Dropbox, Inc.

Patent Trials and Appeals Board

Jan 21, 2020

14634008 - (D) (P.T.A.B. Jan. 21, 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.
14/634,008 02/27/2015 Josh Kaplan 085118-523379_P512US1 3702
78189 7590 01/21/2020
Dropbox
c/o Polsinelli PC
1401 Eye (
Washington, DC 20005
EXAMINER
CATTUNGAL, DEREENA T
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
01/21/2020 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 JOSH KAPLAN, ADAM COOK, STEPHEN POLETTO,
THOMAS WRIGHT, and LUKE FARAONE
____________________

Appeal 2018-005000
Application 14/634,008
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
DAVID J. CUTITTA II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection (July 5, 2017) of claims 1–3, 5–8, 10–15, and 17–20. Appeal
Br. 2. Claims 4, 9, and 16 have been withdrawn from consideration. Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were
heard on January 13, 2020. A transcript of that hearing will be added to the
record in due time.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Dropbox Inc.
Appeal Br. 2.
Appeal 2018-005000
Application 14/634,008

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We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis and
bracketed material added):
1. A computer-implemented method comprising:
[A.] receiving, at a synchronized content management system,
a request from a device to access the synchronized content
management system via a web browser running on the
device;
[B.] identifying a client-side application installed on the device,
the client-side application having a local host server
installed on the device run by the client-side application,
wherein the client-side application is associated with the
synchronized content management system;
[C.] determining that the client-side application is logged into a
user account with the synchronized content management
system;
[D.] sending an indication to the web browser that causes the
web browser to open a local host connection with the local
host server run by the client-side application, wherein the
web browser automatically accesses user account
identifying information for the user account from the
client-side application through the local host connection;
and
[E.] causing the web browser to log into the user account by
using the user account identifying information.

Appeal 2018-005000
Application 14/634,008

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REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Wendt US 2012/0260321 A1 Oct. 11, 2012
Mocanu US 2013/0227668 A1 Aug. 29, 2013

REJECTIONS
The Examiner rejects claims 1–3, 6–8, 12–15, and 17–20 under
35 U.S.C. § 103 as being unpatentable over the combination of Wendt and
Mocanu. Final Act. 3–12. We select claim 1 as the representative claim for
this rejection. The contentions discussed herein as to claim 1 are
determinative as to this rejection.
The Examiner rejects claims 5 and 11 under 35 U.S.C. § 103 as being
unpatentable over various combinations of Wendt, Mocanu, and numerous
other references. Final Act. 12–15. The contentions discussed herein as to
claim 1 are determinative as to these rejections.
Therefore, except for our ultimate decision, we do not address claims
2, 3, 5–8, 10–15, and 17–20 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss

2 All citations herein to the references are by reference to the first named
inventor/author only.
Appeal 2018-005000
Application 14/634,008

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are determinative as to the rejections on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
A.
The Examiner determines:
Wendt . . . does not expressly teach a local host server
installed on the device run by the client-side application. . . .
Mocanu teaches the client-side application having a local
host server [element.410 in fig.4] installed on the device
[element.405 in fig.4] run by the client-side application (Fig.4
and Para: 0064-0065 teaches client-side security service 460 for
authentication the user credentials)[.]
Final Act. 4–5.
B.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
Mocanu does not disclose a local host server. Element 410
is identified as Trusted Computing Base [TCB] with element 460
identified as Security Service, a component of Trusted
Computing Base 410. Mocanu merely discloses a Trusted
Computing Base which would not be understood by a person of
skill in the art to correspond to a local host server. . . .
A TCB is neither a server nor a local host server. Mocanu
never refers to the TCB as a server; rather the Office Action
makes this unsupported conclusion. Mocanu, however, does
disclose a server and that remote server also includes a Trusted
Computing Base (TCB). The prior art, therefore, confirms that a
server is different and distinct from a Trusted Computing Base
(TCB)[.]
Appeal Br. 8.
Appeal 2018-005000
Application 14/634,008

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C.
The Examiner responds:
[T]he term local host sever [sic] is not clearly explained in the
specification of the original disclosure. As such using the
broadest reasonable interpretation the secondary reference
Mocanu in figure.4 shows a client-side security service
component 460 inside the trusted computing base 410, of the
client device 405, performs the function of the local host
server.
Ans. 3 (additional emphasis added).
D.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejections do not adequately
explain the Examiner’s findings of fact.
Particularly, we agree with Appellant that the language of claim 1
requires the client-side application to have “a local host server installed on
the device run by the client-side application,” and we disagree with the
Examiner’s reasoning that Mocanu merely performing the claimed functions
alone without more is sufficient to show such a local host server.
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Application 14/634,008

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One skilled in the art would understand a “server” to be: 3
A computer that manages centralized data storage or network
communications resources. A server provides and organizes
access to these resources for other computers linked to it.
Further, one skilled in the art would understand a “host” to be: 4
A computer containing data or programs that another computer
can access by means of a network or modem.
We find nothing in the Examiner’s reasoning that arguably shows the
Mocanu reference describes a “host server” as that term would be
understood by a skilled artisan. We conclude, consistent with Appellant’s
arguments, that there is insufficient articulated reasoning to support the
Examiner’s finding that Mocanu teaches, “a local host processor,” as
required by claim 1.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1–3, 5–8, 10–15, and 17–20 as being unpatentable under 35 U.S.C.
§ 103.

3 The American Heritage® Science Dictionary; Copyright © 2011.
Published By Houghton Mifflin Harcourt Publishing Company.
(Dictionary.com accessed Jan. 9, 2020).
4 Id.
Appeal 2018-005000
Application 14/634,008

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The Examiner’s rejections of claims 1–3, 5–8, 10–15, and 17–20 as
being unpatentable under 35 U.S.C. § 103 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 5–8, 10–
15, 17–20
103 Wendt, Mocanu 1–3, 5–8, 10–
15, 17–20

REVERSED