VMware, Inc.

Patent Trials and Appeals Board

Feb 26, 2021

2019006310 (P.T.A.B. Feb. 26, 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.
15/177,843 06/09/2016 Gabriel TARASUK-LEVIN C700 3519
152569 7590 02/26/2021
Patterson + Sheridan, LLP - VMware
24 Greenway Plaza
Suite 1600
Houston, TX 77046
EXAMINER
PAPERNO, NICHOLAS A
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
02/26/2021 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
psdocketing@pattersonsheridan.com
vmware_admin@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GABRIEL TARASUK-LEVIN, PRATAP SUBRAHMANYAM,
and RAJESH VENKATASUBRAMANIAN
_____________

Appeal 2019-006310
Application 15/177,843
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–4, 7–12, 14–17, 19, and 20. We have jurisdiction over these
rejected claims under 35 U.S.C. § 6(b). However, we have no jurisdiction
over claims 21–23 that were never rejected by the Examiner. Claims 5, 6,
13, and 18 are canceled, but claims 21–23 are of record as being properly
entered by Appellant as a matter of right before the Final Action, but were

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
VMware, Inc. See Appeal Br. 3.

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never rejected by the Examiner. The Board cannot affirm or reverse a
rejection that was never made for claims 21–23. Because we have no
adverse decision to review for claims 21–23, we have no jurisdiction over
claims 21–23. Therefore, claims 21–23 are not before us on appeal. 2
We affirm.
STATEMENT OF THE CASE 3
Introduction
Appellant’s claimed invention relates generally to “Enhanced-Security
Page Sharing in a Virtualized Computer System.” Title. ¶.

