Dropbox, Inc.Download PDFPatent Trials and Appeals BoardDec 1, 20202019005076 (P.T.A.B. Dec. 1, 2020) Copy Citation 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. 14/660,113 03/17/2015 Chris Beckmann 085118-523392_P059USC1 2607 78189 7590 12/01/2020 Dropbox c/o Polsinelli PC 1401 Eye ( Washington, DC 20005 EXAMINER KHOSHNOODI, FARIBORZ ART UNIT PAPER NUMBER 2157 NOTIFICATION DATE DELIVERY MODE 12/01/2020 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 CHRIS BECKMANN, JOSHUA JENKINS, FRANCOIS ALEXANDER ALLAIN, and JEFFREY BARTELMA Appeal 2019-005076 Application 14/660,113 Technology Center 2100 Before BRADLEY W. BAUMEISTER, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-005076 Application 14/660,113 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 7–13, 15–21, and 23–27.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. CLAIMED SUBJECT MATTER3 Appellant describes the invention as relating to “migrating content items across user content storage accounts, and more specifically pertains to migrating content items from a source user account to a target user account.” Spec. ¶ 2. Appellant emphasizes that the invention “is account based and allows an existing account to migrate content items from that existing account to a new or different account without going through the cumbersome steps of downloading the content, storing the content, and then reuploading the content.” Reply Br. 2 (citing Spec. ¶ 3). 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 Dropbox, Inc. Appeal Br. 2. 2 The Appeal Brief refers to claims 1, 4, 7, 9, 12, 15, 17, 20, 23, and 25–27 as being the subject of this appeal. Appeal Br. 1–2. This statement appears incorrect; the Appeal Brief addresses all claims subject to the August 27, 2018, Office Action. Appeal Br. 10, 19, 20. Because the substance of this appeal does not depend upon the recitations of any of the dependent claims not included in the Appeal Brief’s summary, we address all claims subject to the August 27, 2018, Office Action in this decision. 3 In this Decision, we refer to the Final Office Action dated August 27, 2018 (“Final Act.”), the Appeal Brief filed January 18, 2019 (“Appeal Br.”), the Examiner’s Answer dated April 18, 2019 (“Ans.”), and the Reply Brief filed June 18, 2019 (“Reply Br.”). Appeal 2019-005076 Application 14/660,113 3 Claim 1 is illustrative: 1. A method comprising: receiving a request to migrate a content item from a source user account to a target user account, the content item being assigned a sharing link used to access the content item from a content storage, and being associated with an original content entry including an original content pointer pointing to a location of the content item in the content storage; creating a new content entry for the content item, the new content entry including: an account identifier identifying the target user account; and a new content pointer pointing to the location of the content item in the content storage; and modifying the original content pointer to point to the new content entry. REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Faibish et al. (“Faibish”) US 8,006,111 B1 Aug. 23, 2011 Beckmann et al. (“Beckmann”) US 9,002,815 B2 Apr. 7, 2015 Saika US 2006/0090049 A1 Apr. 27, 2006 Yao et al. (“Yao”) US 2009/0327054 A1 Dec. 31, 2009 Gordon et al. (“Gordon”) US 2012/0278725 A1 Nov. 1, 2012 Griffin US 2014/0181220 A1 June 26, 2014 Appeal 2019-005076 Application 14/660,113 4 REJECTIONS The Examiner maintains (Ans. 3) the following rejections on appeal: A. Provisionally, claims 1–5, 7–13, 15–21, 23 and 24 under the judicially created doctrine of double patenting over claims 1–18 of Beckmann. Final Act. 3.4 B. Claims 1, 4, 7, 9, 12, 15, 17, 20, 23, and 25–27 under 35 U.S.C. § 103 as obvious over Saika in view of Gordon. Final Act. 8. C. Claims 2, 5, 10, 13, 18, and 21 under 35 U.S.C. § 103 as obvious over Saika in view of Gordon and Griffin. Id. at 13. D. Claims 3, 11, and 19 under 35 U.S.C. § 103 as obvious over Saika in view of Gordon and Yao. Id. at 15. E. Claims 8, 16, and 24 under 35 U.S.C. § 103 as obvious over Saika in view of Gordon and Faibish. Id. at 16. OPINION Double Patenting. The Examiner rejects claims 1–5, 7–13, 15–21, 23 and 24 under the judicially created doctrine of double patenting. Final Act. 2–3. Appellant does not dispute this rejection. Appeal Br. 10. We, therefore, summarily sustain this rejection. Obviousness. The Examiner rejects claims 1, 4, 7, 9, 12, 15, 17, 20, 23, and 25–27 under 35 U.S.C. § 103 as obvious over Saika in view of 4 The Final Office Action recognizes claims 1–5, 7–13, 15–21 and 23–27 as pending. See August 27, 2018, Office Action Summary; Final Act. 2. The Final Office Action, however, refers to claims 1–24 as being “provisionally rejected under the judicially created doctrine of double patenting.” Final Act. 3. We understand that this rejection does not now apply to claims 6, 14, and 22 because Appellant cancelled those claims. Id. at 2. Appeal 2019-005076 Application 14/660,113 5 Gordon. Final Act. 8. The Examiner additionally cites Griffin, Yao, or Faibish when rejecting other dependent claims. Id. at 13, 15, 16. To resolve the issues before us on appeal, we focus on the Examiner’s findings and determinations that relate to the error Appellant identifies. The Examiner has the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Here, claim 1 recites, among other things, “receiving a request at a synchronized online content management system to migrate a content item from a source user account in the synchronized online content management system to a target user account in the synchronized online content management system.” Appeal Br. 22 (Claims App.). The other two independent claims on appeal, claims 9 and 17, recite apparatus that must be capable of performing a similar “receiving” step. Id. at 24, 26. The Examiner finds that Saika teaches a system that performs claim 1’s “receiving a request” recitation, which we reference above. Appeal Br. 9 (citing Saika ¶¶ 77, 96, and 99). Final Act. 9. Appellant argues that Saika does not teach migrating files between user accounts. Appellant’s Appeal 2019-005076 Application 14/660,113 6 argument persuades us of error. In particular, the Examiner has not adequately explained how Saika teaches migration of files between user accounts. Saika relates to management of shared files in network attached storage (NAS). Saika ¶ 11. Saika describes, for example, selecting data based upon utilization the network attached storage and migrating data based upon this selection. Id. at ¶ 18. Appellant, however, persuasively argues that moving data between machines is not necessarily the same as moving files between user accounts. Appeal Br. 13; Reply Br. 2–6. Rather, Appellant’s Specification describes user accounts as including information about users stored in an account management system. Spec. ¶ 24. The user accounts permit a user to access content from multiple devices. Id. at ¶¶ 21, 24. The Examiner does not adequately explain how Saika suggests migration between user accounts. Although Saika makes some reference to user registration (Saika ¶ 91), the paragraphs of Saika that the Examiner cites as suggesting migration between user accounts do not reference user accounts. Final Act. 9; Saika ¶¶ 77, 96, 99. The Examiner does not explain how these paragraphs nonetheless suggest migration between user accounts, and the Examiner’s Answer does not squarely address Appellant’s argument that Saika does not teach user accounts. Ans. 5–6 (further addressing synchronization but not addressing user accounts). The Examiner’s treatment of dependent claims does not cure this error. We, therefore, do not sustain the Examiner’s obviousness rejections. Appeal 2019-005076 Application 14/660,113 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–13, 15–21, 23, 24 double patenting Beckmann 1–5, 7–13, 15–21, 23, 24 1, 4, 7, 9, 12, 15, 17, 20, 23, 25–27 103 Saika, Gordon 1, 4, 7, 9, 12, 15, 17, 20, 23, 25– 27 2, 5, 10, 13, 18, 21 103 Saika, Gordon, Griffin 2, 5, 10, 13, 18, 21 3, 11, 19 103 Saika, Gordon, Yao 3, 11, 19 8, 16, 24 103 Saika, Gordon, Faibish 8, 16, 24 Overall Outcome 1–5, 7–13, 15–21, 23, 24 25–27 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 IN PART Copy with citationCopy as parenthetical citation