to the client entity or other computing device. (See Brooker 21:40–57 (emphases added); Ans. 6–7 (citing Brooker 2:36–48, 3:40–52, 8:5–12, 13:15–17, 21:55–57, 23:24–31).) Thus, Brooker identifies a data volume that is to be attached based on the volume’s content that the user wishes to and requests to access, such content including a snapshot—which is a backup copy of the volume’s data that was backed up during a previous volume attachment: [A] user 102 may request that snapshots (e.g., backup copies . . .) of attached data sets be stored in additional memory spaces. For example, a snapshot request may involve backing up one or more portions of data volumes or entire data volumes on behalf of the user 102. . . . . . . . . . . [A] user 102 may make requests for attaching and/or detaching data volumes 146 from one or more virtual machine instances 140 (i.e., client entities) and/or for backing up (e.g., taking a snapshot of) data of the attached data volumes 146. For example, a user may be an application programmer testing code using a virtual machine instance 140 and an attached data volume 146 of the service provider computers 110. In this non-limiting example, while the code is being tested, the user 102 may have the data volume 146 attached to the virtual machine instance 140 and may request that one or more I/O operations be performed on the attached data volume 146. During and/or after testing of the code, the user 102 may make one or more backup (e.g., snapshot) requests of the attached data volume 146. (See Brooker 6:21–26, 8:1–15 (emphases added), 21:40–57; Ans. Appeal 2019-006223 Application 14/416,970 10 6–7.) In view of Brooker’s disclosure, we are not persuaded by Appellant’s arguments that “[Brooker] fails to teach that an application system may determine an appropriate storage volume for attachment based on a user request for specific content (such as an application)” or “based on a user selection of content in the volume” (see Appeal Br. 8). Instead, we agree with the Examiner that Brooker uses portions of a volume’s data to identify the volume, and therefore Brooker’s “volume is selected/attached based on selected data that a user intends to access.” (Ans. 6.) The Examiner has also articulated sufficient reasoning for combining Weerts’ selection and attachment of a desired application to a virtual machine, with Brooker’s selection and attachment of volumes based on volume data desired by a user, to improve data access from storage volumes and match storage volumes to memories based on memory latency characteristics. (Ans. 5–6 (citing Brooker 1:11–18); Final Act. 8–10.) The Examiner has thus provided reasonable findings supported by citations to Weerts and Brooker, and sufficient articulation for combining the teachings of Weerts and Brooker to support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d at 988). We therefore agree with the Examiner that the combination of Weerts and Brooker teaches the “identifying” and “attaching” limitations recited in claim 1. As to Appellant’s argument that “Ashika [sic] fails to teach or suggest overlaying the files and registry keys of the at least one storage volume into the virtual machine” (see Appeal Br. 10), we note that Appellant is addressing Ahiska separately rather than the combination of teachings proposed by the Examiner. See Ans. 8. In particular, the Examiner adds Ahiska’s packaging of applications Appeal 2019-006223 Application 14/416,970 11 “prior to being served, to contain all of the components necessary for execution (e.g., executables, .dll’s and registry keys)” (described at Ahiska ¶ 41), and Ahiska’s overlaying, into a virtual machine, files and registry keys packaged with the application to run the application (described at Ahiska ¶¶ 41, 163), to the storage volume attachment taught by the combination of Weerts and Brooker. (See Ans. 8 (citing Ahiska ¶¶ 41, 163).) The Examiner has also articulated sufficient reasoning for combining Ahiska’s overlaying of an application’s files and registry keys into a virtual machine, with Weerts and Brooker’s attachment of a storage volume containing an application “to make the application runnable at the virtual machine . . . especially when AHISKA already recognizes that registry keys and files are required to run an application and overlaying these required data can make a virtual application seem physically installed in an executing machine.” (Final Act. 10–11 (citing Ahiska ¶ 163); see also Ans. 8.) Appellant’s arguments have not substantively addressed the Examiner’s combination of Ahiska’s overlaying operation with the teachings of Weerts and Brooker. We are also unpersuaded by Appellant’s argument that Ahiska’s overlaying is inapplicable to the claimed overlaying because Ahiska’s overlaying pertains to application streaming that “deliver[s] only currently-required program data to a target device” and pertains to streaming of application components “as they are required.” (See Appeal Br. 9–10 (citing Ahiska ¶¶ 65, 83).) Ahiska does not preclude virtualization of an entire application package. (See Ahiska ¶¶ 41, 83, 163, 419.) For example, Ahiska’s paragraph 83 provides that “[t]he Body or entirety of an application can be delivered by, for example, downloading,” and Ahiska’s paragraph 419 provides “[i]n some embodiments, applications are downloaded from an ADN [(Application Distribution Network)] cloud to local boxes Appeal 2019-006223 Application 14/416,970 12 without streaming.” (See Ahiska ¶¶ 83, 419.) We therefore agree with the Examiner that the combination of Ahiska with Weerts and Brooker teaches “overlaying files and registry keys of the at least one storage volume [that stores the at least one application] into the virtual machine,” as recited in claim 1. With respect to the claimed “executing,” Appellant’s arguments (Appeal Br. 10) address the references separately, rather than the combination of teachings proposed by the Examiner. (See Ans. 8–9.) In particular, Appellant argues deficiencies of Weerts (see Appeal Br. 10), but the Examiner rejects this claim limitation based on a combination of Weerts and Brooker: WEERTS modified by BROOKER . . . teaches attaching an application to a virtual machine to execute the application by attaching a storage volume containing the application to the virtual machine. . . . . . . WEERTS teaches attaching an application stored on a storage volume to a virtual machine. However, WEERTS does not disclose that the storage volume is attachable. The Examiner relies on BROOKER to teach the attachable storage volume. (See Ans. 8–9.) We agree with the Examiner’s findings, as Brooker teaches an attached storage volume (e.g., “attached data volume 146,” see Brooker 8:2–14) from which an application (e.g., code to be tested by an application programmer, see Brooker 8:5–14) is executed. In light of the arguments presented, Appellant has failed to persuasively distinguish their claimed invention over the prior art relied on by the Examiner. Therefore, we sustain the Examiner’s rejection of independent claim 1, independent claim 10 reciting similar limitations and argued for the same reasons, and dependent claims 2, 5, 6, 8, 9, 11, 14, 15, 17, 18, 23, and 24 not separately argued. (Appeal Br. 10–11.) Appeal 2019-006223 Application 14/416,970 13 DECISION SUMMARY The Examiner’s rejection of claims 1 and 10 under 35 U.S.C. § 112(a) is REVERSED. The Examiner’s rejection of claims 1, 2, 5, 6, 8–11, 14, 15, 17, 18, 23, and 24 under 35 U.S.C. § 103(a) is AFFIRMED. In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 10 112(a) Written Description 1, 10 1, 2, 5, 6, 8–11, 14, 15, 17, 18 103(a) Weerts, Brooker, Ahiska, Das 1, 2, 5, 6, 8–11, 14, 15, 17, 18 23, 24 103(a) Weerts, Brooker, Ahiska, Das, Ish 23, 24 Overall Outcome 1, 2, 5, 6, 8–11, 14, 15, 17, 18, 23, 24 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 Copy with citationCopy as parenthetical citation