2 Although claims 21–23 were entered by the amendment filed on August 9,
2018 (before the Final Action, mailed October 2, 2018), and are included in
the “STATUS OF CLAIMS” item 15 of the Advisory Action, mailed
February 11, 2019, we find no detailed statement of rejection to review for
claims 21–23 in the Final Action, or in the non-final First Office Action
(when only claims 1–20 were pending before entry of the amendment), or
elsewhere in the record. Nor does the Examiner indicate in the record that
claims 21–23 are allowable, withdrawn, or objected to. Because the Board
has no adverse decision establishing a prima facie case under 35 U.S.C.
§132(a) to review for claims 21–23, we have no jurisdiction under 35 U.S.C.
§6(b) as to any claims that were never rejected by the Examiner.
Accordingly, claims 21–23 are not before us on appeal.
3 We herein refer to the Final Office Action, mailed October 2, 2018 (“Final
Act.”); Appeal Brief, filed May 9, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed June 27, 2019 (“Ans.”); and the Reply Brief, filed August
26, 2019 (“Reply Br.”).
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Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Agesen et al. ’806
(“Agesen ‘806”)
US 6,961,806 B1 Nov. 1, 2005
Agesen ’474 US 2010/0088474 A1 April 8, 2010
Gopalan et al. (“Gopalan”) US 7,925,711 B1 April 12, 2011
Kapoor et al. (“Kapoor”) US 2013/0312098 A1 Nov. 21, 2013
Phelan et al. (“Phelan”) US 9,524,183 B1 Dec. 20, 2016
Gaonkar et al. (“Gaonkar”) US 9,886,398 B2 Feb. 6, 2018
Rejections
Rej. Claims Rejected 35 U.S.C.
§
Reference(s)/Basis
A 1–3, 7, 8, 10–12,
14, 16, 17, 19
103 Agesen ’474, Gaonkar, Kapoor,
Agesen ’806
B 4 103 Agesen ’474, Gaonkar, Kapoor,
Agesen ’806, Gopalan
C 9, 15, 20 103 Agesen ’474, Gaonkar, Kapoor,
Agesen ’806, Phelan
Rejection A of Claims 1–3, 7, 8, 10–12, 14, 16, 17, and 19 under §103
Claim Grouping
Based on Appellant’s arguments, and our procedural rule, we group
claims 2, 3, 7, 8, 10–12, 14, 16, 17, and 19 (not argued separately) with
representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
We address Rejections B and C separately, infra.
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Issues: Under 35 U.S.C. § 103, we focus our analysis on the
following issues raised by Appellant regarding Rejection A of independent
claim 1:
1. We consider the question of whether the Examiner improperly
combined Agesen ’474 and Kapoor, as alleged by Appellant, because
modifying Agesen ’474 with Kapoor’s teachings purportedly changes the
principle of operation of Agesen ’474, and makes it unsatisfactory for its
intended purpose. See Appeal Br. 10.
2. We consider the question of whether the Examiner erred by
relying upon impermissible hindsight in combining the teachings of the cited
references. See Appeal Br. 11–12.
1. Did the Examiner properly combine Agesen ’474 and Kapoor?
Appellant contends that combining Agesen ’474 and Kapoor as set
forth in the rejection changes the principle of operation of Agesen ’474. See
Appeal Br. 10. In support, Appellant argues:
Agesen-1 [(i.e., Agesen ’474)] teaches providing access to the
content of a memory page, whether a copy of that page is made
or not. See paragraph [0044] of Agesen-1. Kapoor requires
blocking access to the content of a memory page in response to
a suspicious sequence of reads. Combining Kapoor 's
requirement to block access to the content of a memory page in
response to a suspicious sequence of reads with Agesen-1 would
result in blocking access to content in Agesen-1, whether a copy
of a memory page is made or not. Blocking access to content in
Agesen-1 would make Agesen-1 “inoperable for its intended
purpose” of allowing access to content of a memory page. See In
re Gordon at 902. Because combining Kapoor with Agesen-1
renders Agesen-1 inoperable, the combination of Kapoor with
Agesen-1, alone or with other references, is unable to teach or
suggest the “creating a private copy of the shared memory page
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for the first virtualized computing instance” limitation of claim
1. In order for a combination of Agesen-1 and Kapoor to teach
the above limitation of claim 1, the “combination of references
would require a substantial reconstruction and redesign of the
elements . . . as well as a change in the basic principles under
which” Agesen-1 was designed to operate. In re Ratti at 813.
Appeal Br. 10.
The Examiner disagrees and explains the proposed modification of
Agesen ’474:
Kapoor teaches a security measure that can be used to prevent
unwanted access to particular data. That method involves the
requests to the resource in question satisfying a particular access
pattern. This does not mean that all access are blocked, only
suspicious ones. This security measure just ensures that trusted
requests are allowed to access data. Agesen-I [(Agesen ’474)]
would still be able to operate since all the modification is doing
is adding a security measure that needs to be met before the data
can be accessed and a copy made. This does not completely
prevent all accesses to the data from being block, only suspicious
ones. This means that Agesen-1 would still be able to operate as
intended. In combination with the other references Agesen-II (US
Patent 6,961,806) [(i.e., Agesen ’806)] and Gaonkar (US Patent
9,886,398), they do teach all the limitations of the independent
claims.
Ans. 6–7.
The Supreme Court guides that “[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, in reviewing the record, we find the Examiner provides an
articulated reasoning having a rational underpinning that sufficiently
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supports the legal conclusion of obviousness. See Final Act. 3–6; see also
Ans. 6–7.
We find the Examiner’s modification of Agesen ’474 with the
teachings of Kapoor to “creating a private copy of the shared memory page
for the first virtualized computing instance in response to the reads satisfying
a threshold read pattern” does not change the principle of operation of
Agesen ’474, of providing access to the content of a memory page,
regardless of whether a copy is made or not. See Final Act. 3.4
The Examiner relies upon Agesen ’474 for teaching the creation of a
private copy of the shared memory page. The Examiner relies upon
Gaonkar for teaching associating a shared memory page with a copy-on-read
indicator. See Final Act. 3–4. The Examiner finds Agesen ’806 teaches
installing a read trace for the shared memory page and a fault being triggered
by a read trace. Final Act. 5.
The Examiner looks to Kapoor merely for teaching accessing a page
in response to the reads satisfying a threshold read pattern. The Examiner
finds an artisan would have been motivated to modify the teachings of
Agesen ’474 and Gaonkar with those of Kapoor to monitor the read
commands of a virtual machine and create a private copy of the shared
memory page when the reads of the virtual machine satisfy a threshold read

