Mahendra M. Chheda et al.

Patent Trials and Appeals Board

Jul 30, 2019

13479146 - (D) (P.T.A.B. Jul. 30, 2019)

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.
13/479,146 05/23/2012 Mahendra M. Chheda 090204-0830790
(038800US)
6573
107508 7590 07/30/2019
Kilpatrick Townsend & Stockton LLP/ Amazon, Inc
Mailstop: IP Docketing 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SANTOS-DIAZ, MARIA C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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):
ATI-Patents@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAHENDRA M. CHHEDA, SHAWN E. HEIDEL,
ROBERT B. JAYE, JUSTIN K. BRINDLEY-KOONCE,
and ERIC JASON BRANDWINE
____________

Appeal 2018-004136
Application 13/479,146
Technology Center 3600
____________

Before BARBARA A. BENOIT, HUNG H. BUI, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 4–12.1 See App. Br. 6–7; Final Act. 1.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Claims 2 and 3 have been cancelled, and claims 13–24 have been
withdrawn. See App. Br. 39, 41–43 (Claims App’x).
2 The Examiner’s Answer withdraws the Final Office Action’s rejection
under U.S.C. § 101 of claims 1 and 4–12. See Ans. 3.
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Technology Background
The present application relates to “providing resource allocation
advice regarding data storage, access, placement, and/or related
web services to web service users via a computing resource
and/or service provider,” where “resource allocation advice
may be provided to the user, automatic remediation may be
performed, and/or one or more settings (e.g., for manual
remediation) may be provided to the user,” “[b]ased . . . on the
outcome of [a] best practice check.”
App. Br. 1 (quoting Spec. ¶¶ 10, 22) (brackets by Appellants).
Illustrative Claim
Claims 1 and 7 are independent; claim 1 is illustrative:
1. A computer-implemented method for performance
management of a distributed system, comprising:
generating, by a computing system, at least one
configuration setting associated with operation of one or more
computer systems;
instructing, by the computing system, the one or more
computer systems implementing a virtual machine to perform
an operation on an operatively attached data store, the operation
being performed on behalf of a user;
receiving, by the computing system and from the virtual
machine of the one or more computer systems operating on
behalf of the user, information associated with the operation
performed on the operatively attached data store, the received
information including configuration information related to the
virtual machine and usage information related to the operation
performed on the operatively attached data store, the usage
information indicating data access requests performed by the
operatively attached data store on behalf of the user and time
intervals that correspond to the data access requests performed
by the operatively attached data store on behalf of the user, the
configuration information identifying at least one operation
performed by the operatively attached data store that is based at
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least in part on an application programming interface (API)
stream associated with the virtual machine;
determining, by the computing system, based at least in
part on the received usage information, a first indication of how
the data store is being utilized with relation to the at least one
configuration setting;
determining, by the computing system, based at least in
part on the received configuration information and a stage of
an account associated with the user and the operatively
attached data store, a second indication of how at least one
account setting is configured with relation to the at least one
configuration setting, the stage of the account comprising at
least one a development stage, a testing stage, or a production;
determining, by the computing system, based at least in
part on the first indication and the second indication, a
performance recommendation associated with operation of the
operatively attached data store; and
instructing, by the computing system, the one or more
computer systems to perform an optimization performance
operation with respect to the operatively attached data store
based at least in part on the determined performance
recommendation.
App. Br. 38–39 (Claims App’x) (disputed limitations shown in italics).
The Pending Rejections
The Examiner rejected claims 1 and 4–12 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Final Act. 3–5.3
The Examiner rejected claims 1 and 4–12 under 35 U.S.C. § 103(a) as
unpatentable over Prafullchandra (US 2010/0070319 A1; pub. Mar. 18,

3 In response to the Appeal Brief, the Answer withdraws one of the Final
Action’s two bases for the written description rejection. See Ans. 6.
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2010), Sivasubramanian (US 2010/0250748 A1; pub. Sept. 30, 2010), and
Isaacs (US 2010/0082378 A1; pub. Apr. 1, 2010). Final Act. 14–37.
ANALYSIS
The 35 U.S.C. § 112 Written Description Rejection
The Examiner finds that Appellants’ Specification does not provide
written description support for claim 1’s disputed limitations of
determining, by the computing system, based at least in
part on the received configuration information and a stage of an
account associated with the user and the operatively attached
data store, a second indication of how at least one account
setting is configured with relation to the at least one
configuration setting, the stage of the account comprising at
least one [of] a development stage, a testing stage, or a
production [stage].
Final Act. 3–5; Ans. 3–6. The Examiner similarly finds the Specification
does not provide written description support for claim 7’s recited step of
analyzing, by the computing system, the received
information based at least in part on at least one configuration
test to determine whether the usage operation conforms with a
resource usage rule and whether the at least one setting of the
virtual machine matches a recommended setting further based
at least in part on a stage of an account associated with the user
and the data source, the stage of the account comprising at least
one of a development stage, a testing stage or a production
stage.
Id.4 (emphasis omitted).
Appellants contend the Examiner errs because, vis-à-vis claim 1’s
disputed limitations,

4 The dependent claims stand rejected for lack of written description support
based on their dependency on the independent claims.
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the originally filed [S]pecification does provide support for the
above recited features of the claims as the [S]pecification, at
multiple locations, describes using various data points to
determine or check how at least one account setting is
configured with relation to the at least one configuration setting
(i.e., the received configuration information and a stage of an
account associated with the user and the operatively attached
data store).
Reply Br. 3–4 (citing Spec. ¶¶ 11–15, 23, 25, 41, 44, 46, 47, 52, 77, 89, 92).
For claim 7, Appellants contend
the as-filed [S]pecification provides support for using the stage
of the account, particularly with reference to the usage of the
operatively attached data store that reflects the stage of the
account (e.g., testing stage, production stage, or development
stage) to perform the best practice checks, configuration setting
checks, health checks, etc., to compare a recommendation
setting.
Id. at 4. Appellants’ argument is persuasive.
Compliance with the written description requirement is a question of
fact that is context-sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.”). To fulfill the written description requirement, the
“specification must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (citation and
quotation omitted).
Here, Appellants’ Specification describes determining “resource
allocation advice” based on one or more of a variety of factors, such as “best
practice checks, user settings, [and] configurations.” Spec. ¶ 11. The
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Specification further describes that determining “a level of advisement” may
be “based at least in part on received profile information associated with
usage of [an] account” that “indicates whether the usage of the account is in
a development stage, a testing stage, or a production stage.” Spec., Original
Claims 13–15. Ordinarily skilled artisans would have understood that this
disclosure demonstrates Appellants were in possession of the disputed
limitations’ requirements for “determining, by the computing system, based
at least in part on the received configuration information and a stage of an
account associated with the user, . . . [an] indication,” as recited in claim 1,
and similarly recited in claim 7.
The information for fixing account settings is an embodiment of the
recited “second indication.” The Specification clarifies that it is an
“indication of how at least one account setting is configured with relation to
the at least one configuration setting,” as recited, because the Specification
explains that a “best practice check” can indicate information for “fixing the
account settings to comply with the best practice guidelines.” Spec. ¶ 14.
Artisans of ordinary skill would have understood from Appellants’
Specification that the information for fixing account settings may be
determined based on received “user settings” information, which constitutes
received (and related) configuration information. Id. ¶ 11. Further, the
information for fixing account settings is an “indication of how [an] account
setting is configured with relation to [a] configuration setting,” as recited,
because the account settings relate to or include (or, in the claim’s
vernacular, are “configured with relation to”) configuration settings such as
user security settings, which the Specification identifies as an exemplary
configuration setting. Id. ¶ 30.
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Thus, Appellants persuade us the Examiner errs in finding the as-filed
Specification does not provide written description support for claims 1 and
7. For similar reasons, Appellants persuade us the Examiner similarly errs
in the written description rejection of claim 7, which was similarly rejected.
See Reply Br. 8; Final Act. 3–5. Accordingly, we do not sustain the
rejection under 35 U.S.C. § 112, first paragraph, of claims 1 and 4–12.
The 35 U.S.C. § 103(a) Obviousness Rejection
The Board “reviews the obviousness rejection[s] for error based upon
the issues identified by appellant, and in light of the arguments and evidence
produced thereon.” Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011)).5 Arguments not made are deemed waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 16
Appellants contend the Examiner errs in finding the cited prior art
teaches or suggests the disputed limitation in claim 1 discussed above for the
§ 112 written description rejection. In particular, Appellants argue the
Examiner errs because Isaacs does not teach or suggest
“determining . . . based at least in part on the received
configuration information and a stage of an account associated
with the user and the operatively attached data store, a second

5 See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
6 Based on Appellants’ arguments in the Appeal Brief, claim 7 stands or falls
with claim 1, as do the dependent claims, with the exception of claim 5. See
App. Br. 34–37.
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indication of how at least one account setting is configured with
relation to the at least one configuration setting” where the
stage of the account comprises at least one of a “development
stage, a testing stage, or a production stage.”
App. Br 33 (quoting claim 1).
This argument is unpersuasive because the rejection relies on
Prafullchandra, not merely Isaacs, for teaching significant portions of the
argued portion of the disputed limitation. See Final Act. 20 (citing
Prafullchandra ¶¶ 38, 50). One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore,
each reference cited by the Examiner must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of the cited
references. Keller, 642 F.2d at 425.
In support of the obviousness rejection, the Examiner relies on
Prafullchandra for teaching disputed limitation’s requirements for
“determining . . . based at least in part on the received configuration
information, a second indication of how at least one account setting is
configured with relation to the at least one configuration setting,” as recited.
Final Act. 20 (emphasis omitted). The Examiner then relies on Isaacs to “fill
the gap” for those requirements in the disputed limitation missing from
Prafullchandra, and explains why it would have been obvious to combine the
teachings of Isaacs and Prafullchandra. Id. at 23–24 (citing Isaacs ¶¶ 5, 27–
28, Fig. 2) (explaining “Prafullchandra does not disclose taking into
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consideration a stage of the account in order to make such determination”
and “Isaacs in introduced to cure such deficiency by disclosing a testing
phase in which the system is able to collect data and compare the collected
data with the baseline data in order to make a recommendation”); see also
Ans. 7 (discussing the combined teachings of Prafullchandra and Isaacs).
Appellants contend Isaacs does not teach or suggest “testing data that
corresponds to ‘a stage of an account associated with the user and the
operatively attached data store,’ where the stage of the account comprises at
least one of a ‘development stage, a testing stage, or a production stage,’ as
recited.” Reply Br. 5. We disagree. Isaacs discloses a system for
optimizing business processes that retrieves “testing data on a business
application” prior to the application’s deployment, which establishes “a bank
of baseline data” for business processes. Isaacs ¶¶ 5, 27. Isaacs further
discloses retrieving “actual data on the business application” during the
application’s deployment, which is analyzed against the baseline data to
determine whether a particular in-use business process had been tested in the
testing stage. Id. (also teaching the determination of business process
quality and usability). Thus, contrary to Appellants’ argument, the “testing
data” disclosed by Isaacs, which indicates if the software was tested in a
testing stage, corresponds to “a stage of an account associated with the
user,” as recited.7
Appellants further contend “the Answer and the Office Action fail to
explain how an equivalent account setting in Isaacs is configured with
relation to a configuration setting by utilizing the ‘received configuration
information and a stage of an account associated with a user and the

