Ex Parte Dusevic et al

Patent Trial and Appeal Board

Jul 30, 2018

14271846 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/271,846 05/07/2014
21186 7590 08/01/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
Bojan Dusevic
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.
3626.001US2 3629
EXAMINER
BLACK,LINH
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOJAN DUSEVIC, ANDREW GACHECHILADZE,
NIKITA URALTSEV, ALEXANDER PROKOFIEV,
and LEONID ANTONENKOV
Appeal2018-000002
Application 14/271,846
Technology Center 2100
Before JEAN R. HOMERE, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-20, which are all the pending claims. App. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify Intermedia.net, Inc. as the real party in interest.
App. Br. 2. Appellants also identify Application 14/271,918 (Appeal No.
2018-000157) as a related application, also under appeal. Id. at 3.
Appeal2018-000002
Application 14/271,846
Introduction
Appellants' invention relates to "internal file sharing in a cloud-based
file storage." Spec. ,r 2.
Claims 1 and 2 are representative of the claims on appeal, shown here
with disputed limitations highlighted in italics:
1. A method of sharing a folder in a file system
between an owner and a grantee, the method comprising:
receiving an indication of a folder to share with a grantee
from the owner, the folder to share being a subfolder within a
parent folder, the parent folder not shared with the grantee;
storing, with the subfolder itself, sharing permissions
indicating a level of access the grantee has to the subfolder;
and
creating a virtual folder corresponding to the subfolder
on a device of the grantee, the virtual folder mapping to all
objects within the subfolder and being stored at a level equal to
parent folders of a file hierarchy on [the] device of the grantee.
2. The method of claim 1, further comprising:
altering permissions of the parent folder to share the
parent folder with the grantee; and
creating a virtual folder corresponding to the parent
folder on the device of the grantee, the virtual folder
corresponding to the parent folder mapping to all objects
within the parent folder being stored at a level equal to
subfolder2 on the device of the grantee, without deleting the
subfolder on the device of the grantee.
App. Br. 31 (Claims App'x).
2 In the event of further prosecution, the Examiner and Applicant should
consider whether there is an antecedent basis issue that should be clarified
with respect "subfolder" in "at a level equal to subfolder," as recited.
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Application 14/271,846
Re} ections and References
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception (i.e., an abstract idea) without reciting significantly more.
Final Act. 2-3.
Claims 1-3, 8, 9, and 14--16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hesselink et al. (US 2005/0144195 Al; June 30, 2005)
and Zhang et al. (US 2007/0130143 Al; June 7, 2007). Final Act. 5-10.
Claims 4, 6, 7, 10, 12, 13, 17, 19, and 20 stand rejected under§ 103 as
unpatentable over Hesselink, Zhang, and Goldberg et al. (US 2013/0013560
Al; Jan. 10, 2013). Final Act. 10-13.
Claims 5, 11, and 18 stand rejected under§ 103 as unpatentable over
Hesselink, Zhang, Goldberg, and Roberts (US 2009/0077262 Al; Mar. 19,
2009). Final Act. 13-14.
ANALYSIS
The 35 U.S.C. § 101 Rejection
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patent-eligible. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
In Alice, the Supreme Court reiterated a framework previously set
forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1300 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. In Mayo, the
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Court acknowledged that "all inventions at some level embody, use, reflect,
rest upon, or apply laws of nature, natural phenomena, or abstract ideas."
Mayo, 132 S. Ct. at 1293. Accordingly, the Federal Circuit has instructed
that claims are to be considered in their entirety to determine "whether their
character as a whole is directed to excluded subject matter." McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)).
The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," e.g., to an
abstract idea. Alice, 134 S. Ct. at 2355. We look to whether the claims
focus on a specific means that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea. Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims
are not directed to a patent-ineligible concept, the inquiry ends. Otherwise,
the inquiry proceeds to the second step, in which the elements of the claims
are considered "individually and 'as an ordered combination'" to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting
Mayo, 132 S. Ct. at 1297).
Alice/Mayo Step One
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as
unpatentably "directed to sharing a folder in a file system between an owner
and a grantee, which is an abstract idea because it is a fundamental
technological practice for users to share a file(s)/folder(s)." Final Act 3;
Ans. 4. The Examiner finds that the claim elements, individually or as a
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combination, simply recite a "long-prevalent practice." Ans. 5. Appellants
argue the Examiner errs by improperly identifying the abstract idea to which
the claims are directed, contending "[t]he claims are not directed to sharing a
folder, but rather are directed to specific computer operations that allow
permissions to be stored in a manner that sharing of a folder in a particular
way is possible." App. Br. 17 ( explaining that the claims do not recite a
long-prevalent practice).
We agree with Appellants. It is necessary to consider claims "in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015) (emphases added). Appellants'
claims, which are directed to file-sharing and user-interface issues unique to
computer file systems, are analogous to those in DDR Holdings v.
Hotels.com L.P., which the Federal Circuit held not to be directed to an
abstract idea because they were "necessarily rooted in computer technology"
and overcame a problem that did not arise in an analogous human activity.
773 F.3d 1245, 1257 (Fed. Cir. 2014).
Although "the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with every
patent," CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed.
Cir. 2013) (citing 35 U.S.C. § 154), we note that here there is no concern
with preemption of the underlying idea of sharing folders in a directory or
hierarchy of files. McRO, 837 F.3d at 1315 (identifying "[t]he concern
underlying the exceptions to§ 101 is not tangibility, but preemption" (citing
Mayo, 132 S.Ct. at 1301)). This is not a case in which "with the exception
of generic computer-implemented steps, there is nothing in the claims
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themselves that foreclose them from being performed by a human."
Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016).
Thus, we agree with Appellants that the claims, taken as a whole, are
not unpatentably directed to an abstract idea. Accordingly, we do not
sustain the 35 U.S.C. § 101 rejection of claims 1-20.
The 35 U.S.C. § 103 Rejection of Claim 1
Appellants argue the Examiner errs in finding Hesselink teaches or
suggests claim 1 's disputed limitation of "storing, with the folder, sharing
permissions indicating a level of access the grantee has to the folder." App.
Br. 22-28. In particular, Appellants contend that while Hesselink stores
permissions in a database and, temporarily, in the local cache of a user
device, these permissions "are not, however, stored with the folder to which
they pertain. In [Hesselink], the folders are stored in the 'C' drive or the 'V'
drive," but "[t]here is nothing in [Hesselink] suggesting that the permissions
are stored in either the 'C' or the 'V' drive, let alone 'with the folder' on
such drives." App. Br. 26.
This argument is unpersuasive. A claim under examination is given
its broadest reasonable interpretation consistent with the underlying
specification. In re American Acad. of Science Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). In the absence of an express definition of a claim
term in the specification or a clear disclaimer of scope, the claim term is
interpreted as broadly as the ordinary usage of the term by one of ordinary
skill in the art would permit. In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007).
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Appellants' Specification does not limit any term in the disputed
limitation, and ordinarily skilled artisans would have understood those terms
to encompass their broadest reasonable meanings. For example, the claim
term "with" encompasses its basic, broad usage "as a function word to
indicate a participant in an action, transaction, or arrangement" and "as a
function word to indicate combination, accompaniment, presence, or
July 18, 2018).
Therefore, the disputed limitation of claim 1 requires storing the
subfolder sharing permissions "with the subfolder itself." The Examiner's
rejection essentially determines this limitation encompasses Hesselink's
teaching of storing folder/subfolder data and folder/subfolder permission
information on a single storage device. See Final Act. 6; Ans. 14--16.
Appellants do not persuade us the Examiner errs in finding that the disputed
limitation reads on this teaching of Hesselink.
Appellants acknowledge that Hesselink teaches that folder/subfolder
permissions may be stored in the local cache of a user's computer. See
Reply Br. 4 ( discussing Hesselink ,r,r 131, 201 ). Appellants nevertheless
contend "it would not make logical sense for the permission to access the
folder and the folder itself to both be stored on the same user device, as that
would render such permission useless." Id. Appellants' contention, which
appears to assume that a computer user always has unlimited access to any
folder stored on the user's storage device(s), is unsupported. Consistent with
the Examiner's rejection and contrary to Appellants' contention, artisans of
ordinary skill would have understood that user devices routinely include a
single storage system on which is stored both the information for multiple
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users, including folder and subfolder information, and the permission
information for the multiple users.
Accordingly, we sustain the 35 U.S.C. § 103 rejection of claim 1. We
also, therefore, sustain the rejections of claims 3-8, 10-14, and 16-20, for
which Appellants offer no arguments substantively separate from claim 1.
The 35 U.S.C. § 103 Rejection of Claim 2
Appellants argue the Examiner errs in finding Hesselink teaches or
suggests claim 2' s disputed limitation-
creating a virtual folder corresponding to the parent folder on
the device of the grantee, the virtual folder corresponding to the
parent folder mapping to all objects within the parent folder
being stored at a level equal to subfolder on the device of the
grantee, without deleting the sub folder on the device of the
grantee-
contending Hesselink is silent as to the recited functionality. App. Br. 29.
This argument is persuasive. The disputed limitation of claim 2
creates a virtual folder that that "maps all objects within the parent folder."
Thus, this "parent virtual folder" includes the subfolder for which a separate
"subfolder virtual folder" is created in claim 1. In other words, the "parent
virtual folder" of claim 2 contains ("maps") the subfolder corresponding to
the "subfolder virtual folder" of claim 1. Appellants contend that because
known prior art deletes "subfolder virtual folders" when access is granted to
such a "parent virtual folder," Hesselink's silence on this issue fairly cannot
teach this requirement. App. Br. 29.
Given there is no finding on this issue by the Examiner in the
rejection or the Answer, see Final Act. 7-8; 13-16, Appellants persuade us
the Examiner erred. Accordingly we do not sustain the rejection of claim 2.
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We also, therefore, do not sustain the rejection of claims 9 and 15, which
recite similar limitations and which Appellants argue together with claim 2.
DECISION
For the above reasons, we-
reverse the rejection of claims 1-20 under 35 U.S.C. § 101;
affirm the rejections of claims 1, 3-8, 10-14, and 16-20 under
35 U.S.C. § 103; and
reverse the§ 103 rejection of claims 2, 9, and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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