VMware, Inc.

Patent Trials and Appeals Board

Dec 2, 2020

2019004550 (P.T.A.B. Dec. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/528,276 10/30/2014 Nishant YADAV C072 2759
136237 7590 12/02/2020
Barta, Jones & Foley, P.C.
(Patent Group - VMware)
3308 Preston Road
#350-161
Plano, TX 75093
EXAMINER
HO, AARON D
ART UNIT PAPER NUMBER
2139
NOTIFICATION DATE DELIVERY MODE
12/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@bjfip.com
ipadmin@vmware.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NISHANT YADAV, JESSE POOL, LI ZHENG,
GABRIEL TARASUK-LEVIN, and NICK MICHAEL RYAN

Appeal 2019-004550
Application 14/528,276
Technology Center 2100

Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–20 are pending, stand rejected, are appealed by Appellant,
and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act.
1; Appeal Br. 3.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as VMware, Inc. See
Appeal Br. 1.
2 We refer to Appellant’s Specification (“Spec.”), filed Oct. 30, 2014
(claiming benefit of US 62/017,479, filed June 26, 2014); Appeal Brief
(“Appeal Br.”), filed Jan. 12, 2019; and Reply Brief (“Reply Br.”), filed
May 17, 2019. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed Aug. 15, 2018; and Answer (“Ans.”) mailed Mar. 21, 2019.
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to
“consolidating snapshots of a virtual machine using a mirror driver.” Spec.
¶ 11. Appellant’s claims recite computer readable storage media, systems,
and methods for consolidating snapshots (point in time copies) of a virtual
machine by creating a mirror driver instantiated between a current disk
handle (which includes a base virtual disk and a delta disk in a virtual disk
chain) and a target disk handle (a target virtual disk in the virtual disk chain
into which the delta disk is to be consolidated) and performing multiple
operations in a single iteration. The operations include: copying sectors
from the delta disk to the target virtual disk while the virtual machine is
running, and at the same time (while the sectors are being copied), the mirror
driver replicating a disk request to create a second disk request to also write
the data to the target disk handle such that each write request is sent to both
the current disk handle and the target disk handle. See Spec. ¶¶ 11, 12, 25,
34, 36; Abstract. Claim 1 (directed to a method), 10 (directed to a computer
readable storage medium), and 18 (directed to a system) are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for consolidating snapshots of a virtual
machine, comprising:
creating a mirror driver between a current disk handle
representing a virtual disk chain comprising a base virtual disk
and a delta disk, wherein the delta disk does not include content
present in the base virtual disk, and a target disk handle
representing a target virtual disk in the virtual disk chain into
which the delta disk is to be consolidated;
in a single iteration, performing both:
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copying sectors from the delta disk to the target
virtual disk while the virtual machine is running; and
while the sectors are being copied, responsive to
receiving a first disk request from the virtual machine to write
data to the current disk handle, the mirror driver replicating the
first disk request to create a second disk request to also write the
data to the target disk handle such that each write request is sent
to both the current disk handle and the target disk handle.
Appeal Br. A-1 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Colbert et al.
(“Colbert”)
US 2009/0037680 A1 Feb. 5, 2009
McKean et al.
(McKean”)
US 2009/0327603 A1 Dec. 31, 2009
D. Epping, vSphere 5.0: Storage vMotion and the Mirror Driver, July 14,
2011, available at http://www.yellow-bricks.com/2011/07/14/vsphere-5-0-
storage-vmotion-and-the-mirror-driver/, last viewed Nov. 23, 2020
(“Epping”).
A. Mashtizadeh et al., The Design and Evolution of Live Storage Migration
in VMware ESX, VMware, Inc. (Jan. 2011) (“Mashtizadeh”).
REJECTIONS3
1. The Examiner rejects claims 1–5, 7–14, 16–18, and 20 under
35 U.S.C. § 103 as being unpatentable over Colbert, Mashtizadeh, and
McKean. See Final Act. 3–15.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date after the AIA’s effective (March 16, 2013), this