7 There is no dispute over “the operatively attached data store” requirement.
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operatively attached data store.’” Reply Br. 5. This is unpersuasive because
it does not rebut the finding in the Answer and the Final Rejection that
Prafullchandra teaches the recited use of “received configuration
information.” See Final Act. 20, 23 (emphasis omitted); Ans. 7; Merck, 800
F.2d at 1097; Keller, 642 F.2d at 425.
Accordingly, Appellants do not persuade us the Examiner errs in the
rejection of claim 1 under 35 U.S.C. § 103(a), and we sustain its rejection.
Claim 7
In the Appeal Brief, Appellants present no substantive arguments of
Examiner error separate from the arguments for claim 1. App. Br. 34–35.
In the Reply Brief, however, Appellants present a new argument for why the
Examiner erred the rejection of claim 7. Reply Br. 5–7. In particular,
Appellants argue the Examiner errs in finding Isaacs teaches or suggests
“analyzing . . . the received information based at least in part on
at least one configuration test to determine whether the usage
operation conforms with a resource usage rule and whether the
at least one setting of the virtual machine matches a
recommended setting further based at least in part on a stage of
an account associated with the user and the data source,” where
“the stage of the account compris[es] at least one of a
development stage, a testing stage, or a production stage,” as
recited by independent claim 7. The Office fails to provide any
explanation of how the business data from Isaacs is similar to
the stage of the account of Appellant[s’] claims nor is there any
description of Isaacs that the information (bank of baseline data
about business processes) is used in a similar fashion as
Appellant[s’] claim to “determine whether the usage operation
conforms with a resource usage rule,” as recited in independent
claim 7.
Reply Br. 7 (first brackets by Appellants).
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In other words, unlike the Appeal Brief, the Reply Brief challenges
the Examiner’s finding that Isaacs teaches or suggests the recited analyzing
“to determine whether the usage operation conforms with a resource usage
rule,” as recited. However, Appellants provide no explanation for not
raising this argument in the Appeal Brief, such as a new point in the
Examiner’s Answer or any other circumstance constituting “good cause”
that justifies this new argument. Thus, we find this argument untimely and
waived. See 37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d
1473, 1473–74 (BPAI 2010).
Regardless of Appellants’ waiver, this argument is also unpersuasive
because it does not address the Examiner’s finding that Prafullchandra
teaches “analyzing, by the computing system, the received information
based at least in part on at least one configuration test to determine whether
the usage operation conforms with a resource usage rule and whether the at
least one setting of the virtual machine matches a recommended setting.”
Final Act. 29–30 (citing Prafullchandra ¶¶ 10–11, 21, 33, 38, 45–54).
Accordingly, we sustain the § 103(a) rejection of claim 7.
Claim 5
Claim 5 (which depends from claim 1 through claim 4) recites “[t]he
computer-implemented method of claim 4, wherein the at least one
performance check is based at least in part on a user preference.” App. Br.
39 (Claims App’x). The Examiner relies on Prafullchandra for teaching this
recited requirement. Final Act. 24–25 (citing Prafullchandra ¶¶ 44, 66, 72);
Ans. 10–11 (additionally citing Prafullchandra ¶¶ 25, 30, 35).
Appellants contend the Examiner errs because “Prafullchandra merely
recites that different topics are defined in a learning template and that
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activit[i]es that involve minimal risk are given highest priority. However,
this is not the same as or suggestive of ‘at least one performance check is
based at least in part on a user preference.’” App. Br. 36. Appellants’
argument is unpersuasive of Examiner error. The Examiner relies on
Prafullchandra’s teaching of performance analysis being part of the analysis
for the recommendation of the configuration. Final Act. 25; see also Final
Act. 24 (citing Prafullchandra ¶¶ 25, 38, 44, 50, 66, 72, Fig. 3 regarding
claim 4); Ans. 10 (reiterating Prafullchandra discloses the performance
check recited in claim 4 from which claim 5 depends).
Prafullchandra discloses an automated configuration management
system (ACMS) that monitors and measures data, including a dynamic
resource usage over time to “identify instances where current resource
utilization is out of compliance with established guidelines and/or normal
operating behavior.” Prafullchandra ¶ 38. Based on the teachings of
Prafullchandra, ordinarily skilled artisans would have understood
Prafullchandra’s ACMS performs performance checks. Related to its
performance checking, the ACMS cycles through phases of “monitoring,
analyzing, recommending and applying changes.” Id. ¶ 33. Prafullchandra
further discloses controlling or configuring the ACMS in two modes, one of
which allows an administrator to make decisions based on monitoring and
observations. Id. ¶ 35; Ans. 10–11. The administrator’s decisions can be
“used as a basis for making (or not making) future recommendations” for
making changes to the ACMS that may (or may not) be applied. Id. ¶ 35;
Ans. 10–11.
Based on the foregoing disclosure of Prafullchandra, ordinarily skilled
artisans would have understood that a decision made by an administrator
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constitutes “a user preference” and that such decisions or preferences of the
administrator will affect the performance checking of the ACMS system
during the monitoring phase or the analyzing phase, thus, teaching or
suggesting “at least one performance check is based at least in part on a user
preference,” as recited. Accordingly, we sustain the § 103(a) rejection of
claim 5.
DECISION
For the above reasons, we—
reverse the rejection of claims 1 and 4–12 under 35 U.S.C. § 112, first
paragraph; and
affirm the rejection of claims 1 and 4–12 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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).
AFFIRMED