Ex Parte Barton

Patent Trial and Appeal Board

Sep 7, 2018

13891795 (P.T.A.B. Sep. 7, 2018)

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.
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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.)
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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
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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
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