Fastly, Inc.

Patent Trials and Appeals Board

Jan 25, 2021

2019005692 (P.T.A.B. Jan. 25, 2021)

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.
14/702,057 05/01/2015 Devon O'Dell 683.0046 7779
76444 7590 01/25/2021
Setter Roche LLP
1860 Blake Street
Suite 100
Denver, CO 80202
EXAMINER
SWIFT, CHARLES M
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
uspto@setterroche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEVON O’DELL
Appeal 2019-005692
Application 14/702,057
Technology Center 2100
Before MAHSHID SAADAT, ST. JOHN COURTENAY III, and
JASON CHUNG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Fastly, Inc. Appeal
Br. 2.
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STATEMENT OF THE CASE2
The claims are directed to a method and apparatus for enhancing
“how race conditions are tested in a target program.” See Spec. ¶ 3.
Representative Claim 1
Claim 1, reproduced below, is representative of the subject matter on
Appeal:
1. A method of operating a computing system to test
one or more race conditions in a target program, wherein the
target program comprises a plurality of concurrent processes, the
method comprising:

executing a scheduler program, the scheduler program
comprising order of operation rules to produce the one or more
race conditions in the target program;

initiating execution of the target program; and

executing each concurrent process in the plurality of
concurrent processes based on the order of operation rules for the
target program, wherein the order of operation rules control
operation of the plurality of concurrent processes to produce the
one or more race conditions in the target program.

Appeal Br. 13 (emphasis added regarding disputed “executing” limitation).

2 Our decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed April
2, 2018); Reply Brief (“Reply Br.,” filed August 15, 2018); Examiner’s
Answer (“Ans.,” mailed June 15, 2018); Final Office Action (“Final Act.,”
mailed September 22, 2017); and the original Specification (“Spec.,” filed
May 1, 2015).
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Ur et al. (“Ur”) US 2003/0131283 Al Jul. 10, 2003
Laksberg et al.
(“Laksberg”)
US 2011/0161962 Al Jun. 30, 2011
Arnold et al. (“Arnold”) US 2012/0054756 Al Mar. 1, 2012
REJECTIONS 3
A. Claims 1, 6, 7, 10, 15, 16, and 19 are rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Ur. See Final Act. 3.
B. Claims 2–4, 11–13, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Ur and Laksberg. See
Final Act. 6.
C. Claims 5, 8, 9, 14, 17, and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Ur and Arnold. See
Final Act. 9.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 7–9), and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of anticipation
Rejection A of claims 1, 6, 7, 10, 15, 16, and 19 on the basis of
representative claim 1. We address Rejection B of separately argued

3 The Examiner withdrew the written description rejection under 35 U.S.C.
§ 112(b), of claims 19 and 20. See Ans. 4. Therefore, this rejection is not
before us on appeal.
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dependent claim 3, infra. Dependent claims 5, 8, 9, 14, 17, and 18 are
rejected under obviousness Rejection C, and are not argued separately, and
thus stand or fall with the independent claim from which they respectively
depend.
ISSUES AND ANALYSIS
Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are forfeited.4 See 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to anticipation
Rejection A of representative claim 1 and, unless otherwise noted, we
incorporate by reference herein and adopt as our own: (1) the findings and

4 See In re Google Technology Holdings LLC, 2020 WL 6685948, slip op. at
* 3 (Fed. Cir. 2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458,
464 (1938)) (additional citations omitted). The two scenarios
can have different consequences for challenges raised on
appeal, id. at 733–34, and for that reason, it is worth attending
to which label is the right one in a particular case.

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reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer
in response to Appellant’s arguments. We highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.

Anticipation Rejection A of Claims 1, 6, 7, 10, 15, 16, and 19
Appellant argues (Appeal Br. 7–9; Reply Br. 2–4) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(a)(1) as being anticipated over
the Ur reference is in error. Appellant’s contentions present us with the
following issue:
Issue: Did the Examiner err in finding that Ur expressly or inherently
discloses: “executing a scheduler program, the scheduler program
comprising order of operation rules to produce the one or more race
conditions in the target program,” as recited in claim 1?
Appellant notes that Ur:
teaches a first execution of software under test, during which race
detection and execution recording are performed, and if a race
condition is detected in the first execution, a second execution
is performed, wherein the second execution comprises a replay
of the first execution using the identical interleaving and halts at
the start point of the race condition, and an alternative
interleaving is forced and the second execution continues to
completion (Ur, paragraphs 0020 and 0023). Furthermore, in
some preferred embodiments, a test suite “comprises a plurality
of tests using identical input data but compelling alternative
interleavings through the use of irritators. Such a plurality of tests
increases the probability of reaching race conditions.” (Ur,
paragraph 0106).
Appeal Br. 7.
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Appellant contends:
Increasing the probability of a race condition by executing
multiple instances of an application is neither equivalent nor
suggestive to executing a target program with order of operation
rules dictated by a scheduler program to produce one or more
race conditions, as required by claim 1. In fact, Ur fails to teach
that a race condition must occur in the execution of the
application. Rather, Ur teaches “if a race condition is detected in
the first execution ...” and “a plurality of tests increases the
probability of reaching race conditions” (Ur, paragraphs 0020,
and 0106). Increasing the probability of a race condition is
neither equivalent nor suggestive to order of operations rules
that force the production of a race condition.
Appeal Br. 8.
Appellant similarly argues:
Ur teaches that the execution controller, replay tool, and thread-
enabled debugger are only active components during the second
execution of the target program (Ur, Fig. 7 and paragraph 0021).
In particular, Ur teaches that during the second execution, the
execution controller forces an alternative interleaving (Ur,
paragraph 0021). However, while Ur teaches the use of an
alternative interleaving, an alternative interleaving is neither
equivalent nor suggestive to the operations of claim 1.
Specifically, an “interleaving is assumed to be a set of
information which describes a sequence in which a parallel
program executed in a given execution, and the set of all possible
interleavings for a parallel program is termed the “interleaving
space” for the parallel program” (Ur, paragraph 0006). In other
words, Ur teaches that if a race condition is identified during a
first execution of a program, an execution controller, during a
second execution, may implement a second interleaving or
change the parallel processes. Thus, Ur teaches that changes are
made in the sequence of program execution only when a race
condition is detected is detected in a first execution. Ur fails to
teach that the execution controller or any program executes in Ur
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in conjunction with the target program to force one or more race
conditions to occur.
Id.
The Examiner disagrees with Appellant, and concludes that Appellant
has merely claimed an intended use. Ans. 5.
Claim Construction
We begin our analysis with claim construction. “An intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear
in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
We identify the statements of intended purpose in method claim 1
with italics:
1. A method of operating a computing system to test
one or more race conditions in a target program, wherein the
target program comprises a plurality of concurrent processes, the
method comprising:

executing a scheduler program, the scheduler program
comprising order of operation rules to produce the one or more
race conditions in the target program;

initiating execution of the target program; and

executing each concurrent process in the plurality of
concurrent processes based on the order of operation rules for the
target program, wherein the order of operation rules control
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operation of the plurality of concurrent processes to produce the
one or more race conditions in the target program.
Appeal Br. 13 (emphasis added).
Although Appellant argues that “Ur fails to teach that the execution
controller or any program executes in Ur in conjunction with the target
program to force one or more race conditions to occur” (Appeal Br. 8), we
conclude that the aforementioned italicized intended purpose language of
claim 1 does not positively require that “the one or more race conditions”
must occur. (emphasis added).
Although Appellant urges that “[i]ncreasing the probability of a race
condition [(referring to Ur, paragraph 106)] is neither equivalent nor
suggestive to order of operations rules that force the production of a race
condition” (Appeal Br. 8, emphasis added), we note that claims 1–20 are
silent regarding any mention of the argued word “force.” Moreover, we find
paragraph 21 of the Specification describes an embodiment in which the
argued “forcing” of a race condition “may be defined” only in some
implementations:
In addition to executing the scheduler program, the method also
initiates execution of the target program, wherein the target
program comprises one or more concurrent processes (202).
Once the target program and the scheduler program are initiated,
each concurrent process of the target program is executed based
on the order of operation rules for the target program (203). In
some implementations, states of interest may be defined to
ensure that the concurrent processes are executed in a manner
that forces a race condition to occur.
Spec. ¶ 21 (emphasis added).
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Thus, we find the exemplary, non-limiting language of paragraph 21
supports our conclusion that a broad but reasonable interpretation of claim 1
does not require the “one or more race conditions” to actually occur,
because: (1) the statements of intended purpose recited in claim 1, and (2) in
light of the supporting descriptions found in the Specification (e.g., see Spec.
¶ 21).
We reach the same conclusion regarding the similar language of
intended purpose or use that is recited in remaining independent claims 10
and 19. We emphasize that, because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
To the extent that our reviewing court may adopt a more narrow claim
interpretation similar to that argued by Appellant (Appeal Br. 7–8), and to
the extent that paragraph 106 of Ur merely discloses increasing the
probability of reaching a race condition, we find Ur discloses an alternative
embodiment that realizes a race condition in a manner that we find
anticipates the disputed limitation of claim 1. See, for example, paragraph
20 of Ur, which we reproduce in pertinent part below: 5

