`
`10/109’186
`Application No.2
`Filed: March 28, 2002
`Inventor“):
`.
`Hans F. van R1etschote
`
`Examiner:
`§
`§ Group/Art Unit:
`§ Atty. Dkt. No:
`§
`
`Chace, Christian P.
`2189
`5760-00400/VRTS
`0064
`
`I hereby certify that this correspondence is being deposited with
`the United States Postal Service with sufficient postage as first
`class marl
`in an envelope addressed to Comnussroner
`for
`Sigrifiiigga [1333;450, Alexandria, VA 22313-1450, on the
`
`
`
`§ §
`
`§
`§
`§
`
`§ § § § §
`
`Title Disaster Recovery and
`Backup Using Virtual
`Machines
`
`
`
`RESPONSE TO OFFICE ACTION OF
`
`September 26, 2005
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This paper is submitted in response to the Office Action of September 26, 2005,
`
`to further highlight why the application is in condition for allowance.
`
`Please amend the case as set forth below:
`
`Symantec 2001
`
`Veeam v. Symantec
`IPR2013-00150
`
`Symantec 2001
`Veeam v. Symantec
`IPR2013-00150
`
`

`

`IN THE SPECIFICATION:
`
`Please amend the paragraph beginning on page 24, line 21, as set forth below:
`
`It is noted that, in various embodiments shown above, the backup program 42, the
`
`checkpoint program 76, the recovery program 78, and/or the image 40 of the virtual
`
`machine 16A are shown stored on various storage devices. Generally, any one or more
`
`of the above (and/or the VM kernel 18A, the O/S 30, the application 28, etc.) may be
`
`carried on a carrier medium. Generally speaking, a carrier medium may include storage
`
`media such as magnetic or optical media, e. g., disk or CD—ROM, volatile or non-volatile
`
`memory media such as RAM (e. g. SDRAM, RDRAM, SRAM, etc.), ROM, etc. Any of
`
`the previous media and/or any other physical media readable by a computer may
`
`comprise computer readable media. A carrier medium may further comprise Tas—vveH—as
`
`transmission media or signals such as electrical, electromagnetic, or digital signals,
`
`conveyed via a communication medium such as a network and/or a wireless link.
`
`

`

`REMARKS
`
`Claims 1-30 remain pending. In the present Office Action, claims 1-30 were
`
`rejected under 35 U.S.C. § 103(a) as being unpatentable over Holiday, US. Patent No.
`
`6,421,739 ("Holiday") in view of Oyamada et a1., US. Patent No. 6,802,062
`
`("Oyamada"). Claims 1, 12, and 23 were also provisionally rejected under the judicially
`
`created doctrine of obviousness type double patenting over three co—pending applications.
`
`Applicant respectfully traverses these rejections and requests reconsideration.
`
`Section 103 Rejection
`
`Applicant respectfully submits that each of claims 1—30 recites a combination of
`
`features not taught or suggested in Holiday and Oyamada. For example, claim 1 recites a
`
`combination of features including: "capture a state of a first virtual machine executing on
`
`a first computer system... wherein the first Virtual machine comprises at least one virtual
`
`disk storing at least one file used by at least one application executing in the first virtual
`
`machine, and wherein the state of the first virtual machine comprises the at least one
`
`fil—e."
`
`Holiday's Data Objects Do Not Teach or Suggest a File
`
`The present Office Action alleges that Holiday's data objects (6. g. Holiday, col. 3,
`
`lines 52-62) teach the at least one file described above (see Office Action, page 5, lines 1-
`
`4). Applicant respectfully disagrees.
`
`Holiday's objects are data stored in the heap memory 32 allocated to the JVM
`
`(see, e. g., Fig. l). The objects are deleted Via a garbage collection function separate from
`
`the application if they are no longer referenced by the running application (see, e. g.,
`
`Holiday, col. 3, lines 10-13). Additionally, Holiday teaches "The software application
`
`program residing in the memories 32a and 42a preferably uses event—driven 'run-to-
`
`completion’ models of processing, wherein, once an event is received, it is processed to
`
`completion without interruption from other threads or processes in the JVM, and a
`
`response is generated as appropriate. The point of receipt of such an event and the point
`
`of completion of processing of such an event define two points in time between which
`
`

`

`points the application program addsI modifiesI and/or discards data objects stored in the
`
`heap memories 32 and 42, and thereby changes the state of the program. (Holiday, col. 3,
`
`lines 39-49). Furthermore, Holiday teaches that all data objects related to a transaction
`
`are discarded at the end of the transaction (Holiday, Fig. 2, element 220 and col. 5, lines
`
`39-42). Thus, data objects are created in heap memory temporarily for processing a
`
`transaction, and then discarded when the transaction is complete. On the other hand, a
`
`file is often stored in a non—volatile memory and may exist after terminating execution of
`
`the application that uses the file. These data objects of Holiday's 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" as recited in claim 1.
`
`Previous Office Actions have further alleged that "the fact remains that
`
`[Holiday's data objects] are blocks of data, which is exactly what files or disks are".
`
`Applicant does not disagree that both Holiday's data objects and a file may comprise
`
`blocks of data. However, while files and data objects may both comprise blocks of data,
`
`they also have other attributes and/or characteristics which are not the same. For
`
`example, the manner in which an application in Holiday's disclosure adds, modifies, and
`
`discards data objects in the heap memory during the life of a transaction is not the same
`
`as the manner in which an application interacts with a file. A file is typically opened,
`
`closed, read, and written using a predefined API provided by an operating system.
`
`It
`
`appears that the Office Actions in the present application accord no meaning to the term
`
`"file" other than "block of data", which is not a reasonable interpretation of the term
`
`"file". Applicant notes that the broadest reasonable interpretation of a claim term must be
`
`consistent with the interpretation that one of skill in the art would reach (see MPEP
`
`2111). In effect, the Office Action appears to identify two species of blocks of data ga
`
`file and Holiday's data object), and attempts to anticipate one species with the other.
`
`Anticipation reguires fairly strict identig (see MPEP 2131). While different
`
`terminology may be used, it must be clear that the terms have identical meaning. As
`
`explained above, files and data objects in memory do not have identical meanings. Data
`
`objects in memory do not teach or suggest files.
`
`

`

`Applicant notes that the present Office Action cites patent 6,542,909 (Tamer et
`
`al., herein "Tamer") as describing objects as files. Tamer is not used in a rejection, but
`
`Applicant notes that Tamer, like any other patentee, is free to define a term in anyway
`
`he/she likes. Tamer's definition cannot be used to overcome Holiday's clear description
`
`of an object as temporary, heap-resident data and not a file, as explained above.
`
`Furthermore, Tamer is concerned with file systems and describes obj ects in the file
`
`system, which has nothing to do with Holiday's JVM.
`
`Holiday and Oyamada Do Not Teach or Suggest Copjg'ng Features
`
`Furthermore, claim 1 recites "copy at least a portion of the state to a destination
`
`separate from a storage device to which the first Virtual machine is suspendable, wherein
`
`suspending the first virtual machine is performed responsive to a suspend comman ".
`
`Holiday does not teach or suggest the above highlighted features. The present Office
`
`Action suggests that the suspend command is inherent because a computer must be told
`
`what to do. However, given Holiday's repeated discussions of a failure of the JVM as
`
`causing an application to move to another machine, Applicant respectfully traverses this
`
`assertion. A computer is not told to fail. Failure occurs due to error, either in the
`
`soflware or in the hardware on which the sofiware is executing. Previous Office Actions
`
`have also noted the phrase "or otherwise becomes unavailable" in col. 6, line 62 of
`
`Holiday as allegedly supporting the inherency of a command. Applicant respectfiilly
`
`disagrees. Holiday's focus is on fault-tolerance (see, e. g., the title) and recovering from
`
`the failure of a JVM (see, e.g., the abstract). There is no evidence that the phrase "or
`
`otherwise becomes unavailable" is intended to indicate that a command is somehow
`
`involved. A JVM may become unavailable, e. g., due to the failure of a network to which
`
`the computer executing the JVM is coupled, but that would still not indicate a command
`
`telling the computer to cause the JVM to fail.
`
`Additionally, the present Office Action alleges that Oyamada teaches a suspend
`
`command in col. 8, lines 28-45. Applicant respectfully disagrees. Oyamada teaches "In
`
`the case where the judgment is that a VM of an identical configuration cannot be
`
`generated, in contrast, the virtual machine system 22 gives a response notifying the VM
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`

`

`preparation failure to the virtual machine system 20 which has requested the movement,
`
`and suspends or terminates the execution of the VM move control (step 519). Upon
`
`receipt of the response notifying the VM generation failure from the destination, the
`
`origin judges that the generation of an identical VM configuration has failed and
`
`suspends or terminates the execution of the VM move control (steps 502, 503)."
`
`(Oyamada, col. 8, lines 35-45). Thus, Oyamada teaches the suspension of a move control
`
`(or a movement means) that attempts to move a virtual machine. This has nothing to do
`
`with suspending a virtual machine.
`
`For at least all of the above stated reasons, Applicant respectfully submits that
`
`claim 1 is patentable over the cited art. Claims 12 and 23 recite combinations of features
`
`including features similar to those highlighted above. For similar reasons, Applicant
`
`respectfully submits that the claims 12 and 23 are patentable over the cited art. Claims 2-
`
`11 and 30, dependent from claim 1, claims 13—22, dependent from claim 12, and claims
`
`24-29, dependent from claim 23, are patentable over the cited art for at least the above
`
`stated reasons as well. Each of claims 2-11, 13-22, and 24-30 recite additional
`
`combinations of features not taught or suggested in the cited art.
`
`
`Claims 3 14 and 25
`
`For example, claim 3 recites a combination of features including: "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".
`
`The Office Action alleges that the first virtual disk is the heap memory 32, as
`
`discussed in col. 3. Applicant respectfully submits that nothing in col. 3 teaches
`
`committing any changes to the heap memory before copying state to the destination (the
`
`heap memory 42). Most of col. 3 of Holiday discusses garbage collection in the data
`
`objects of the heap, which has nothing to do with the above highlighted features. With
`
`respect to checkpointing, Holiday teaches "The collection of a copy of the data objects
`
`which are added, modified, and discarded during an event represents the change in state
`
`of the program, and is referred to herein as a checkpoint. The checkpoint, as used herein,
`
`

`

`thus represents the difference, that occurs during the execution of a sofiware application
`
`program between two points in time, to the state of that program, such state being
`
`represented by the data objects in the heap memory 32 and 42 of the respective JVMs 30
`
`and 40. The checkpoint may thus be used to update the state of the program in another
`
`JVM. Because the application program is considered herein to run each event to
`
`completion, the state of the application program which is required to process the next
`
`event is captured by objects on the heap, thereby rendering it unnecessary to copy the
`
`, processor stack, machine registers, and the like to the checkpoint." (Holiday, col. 3, lines
`
`52-67). Nothing in these teachings teaches or suggests "a first virtual disk which is non-
`
`persistent, and wherein the instructions, when executed, commit any changes to the first
`
`virtual disk prior to copyp'ng the state to the destination".
`
`For at least all of the above stated reasons, Applicant respectfully submits that the
`
`claim 3 is patentable over the cited art. Claims 14 and 25 recite combinations of features
`
`including features similar to those highlighted above for claim 3. For similar reasons,
`
`Applicant respectfully submits that claims 14 and 25 are patentable over the cited art.
`
`
`Claims 9 20 and 28
`
`As another example, claim 9 recites a combination of features including: "the
`
`first state includes the first virtual disk and a corresponding log of uncommitted updates
`
`to the first 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".
`
`The Office Action alleges that the above highlighted features are taught in
`
`Holiday via the garbage collection at col. 3, lines 27-31 or the checkpointing in col. 3,
`
`lines 5-62. Applicant respectfully submits that nothing regarding the garbage collection
`
`and/or the checkpointing of Holiday teaches or suggests the above highlighted features.
`
`With regard to the garbage collection at col. 3, lines 27-31, Holiday teaches: "Such
`
`generation-copying garbage collection functions 36 and 46 preferably utilize a 'write
`
`barrier' (not shown), well-known in the art, by which all changes to data in heaps that are
`
`managed by a respective garbage collection function are tracked." The mere fact that
`
`

`

`changes to the data in the heap are tracked does not teach or suggest anything remotely
`
`similar to "the first state includes the first virtual disk and a corresponding log of
`
`uncommitted updates to the first 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".
`
`As to the checkpointing, Holiday teaches "The collection of a copy of the data
`
`objects which are added, modified, and discarded during an event represents the change
`
`in state of the program, and is referred to herein as a checkpoint. The checkpoint, as used
`
`herein, thus represents the difference, that occurs during the execution of a software
`
`application program between two points in time, to the state of that program, such state
`
`being represented by the data objects in the heap memory 32 and 42 of the respective
`
`JVMs 30 and 40. The checkpoint may thus be used to update the state of the program in
`
`another JVM. Because the application program is considered herein to run each event to
`
`completion, the state of the application program which is required to process the next
`
`event is captured by objects on the heap, thereby rendering it unnecessary to copy the
`
`processor stack, machine registers, and the like to the checkpoint." (Holiday, col. 3, lines
`
`52-67). Again, nothing in these teachings, either alone or in conjunction with garbage
`
`collection, has anything to do with "the first state includes the first virtual disk and a
`
`corresponding log of uncommitted updates to the first 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" as recited in claim 9.
`
`For at least all of the above stated reasons, Applicant respectfully submits that
`
`claim 9 is patentable over the cited art. Claims 20 and 28 recite combinations of features
`
`including features similar to those highlighted above. For similar reasons, Applicant
`
`respectfully submits that claims 20 and 28 are patentable over the cited art.
`
`
`Claims 10 21 and 29
`
`As yet another example, claim 10 recites a combination of features including:
`
`"wherein (i) comprises suspending the first virtual machine, and wherein the instructions,
`
`

`

`when executed, resume the first virtual machine on the first computer system subsequent
`
`to (ii)".
`
`The Office Action alleges that the above highlighted features are taught in the
`
`abstract of Holiday. However, the abstract teaches "providing a first JVM with support
`
`for fault tolerance by using information maintained by the first JVM to checkpoint
`
`objects that are created, modified, and/or deleted during the process of responding to an
`
`event of a transaction. The checkpointed objects are sent to and stored in a second JVM
`
`such that the second JVM is fully capable of continuing the processing of the transaction
`
`in the event of the failure of the first JVM." Nothing about checkpointing the objects
`
`from the first JVM to the second JVM, and continuing processing on the second JVM if
`
`the first JVM fails, teaches or suggests "wherein (i) comprises suspending the first virtual
`
`machine, and wherein the instructions, when executed, resume the first virtual machine
`
`on the first computer system subsequent to (ii)".
`
`For at least all of the above stated reasons, Applicant respectfully submits that
`
`claim 10 is patentable over the cited art. Claims 21 and 29 recite combinations of
`
`features including features similar to those highlighted above. For similar reasons,
`
`Applicant respectfully submits that claims 21 and 29 are patentable over the cited art.
`
`Claims 11 and 22
`
`As still another example, claim 11 recites a combination of features including:
`
`"wherein (i) comprises creating a new log of uncommitted updates for each virtual disk in
`
`the first 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 during
`
`(ii)".
`
`The Office Action alleges that the above highlighted features are taught in Fig. 5
`
`of Holiday, citing the new/old memory. Applicant respectfully submits that the new/01d
`
`memory is used for garbage collection purposes, and has nothing to do with the above
`
`highlighted features. For example, Holiday teaches: "generation-copying garbage
`
`

`

`collection functions which promote 'live' objects (i.e., root object and objects referenced,
`
`or pointed to, by another object) from a 'new' portion of memory to an 'old' portion of
`
`memog may be used. For the sake of illustration and preference, the present invention
`
`will be described using such a generation-copying garbage collection function. To that
`
`end, the heap memories 32 and 42 are further partitioned into 'NEW‘ memories 32b and
`
`42b, respectively, and 'OLD' memories 32c and 420, respectively, for use by the
`
`respective garbage collection fimctions 36 and 46" (Holiday, col. 3, lines 15-26). With
`
`regard to Fig. 5, Holiday teaches: "In step 216, upon completion of the processing of the
`
`first event in step 214, an appropriate response is generated and transmitted to the
`
`network 20, as depicted in FIG. 5." (Holiday, col. 5, lines 32-35). Nothing in these
`
`teachings from Holiday anticipates "wherein (i) comprises creating a new log of
`
`uncommitted updates for each virtual disk in the first 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 during (ii)" as recited in claim 11.
`
`For at least all of the above stated reasons, Applicant respectfully submits that
`
`claim 11 is patentable over the cited art. Claim 22 recites a combination of features
`
`including features similar to those highlighted above. For similar reasons, Applicant
`
`respectfully submits that claim 22 is patentable over the cited art.
`
`Double Patenting Rejection
`
`Applicant respectfully disagrees with the obviousness-type double patenting
`
`rejections over the co-pending applications. However, Applicant requests that these
`
`rejections be held in abeyance until the claims are otherwise in condition for allowance,
`
`at which time Applicant may consider the filing of a request to cancel the provisional
`
`rejections (if none of the co—pending applications has been patented -- see MPEP
`
`804(I)(B)) or the filing of a Terminal Disclaimer. Applicant notes that the filing of a
`
`Terminal Disclaimer to obviate a nonstatutory double patenting rejection is not an
`
`admission of the propriety of the rejection.
`
`10
`
`

`

`Specification Objection
`
`The specification was objected to for allegedly not providing proper antecedent
`
`basis for the claimed subject matter for not including the term "computer readable
`
`medium". Applicant respectfully disagrees with the objection, and notes that the
`
`specification can provide antecedent basis for a claim term even if that term does not
`
`appear in the specification, so long as one of ordinary skill in the art is reasonably
`
`apprised of its meaning. The various media recited in the specification (e. g. page 24,
`
`lines 25-27) are all clearly computer readable and thus there is support in the
`
`specification for computer readable media. However, Applicant has amended the
`
`specification to use the term computer readable media, and respectfully submit that the
`
`amendment overcomes the objection. Furthermore, the amendment is not new matter
`
`since one of skill in the art would clearly have recognized that various media in the
`
`specification are computer readable media.
`
`11
`
`

`

`CONCLUSION
`
`Applicant respectfully submits that the application is in condition for allowance,
`
`and an early notice to that effect is requested.
`
`If any extensions of time (under 37 CPR. § 1.136) are necessary to prevent the
`
`above referenced application(s) from becoming abandoned, Applicant(s) hereby petition
`
`for such extensions. If any fees are due, the Commissioner is authorized to charge said
`
`fees to Meyertons, Hood, Kivlin, Kowert, & Goetzel, P.C. Deposit Account No.
`
`501505/5760-00400/LJM.
`
`Also enclosed herewith are the following items:
`
`Return Receipt Postcard
`
`El Petition for Extension of Time
`
`[:I Request for Approval of Drawing Changes
`
`E] Notice of Change of Address
`
`E] Fee Authorization Form authorizing a deposit account debit in the amount of $
`
`for fees (
`
`).
`
`D Other:
`
`Respectfully submitted,
`
` nce J. Merke
`
`
`g. No. 41,191
`
`AGENT FOR APPLICANT(S)
`
`
`Meyertons, Hood, Kivlin, Kowert, & Goetzel, P.C.
`PO. Box 398
`
`Austin, TX 78767-0398
`Phone: (512) 853-8800
`
`Date:
`
`‘iL / {Lil/Og/
`
`12
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`