Ex Parte BartonDownload PDFPatent Trial and Appeal BoardSep 7, 201813891795 (P.T.A.B. Sep. 7, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/891,795 05/10/2013 78189 7590 09/11/2018 Dropbox c/o Polsinelli PC 1401 Eye (''I'') Street, N.W., Suite 800 Washington, DC 20005 FIRST NAMED INVENTOR Chris Barton 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 085118-542092_pl40US1 9353 EXAMINER PENA-SANTANA, TANIAM ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 09/11/2018 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 PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRIS BARTON Appeal2018-001250 Application 13/891, 795 Technology Center 2400 Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and SCOTT E. BAIN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1, 3, 5, 7-9, 11, 13, 15, 16, 18-20, and 22-26. Claims 2, 4, 6, 10, 12, 14, 17, and 21 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. Appeal2018-001250 Application 13/891,795 INVENTION Appellant's invention relates to "managing a local cache on a computing device that stores content items for an online content-management system." (Abstract.) Illustrative claim 1 is reproduced below: 1. A method for managing a master cache cluster that stores content items that are synchronized between an online content-management system and a computing device that hosts a master local cache controller, the method comprising: obtaining usage data associated with the computing device, the computing device hosting a local cache; applying one or more rules to the usage data to identify one or more relevant content items to be accessed by the computing device; obtaining proximity data to identify at least one other computing device hosting a local cache controller configured to communicate with the computing device that hosts the master local cache controller, wherein the computing device and the at least one other computing device are mobile devices; and performing a cache-management operation at the master local cache controller to facilitate accessing the one or more relevant content items from the online content-management system through the master cache cluster, wherein the master cache cluster is connected to the online content management system via a first connection that is intermittent and the master cache cluster is connected via a second connection that is a wired or wireless network, wherein the first connection and second connection are different. 2 Appeal2018-001250 Application 13/891,795 EXAMINER'S REJECTIONS Claims 1-3, 5, 9, 11, 13, 16, 18, and 20 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Wilbur (US 2012/0331050 Al; Dec. 27, 2012) and Bin Tariq (US 2003/014503 8 A 1; July 31, 2003 ). 1 Claims 8 and 19 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Wilbur, Bin Tariq, and Larsen (US 2006/0233537 Al; Oct. 19, 2006). Claims 7, 15, and 22 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Wilbur, Bin Tariq, and Flynt (US 2006/0235605 Al; Oct. 19, 2006). Claims 23 and 24 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Wilbur, Bin Tariq, and Boldyrev (US 2014/0082178 Al; Mar. 20, 2014). Claim 25 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Wilbur, Bin Tariq, and Cho (US 2011/0317675 Al; Dec. 29, 2011). Claim 26 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Wilbur, Bin Tariq, and Davis (US 2012/0096051 Al; Apr. 19, 2012). ANALYSIS We are persuaded by Appellant's arguments (App. Br. 7-8; see also Reply Br. 7-8) that the Examiner erred in combining Wilbur and Bin Tariq. The Examiner acknowledged that Wilber does not teach or suggest all the limitations of independent claim 1. (Final Act. 5.) Thus, the Examiner 1 The rejection of claims 1, 9, and 16 under 35 U.S.C. § 112, second paragraph, has been rendered moot in view of Appellant's After Final amendment, which was entered by the Examiner. (Adv. Act. 1.) 3 Appeal2018-001250 Application 13/891,795 relied upon Bin Tariq for teaching additional limitations of claim 1. (Id. at 5---6.) The Examiner concluded that "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to modify Wilbur's disclosure to include Bon Tariq's limitations in order to manage cacheable streaming content delivered to mobile nodes in packet based in communication networks." (Id. at 6.) We do not agree with the Examiner's conclusions. Although the Examiner proposes to modify Wilbur with Bin Tariq, the Examiner has not provided an articulated reasoning with some rational underpinning as to how and why one of ordinary skill in the art would combine Wilbur with Bin Tariq. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"); see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, the Examiner merely repeats Bin Tariq's description of itself as being directed to "managing cacheable streaming content delivered to mobile nodes in packet based communication networks," instead of articulating one of the rationales provided in KSR to support a conclusion of obviousness. See KSR, 550 U.S. at 415--421. Accordingly, we are persuaded by Appellant's argument that: The Office Action fails to provide a factually supported reason to combine the prior art references .... However, statement does not amount to the required articulated reasoning to combine references. The provided reason is merely a description of Bin Tariq's invention, not a reason to combine that teaching with Wilbur. Accordingly, there is no explanation or reason provided as to why a person of ordinary skill in the art would have 4 Appeal2018-001250 Application 13/891,795 combined elements from Wilbur with the elements of Bin Tariq "in the way the claimed invention does". (App. Br. 7 ( emphases omitted).) Thus, the Examiner has improperly combined Wilbur and Bin Tariq to reject independent claims 1, 9, and 16 under 35 U.S.C. § 103(a). Accordingly, we do not sustain the rejection of claims 1-3, 5, 9, 11, 13, 16, 18, and 20 under 35 U.S.C. § 103(a). In addition, we do not sustain the rejections of claims 7, 8, 15, 19, and 22-26 under 35 U.S.C. § 103(a) over various combinations of Wilbur, Bin Tariq, Larsen, Flynt, Boldyrev, Cho, and Davis for the same reasons discussed previously with respect to the rejection of claims 1-3, 5, 9, 11, 13, 16, 18, and 20 under 35 U.S.C. § 103(a) over Wilbur and Bin Tariq. DECISION The Examiner's decision rejecting claims 1, 3, 5, 7-9, 11, 13, 15, 16, 18-20, and 22-26 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation