Ex Parte Goel et al

Patent Trial and Appeal Board

Dec 31, 2018

15169437 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/169,437 05/31/2016
120600 7590 01/03/2019
Hickman Palermo Becker Bingham/ Dropbox
1 Almaden Boulevard
Floor 12
San Jose, CA 95113
FIRST NAMED INVENTOR
Samir Goel
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.
60332-0155 2833
EXAMINER
LE,HUNGD
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMIR GOEL, FRANCK CHASTAGNOL,
and ABHISHEK AGRAWAL
Appeal2018-005246 1
Application 15/169,437
Technology Center 2100
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20. Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Dropbox, Inc. is identified as the real party in interest. App. Br. 1.
Appeal2018-005246
Application 15/169,437
STATEMENT OF THE CASE
Appellants' disclosure relates to a "enabling a user to use a user
computer to search the user's personal content items hosted by an online
content management service." Abstract. Claims 1 and 11 are independent;
claim 11 is reproduced below for reference (with emphases added):
11. A computer-implemented method performed at a user
computer comprising one or more processors, the method
compnsmg:
obtaining a search query for searching user's content items
hosted by an online content management service;
use the search query, identifying in a local index at the user
computer a set of one or more of the user's hosted content items
that satisfy the search query;
wherein a version of a content item in the set of one or
more content items that satisfy the search query is stored at the
user computer at a time the search query is obtained;
wherein the local index contains version information for
the content item, the version information indicating that the
version of the content item stored at the user computer is
different than another version of the content item hosted by the
online content management service, the other version of the
content item stored at one or more servers operated by the online
content management service;
generating, based on the version information for the
content item in the local index, a search answer summary to
indicate that the version of the content item stored at the user
computer is different than the other version of the content item
hosted by the online content management service;
displaying, in a graphical user interface at the user
computer, the search answer summary for the content item.
The Examiner's Rejections
Claims 1-20 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-31
of U.S. Patent 9,384,226. Final Act. 3.
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Appeal2018-005246
Application 15/169,437
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Mishra (US 2015/0112996 Al; Apr. 23, 2015) and
Srivastava (US 2013/0191414 Al; July 25, 2013). Final Act. 4.
ANALYSIS
A. Double Patenting
Appellants do not address the double patenting rejection of claims 1-
20 in the Briefs. Accordingly, we summarily sustain the double patenting
rejection.
B. Obviousness
Appellants argue Srivastava fails to teach or suggest the claimed step
of generating an indication of a changed version, because "Srivastava's
content item preview is an indication of a content item, but it is not an
indication that two versions of the same content item are different." App.
Br. 12. Appellants contend that "Srivastava fails to describe any search
answer summary that indicates a difference between two versions of data
stored remotely from each other." Reply Br. 4.
We are persuaded by Appellants' argument. The Examiner first finds
that the "generating" limitation is found in Srivastava (see Final Act. 5,
citing generally Srivastava ,r,r 15, 13, 16, 33, 40, 60), and then finds
"Srivastava suggests generating a search answer summary by providing links
to other locations if the system could not find the data at the local computer
or index." Ans. 4, emphasis added, citing Srivastava ,r 17. The claim
requires, however, that a version of a content item "is stored at the user
computer at a time the search query is obtained," and the Examiner fails to
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Appeal2018-005246
Application 15/169,437
provide any reasoning why one of ordinary skill in the art would modify
Srivastava to provide the information for a local version. See App. Br. 8;
Ans. 4; see also Srivastava ,r 66.
Accordingly, we are constrained by the record to reverse the
Examiner's obviousness rejection of independent claim 11, as well as
independent claim 1 commensurate in scope, and all claims that depend
therefrom.
DECISION
The Examiner's decision rejecting claims 1-20 on the ground of
nonstatutory obviousness-type double patenting is affirmed.
The Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 103
is reversed.
The Examiner's decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 4I.50(a)(l).
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). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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