decision refers to 35 U.S.C. § 103.
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2. The Examiner rejects claims 6, 15, and 19 under 35 U.S.C.
§ 103 as being unpatentable over Colbert, Mashtizadeh, McKean, and
Epping. See Final Act. 15–19.
ANALYSIS
The Examiner rejects independent claim 1 (as well as independent
claims 10 and 18, and dependent claims 2–5, 7–9, 11–14, 16, 17, and 20) as
being obvious over Colbert, Mashtizadeh, and McKean. See Final Act. 3–8;
Ans. 3–7. Appellant contends that Colbert, Mashtizadeh, and McKean do
not teach the disputed limitations of claim 1. See Appeal Br. 8–14; Reply
Br. 1–6. Specifically, Appellant contends, inter alia, that claim 1 requires
that “both the copying and the replicating” functions “are performed during
a single iteration,” but Colbert and Mashtizadeh instead describe distinct
operations (iterations) and “neither alleged single iteration in combination
corresponds to the single iteration recited in Claim 1.” Reply Br. 3.
“[C]ontrary to the Examiner’s assertion, the combination of Colbert and
Mashtizadeh would provide two separate single iterations: 1) the
consolidation of a child VM and a parent VM as described in Colbert; and 2)
the IO mirroring described in Mashtizadeh.” Reply Br. 3. The Examiner
“fail[s] to provide support or even a reason as to how the consolidation of
Colbert and the IO mirroring of Mashtizadeh (which are very different
processes) are performed during the SAME single iteration.” Reply Br. 3–4;
see Reply Br. 1–6; Appeal Br. 8–14.
We agree with Appellant that the Examiner-cited portions of Colbert
and Mashtizadeh do not teach or suggest performing in “a single iteration”
(1) “copying sectors from the delta disk to the target virtual disk while the
virtual machine is running”; and (2) in response to (responsive to) receiving
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a disk request (first disk request) “from the virtual machine to write data to
the current disk handle, the mirror driver replicating the first disk request to
create a second disk request to . . . write the data to the target disk handle
such that each write request is sent to both the current disk handle and the
target disk handle” “while the sectors are being copied.” Appeal Br. A-1
(Claims App.) (claim 1). See Appeal Br. 8–14; Reply Br. 1–6.
As pointed out by Appellant (see Reply Br. 3–6), the Examiner relies
on Colbert to teach the copying functionality (consolidation of a child virtual
machine (VM) with a new parent VM), and Mashtizadeh to teach the request
replication functionality (the input-output (I/O) request mirroring). See
Final Act. 4–8; Ans. 4–7 (citing Colbert ¶¶ 25, 32, 33, 35, 37; Figs. 4, 5A;
and Mashtizadeh §§ 2.2, 2.4, Fig. 1). Each reference describes distinct
operations. There is no suggestion in either Colbert or Mashtizadeh of
combining the functions into a single iteration. The Examiner does not
suggest, and we do not find, that the remaining reference (McKean) cures
these deficiencies.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Colbert, Mashtizadeh,
and McKean renders obvious Appellant’s claim 1. Independent claims 10
and 18 include limitations of commensurate scope. Claims 2–5, 7–9, 11–14,
16, 17, and 20 depend from and stand with claims 1, 10, and 18,
respectively.
The Examiner rejects dependent claims 6, 15, and 19 as being obvious
over Colbert, Mashtizadeh, McKean, and Epping. See Final Act. 15–19.
The Examiner does not suggest, and we do not find, that the additional cited
reference (Epping) cures the deficiencies of Colbert in combination with
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Mashtizadeh (and also in combination with McKean) (supra). Therefore,
we reverse the Examiner’s obviousness rejection of dependent claims 6, 15,
and 19 for the same reasons set forth for claim 1 (supra).
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–20
under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s
rejection of claims 1–20.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–14,
16–18, 20
103 Colbert, Mashtizadeh,
McKean
1–5, 7–14,
16–18, 20
6, 15, 19 103 Colbert, Mashtizadeh,
McKean, Epping
6, 15, 19
Overall
Outcome
1–20

REVERSED