William Alexander. Strand et al.

Patent Trials and Appeals Board

Aug 15, 2019

13170087 - (D) (P.T.A.B. Aug. 15, 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.
13/170,087 06/27/2011 William Alexander Strand SEAZN.1593A 3068
79502 7590 08/15/2019
Knobbe, Martens, Olson & Bear, LLP
AMAZON TECHNOLOGIES, INC.
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/15/2019 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):
SEAZN.Admin@knobbe.com
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM ALEXANDER STRAND and
DAVID C. YANACEK1
____________

Appeal 2017-011290
Application 13/170,087
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 3, 4, 6–14, 26–37, 39, and 40 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 Appellants identify the Real Party in Interest as Amazon Techs. Inc. (App.
Br. 2).
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Application 13/170,087

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THE INVENTION
The Appellants’ claimed invention is directed to techniques for
automatically managing the providing and use of target computing
environments, such as for a shared computing environment that is made
available by a provider entity for simultaneous use by multiple third-party
clients in exchange for fees from those clients (Spec., para. 9). Claim 32,
reproduced below, is representative of the subject matter on appeal.

32. A system comprising:
one or more processors of one or more computer
systems; and
one or more memories including software instructions
that, when executed by at least one of the one or more
processors, configure the at least one processor to provide
functionality of a program execution service having multiple
users, including:
receiving instructions sent to the program execution
service from a first user of the multiple users to execute one or
more indicated software programs for use in providing a first
shared computing environment of the first user that is available
for use by other users of the multiple users;
selecting, by the program execution service and for use in
responding to the instructions from the first user, a first host
computing node from a plurality of computing nodes that are
provided by the program execution service for use by the
multiple users;
executing, by the program execution service and on
behalf of the first user, the indicated one or more software
programs on the first host computing node to provide the first
shared computing environment for the first user; and
while the providing of the first shared computing
environment on the first host computing node for the first user
continues,
receiving, by the program execution service and from an
additional user of the multiple users that is separate from the
first user, a request to execute an additional program for the
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additional user using an indicated type of functionality that is
available from the first shared computing environment;
determining, by the program execution service and based
on one or more specified criteria, whether to execute the
additional program for the additional user on the first host
computing node as part of the first shared computing
environment or instead on a
separate second host computing node of the plurality without
any other programs of any other users;
selecting, by the program execution service and based at
least in part on the determining, to execute the additional
program on the first host computing node as part of the first
shared computing environment; and
executing, by the program execution service, the
additional program on the first host computing node, and
accessing, under control of the executing additional program,
the indicated type of functionality from the first shared
computing environment of the first user on the first host
computing node.

THE REJECTIONS2
The following rejections are before us for review:
1. Claims 3, 4, 6–14, 26–37, 39, and 40 are rejected under 35
U.S.C. § 112, first paragraph, for failing to show possession of the claimed
invention.
2. Claims 3, 4, 6–14, 26–37, 39, and 40 are rejected under 35
U.S.C. § 102(b) as anticipated by Nickolov (US 2009/0276771 A1;
published Nov. 5, 2009).

2 The rejection under 35 U.S.C. § 101 has been withdrawn (Ans. 2).
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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.3

ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner has determined that claim 32 recites that operations are
being performed “by a program execution service” and that those functional
recitations are not supported because they are not disclosed in the
Specification as a computer algorithm and are not a common term in the art
(Ans. 3, 22).
In contrast, the Appellants argue that the Specification provides a
disclosure sufficient for one in the art to implement the functionality of such
a program execution service (App. Br. 17). The Appellants cite to the
Specification at paragraphs 9, 14, and 18–20 as providing support. The
Appellants have provided further arguments in this regard at pages 17–20 of
the Appeal Brief.
We agree with the Appellants. Here, the Specification describes in
sufficient detail so that one of the ordinary skill in the art can reasonably
conclude that Appellants has possession of the claimed invention in order to
make and use the “program execution service” and its claimed functions in
light of paragraphs 9, 14, and 18–20. Further, the functional recitations for
claimed functions to be carried out involve programming techniques that

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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would have been readily understood by one of ordinary skill in the art. For
this reason, this rejection of record is not sustained.
The Examiner also has determined that the limitations of claim 33
(which are similar to those of claim 4) are not supported by the
Specification. We disagree with this contention as well. In claim 33 the
claimed functions to be carried out involve programming techniques that
would have been readily understood by one of ordinary skill in the art. For
this reason, this rejection of record is not sustained.
The remaining rejected claims under this rejection are based on the
same or similar claim language to that discussed above and the rejection of
these claims is not sustained for the same reasons given above.

Rejection under 35 U.S.C. § 102(b)
The Appellants argue that the rejection of claim 32 is improper
because cited prior art fails to disclose the claim limitation for:
selecting, by the program execution service and for use in
responding to the instructions from the first user, a first host
computing node from a plurality of computing nodes that are
provided by the program execution service for use by the
multiple users

(App. Br. 21, emphasis added).
In contrast the Examiner has determined that the cited claim limitation
is shown by Nickolov at Figures 4, 7, 82, and paragraphs 66, 67, 82, 161–
165, 188–192, 214, 216, 220, 416–466, 422, 423, 443, 416–466, 607, 627–
636, 639–641, and 654 (Final Act. 27, Ans. 29, 30).
We agree with the Appellants. Nickolov at the above cited portions
does not disclose the specific claim limitation argued above with regard to
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the selection of “a first host computing node from a plurality of computing
nodes that are provided by the program execution service for use by the
multiple users” in the manner claimed. Accordingly, the rejection of claim
32 and its dependent claims is not sustained. Independent claims 3 and 26
contain a similar claim limitation and the rejection of these claims and their
dependent claims is accordingly not sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 3, 4, 6–14, 26–37, 39, and 40 under 35 U.S.C. § 112, first
paragraph, for failing to show possession of the claimed invention.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 3, 4, 6–14, 26–37, 39, and 40 under 35 U.S.C. § 102(b) as
anticipated by Nickolov.

DECISION
The Examiner’s rejections of claims 3, 4, 6–14, 26–37, 39, and 40 are
reversed.

REVERSED