Dropbox, Inc.Download PDFPatent Trials and Appeals BoardNov 19, 20202020001177 (P.T.A.B. Nov. 19, 2020) Copy Citation 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. 14/448,173 07/31/2014 George O'Brian 085118-523351_P357US1 3055 78189 7590 11/19/2020 Dropbox c/o Polsinelli PC 1401 Eye ( Washington, DC 20005 EXAMINER JACOBS, EDWARD ART UNIT PAPER NUMBER 2159 NOTIFICATION DATE DELIVERY MODE 11/19/2020 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): DropboxMail@Polsinelli.com patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE O'BRIAN, JITEN VAIDYA, and BO HU Appeal 2020-001177 Application 14/448,173 Technology Center 2100 Before JAMES R. HUGHES, JOHN A. EVANS, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, 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 1–22 and 25. See Final Act. 1. 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. Appellant identifies the real party in interest as assigned to Dropbox, Inc. Appeal Br. 2. Appeal 2020-001177 Application 14/448,173 2 CLAIMED SUBJECT MATTER The claims are directed to sharing content between devices. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for sharing content items not in a user account of a content management system comprising: storing, by a client device in a local content library on the client device, a first content item, wherein a local content client associated with an online content management system manages the local content library and the first content item; synchronizing, by the local content client, the local content library and the first content item with the online content management system; storing, by the client device in a storage location external to the local content library, a second content item on the client device; generating, by the local content client in response to an input, a third content item that is a copy of the second content item; causing, by the local content client, storing of the third content item on the client device in a storage location external to the local content library; transmitting, by the local content client, the third content item to the online content management system; and receiving, by the local content client from the online content management system, a link for accessing the third content item stored at the online content management system. REJECTIONS Claims 1–22 and 25 stand rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. Final Act. 2. Claims 1–4, 6–9, 11–14, and 16–19 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Goldberg, et al. (US Appeal 2020-001177 Application 14/448,173 3 2013/0013560 A1, published Jan. 10, 2013) (“Goldberg”) and Prahlad et al. (US 2010/0333116 A1, published Dec. 30, 2010) (“Prahlad”). Final Act. 10. Claims 5 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Goldberg, Prahlad, and Chavez et al. (US 2008/0133706 A1, published June 5, 2008) (“Chavez”). Final Act. 17. Claims 10, 20–22, and 25 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Goldberg, Prahlad, and Ferdowsi et al. (US 2012/0331108 A1, published Dec. 27, 2012) (“Ferdowsi”). Final Act. 18. ANALYSIS Rejection of Claims Under 35 U.S.C. § 112(b) Claim 1 recites, in part, “synchronizing, by the local content client, the local content library and the first content item with the online content management system.” Appeal Br. 27 (Claims Appendix). The Examiner concluded that [I]t is still not clear why the claim additionally recites that “synchronizing” is performed for the “local content library” and also for the “first content item,” which was already stored in the “local content library” (in the previous clause #1 of claim 1). If “synchronizing” is performed library-with-library, then the “first content item” would already have been synchronized as being one of the content items that populate the “local content library,” and it is not clear how the “online content management system” may be structured such that separate “synchronizing” is necessary to be recited for the “first content item.” Ans. 6–7 (citing Spec. ¶ 19). Appellant argues that the Examiner erroneously ignores that “by synchronizing the local content library that stores the first content item, the Appeal 2020-001177 Application 14/448,173 4 first content item is synchronized.” Reply Br. 6. Appellant further argues that “a person of ordinary skill in the art would understand the scope of content management system, and specifically that the local content library and the first content item is synchronized with the content management system.” Id. at 6–7. Appellant requests that the application be remanded to the Examiner for entry of the after-final proposed claim amendments, filed on January 28, 2019, that the Examiner did not enter in the Advisory Action dated February 5, 2019. Appeal Br. 20. Appellant argues claims 1–22 and 25 as a group. Appeal Br. 18. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 112(b) rejection of claims 1–22 and 25 based on representative claim 1. The PTAB applies the indefiniteness test approved by In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) (per curiam): “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” and “claims are required to be cast in clear–as opposed to ambiguous, vague, indefinite– terms.” See Packard, 751 F.3d at 1310, 1313. [W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). Packard, 751 F.3d at 1311. Appellant has not persuaded us that the Examiner erred. We agree with the Examiner that the scope of the recited “online content management system” is unclear at least because the Specification describes library-with- library synchronization (see, e.g., Spec. ¶ 19), while the claim describes Appeal 2020-001177 Application 14/448,173 5 synchronization of both a library and an item. As claim 1 lacks clarity for the reasons given by the Examiner, reproduced above, claim 1 is indefinite because it does not reasonably apprise those of skill in the art of the scope of the claimed invention. Claims 2–22 and 25, argued as a group with claim 1, are likewise indefinite. Whether the Examiner should enter Appellant’s January 28, 2019 Amendments is a petitionable matter not properly before the Board. See 37 C.F.R. § 1.181(a)(1); see also Manual of Patent Examining Procedure (MPEP) § 706.01 (9th ed. Rev. 08.2017, Jan. 2018) (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“Some matters which have been determined to be petitionable and not appealable include: a requirement for restriction or election of species, finality, non-entry of amendments, and holdings of abandonment.”). For these reasons, on the record before us, we sustain the rejection of claims 1–22 and 25 under 35 U.S.C. § 112(b). Rejection of Claims Under 35 U.S.C. § 103 We have reviewed the § 103 rejections of claims 1–22 and 25 in light of Appellant’s arguments that the Examiner erred. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made, but chose not to make, in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 1–22 and 25 as a group. Appeal Br. 25. Appellant states that “independent claims 6, 11, and 16 will rise and fall with Appeal 2020-001177 Application 14/448,173 6 independent claim 1, as they contain language that is similar to the language of claim 1.” Id. Appellant’s arguments are not persuasive of error. We agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We provide the following explanation for emphasis. With respect to independent claim 1, Appellant argues that, although Goldberg and Prahlad “both use a type of client application to interact with the remote file system, neither suggests a client application capable of handling files for both synchronized and non-synchronized file systems.” Appeal Br. 21. Appellant argues the combination of Goldberg and Prahlad does not teach the recited “local content client” that at least (1) manages a local content library for synchronization and (2) generates a third content item for storing of the third content item on the client device in a storage location external to the local content library; and (3) for transmission of the third content item and retrieval of a link to that content item managed external to the local content library. Appeal Br. 22. We are not persuaded that the Examiner erred. The Examiner found that Goldberg teaches or suggests all of the limitations of claim 1 except making an extra (third) copy of non-synchronized files before upload from a client device to a collaboration server. See Ans. 12. Specifically, the Examiner found that Goldberg teaches a “sync client” with synchronization functions parallel to the claimed “local content client,” and a “sync server” that maps to the claimed “content client.” Ans. 14 (citing Goldberg ¶¶ 23, 34). The Examiner found that Figure 5 of Goldberg depicts a local computer desktop displaying four digital folders (“libraries”) stored on a collaborative Appeal 2020-001177 Application 14/448,173 7 server. Id. The Examiner found that two of the server folders are synchronized to the client desktop, and two additional folders are not synchronized and are external to the synchronized folders. Id. The Examiner mapped a synchronized folder to the limitation “a local content library on the client device.” Id. The Examiner also found that Goldberg teaches that a user can upload files of digital content from client devices to a collaborative server folder, and Goldberg teaches optional synchronization with folders (i.e., libraries) on collaborator computers. Id. at 13. The Examiner further found that the folder icons in Figures 5 and 6 of Goldberg “serve as file access ‘links’ returned by the server to the client computer’s familiar windowed desktop environment.” Id. (citing Goldberg ¶¶ 91–92). With regard to the “third content item,” as recited in claim 1, the Examiner found that Prahlad teaches secondary storage operations. Final Act. 12 (citing Prahlad ¶¶ 80, 88, 105, 240–241, 359); Ans. 13 (citing Prahlad ¶ 81). Appellant attacks Goldberg and Prahlad individually (Appeal Br. 20– 23), even though the Examiner relied on the combination of Goldberg and Prahlad in rejecting claim 1. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[T]he test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981))). With regard to the combined teachings of the references, Appellant argues that the combination does not “disclose a single ‘module’ for managing content items in a content library and content items external to a content library.” Reply Br. 7. Appellant further argues that Appeal 2020-001177 Application 14/448,173 8 [t]he natural result of the teachings of Goldberg when combined with Prahlad would yield a completely synchronized system as taught in Goldberg or, in the alternative as addressed in Prahlad, different data agents for different applications in a non- sychronized file system environment. Neither resulting combined system would yield a single local content client handling content items in a local content library as well as content items external to a local content library. Appeal Br. 23. We note that the plain language of claim 1 does not recite the term “module.” Moreover, Appellant does not provide any basis for the either-or “natural result” argument, above, and we find none. The Examiner found that Goldberg teaches more than “a completely synchronized system,” pointing to Goldberg’s teaching of non-synchronized libraries in Figure 5. Ans. 11–13. Moreover, the Examiner provided “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); Final Act. 12 For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Goldberg and Prahlad teaches or suggests the disputed limitations. Accordingly, we sustain the Examiner’s § 103 rejection of independent claim 1, as well as the Examiner’s § 103 rejection of independent claims 6, 11, and 16, argued as a group with claim 1. Appeal Br. 25. We also sustain the Examiner’s § 103 rejections of dependent claims 2–5, 7–10, 12–15, 17–22, and 25, not argued separately. Id. DECISION We affirm the Examiner’s decision rejecting claims 1–22 and 25. Appeal 2020-001177 Application 14/448,173 9 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–22, 25 102(b) Indefiniteness 1–22, 25 1–4, 6–9, 11–14, 16– 19 103 Goldberg, Prahlad 1–4, 6–9, 11–14, 16– 19 5, 15 103 Goldberg, Prahlad, Chavez 5, 15 10, 20–22, 25 103 Goldberg, Prahlad, Ferdowsi 10, 20–22, 25 Overall Outcome: 1–22, 25 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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