VMware, Inc.

Patent Trials and Appeals Board

Feb 25, 2021

2019006223 (P.T.A.B. Feb. 25, 2021)

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