4 See e.g., Final Act. 3 (“creating a private copy of the shared memory page
for the first virtualized computing instance (Paragraph [0044], states that a
copy-on-write technique is used on shared pages and if a page has been
marked as COW and a subsequent write is attempted a private copy will be
generated for the write command). Agesen ‘474 does teach creating a private
copy of the shared memory page for the first virtualized computing instance
(Paragraph [0044], this is done in response to a copy-on-write fault)”).
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pattern in order to implement anti-malware lightweight rules for preventing
false positive identification. See Final Act. 5 (citing Kapoor ¶ 1).
We are not persuaded that the Examiner’s combination of Kapoor and
Agesen ’474 changes the principle of operation of Agesen ’474 because
Agesen ’474 would still be able to operate, since Kapoor teaches only
blocking suspicious accesses, and not all access to the data. Thus, the
principle of operation of Agesen ’474 remains as intended.
2. Did the Examiner err by relying on impermissible hindsight in combining
the teachings of the cited references?
Appellant argues that combining the prior art of record to teach
“creating a private copy of the shared memory page for the first virtualized
computing instance in response to the reads satisfying a threshold read
pattern” relies upon impermissible hindsight. See Appeal Br. 11, 12.
Appellant specifically contends that “[c]ombining the ‘sequence’ of Kapoor
with the ‘creating a private copy’ of Agesen-1 to obtain ‘in response to the
reads satisfying a threshold read pattern’ then ‘creating a private copy of the
shared memory page for the first virtualized computing instance’ as per
claim 1, requires using claim 1 as a road map.” Appeal Br. 12.
We are not persuaded by Appellant’s hindsight argument because
Appellant does not address the specific teachings of Agesen ’806, as relied
upon by the Examiner. In particular, the Examiner relies on Agesen ’806 to
teach the installation and use of a read trace in a system — specifically the
use of read traces to trigger faults when a particular access is made to a
particular block of data. See Ans. 11–12.
The Examiner relies upon Agesen ’474 as the primary reference for
teaching copy-on writes, as combined with Gaonkar for teaching creating
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copies of shared resources in a shared resource environment. Gaonkar
suggests that what can be done with a copy-on write can also be done with a
copy-on read. See Gaonkar, col. 3, ll. 61–65, col. 4, ll. 18; see also Ans. 11–
12. The Examiner cites to Kapoor (paragraph 1) for its teaching of
preventing unwanted access to a particular resource. Appeal Br. 12.
Although we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co. of Kansas City,
(383 U.S. 1, 36 (1966)), we are also mindful that the Supreme Court has
clearly stated that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 401 (citation omitted).
In reviewing the record, we are not persuaded the Examiner erred
because Appellant does not point to any evidence of record that shows
combining the teachings of Kapoor and Agesen ’474 in the manner proffered
by the Examiner would have been “uniquely challenging or difficult for one
of ordinary skill in the art” or would have “represented an unobvious step
over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Furthermore, Appellant has not identified knowledge gleaned only
from the present application that was not within the level of ordinary skill at
the time the claimed invention was made. See In re McLaughlin, 443 F.2d
1392 (CCPA 1971). Moreover, Appellant has not provided any objective
evidence of secondary considerations (e.g., unexpected results), which our
reviewing court guides “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,
1352 (Fed. Cir. 2013).
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Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness regarding the
Examiner’s Rejection A of independent representative claim 1.
Accordingly, we sustain the Examiner’s obviousness Rejection A of
independent representative claim 1, and also Rejection A of independent
claims 11 and 16, which recite similar limitations of commensurate scope.
See Final Act. 4–8. The remaining grouped dependent claims also rejected
under Rejection A (and not argued separately) fall with representative
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we
sustain the Examiner’s obviousness Rejection A of claims 1–3, 7, 8, 10–12,
14, 16, 17, and 19.

Rejections B and C of claims 4, 9, 15, and 20 under § 103
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection B of claim 4 and obviousness Rejection C of
claims 9, 15, and 20 (see Appeal Br. 13), we sustain these rejections.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The Examiner did not err in rejecting claims 1–4, 7–12, 14–17, 19,
and 20 as being obvious under 35 U.S.C. § 103, over the cited combinations
of references.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C
§
Reference(s)/Basis Affirmed Reversed
1–3, 7, 8,
10–12, 14,
16, 17, 19
103 Agesen ‘474,
Gaonkar, Kapoor,
Agesen ’806
1–3, 7, 8,
10–12, 14,
16, 17, 19

4 103 Agesen ’474,
Gaonkar, Kapoor,
Agesen ’806,
Gopalan
4
9, 15, 20 103 Agesen ’474,
Gaonkar, Kapoor,
Agesen ’806,
Phelan
9, 15, 20
Overall
Outcome
1–4, 7–12,
14–17, 19,
20

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED