`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addms: COMMISSIONER FOR PATENTS
`P.0i Box l450
`Alexandria, Virginia 223134450
`www.usplo.gov
`
`APPLICATION NO.
`
`lO/ 109,|86
`
`FILING DATE
`
`03/28/2002
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Hans F. van Rietschote
`
`5760-00400NRTS 0064
`
`4997
`
`Lawrence J. Merkel
`Conley, Rose, & Tayon, PC.
`PO. Box 398
`
`Austin, TX 78767
`
`.
`
`CHACE, CHRISTIAN
`
`PAPER NUMBER
`
`2189
`DATE MAILED: 04/11/2005
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. l0/03)
`
`Symantec 2001
`
`Veeam v. Symantec
`
`IPR2013-00150
`
`Symantec 2001
`Veeam v. Symantec
`IPR2013-00150
`
`

`

`Office Action summary
`
`Application No.
`
`Applicant(s)
`
`10/109,186
`
`RIETSCHOTE, HANS F. VAN
`
`Examiner
`
`Christian P. Chace
`
`Art Unit
`
`2189 -
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(3).
`In no event. however. may a reply be timelyifiled
`after SIX (6) MONTHS from the mailing date of this communication.
`If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`-
`lf NO period for reply is specified above. the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will. by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication. even if timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)IX| Responsive to communication(s) filed on 18 January 2005.
`
`2mg This action is FINAL.
`
`2b)|:] This action is non-final.
`
`3)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Ex parte Quay/e. 1935 CD. 11, 453 0.6. 213.
`
`Disposition of Claims
`
`ME Claim(s) & is/are pending in the application.
`
`4a) Of the above claim(s) _ is/are withdrawn from consideration.
`
`5)I:I Claim(s) __ is/are allowed.
`
`6)E Claim(s)1-_30is/are rejected.
`
`7)l:] Claim(s)
`
`is/are objected to.
`
`8):] Claim(s)
`
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)El The specification is objected to by the Examiner.
`1.0)[:I The drawing(s) filed on __ is/are: a)EI accepted or b)l:| objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`11):] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)[:l Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`a)|j All
`b)I:I Some * c)EI None of:
`
`1.[:I Certified copies of the priority documents have been received.
`
`.
`
`2.l:l Certified copies of the priority documents have been received in Application No.
`31: Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* Seethe attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`1) [j Notice of References Cited (PTO-892)
`2) [3 Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) IX Information Disclosure Statement(s) (PTO-1449 or PTO/SB/OS)
`Paper No(s)/Mai| Date 1/18/05.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 1-04)
`
`4) [:1 Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. .____
`. 5) '3 Notice 0f Informal Patent Application (PTO-152)
`6) C] Other:
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20050406
`
`

`

`Application/Control Number: 10/109,186
`
`Page 2
`
`Art Unit: 2189
`
`DETAILED ACTION
`
`Response to Amendment
`
`This Office action has been issued in response to amendment filed 18 January
`
`2005. Claims 1-30 are pending. Applicant’s arguments have been carefully and
`
`respectfully considered, but they are not persuasive.
`
`In addition, new grounds for
`
`rejection have been necessitated by amendments to some of the claims. Accordingly,
`
`this action has been made FINAL, as necessitated by amendment.
`
`Information Disclosure Statement
`
`IDS submitted 18 January 2005 has been considered by examiner. A signed and
`
`initialed copy is attached hereto.
`
`Claim Rejections - 35 USC § 101
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture. or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
`
`Claims 1-11 and 30 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter. The claims recite, “a storage medium." While
`
`the instant specification does not appear to explicitly disclose a “storage medium,""a
`
`“storage device" is disclosed at page 10, lines 8-18. The end of this paragraph recites,
`
`“Generally, a storage device is any device which is capable of storing data.” It is not
`
`limited to computer-readable storage media or devices.
`
`It could be a piece of paper
`
`with instructions written on it, eg. Accordingly, the claims “storage medium" does not
`
`tangibly embody the recited instructions, and, as such, renders them non-functional
`
`descriptive material and are an abstract idea.
`
`

`

`Application/Control Number: 10/109,1'86
`
`Page 3
`
`Art Unit: 2189
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the second paragraph of 35 U.S.C. 112:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly,
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 1-11 and 30 are rejected under 35 U.S.C. 112, second paragraph, as
`
`being incomplete for omitting essential elements, such omission amounting to a gap
`
`between the elements. See MPEP § 2172.01. The omitted elements are: a tangible
`
`embodiment for the instructions (see supra under 35 USC 101 rejection).
`
`Double Patenting
`
`Claims 1, 12, and 23 are provisionally rejected under the judicially created
`
`doctrine of obviousness-type double patenting as being unpatentable over claim 2 of
`
`copending Application No. 10/109,406. Although the conflicting claims are not identical,
`they are not patentably distinct from each other because they claim the same subject
`
`matter in different words.
`
`Both the instant claims and claim 2 of the copending application claim two I
`
`computer systems, with a virtual machine operating on the first computer system. Both
`
`claim an image from the first system being copied to the second system,
`
`suspending/resuming Operations on that second system.
`
`If a system is suspended, it is
`
`inherently at a point in time.
`
`This is a provisional obviousness—type double patenting rejection because the
`
`conflicting claims have not in fact been patented.
`
`Claims 1, 12, and 23 are provisionally rejected under the judicially created
`
`doctrine of obviousness-type double patenting as being unpatentable over claims 2 and
`
`

`

`Application/Control Number: 10/109,186
`
`Page 4
`
`Art Unit: 2189
`
`17 of copending Application No. 10/108,882. Although the conflicting claims are not
`
`identical, they are not patentably distinct from each other because they claim the same
`
`subject matter in different words.
`
`Similar to the above discussion, the instant claims as well as the copending
`
`claims herein indicated, claim two computer systems, with a virtual machine operating
`
`on the first computer system. Both claim an image from the first system being copied to
`
`the second system, suspending/resuming operations on'that second system.
`
`if a
`
`system is “failed over,” it is a redundant, operating copy of the failed system at a point in
`
`time.
`
`This is a provisional obviousness-type double patenting rejection because the
`
`conflicting claims have not in fact been patented.
`
`Claims 1, 12, and 23 are provisionally rejected under the judicially created
`
`doctrine of obviousness-type double patenting as being unpatentable over claim 23 of
`
`copending Application No. 10/616,437. Although the conflicting claims are not identical,
`
`they are not patentably distinct from each other because they claim the same subject
`
`matter in different words.
`
`Similar to the above discussion, the instant claims as well as the copending claim
`
`herein indicated, claim two computer systems, with a virtual machine operating on the
`
`first computer system. Both claim an image (load) from the first system being copied
`
`(migrated) to the second system, suspending/resuming operations on that second
`
`system.
`
`

`

`Application/Control Number: 10/109,186
`
`‘
`
`Page 5
`
`Art Unit: 2189
`
`This is a provisional obviousness-type double patenting rejection because the
`
`conflicting claims have not in fact been patented.
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351(a) shall have the effects for purposes of this subsection of an application filedIn the United States
`only if the international application designated the United States and was published under Article 21(2)
`of such treatyIn the English language
`
`Claims 1-30 are rejected under 35 USC. 102(e) as being anticipated by Holiday
`
`(US Patent #6,421,739).
`
`With respect to independent claims 1, 12, and 23, capturing a state of a first
`
`virtual machine (as opposed to the whole machine image) executing on a first computer
`
`system, the state of the first virtual machine corresponding to a point in time in the
`
`execution of the first virtual machine, (checkpointing) and copying at least a portion of
`
`the state to a destination separate from a storage device to which the first virtual
`
`machine is suspendable (sent to and stored in the second JVM in response to a failure
`
`of the first JVM) is disclosed in the abstract. The state of the first virtual machine
`
`comprising at least one file is disclosed in column 3, lines 52-62, which discusses that
`
`the objects (files) are copied to represent such state of the program.
`
`The state of the first virtual machine comprising at least one “virtual disk” storing
`
`at least one file used by at least one application executing on a virtual machine is
`
`

`

`Application/Control Number: 10/109,186
`
`Page 6
`
`Art Unit: 2189
`
`disclosed as a virtual disk being a data objects disclosed in column 3, lines 52-62, for
`
`example.
`It is important to note that in the instant specification, applicants discuss
`“virtual storage" at page 6, beginning at line 8, and indicate it may be “any type of
`
`storage." Examiner is also interpreting the “state” being stored on or in the storage, as
`
`a “state” cannot actually be a storage. Suspending the first virtual machine responsive
`
`to suspend command is inherent — a computer must be told what to do. For example,
`
`column 6, line 62 discusses a JVM becoming unavailable.
`
`In order for the system of
`
`Holiday to work at all, it must become aware of the unavailability of one of the JVMs.
`
`This must, inherently, be the result of a “command" of some sort.
`
`With respect to claims 2, 13, and 24, the destination being a backup medium
`coupled to the first computer system and used to backup data from the first computer
`
`system is disclosed in column 8, lines 5-6.
`
`With respect to claims 3, 14, and 25, the at least one virtual disk comprising at
`
`least a first virtual disk which is non-persistent, and wherein the instructions, when
`
`executed, commit any changes to the first virtual disk prior to copying the state to the
`destination is disclosed as heap memory #32 in figure 1, and discussed in column 3, for
`
`example.
`
`With respect to claims 4 and 15, the backup medium comprising a first storage
`
`device accessible by the first computer system is disclosed in figure 1 as heap memory
`
`#42, and discussed in column 3, for example.
`
`

`

`Application/Control Number: 10/109,186
`
`Art Unit: 2189
`
`Page 7‘
`
`With respect to claims 5 and 16, the backup medium comprising a second
`
`computer‘system coupled to communicate with the first computer system is disclosed in
`
`figure 1, #40.
`
`With respect to claims 6, 17, and 26, the instructions, when executed, repeat (i)
`
`and (ii) periodically, thus generating a plurality of states of the first virtual machine
`
`corresponding to different points in time is disclosed as “checkpointing" in column 3, line
`
`55, for example.
`
`With respect to claims 7 and 18, the destination comprising a second computer
`
`system, the second computer system storing at least a portion of the plurality of states
`
`is disclosed in figure 1 as JVM #40.
`
`With respect to claims 8, 19, and 27, second instructions, which, when executed,
`
`resume the first virtual machine on the second computer system from a first state of the
`
`plurality of states is disclosed in the abstract.
`
`With respect to claims 9, 20, and 28, at least one virtual disk comprising at least
`
`a first virtual disk being non-persistent, and wherein the first state includes the first
`
`virtual disk and a corresponding log of uncommitted updates to thefirst virtual disk, and
`
`wherein the second instructions, when executed, commit the uncommitted updates to .
`
`the first virtual disk prior to resuming the first virtual machine is disclosed as both
`
`garbage collecting in column 3, lines 27—31 or checkpointing in column 3, lines 562.
`
`With respect toclaims 10, 21, and 29, suspending the first virtual machine, and
`
`wherein the instructions, when executed, resume the first virtual machine of the first
`
`

`

`Application/Control Number: 10/109,186
`
`Page 8
`
`Art Unit: 2189
`
`computer subsequent to (ii) is disclosed in the abstract as “suspended when it (JVM)
`
`fails."
`
`With respect to claims 11 and 22, creating a new log of uncommitted updates for
`
`each virtual disk in the virtual machine and creating a memory area to capture writes to
`
`a memory of the first virtual machine, such that the first virtual machine can continue
`
`executing is disclosed in figure 5 as new/old memory.
`
`With respect to claim 30, the storage medium comprising “a memory in a
`
`computer system” is disclosed in figure 3, for example, as heaps 32 and 42.
`
`Response to Arguments
`
`With respect to applicant’s argument that Holiday does nOt anticipate the claim
`
`language of the independent claims, examiner respectfully disagrees. Specifically,
`
`applicant alleges that Holiday's data objects do not anticipate the virtual disk, nor the
`
`files stored thereon. Examiner respectfully, but adamantly, disagrees. The application
`
`of Holiday takes all of the added, modified, and/or deleted files relating to an application,
`
`and checkpoints them for redundancy in case of failure. Examiner is unsure how the
`
`JVM of Holiday differs from applicant’s discussion in the instant specification of VMs in
`
`general, which, as applicant discloses at page 5, lines 20-21, “may comprise software
`
`and/or data structures."
`
`On page 9 of the instant remarks, applicant argues that the data objects of
`
`Holiday do not teach or suggest “at least one virtual disk storing at least one file used by
`
`at least one application executing in the first virtual machine.” Examiner respectfully
`
`disagrees.
`
`

`

`Application/Control Number: 10/109,186
`
`Page 9
`
`Art Unit: 2189
`
`More specifically, applicant argues that files are more than merely blocks of data.
`
`However, there does not appear to be any more specific definition in the instant
`
`specification to enforce this assertion. Applicant also argues that it appears that the
`
`Office action accords no meaning to the term “file” other than “block of data," which is
`
`not a reasonable interpretation of the term, “file.” Examiner respectfully disagrees. A
`
`file is a complete, named collection of information, such as a program, a set of data
`
`used by a program, or a user-created document. A file binds a conglomeration of
`
`instructions, numbers, words, or images into a coherent unit that a user can retrieve,
`
`change, delete, save, or send to an output device. An object is also a block of data that
`
`is treated as a discrete entity. For example, in an object-oriented database, the
`
`database supports the use of objects that can store a wide range of data.
`
`With respect to applicant’s argument that Holiday does not teach or suggest
`
`suspending a virtual machine responsive to a suspend command, examiner respectfully
`
`disagrees. Applicant continues to argue that the failure of the JVM of Holiday is not
`
`equivalent to the claimed suspension, because the failure does not occur in response to
`
`a command. Examiner respectfully disagrees. Everything in a computer is in response
`
`to a command of some kind — it must, inherently be. Applicant does not appear to more
`
`specifically define a “suspend command" anywhere in the instant application.
`
`If Holiday
`
`does not issue some sort of command to tell the second JVM to begin acting for the
`
`first, upon the failure of the first, examiner is at a loss to know how else it would know to
`
`do so.
`
`

`

`Application/Control Number: 10/109,186
`
`Page 10
`
`Art Unit: 2189
`
`With respect to applicant’s arguments regarding the 35 USC 101 rejections, they
`
`are moot in light of the new grounds for rejection necessitated by amendment.
`
`With respect to applicant’s request to hold the double-patenting rejections in
`
`abeyance, examiner notes that rejections are not held in abeyance. MPEP 804 l. (B.),
`
`as cited by applicant as allegedly supporting this assertion, actually recites:
`
`“B. Between Copending Applications—Provisional Rejections
`
`Occasionally, the examiner becomes aware of two copending applications filed
`
`by the same inventive entity, or by different inventive entities having a common
`
`inventor, and/or by a common assignee that would raise an issue of double
`
`patenting if one of the applications became a patent. Where this issue can be
`
`addressed without violating the confidential status of applications (35 U.S.C.
`
`122), the courts have sanctioned the practice of making applicant aware of the
`
`potential double patenting problem if one of the applications became a patent by
`
`permitting the examiner to make a “provisional” rejection on the ground of double
`
`patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976);
`
`In re
`
`Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). The merits of such a
`
`provisional rejection can be addressed by both the applicant and the
`
`examiner without waiting for the first patent to issue.
`
`The “provisional” double patenting rejection should continue to be made
`
`by the examiner in each application as long as there are conflicting claims
`
`in more than one application unless that “provisional” double patenting
`
`rejection is the only rejection remaining in one of the applications. lfthe
`
`

`

`Application/Control Number: 10/109,186
`
`'
`
`Page 11
`
`Art Unit: 2189
`
`' “provisional” double patenting rejection in one application is the only rejection
`
`remaining in that application, the examiner should then withdraw that rejection
`
`and permit the application to issue as a patent, thereby converting the
`
`“provisional” double patenting rejection in the other application(s) into a double
`
`patenting rejection at‘the time the one application issues as a patent.
`
`If the “provisional" double patenting rejections in both applications are the only
`
`rejections remaining in those applications, the examiner should then withdraw
`
`that rejection in one of the applications (e.g., the application with the earlier filing
`
`date) and permit the application to issue as a patent. The examiner should
`
`maintain the double patenting rejection in the other application as a
`
`“provisional” double patenting rejection which will be converted into a
`
`double patenting rejection when the one application issues as a patent.”
`
`Accordingly, the rejection has been maintained, and made final.
`
`With respect to applicant’s request to consider the IDS previously submitted, and
`submitted again instantly, examiner has done so, and notes that the original had not
`
`been scanned into the file. Examiner apologizes on behalf of the Office for any
`
`inconvenience this may have caused. As noted supra, a signed and initialed copy is
`
`attached hereto.
`
`

`

`Application/Control Number: 10/109,186
`
`Page 12
`
`Art Unit: 2189
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(3) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory'period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Christian P. Chace whose telephone number is
`
`571.272.4190. The examiner can normally be reached on MAXI FLEX.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Donald Sparks can be reached on 571.272.4201. The fax phone number
`
`for the organization where this application or proceeding is assigned is 708—872-9306.
`
`

`

`Application/Control Number: 10/109,186
`
`Page 13
`
`Art Unit: 2189
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available'through Private PAIR only.
`
`For‘more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free).
`
`O/M‘%,
`
`Christian P. Chace
`
`Examiner
`
`Art Unit 2189
`
`

`

`Information Disclosme Statement
`
`’
`
`Page 1 of 1
`
`:ION DISCLOSURE STATEMENT
`
`
`Electronic Version v18
`
`Stylesheet Version v18.0
`
`Title of
`
`nvention
`
`.
`
`I
`
`Disaster Recovery And Backup Using Virtual Machines
`
`.
`
`
`
`Application Number:
`
`10/109186
`
`Confirmation Number.
`
`4997
`
`First Named Applicant: Hans vanRietschote
`
`Attorney Docket Number. 5760-00400
`
`Art Unit:
`
`Examiner:
`
`2187
`
`Christian Chace
`
`*10/1091 86*
`
`Search string:
`
`( 6763440 or 6003065 or 6789103 ).pn. .
`
`US Patent Documents
`
`Note: Applicant is not required to submit a paper copy of cited US Patent Documents
`
`2004-09-07 _
`
`n 6789103
`
`Remarks
`
`Note: Remarks are not for responding to an oflioe action.
`
`Additional document to accompany Information Disclosure Statement and Request for
`
`Continuation Examination papers.
`
`Signature
`
`. Examiner Name
`
`1'/
`
`7
`
`4
`
`. file://K:\V\Veritas%20(5760)\VERITAS%200\00400\IDS1 1-10\IDSl 1-10-usidst.xml
`
`1 1/10/2004
`
`