Wei-Shan YANG

Patent Trials and Appeals Board

Jul 30, 2021

2020002479 (P.T.A.B. Jul. 30, 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.
13/283,908 10/28/2011 Wei-Shan YANG 82749194 6850
22879 7590 07/30/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
LOONAN, ERIC T
ART UNIT PAPER NUMBER
2137
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WEI-SHAN YANG
____________________

Appeal 2020 -002479
Application 13/283,9081
Technology Center 2100
____________________

Before MARC. S. HOFF, JAMES R. HUGHES, and DENISE M.
POTHIER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–4, 7, 9–11, 17, 18, and 21–34.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appellant’s invention generates first and second computing
environments on a computer system based on a state of a logical storage
unit, the computing environments being associated with pieces of storage
space located outside the logical storage unit. Responsive to determining that

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Hewlett-Packard Development Company,
L.P as the real party in interest. Appeal Br. 1.
2 Claims 5, 6, 8, 12–16, 19, and 20 have been cancelled.
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the first computing environment is active while the second computing
environment is inactive, a write operation is directed to the first piece of
storage space associated with the first computing environment. Abstract;
Spec. ¶¶ 14, 21.
Claim 1 is reproduced below:
1. A method comprising:

generating, in a computer system, a first computing environment
associated with a first piece of storage space located outside a logical storage
unit, wherein an initial state of the first computing environment is based on a
state of the logical storage unit;

generating, in the computer system, a second computing environment
associated with a second piece of storage space located outside the logical
storage unit and isolated from the first computing environment, wherein the
first computing environment and the second computing environment are
alternately activatable in the computer system responsive to selection in a
user interface;

marking the first computing environment in the user interface as an
active computing environment;

marking the second computing environment in the user interface as an
inactive computing environment;

receiving, by a filter in the computer system, a write operation
addressed to the logical storage unit; and

responsive to determining that the first computing environment is
active while the second computing environment is inactive, redirecting, by
the filter, the write operation to the first piece of storage space associated
with the first computing environment that is active, without affecting
the second piece of storage space associated with the second computing
environment that is inactive, the write operation causing modification of data
in the first piece of storage space to produce modified data so that the first
and second computing environments store different data.
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The prior art relied upon by the Examiner as evidence is:

Name Reference Date
Devine US 6,397,242 Bl May 28, 2002
Chen US 7,478,388 Bl Jan.13, 2009
Jeong US 2011/0126139 Al May 26, 2011
Venkitachalam US 8,151,263 Bl Apr. 3, 2012

Claims 1–3, 7, 9, 10, 17, 18, 21–23, 25–28, and 30–34 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Venkitachalam and
Jeong. Final Act. 2–13.
Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venkitachalam, Jeong, and Devine. Final Act. 13–14.
Claims 24 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venkitachalam, Jeong, and Chen. Final Act. 14–15.
Throughout this Decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed Aug. 29, 2019), the Reply Brief (“Reply Br.,” filed Feb.
7, 2020), and the Examiner’s Answer (“Ans.,” mailed Dec. 12, 2019) for
their respective details.
ISSUE
Does Venkitachalam teach or suggest, “responsive to determining that
the first computing environment is active while the second computing
environment is inactive, redirecting, by the filter, the write operation to the
first piece of storage space associated with the first computing environment
that is active, without affecting the second piece of storage space associated
with the second computing environment that is inactive”?
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ANALYSIS
Claims 1–3, 7, 9, 10, 17, 18, 21–23, 25–28, and 30–34
Each independent claims (1, 9, and 17) recites
responsive to determining that the first computing environment is
active while the second computing environment is inactive,
redirecting, by the filter, the write operation to the first piece of
storage space associated with the first computing environment that is
active, without affecting the second piece of storage space associated
with the second computing environment that is inactive

