Dropbox, Inc.

Patent Trials and Appeals Board

Nov 19, 2020

2020001177 (P.T.A.B. Nov. 19, 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.
14/448,173 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.
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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
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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
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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
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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
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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
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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
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[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.
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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).
AFFIRMED