DOYLE, RONALD P. et al.

Patent Trials and Appeals Board

Jul 29, 2020

13620779 - (D) (P.T.A.B. Jul. 29, 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.
13/620,779 09/15/2012 RONALD P. DOYLE RSW920070203US2
8152-0197
4019
73109 7590 07/29/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
LABUD, JONATHAN R
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RONALD P. DOYLE, STEPHEN J. SCHMIDT,
QINGBO WANG, and RUTHE E. WILLENBORG1
____________________

Appeal 2019-002726
Application 13/620,779
Technology Center 2100
____________________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
JAMES W. DEJMEK, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21 through 38. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). According to Appellant, IBM Corporation, is the real
party in interest. Appeal Br. 1.
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INVENTION
Appellant’s invention relates to creating a Virtual Machine (VM)
utilizing a virtual Operating System (OS) disk and virtual application disk,
wherein one or more files in the virtual application disk are linked to a
specific file system location (node) in the virtual OS disk. See Abstract.
Claim 21 is reproduced below.
21. A method of creating a virtual machine (VM),
comprising:
receiving an application logical disk;
receiving an operating system (0/S) logical disk; and
generating a VM profile using the application logical
disk and the 0/S logical disk, wherein
the application logical disk is separate from the 0/S
logical disk, and
the VM profile includes a mapping of nodes within the
application logical disk to nodes within the 0/S logical disk.

EXAMINER’S REJECTIONS2
The Examiner rejected claims 21, 23, 24, 27, 29, 30, 33, 35, and 36
under 35 U.S.C. § 103 as unpatentable over Sasaki (US 2010/0088699 A1,
published Apr. 8, 2010), and S. R. Kleiman (Vnodes: An Architecture for
multiple Files System Types in Sun UNIX) (hereinafter Kleiman). Final
Act. 19–22.
The Examiner rejected claims 22, 28, and 34 under 35 U.S.C. § 103 as

2 Throughout this Decision we refer to the Appeal Brief filed July 9, 2018
(“Appeal Br.”); the Reply Brief filed February 19, 2019 (“Reply Br.”); the
Final Office Action mailed February 7, 2018 (“Final Act.”); and the
Examiner’s Answer mailed January 25, 2019 (“Ans.”).
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unpatentable over Sasaki, Kleiman, and Katayama (US 2002/0138814 A1,
published Sept. 26, 2002) Final Act. 22–23.
The Examiner rejected claims 25, 26, 31, 32, 37, and 38 under
35 U.S.C. § 103 as unpatentable over Sasaki, Kleiman, and Grover (US
2002/0103968 A1, published Aug. 1, 2002). Final Act. 23–25.

35 U.S.C. § 103 Rejection based upon Sasaki, Kleiman
With respect to independent claim 21, Appellant argues the claim
recites generating a VM profile using an application logical disk and an
Operating System (O/S) wherein the VM profile includes a mapping of
nodes within the application disk to nodes within the O/S logical disk, which
is not taught by the combination of Sasaki and Kleiman. Appeal Br. 19–28.
Appellant argues that Kleiman has no relation to virtual machines and
merely relates to a virtual file system, accommodating multiple file systems.
Appeal Br. 20, 22, 25–26. As such, Appellant argues that Kleiman does not
teach i) a VM profile, ii) an application logical disk, iii) an O/S logical disk,
or iv) two separate logical disks or nodes on the logical disks. Appeal
Br. 20–21. Further, Appellant argues that the disk maps in Sasaki have
nothing to do with the claimed mapping nodes of an application logical disk
to nodes within the O/S logical disk. Appeal Br. 24–25.
In the Answer, the Examiner states that Sasaki was relied upon to
teach using an OS disk image (equated to the claimed O/S logical disk), an
application provisioning disk image (equated to the claimed application
logical disk) to generate a virtual machine (claimed VM profile). Ans. 4
(citing Sasaki Figs. 25–26). The Examiner identifies that the claimed nodes
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are interpreted as a file location, and recognizes that Sasaki teaches that the
disks have file directories (nodes) but lack an explicit teaching of mapping
of the nodes of one logical disk to the other.3 Ans. 4, 5, 6. The Examiner
states “Kleiman is utilized to teach it is well known to form a mapping
between file system locations. Sasaki is already concerned with combining
disk images containing respective file system locations for generation of a
virtual machine image to create a virtual machine.” Ans. 4–5.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims. The Examiner has found and Appellant has
not contested, Sasaki teaches an application logical disk, a separate O/S
logical disk and generating a VM profile from the two disks. We concur
with the Examiner’s findings. Sasaki teaches that the virtual machine
generating means receives the O/S disk image and the provisioning disk
image disk images (equated to the claimed application and O/S disks) and
generates a virtual machine. See e.g., Sasaki ¶¶ 86–87. These disk images
can be on separate disks. See Fig. 4, 24–25 and ¶¶ 168, 179. Thus, we
concur with the Examiner’s finding that Sasaki teaches all of the limitations
of the claims except the limitation of linking the nodes.
Further, we concur with the Examiner’s interpretation of the term
“node” as “a file system location” and find it is supported by Appellant’s
Specification ¶¶ 3, 22. Thus, we disagree with Appellant’s assertion:

3 The Examiner cites to paragraphs 2 and 3 of Appellant’s Specification to
support the interoperation of the claimed node as a file system location.
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the claim limitations at issue are not simply “a mapping
between filesystem locations,” which is what the Examiner is
relying upon Kleiman to teach. Rather, the claimed invention
recites “generating a VM profile using the application logical
disk and the O/S logical disk” and “the VM profile includes a
mapping of nodes within the application logical disk to nodes
within the O/S logical disk.” Thus, the VM profile includes a
mapping of nodes within the application logical disk to nodes
within the O/S logical disk and this is mapping is generated
using the application logical disk and the O/S logical disk. This
is more than just "a mapping between filesystem locations.”
Reply Br. 2–3. Appellant’s Specification does not support an interpretation
of the “node” as anything other than a file system location and provides an
example of a mapping identifying where a file will be paced in a file
directory hierarchy (see e.g., Specification ¶ 22 discussing that an
application file needs to be identified in a specific OS directory, even though
it is on an application disk). Further, the Examiner finds that Sasaki teaches
the claimed nodes on the separate disks, in that the O/S disk and the separate
provisioning disk each have their own file directories. Ans. 5–6 (citing
Sasaki, Fig. 25). We have reviewed the teachings of Sasaki and concur with
the Examiner’s findings. As discussed above, the Examiner finds that it is
well known to form a mapping between file systems and that Kleiman
provides an example of such a teaching. Ans. 4. We concur. Appellant
states that “the mapping described by Kleiman is between the file path name
of the file (using the particular file system implementation) and the vnode
that corresponds to the same file.” Reply Br. 4. Although Kleiman’s
mapping is not between an application logic disk and an O/S disk for use in
generating a virtual machine, the teaching nonetheless supports the
Examiner’s finding that mapping file locations is well known. Further, we
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do not find that the mapping in Kleiman is any different from what
Appellant’s describe in the Specification in paragraph 22, which discusses
the node “/file directory” on the application disk being mapped to the O/S
directory “/opt/company/file directory,” they both correspond to the same
file, one is identifying where it falls in the hierarchy of the other’s file
system. Here, the Examiner’s rejection is based upon the combination of
Sasaki which teaches using two disks to generate a VM with well-known
mapping of file locations (claimed nodes). Accordingly, Appellant’s
augments have not persuaded us of error in the Examiner’s rejection of
independent claim 21 and claims 23, 27, 29, 30, 33, 35, and 36, which are
grouped with claim 21 as they are similarly rejected and not separately
argued.
Appellant separately argues that claim 24 recites the application disk
is separately maintainable and that the Examiner’s rejection is in error as it
cites to Sasaki paragraph 83 without explanation as to how Sasaki teaches
the limitation. Appeal Br. 28
The Examiner responds to the Appellant’s argument concerning claim
24, stating that paragraph 83 of Sasaki teaches that the O/S disk image and
the provisioning disk image, on which an application is installed, are distinct
entities and that it is inconceivable that they are not separately maintained.
Ans. 8.
Appellant’s arguments have not persuaded us of error in the
Examiner’s reaction. We concur with the Examiner that Sasaki teaches that
the O/S disk image and the provisioning disk image are distinct entities.
Further, Sasaki states “After the virtual machine image is distributed, the
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administrator may update the OS and security middleware and their
configuration and the like by re-distributing only the OS disk image and
provisioning disk image in a similar operation.” Sasaki ¶ 183. Thus,
additionally supporting the Examiner’s finding that it they are separately
maintained. Accordingly, we sustain the Examiner’s rejection of claim 24.

35 U.S.C. § 103 Rejection based upon Sasaki, Kleiman and Katayama
With respect to claim 22, Appellant argues the claim recites the OS
logical disk is received from one supplier and the application logical disk is
received from a second supplier which is not taught by the combination of
Sasaki, Kleiman, and Katayama. Appeal Br. 29–30.4 Appellant asserts that
Katayama, which the Examiner cites in conjunction with this limitation
discloses that the virtual component can be sold or distributed over the
internet but does not discuss the supplier being different from the O/S
logical disk. Appeal Br. 30.
The Examiner responds to Appellant’s arguments on page 9 of the
Answer. The Examiner states:
The claimed O/S logical disk and application logic disk
disclosed by Sasaki in view of Kleiman are components used in
creating a virtual machine (i.e. virtual components). In the
teaching provided by Katayama (Katayama ¶ 0104, reproduced
App. Br. 29:21-30:3), “virtual components” are distributed
from vendors (a vendor corresponding to Appellant's claimed
“supplier” with there explicitly being a plurality of vendors

4 We note that Appellant’s arguments also reference a teaching by Abel.
However, Abel is not of record, or used in a rejection, we did not consider
Appellant’s augments with respect to this reference.
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such that Appellant's claimed “first supplier” and "second
supplier different from the first supplier" are taught). Therefore,
Examiner respectfully submits that the combination of Sasaki in
view of Kleiman further in view of Katayama does disclose the
claimed concept “wherein the O/S logical disk is received from
a first supplier; and the application logical disk is received from
a second supplier different from the first supplier.”
Ans. 9–10.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 22. Claim 22 recites that the O/S logical disk
and the application logic disk are received by two different suppliers.
Appellant’s Specification does not specifically define the term supplier but
uses the terms vendors, suppliers and sources interchangeably. See Spec.
¶ 21. Thus, the broadest reasonable interpretation could be that the software
in the application disk and O/S disk are developed by different companies
(i.e., a Microsoft application and a LINUX O/S) or the disks are procured
from different locations (i.e., the application disk purchased over the internet
and the O/S/ disk purchased in a store). We consider either of these
interpretations to be taught by the references cited by the Examiner. As
discussed above we find that Sasaki teaches that the O/S and Application
disks are separate and separately maintainable. Kleiman teaches that
applications can be distributed by physical disks and over the internet, thus
supporting the Examiner’s finding that the combination of the reference
teaches that the two disks can be received from different suppliers.
Additionally, in as much as the claim can be construed to mean that the
software is from different companies, Sasaki teaches this limitation as it
discusses OS can be from Microsoft (Windows XP) and the application can
be from Java. Sasaki ¶ 178. Accordingly, we are not persuaded of error by
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Appellant’s arguments and sustain the Examiner’s rejection of claim 22 and
claims 28 and 34 grouped with claim 22.

35 U.S.C. § 103 Rejection based upon Sasaki, Kleiman, and Grover
Appellant argues the rejection of claims 25, 26, 31, 32, 37, and 38 is
in error for the reasons discussed with respect to the rejection of claim 21
and because Grover does not remedy the deficiencies in the rejection of
claim 21. Appeal Br. 30.
As discussed above, Appellant’s arguments have not persuaded us of
error in the Examiner’s rejection of claim 21. Accordingly, we sustain the
Examiner’s rejection of claims 25, 26, 31, 32, 37, and 38 for the same
reasons as claim 21.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21, 23, 24,
27, 29, 30,
33, 35, 35
103 Sasaki, Kleiman 21, 23, 24,
27, 29, 30,
33, 35, 36

22, 28, 34 103 Sasaki, Kleiman,
Katayama
22, 28, 34
25, 26, 31,
32, 37, 38
103 Sasaki, Kleiman,
Grover
25, 26, 31,
32, 37, 38

Overall
Outcome
21–38

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Application 13/620,779

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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