5 We note that Ur ¶ 6 defines “interleaving” as follows: “In the context of
the present patent application and in the claims, an ‘interleaving’ is assumed
to be a set of information which describes a sequence in which a parallel
program executed in a given execution, and the set of all possible
interleavings for a parallel program is termed the ‘interleaving space’ for the
parallel program.” Ur ¶ 10 further describes: “Race conditions occur when
two or more simultaneously executing threads or processes access the same
shared memory location without proper synchronization, and at least one
access is a write.”
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In preferred embodiments of the present invention, a system for
race detection in parallel software is defined. The system
comprises a method implemented by software and/or hardware
components. The method specifies a first execution of software
under test (SUT) in a test harness, during which race detection
and execution recording are performed. If a race condition is
detected in the first execution, a second execution is performed.
The second execution comprises a replay of the first execution,
making use of recorded execution information to ensure that
an identical interleaving occurs in the replay. The second
execution halts at the point, herein termed the start-point, at
which the race condition was detected. At the start-point,
preferably, an alternative interleaving is forced and the second
execution continues to completion.
Ur ¶ 20 (emphasis added).
Ur at paragraph 21 continues: “If a race was detected in the first
execution, during the second execution an execution controller forces the
alternative interleaving, and the replay continues to completion, generating a
second-execution outcome. If the first-execution outcome and the second-
execution outcome are both correct, the detected race is not identified as a
defect.” Ur further describes: “However, if the one or both of the first-
execution outcome and the second-execution outcome is incorrect, the race
is a bug and requires developer attention.” Ur ¶ 21.
We find these additional portions of Ur buttress the Examiner’s
finding of anticipation regarding at least Figure 8, and the supporting
description found at paragraphs 95–96 of Ur. See Ans. 6. In particular, we
find paragraphs 95–97 essentially mirror the description found in paragraphs
20–21 of Ur. See also Ur, paragraph 101: “Race is detected between
statements A and F, since both statements write to a shared memory location
X without synchronization.”
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Claim 6 recites: “The method of claim 1 wherein executing the
scheduler program comprises initiating a thread for the scheduler program.”
Although on page 9 of the Appeal Brief Appellant nominally argues
dependent claim 6 (also rejected under anticipation Rejection A), we are not
persuaded the Examiner erred because Ur expressly discloses a “thread
enabled-debugger” in paragraph 27, as cited by the Examiner. Final Act. 4.
For at least these reasons, we sustain the Examiner’s Rejection A of
representative claim 1 and dependent claim 6 as being anticipated by Ur.
Claims 7, 10, 15, 16, and 19, also rejected under anticipation Rejection A,
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv); see also supra “CLAIM
GROUPING.”

Rejection B of Claims 2–4, 11–13, and 20 under 35 U.S.C. § 103
Regarding Rejection B of claims 2–4, 11–13, and 20 under 35 U.S.C.
§ 103, Appellant focuses on the following limitations recited in dependent
claim 3:
3. The method of claim 2, wherein the target program further
comprises state identifiers for the plurality of concurrent
processes, and wherein executing each concurrent process in the
plurality of concurrent processes based on the order of operation
rules for the target program comprises executing each concurrent
process in the plurality of concurrent processes based on the state
rules and the state identifiers.
Appeal Br. 13.
Based on Appellant’s arguments (id.), we consider claim 3 as the
representative claim for the claims rejected under Rejection B.
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Appellant contends that the secondary Laksberg reference “only
defines mutable and immutable state[s] for the shared memory, and does not
include state identifiers or their equivalent for concurrent processes of a
program or application, such as those described in claim 3.” Appeal Br. 10.
Appellant asserts: “[s]pecifically, Laksberg teaches a configuration wherein
tokens are used for controlling writing and reading of data from memory, but
fails to teach that the state identifiers are implemented as part of a target
program.” Id. Appellant urges: “In fact, Laksberg fails to teach that any
state information is maintained for a target program, let alone for concurrent
processes in the program that are executed based on order of operation rules
from a second program. Id.
The Examiner disagrees with Appellant, and further explains the basis
for the rejection, relying on Laksberg at paragraphs 25–32. The Examiner
finds: “the particular execution order of the plurality of concurrent processes
(agents of Laksberg) is based on the state rules (rules governing mutable
shared state) and state identifier of the concurrent processes (agent states,
such as identifier of the agents as writer agents, general reader agents and
immutable reader agents).” Ans. 9.
We begin our analysis of the “state identifiers” with claim
construction. See claim 3. We find no express definition of “state
identifiers” in the claims. Turning to the Specification for context, we find
only a non-limiting, exemplary description for the disputed “state
identifiers:”
For example, to force a race condition in a program, state
identifiers may be defined within each of the concurrent
processes of the program. These state identifiers may be used to
define states, such as state 530, and may comprise function calls,
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commands, or some other flag within the processing instructions
of the concurrent process. Once defined, state rules with the test
process may manage the order of operation of each of the
concurrent processes based on the defined state identifiers and
the state rules.
Spec. ¶ 35, (emphasis added).
Given the breadth of state identifiers that “may comprise function
calls, commands, or some other flag within the processing instructions of the
concurrent process” (id.), on this record, we are not persuaded the Examiner
erred. Nor does Appellant point to any evidence of record that shows
combining the respective teachings of Ur and Laksberg in the manner found
by the Examiner (Final Act. 6–7) would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or would have “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
On this record, we find the Examiner has set forth “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418).
Therefore, based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding Rejection B of dependent
claim 3.
Accordingly, we sustain the Examiner’s obviousness Rejection B of
representative dependent claim 3. The remaining grouped dependent claims
2, 4, 11–13, and 20, also rejected under Rejection B (and not argued
separately) fall with representative claim 3. See 37 C.F.R. § 41.37(c)(1)(iv).
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Accordingly, we sustain the Examiner’s obviousness Rejection B of claims
2–4, 11–13, and 20.

Rejection C of claims 5, 8, 9, 14, 17, and 18 under 35 U.S.C. § 103
Appellant advances no separate arguments for dependent claims 5, 8,
9, 14, 17, and 18 that were rejected by the Examiner under Rejection C.
Arguments not made are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv)(2017).

CONCLUSIONS
The Examiner did not err with respect to anticipation Rejection A of
claims 1, 6, 7, 10, 15, 16, and 19 under 35 U.S.C. § 102(a)(1) over the cited
Ur reference.
The Examiner did not err with respect to obviousness Rejection B of
claims 2–4, 11–13, and 20 under 35 U.S.C. § 103 over the cited prior art of
record.
The Examiner did not err with respect to obviousness Rejection C of
claims 5, 8, 9, 14, 17, and 18 under 35 U.S.C. § 103 over the cited prior art
of record.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1, 6, 7, 10,
15, 16, 19 102(a)(1)
Ur 1, 6, 7, 10, 15, 16, 19
2–4, 11–13,
20 103
Ur, Laksberg 2–4, 11–13, 20
5, 8, 9, 14,
17, 18
103 Ur, Arnold 5, 8, 9, 14, 17, 18
Overall
Outcome 1–20

FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED