Dropbox, Inc.

Patent Trials and Appeals Board

Feb 22, 2022

2021000811 (P.T.A.B. Feb. 22, 2022)

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. 16/257,129 01/25/2019 Ramsey Homsany 381805-300701/P095USD1 1016 136442 7590 02/22/2022 DLA Piper LLP (US) 11911 Freedom Dr. Suite 300 Reston, VA 20190 EXAMINER TANG, KAREN C ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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): BostonIPDocketing@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAMSEY HOMSANY Appeal 2021-000811 Application 16/257,129 Technology Center 2400 ____________ Before RICHARD M. LEBOVITZ, JAMES B. ARPIN, and DAVID J. CUTITTA II, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejects 1-20 under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as Dropbox, Inc. Appeal Br. 1. Appeal 2021-000811 Application 16/257,129 2 STATEMENT OF THE CASE The Examiner rejects claims 1-20 in the Final Office Action as follows: 1. Claims 1-9 and 13-18 under 35 U.S.C. § 103 as obvious in view of Kazan et al. (2012/0151383 A1, published Jun. 14, 2012 (“Kazan”) and Spivack et al. (US 2009/0076887 A1, published Mar. 19, 2009) (“Spivack”). Final Act. 3. 2. Claim 12 under 35 U.S.C. § 103 as obvious in view of Kazan, Spivack, and Ow (US 2015/0371057 A1, published Dec. 24, 2015) (“Ow”). Final Act. 7. 3. Claims 10, 11, 19 and 20 under 35 U.S.C. § 103 as obvious in view of Kazan, Spivack, and DeMattei (US 2019/0124021 A1, published Apr. 25, 2019) (“DeMattei”). Final Act. 8. Claim 1, which is illustrative of the appealed claims, is reproduced below (annotated with bracketed numbers for reference to the limitations in the claim): 1. A method comprising: [1] receiving a request from a first client for access to a shared content item in a content management system, the shared content item being shared by a plurality of users, including a first user of the first client; [2] accessing metadata for the shared content item, the metadata including [2a] a record of interactions of the plurality of users with the shared content item and [2b] a set of user- generated messages, each message associated with one or more of a plurality of user relationships to the shared content item; [3] determining a user relationship of the first user to the shared content item based at least in part on the record of interactions; Appeal 2021-000811 Application 16/257,129 3 [4] selecting a message from the set of user-generated messages based at least in part on the determined user relationship; and [5] transmitting, to the first client, the first content item with the selected message included within a message area of the first content item. REJECTION BASED ON KAZAN AND SPIVACK The claimed method is described in the Specification as relating to “online content management services and in particular to selectively providing messages from such services to a user based on a relationship between the user and a content item in an online content management service.” Spec. ¶ 2. The first step [1] of claim 1 is “receiving a request from a first client for access to a shared content item in a content management system.” The shared content item is “shared by a plurality of users, including a first user of the first client.” The Examiner finds this step is described by Kazan. Final Act. 3 (citing Kazan ¶ 23). The second step [2] of claim 1 is “accessing metadata for the shared content item” that is requested by the first client. We understand from the claim as a whole that the request is intended to come from the first user of the first client. The metadata includes two pieces of information, which we have numbered [2a] and [2b]. [2a] is a record of interactions of the users with the shared content item. The Specification discloses that interactions may include “whether a user has read 826, edited 828 or commented 830 on a content item.” Spec. ¶ 69. [2b] is “user-generated messages,” where each message is associated with “one or more of a plurality of user relationships to the shared content item.” The Examiner finds these claim elements are Appeal 2021-000811 Application 16/257,129 4 described by Kazan. Final Act. 4 (citing Kazan ¶¶ 30, 46 for [2a]; ¶¶ 28, 41, 42, 46 for [2b]). The third step [3] of claim 1 is “determining a user relationship of the first user to the shared content item based at least in part on the record of interactions” of [2a]. The Examiner finds that this step is described by Spivack (Final Act. 4), but clarifies in the Answer, it is also described in Kazan (citing Kazan ¶ 51) (Ans. 3-4). The determination of the relationship between the first user and the shared content item (based on the interactions of users with the shared content item of [2a]) is used in step [4] to select a user message of [2b] in step [4] (“selecting a message from the set of user-generated messages based at least in part on the determined user relationship”). The Examiner finds that this step is described by Kazan. Ans. 4 (citing Kazan ¶¶ 23, 52). In the last step [5] of claim 1, “the first content item with the selected message included within a message area of the first content item” is transmitted to the first client. The Examiner finds this step is also described by Kazan. Final Act. 4 (citing Kazan ¶¶ 43, 46). The Examiner finds Spivack “to further demonstrate” that determining a relationship between a user and a shared content item based on a record of interactions with the shared content item “is well known to the one of ordinary skill in the art before the effecting filing date.” Ans. 5-7 (citing Spivack ¶¶ 155, 158, 167, 182, 134, 141, 178, 207). Steps [3], [4] Appellant disputes the Examiner’s finding that step [4] (“selecting a message from the set of user-generated messages based at least in part on the determined user relationship”) is described by Kazan. Appeal Br. 6-8. Appeal 2021-000811 Application 16/257,129 5 Appellant also disputes that Spivack describes step [3] of the claim of “determining a user relationship of the first user to the shared content item based at least in part on the record of interactions” of [2a]. Id. at 8-9. Appellant argues that “there is simply no reasonable basis to combine the teachings of Spivack with that of Kazan.” Id. at 9. In response to Appellant’s arguments with respect to steps [3] and [4] of the claim, the Examiner further cites paragraphs 51 and 52 of Kazan. Ans. 3-4 (see supra). We address these disclosures below because they are most pertinent to the rejection. Kazan describes “a social network” in which “a user may establish a set of contacts who share with the user various content items and comments related thereto.” Kazan, Abstr. In a “third aspect” of its embodiments, Kazan describes, “the generation of a presentation 54 of a content source 24 and the content items 26 hosted by the content source 24 that have been shared with the user 14 within one or more social networks 12.” Kazan ¶ 49. The Examiner cites an example of this third aspect in paragraph 51 of Kazan. Kazan discloses: the shared content items 26 included in the presentation 54 may be filtered in various ways; e.g., if the user 14 selects a particular social network 12 and/or a particular contact 16, the content items 26 included in the presentation 54 may be filtered to include only the content items 26 that have been shared with the user 14 within the selected social network 12 and/or by the selected contact 16. Kazan ¶ 51. In this paragraph, Kazan describes filtering content items based on the content items having been shared by user 14 and a selected social network 12 or contact 16. The Examiner explains that to filter content based on the Appeal 2021-000811 Application 16/257,129 6 content having been shared between a user and a social network of the user or a contact of the user, the system of Kazan must “select and keep” a record of the interactions of users with the content items as in [2a] of claim 1. Ans. 4. The Examiner finds that the filtering described in paragraph 51 to “include only the content items 26 that have been shared with the user 14 within the selected social network 12 and/or by the selected contact 16” meets step [3] of “determining a user relationship of the first user to the shared content item based at least in part on the record of interactions” because Kazan’s system must use the record of interactions with the content item to satisfy the filter constraint. Id. In other words, “determining a user relationship of the first user to the shared content” is accomplished by Kazan in paragraph 51 when content is filtered to include only those users who have a “shared” relationship with the content item. The Examiner further cites Spivack to establish that keeping track of a user’s interactions with content was known prior to the effective filing date. Ans. 5 (citing numerous disclosures in Spivack, including Spivack ¶ 155 (“The tracking module 802 may also record the average number of subsequent shares per user that has viewed the web content, the average number of visits to the web content before collecting it.”) For step [4] of “selecting a message from the set of user-generated messages based at least in part on the determined user relationship,” the Examiner turns to paragraph 52 of Kazan. In paragraph 52, Kazan discloses it may be “undesirable to display all of the comments 28 to the content items 26” in the shared items filtered in paragraph 51 and then presented (“presentation 54) to the user. Kazan describes how to avoid this problem: Instead, for content items 26 associated with at least one comment 28, a comment indicator may be included in the Appeal 2021-000811 Application 16/257,129 7 presentation 54, and upon receiving a selection by the user of the comment indicator, one or more comments 28 associated with the content item 26 may be displayed. Kazan ¶ 52. The Examiner finds that the comments 28 of Kazan correspond to the claimed “user-generated messages.” Ans. 5. The Examiner finds that once the content is filtered in paragraph 51 to select content based on users with which the content item has been shared, messages are selected by the “comment indicator” based on this same shared relationship. Ans. 5. The Examiner explains: The selection of comments (i.e., user-generated messages, par 0023) in Kazan is associated with the user interaction with the shared content because the system determined the content item to be displayed first, and once that is determined, the system then select which comment(s) of all the stored comments to displayed (only select and present comments that is associated with the selected shared content items, i.e., selecting a user-generated message). Therefore, Kazan teaches selecting, a message from the set of user-generated messages based at least in part on the determined user relationship. Ans. 5. Appellant contends that the record of interactions cited by the Examiner in Kazan “has no bearing on what comments are selected to be presented to the user.” Reply Br. 2. Appellant argues that “Kazan teaches that a presentation of content items may be filtered based on a record of interaction with the content item,” but does not “select certain comments 28 to present to the user based on the record of interaction.” Id. We do not agree. Appellant admits that “Kazan teaches that a presentation of content items may be filtered based on a record of interaction with the content item.” Reply Br. 2. The only comments displayed by the Appeal 2021-000811 Application 16/257,129 8 “content indicator” described in paragraph 52 are the comments associated with the content items filtered in paragraph 51 based on the content item being shared between users. The Examiner’s reasoning is explained above. When the presentation is viewed by the user, the only comments selected for view are those based on this filtering and the determined relationship to the content item. Kazan ¶ 51. Appellant states that the “only filtering that is done at all to the comments 28 is reduction in comments to avoid a ‘undesirably large presentation 54.’” Rely Br. 2. This argument also is not persuasive as to Examiner error. Kazan discloses that “one or more content items 26 may be associated with one or more comments 28 . . ., and the presentation 54 of a content source 24 may include the comments 28 to content items 26.” Kazan ¶ 52. The content items in presentation 54 are those that have been filtered to include only items shared between users. Id. ¶ 52. Appellant does not appear to dispute this. The “content indicator” selects comments associated with the shared content. Id. Appellant appears to be arguing that all comments are displayed, not only the comments of the users which are sharing the content (“Instead, Kazan passively presents a content item 26 along with comments 28 that are associated with the content item 26.”). Reply Br. 2. However, step [4] of claim 1 does not exclude all messages/comments from being selected as long as a message/comment from [2b] a user-generated message “associated with one or more of a plurality of user relationships to the shared content item” is selected. Claims are given their broadest reasonable interpretation during patent prosecution in light of the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Appeal 2021-000811 Application 16/257,129 9 Cir. 2004). Appellant’s argument is not commensurate with the claim’s broadest reasonable interpretation. Appellant argues that the “only ‘relationship’ that Spivack recites is an interaction between the user and the promotional advertisement.” Appeal Br. 9. Appellant contends that “such website and/or advertisement metrics would be irrelevant to the sharing of content and presentation of comments in Kazan.” Id. The Examiner relies upon Spivack in the Answer merely to show that it is well-known to determine a user’s relationship to a shared item. Ans. 7- 8. Because Kazan also shows this relationship, Spivack’s teaching is not necessary to affirm the rejection. The Board may rely on less than all the references applied by the Examiner in an obviousness rationale without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966); see also Ex Parte Righi, Appeal No. 2007-0590, 2007 WL 5211674, at *14 n.3 (BPAI July 25, 2007 (Informative) (citing Bush and Boyer with approval). Nonetheless, Appellant’s only argument distinguishing Spivack is that the content of the saved interaction in Spivack is different from the claimed content. Appeal Br. 9. The claimed content (e.g., advertisements), however, is non-functional descriptive matter under the printed matter doctrine, which is inadequate to distinguish the claimed subject matter from the prior art. In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Still further, Appellant does not provide evidence that the one of ordinary skill in the art would have considered Spivack’s teaching about saving interactions “irrelevant” to Kazan and claim 1. Appeal Br. 9. “[A]attorney argument [is] not the kind of factual evidence that is required Appeal 2021-000811 Application 16/257,129 10 to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We review appealed rejections for reversible error based on the arguments and evidence Appellant provides for each issue Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). Because Appellant does not identify a reversible error in the obviousness rejection of claim 1, we affirm the rejection of claim 1. Separate arguments are not provided for claims 2-9 and 13-18. These claims, therefore, fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Claims 10-12, 19, and 20 For the additional rejections of claims 10-12, 19, and 20 citing Ow and Demattei, Appellant argues their teachings do not cure the deficiencies of Kazan and Spivack. Appeal Br. 10. Consequently, we affirm the rejections of those claims for the same reasons as for claim 1. CONCLUSION The Examiner’s rejections of claims 1-20 as obvious are affirmed. Appeal 2021-000811 Application 16/257,129 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-9, 13-18 103 Kazan, Spivack 1-9, 13-18 12 103 Kazan, Spivack, Ow 12 10, 11, 19, 20 103 Kazan, Spivack, DeMattei 10, 11, 19, 20 Overall Outcome 1-20 TIME PERIOD 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