or analogous language.
Appellant argues that Venkitachalam does not teach the above-argued
limitation. Appeal Br. 7. According to Appellant, Venkitachalam concerns a
technique of cloning a virtual machine which allows a user to perform a
backup operation on the clone without interrupting the original virtual
machine. Appeal Br. 8 (citing Venkitachalam, col. 4:46–49). Appellant thus
argues that in Venkitachalam, both the original virtual machine and the
cloned virtual machine remain active, which fails to correspond to
Appellant’s claimed invention, in which the first computing environment is
active while the second computing environment is inactive. Id.
The Examiner responds that Venkitachalam’s teaching of context
switching corresponds to active and inactive computing environments within
the broadest reasonable interpretation of the terms. Ans. 4. The Examiner
finds that Venkitachalam’s context switching mechanism prevents
simultaneous access to resources in order to prevent conflicts. Ans. 5.
According to the Examiner, Appellant does not disclose a meaning for
“inactive” and gives few examples of what active computing environments
do. Ans. 4–5.
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We determine that the Examiner erred in finding that Venkitachalam
teaches the claimed active and inactive computing environments. We find
that in Appellant’s invention, write operations are performed only to logical
storage in the active computing environment. Storage in the inactive
computing environment is not altered as claims 1, 9, and 17 require. Spec. ¶
21. By contrast, Venkitachalam contemplates allowing a user “to perform a
backup operation on the clone without interrupting the original virtual
machine. In other examples, a clone can be utilized to perform other
functions, such as but not limited to: load balancing, offloading, pre-
deployment testing, speculative execution, data mining, virus scanning,
monitoring, and/or simulating.” Venkitachalam, col. 4:46–53.
We agree with Appellant that in Venkitachalam, “[c]ontext switching
allows for concurrently executing processes that are both active to use a
shared resource at different times.” Reply Br. 3 (emphasis omitted).
Venkitachalam’s express purpose is real-time cloning of a virtual machine,
“running the virtual machine and creating a clone of the virtual machine
while the virtual machine continues to run.” Venkitachalam, col. 3:7–11. We
further find that the Examiner’s reliance on context-switching means is
misplaced. The Examiner finds that “the context-switch mechanism prevents
simultaneous access to resources . . . in order to prevent conflicts.” Ans. 5.
Such simultaneous access is not pertinent to Appellant’s claimed invention,
which is concerned with two distinct computing environments, having two
distinct “piece[s] of storage space,” rather than one set of common storage
space requiring access arbitration.
Because Venkitachalam does not disclose a computing system in
which one computing environment is active and another computing
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environment is inactive, we find that the combination of Venkitachalam and
Jeong fails to teach all the limitations of the invention recited in independent
claims 1, 9, and 17. We do not sustain the Examiner’s § 103 rejection of
claims 1–3, 7, 9, 10, 17, 18, 21–23, 25–28, and 30–34.
Claims 4, 11, 24, and 29
Claims 4 and 24 depend from independent claim 1; claims 11 and 29
depend from independent claim 9. As discussed supra, we do not sustain the
§ 103 rejection of those independent claims. The Examiner has not identified
teachings in Devine or Chen to remedy the deficiencies we have noted in the
combination of Venkitachalam and Jeong. As a result, we do not sustain the
§ 103 rejection of claims 4 and 11 over Venkitachalam, Jeong, and Devine,
and we do not sustain the § 103 rejection of claims 24 and 29 over
Venkitachalam, Jeong, and Chen, for the reasons given supra, with respect
to independent claims 1 and 9.
CONCLUSION
Venkitachalam does not teach or suggest, responsive to determining
that the first computing environment is active while the second computing
environment is inactive, redirecting, by the filter, the write operation to the
first piece of storage space associated with the first computing environment
that is active, without affecting the second piece of storage space associated
with the second computing environment that is inactive.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–3, 7, 9, 10,
17, 18, 21–
23, 25–28,
30–34
103 Venkitachalam,
Jeong
1–3, 7, 9, 10,
17, 18, 21–
23, 25–28,
30–34
4, 11 103 Venkitachalam,
Jeong, Devine
4, 11
24, 29 103 Venkitachalam,
Jeong, Chen
24, 29
Overall
Outcome
1–4, 7, 9–11,
17, 18, 21–34

ORDER
The Examiner’s decision to reject claims 1–4, 7, 9–11, 17, 18, and
21–34 is reversed.

REVERSED