Amazon Technologies, Inc.

Patent Trials and Appeals Board

Oct 13, 2020

2019003023 (P.T.A.B. Oct. 13, 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.
14/754,519 06/29/2015 Pieter Kristian Brouwer 0097749-514US0 9171
113507 7590 10/13/2020
Davis Wright Tremaine LLP - ATI
IP Docketing Dept.
920 Fifth Ave., Suite 3300
Seattle, WA 98104-1610
EXAMINER
MACASIANO, JOANNE GONZALES
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
amznpatents@dwt.com
patentdocket@dwt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIETER KRISTIAN BROUWER,
KRISTINA KRAEMER BRENNEMAN, MARC JOHN BROOKER,
JERRY LIN, and MARC STEPHEN OLSON
Appeal 2019-003023
Application 14/754,519
Technology Center 2100
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
BRIAN D. RANGE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. 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) (2018). Appellant identifies the real party in interest as
Amazon Technologies, Inc. Appeal Br. 3.
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Application 14/754,519

2
CLAIMED SUBJECT MATTER
The claims are directed to preserving state of a virtual machine during
virtual machine instance migration. Claims 1 and 13, reproduced below, are
illustrative of the claimed subject matter:
1. A computer-implemented method, comprising:

obtaining a first lease associating a virtual machine
instance with a block storage device, the block storage device
provided by the block-level storage service, the first lease
specifying a first policy of access to the block storage device by
the virtual machine instance and having a first status of active;

receiving an indicator of a start of a migration of the virtual
machine instance from a source computing device to a target
computing device;

obtaining a second lease associating the virtual machine
instance in the target computing device with the block storage
device, the second lease specifying a second policy of access to
the block storage device by the virtual machine instance, the
second lease having a second status of standby;

copying a first set of state information associated with the
block storage device from the source computing device to the
target computing device;

updating the first status based at least in part on an
indicator of progress of the migration;

copying a second set of state information associated with
the block storage device from the source computing device to the
target computing device, the second set of state information
being different from the first set of state information; and

updating the second status to active based at least in part
on an indicator of progress of the migration.

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13. A non-transitory computer-readable storage medium
having stored thereon executable instructions that, as a result of
execution by one or more processors of a computer system, cause
the computer system to at least:

during a first phase of a migration of a virtual machine
instance from a first location to a second location, copy a first set
of state information associated with a block storage device from
the first location to the second location, the block storage device
provided to the virtual machine instance;

detect a critical phase of the migration; and

copy a second set of state information associated with the
block storage device, the second set of state information being
different from the first set of state information.

REFERENCES
The prior art relied upon by the Examiner is:
Hunt et al. US 2005/0268298 A1 Dec. 1, 2005
Tulyani US 2006/0069886 A1 Mar. 30, 2006
Kono et al. US 2010/0049917 A1 Feb. 25, 2010
(hereinafter “Kono ’917”).
Nelson et al. US 7,865,663 B1 Jan.4, 2011
Kondo et al. US 2011/0040943 A1 Feb. 17, 2011
Kono et al. US 2011/0082988 A1 Apr. 7, 2011
(hereinafter “Kono ’988”).
Shin et al. US 2011/0173622 A1 July 14, 2011
Agrawal et al. US 2011/0219372 A1 Sept. 8, 2011
Chen et al. US 8,429,346 B1 Apr. 23, 2013
Fujii et al. US 2013/0111221 A1 May 2, 2013
Kurita US 2014/0082616 A1 Mar. 20, 2014
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REJECTIONS
Claims 1, 2, 5–8, 12–14, 17, 19, and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hunt in view of Shin and
Kurita.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hunt, Shin, and Kurita as applied to claim 2 above, and
further in view of Agrawal and Tulyani.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hunt, Shin, and Kurita as applied to claim 5 above, and further in view
of Chen.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hunt, Shin, and Kurita as applied to claim 5 above, and further in view
of Fuji.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hunt, Shin, and Kurita as applied to claim 5 above, and further in view
of Kono ’988.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hunt, Shin, and Kurita as applied to claim 13 above, and
further in view of Kondo.
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hunt, Shin, and Kurita as applied to claim 17 above, and further in
view of Kono ’917.
Claim 21 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hunt, Shin, and Kurita as applied to claim 1 above, and
further in view of Nelson.
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Application 14/754,519

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OPINION
35 U.S.C. § 103
With respect to independent claims 1, 5, and 13, Appellant argues the
independent claims together. Appeal Br. 9. Based on Appellant’s
arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we select
independent claim 13 as the representative claim for the group and will
address Appellant’s arguments presented in both the Appeal Brief and Reply
Brief. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant does not set forth separate
arguments for patentability for dependent claims 2–4, 7–12, and 16–21 and
they will stand or fall with representative claim 13. Appeal Br. 13. See
37 C.F.R. § 41.37(c)(1)(iv). Arguments not made are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that the combination of Hunt, Shin, and Kurita fails
to teach or suggest “state information associated with a block storage
device.” Appeal Br. 9. We disagree with Appellant and note the
combination of prior references teach and fairly suggest the migration of a
virtual machine from a source location to destination location and the
corresponding updating of state, task, and processing for the virtual machine
and its associated block storage memory.
Additionally, we note that Appellant has not identified how the
limitation “provided by a block-level storage service” further limits the
claimed “method” and “system” recited in the independent claims 1 and 5.2

2 Alternatively, we could have selected independent claim 1 as the
representative claim because Appellant has not set forth separate arguments
for patentability of the independent claims, but independent claim 13 does
not include the limitation “provided by the block level storage service” and
is the broadest claim in the group.
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If Appellant contends that the differentiating characteristic of the
claimed invention is the block memory used by the virtual machine is
provided by an off-site/remote/cloud-based block memory service which
must be accessed by a service contract with credentials rather than a
localized physical memory, then Appellant should more clearly distinguish
this aspect of the claimed “method” and “system” and how “the block level
storage service” differentiates the method steps of the prior art virtual
machine migration.3
As we noted above, representative independent claim 13 does not
recite “the block level storage service,” and Appellant’s arguments thereto
are not commensurate in scope with the claim language and are therefore
unpersuasive.
Arguments must be commensurate in scope with the actual claim
language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982); see In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not
commensurate with the claim scope and are therefore unpersuasive.”).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . .” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the
relevant issue is “what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific

3 Additionally, we note that the similar tracking of credentials and licenses
would be required for all software packages on the virtual machine during
any migration because there would be two copies of each of the software
package until the migration is completed and the copies at the source
location virtual machine are removed, deactivated, or unauthorized.
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structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.”).
Appellant argues that the Office fails to properly apply the broadest
reasonable interpretation of the claim term “state information.” Appeal Br.
11. Appellant further contends that the Office has provided different
meanings to the same claim term within the obviousness rejection. Appeal
Br. 11. Appellant also argues that the Office fails to properly apply the
broadest reasonable interpretation to the term “state information” and that
the teachings of the prior art references cannot be properly combined.
Appeal Br. 12–13. Specifically, Appellant contends that combining Kurita
and Shin references in the manner proposed by the Office undermines the
intended purpose of Shin and requires changing a principle of operation of
Shin. Appeal Br. 12–13.
We disagree with Appellant and note that the Examiner has identified
how the specific teachings of the three prior art references teach and suggest
the use of some “state information” with respect to each of the specific fields
of endeavors addressed by each of the three separate prior art references.
Ans. 3–6. We further find Appellant is addressing the individual teachings
as a bodily incorporation of each of the prior art references with regards to
the combination rather than what the prior art references would have taught
or suggested to one of ordinary skill in the art at the time of the invention
regarding computer migration and storage of “state information” which may
vary from specific machine to specific machine.
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We also note that Appellant has not identified any specific definition
of the claimed “state information” in the Specification. The Summary of the
Claimed Subject Matter merely identifies paragraphs 31 and 61 of the
Specification which sets forth an exemplary embodiment as an indicator of
the progress of the migration.4 See generally Appeal Br. 3–7.

4 The Specification discloses:
The block-level storage device may update the status of the first
lease 810 based at least in part on a migration progress indicator
(also referred to herein as an “indicator of progress of the
migration”). When the migration reaches a critical state and the
state information of the source is not rapidly changing (e.g.,
when the source and/or the target are pauses), the block-level
storage service may copy 812 a final set of state information from
the source location to the target location so that when the virtual
machine instance in the target location is resumed, a consistent
state of the block storage device is maintained. When the
migration completes (i.e., when the critical phase completes), the
block-level storage service may finally update the status of the
second lease 814 based at least in part on a migration progress
indicator so that, for example, the second lease becomes the
active lease.
Spec. ¶ 61. The Specification also discloses:
The state information of the block storage device may include
state information including, but not limited to, the location of the
block storage device, which block-level storage service may be
hosting the block storage device, and the existence of one or
more leases associated with the block storage device. Such state
information may be stored with a virtual machine instance, may
be stored at a source or target location, or may be stored in a
separate location. The state information of the block storage
device may also include customer facing state information such
as, for example, customer facing performance metrics including,
but not limited to, input-output operations per second (“IOPS”),
bandwidth, bytes read, bytes written, read operations per second,
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The Examiner finds that the DRAM and associated state information
for the source and destination processing nodes in Shin are “well-known to
be equivalent to the source and target computing devices.” Ans. 3–4. The
Examiner further finds that based upon the broadest reasonable
interpretation of the claimed “state information,” Shin discloses that state
information associated with tasks is stored and migrated using the DRAM
and Shin does make obvious the limitation which recites, “copy a first set of
state information associated with a block storage device from the first
location to the second location” because the broadest reasonable
interpretation of the claim language merely requires that the “state
information” be in some manner “associated with the block storage device.”

write operations per second, and/or time spent idle. Additionally,
the state information of the block storage device may include
internal performance metrics (i.e., metrics not provided to a user
or customer) such as, for example, a device health measurement,
periods of device error, and/or any of the previously described
metrics. Other state information of the block storage device may
include information related to security processes (e.g.,
cryptographic keys), policies, permissions, performance
throttling parameters (e.g., a throttling percentage that specifies
a percentage of available bandwidth that may be provided to the
virtual machine instance to access the block storage device), or
other such state information. As may be contemplated, the types
of state information of the block storage device described herein
are illustrative examples and, as such, other types of state
information of the block storage device may be considered as
within the scope of the present disclosure.
Spec. ¶ 31 (emphases added). If Appellant desires to more clearly recite
limitations to a two-stage migration process where the status of the
migration and the associated access state is modified, then the claim should
be modified to further emphasize this feature.
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Ans. 4. Furthermore, the Examiner finds that “the broadest reasonable . . .
does not necessitate that the ‘state information’ be a state of the ‘block
storage device’ itself, but rather only that the ‘state information’ be in some
manner ‘associated with the block storage device.’” Ans. 4. We agree with
the Examiner that the broadest reasonable interpretation merely requires
information “associated with the block storage device.”
The Examiner further clarifies what each of the prior art references
was specifically relied upon in the grounds of the rejection. Ans. 5. Kurita
was cited to provide an explicit teaching showing that it would have been
obvious to transfer first and second sets of different state information,
pertaining to a block storage device, from a migration source to a migration
destination, and Shin was cited to provide a teaching showing that it would
have been obvious to copy a first set of state information associated with a
block storage device from a source to a target computing device. Ans. 5.
The Examiner clarifies that the “state information” disclosed in Kurita was
not to be interpreted as being used in conjunction with the DRAM disclosed
in Shin, but rather Kurita was cited for purposes of providing an explicit
teaching showing that it would have been obvious to transfer first and
second sets of different state information, pertaining to a block storage
device, from a migration source to a migration destination. Ans. 5–6. The
Examiner further clarifies that Shin was cited for purposes of demonstrating
that the general process of transferring state information from a migration
source to a migration destination was well-known. Ans. 5–6. The Examiner
further explains that paragraph 62 of the Shin reference teaches
configuration data and task state information, may also be migrated for
purposes of configuring the task migration destination to properly execute
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the migrated task. Ans. 7. The Examiner further states the motivation for
including the additional state information disclosed in Kurita would be for
the purpose of assisting in the management of the task migration process in
Shin and help to ensure that the migration destination node performs as
expected. Ans. 7.
In the Reply Brief, Appellant contends that the Examiner has not
rebutted Appellant’s arguments in the Appeal Brief, and the Examiner’s
statements with respect to the Shin reference DRAM are improper because
the Examiner has not relied upon “official notice.” Reply Br. 3–4.
Appellant further contends that the Office has not pointed to any disclosure
of Shin to support that using “DRAM” to execute a “task” imparts the
“state” of that task (disclosed to possible states of “active,” “inactive,”
“sleeping,” and “running”) to the DRAM itself. Reply Br. 4. Appellant
argues that the Examiner’s Answer fails to properly apply a broadest
reasonable interpretation to the claim term “state information.” Reply Br. 4.
Appellant also contends that the “different sets of state information” in
Kurita are not the types of state information that could actually “be[] used in
conjunction with the DRAM disclosed in Shin,” then Kurita not only cannot
be said to teach the claim features for which it was cited, but there is also no
motivation to combine Kurita with Hunt in view of Shin as proposed. Reply
Br. 5. Appellant submits that the Office has failed to show that Appellant’s
claimed “state information” can be reasonably interpreted to be
simultaneously a state of a “block storage device” (e.g., “task”) of Shin and
“CPU Speed and/or Virtual NIC Speed” and “measured bandwidth” of a
“block storage device” of Kurita. Id. Appellant further argues that the
Examiner fails to properly apply a broadest reasonable interpretation to the
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claim term “block storage device” as found in independent claims 1 and 5.
Reply Br. 5–6.
Appellant provides a citation to WebopediaTM in 2015 regarding a
comparison of “block-level storage v. file level storage,” but Appellant does
not provide a definition of the term “block-level storage service” so as to
further limit the method and system of independent claims 1 and 5.
Moreover, we note that representative independent claim 13 does not contain
the term “block level storage” and the claimed invention does not refer to
any “storage area network.”5 See Reply Br. 6. Appellant also argues that
the Examiner’s Answer improperly relies on facts not in the record regarding
the statement that “DRAM is well-known to store data in block units,” but
Appellant’s claims recite that “the block storage device [is] provided by [a]
block-level storage service.” Reply Br. 6–7.
We find that Appellant has not identified how the proffered evidence
regarding “block storage device” and “block-level storage service” further
limits the claimed method, or system, of independent claims 1 and 5, but not
present in the non-transitory computer readable storage medium
(representative claim 13). Reply Br. 6–7. Consequently, Appellant’s
argument is unpersuasive of error and is not commensurate in scope with
representative claim 13. Additionally, we note that Appellant did not

5 Furthermore, if the claims did refer to a storage area network, we find that
it would have been readily apparent to those skilled in the art to apply the
same basic idea of a two-stage migration of a virtual machine with an initial
communication of state information at the beginning of the migration and a
final communication of state information at the conclusion of a migration.
Moreover, if cloud-based memory were to be involved then some access and
coordination of the cloud-based memory would have been required in
addition to the virtual machine migration.
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previously argue the location for type of block storage device in the Appeal
Brief and has not provided a showing of good cause why the arguments
could not have been made in the Appeal Brief. Therefore, the argument
thereto is waived. See 37 C.F.R. § 41.37(c)(1)(iv).
We note that the Reply Brief may respond to new arguments by the
Examiner, but should not “substitute” for the principal brief. In the absence
of a showing of good cause by Appellant, arguments that could have been
made in the Appeal Brief and are not responsive to any new evidence or
finding set forth by the Examiner in the Answer are deemed untimely and
are waived. 37 C.F.R. § 41.41(b)(2) (2017); see also Ex parte Nakashima,
93 USPQ2d 1834, 1837 (BPAI 2010) (explaining that arguments and
evidence not presented timely in the principal brief will not be considered
when filed in a reply brief, absent a showing of good cause explaining why
the argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”).
Finally, Appellant argues that the prior art references cannot be
properly combined and that the Examiner’s identification of paragraph 62 of
the Shin reference improperly introduces a New Ground of Rejection. Reply
Br. 7–8.
We disagree with Appellant and find the Examiner has provided an
appropriate discussion of the teachings of the prior art references and a
reasoned motivation for the combination. We find the Examiner’s
discussion of “state information” is addressed with regards to each of the
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specific fields of endeavor of each of the Shin and Kurita references, and the
Examiner has not applied different interpretations of “state information,” but
has explained “state information” with regards to the specific fields of
endeavor of each of the prior references. Consequently, the Examiner has
not provided an improper broadest reasonable interpretation of the claim
language. See generally Ans. 4–5. Moreover, we find Appellant is arguing
a bodily incorporation of the specific teachings and suggestions of each of
the prior references with regards to the “state information.”
We also find Appellant’s argument regarding a New Ground of
Rejection to be unavailing because Appellant did not file a petition the
Technology Center Director. Consequently, we review the rejection as set
forth by the Examiner and the reliance upon paragraph 62 of the Shin
reference. The Examiner has cited to various additional paragraphs
including paragraphs 34, 37, and 66 discussing Figure 1 and Figure 4
(discussing multiple reconfigurable processors (RP) systems) where
paragraph 62 discusses one of the various disclosed RP systems with a
scratch pad memory of Figure 3. We find Appellant’s argument does not
evidence a change in the Examiner’s thrust of the rejection and merely
discloses an additional embellishment of the Examiner’s line of reasoning,
and Appellant has had a fair opportunity to respond to the new citation in the
Reply Brief.
As a result, Appellant has not shown error in the Examiner’s factual
findings or conclusion of obviousness of representative claim 13 and
independent claims 1 and 5, and dependent claims 2–4, 7–12, and 16–21 not
separately argued. Appeal Br. 13.
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CONCLUSION
The Examiner’s obviousness rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–8,
12–14, 17,
19, 20
103 Hunt, Shin, Kurita 1, 2, 5–8,
12–14, 17,
19, 20

3, 4 103 Hunt, Shin,
Kurita, Agrawal,
Tulyani
3, 4
9 103 Hunt, Shin,
Kurita, Chen
9
10 103 Hunt, Shin,
Kurita, Fiji
10
11 103 Hunt, Shin,
Kurita, Kono ’988
11
15, 16 103 Hunt, Shin,
Kurita, Kondo
15, 16
18 103 Hunt, Shin,
Kurita, Kono ’917
18
21 103 Hunt, Shin,
Kurita, Nelson
21
Overall
Outcome
1–21

TIME PERIOD FOR RESPONSE
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).
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AFFIRMED