International Business Machines Corporation

Patent Trials and Appeals Board

Nov 2, 2020

2019004299 (P.T.A.B. Nov. 2, 2020)

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.
15/354,700 11/17/2016 Mary Ellen Zurko RSW920090078US2 1205
75949 7590 11/02/2020
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
LIN, SHEW FEN
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
11/02/2020 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte MARY ELLEN ZURKO, DAVID J. TOTH,
SATWIKSAI SESHASAI, CHARLES P. DE SAINT-AIGNAN, and
CHRISTOPHER J. PAUL

Appeal 2019-004299
Application 15/354,700
Technology Center 2100

Before JASON J. CHUNG, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Appeal Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
International Business Machines Corporation. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed invention generally relates to policies for the resharing of
files over an online file sharing system. Spec. ¶ 1.
Independent claim 1 is illustrative:
1. A method for managing file distribution in an online file
sharing system implemented by a server, the method
comprising:
inviting a first entity to access a shared file hosted by the
online file sharing system;
allowing the first entity to reshare the shared file through
the online file sharing system with at least a second entity only
to an extent permitted by a resharing policy indicated by a tag
associated with the shared file, in which the resharing policy
determines users that are allowed to receive reshared files; and
notifying an author of the shared file of the reshare of the
shared file.
Appeal Br. 31 (Claims App.). Independent claims 8 and 13 recite a server
and computer program product, respectively, having limitations similar to
that of claim 1. Id. at 32–34. Dependent claims 2–7, 9–12, and 14–20 each
incorporate the limitations of their respective independent claims. Id. at 31–
35.
REFERENCES
Name Reference Date
Beyda US 2003/0229722 A1 Dec. 11, 2003
Feng et al.
(Feng)
US 2004/0267625 A1 Dec. 30, 2004
Lim US 2008/0091682 A1 Apr. 17, 2008
Zurko et al.
(Zurko)
US 9,507,793 B2 Nov. 29, 2016
Li et al. (Li) (as
translated)
WO 2009/030158 A1 March 12, 2009
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REJECTIONS
I. Claims 1–20 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1–19 of Zurko.
II. Claims 1–20 are rejected under 35 U.S.C. § 101 as being ineligible
subject matter.
III. Claims 1, 2, 5–11, 13, 14, and 16–19 are rejected under 35 U.S.C.
§ 103 as being obvious over Li in view of Beyda.
IV. Claims 3, 4, 12, and 15 are rejected under 35 U.S.C. § 103 as
being obvious over the combination of Li, Beyda, and Feng.
V. Claim 20 is rejected under 35 U.S.C. § 103 as being obvious over
the combination of Li, Beyda, and Lim.

OPINION
I. Double Patenting
Appellant has not argued substantive error in the Examiner’s double-
patenting rejection of claims 1–20 over claims 1–19 of Zurko. Instead,
Appellant states that it has filed a terminal disclaimer. Reply Br. 4.
Accordingly, we sustain, pro forma, the rejection of claims 1–20 on the
ground of nonstatutory double patenting.2
II. Subject Matter Eligibility
1. Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:

2 See MPEP § 1214.06 (I) for procedures for seeking to overcome a
nonstatutory double-patenting rejection following a Board decision.
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Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice,
573 U.S. at 217–18. In applying this eligibility analysis, our reviewing court
has stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
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(Jan. 7, 2019) (hereinafter “2019 Guidance”); October 2019 Update: Subject
Matter Eligibility (hereinafter “October 2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df). The 2019 Guidance seeks to improve the clarity of the subject matter
eligibility analysis and improve consistency of this analysis across the
USPTO. 2019 Guidance, 84 Fed. Reg. at 50. The guidance within these
documents has been incorporated into the June 2020 version of the Manual
of Patent Examination Procedure (hereinafter “MPEP”), hereinafter referred
to as “USPTO guidance” or by particular section of the MPEP. “Subject
Matter Eligibility,” available at https://www.uspto.gov/patent/laws-and-
regulations/examination-policy/subject-matter-eligibility.
Under USPTO guidance, we first look to whether the claim is directed
to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity,
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
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simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See MPEP § 2106.05.
2. Analysis
We have reviewed the Examiner’s subject matter eligibility rejection
in the Final Action (Final Act.) in light of Appellant’s contentions in the
Appeal Brief (Appeal Br.) that the Examiner has erred. We have further
considered the discussion in the Examiner’s Answer (Ans.) and in the Reply
Brief (Reply Br.). We are not persuaded by Appellant’s contention of
Examiner error in rejecting claims 1–20 under 35 U.S.C. § 101. We begin
with claim 1.
a. “Recites an Abstract Idea”
The eligibility inquiry begins with determining whether the claim
recites a judicial exception such as an abstract idea, at Step 2A Prong 1 of
USPTO guidance. MPEP § 2106.04(II)(A).
i. Examiner’s Findings
The Examiner has found claim 1 to recite an abstract idea through the
entirety of the steps performed; i.e., the recitation of:
inviting a first entity to access a shared file hosted by the online
file sharing system; allowing the first entity to reshare the
shared file through the online file sharing system with at least a
second entity only to an extent permitted by a resharing policy
indicated by a tag associated with the shared file, in which the
resharing policy determines users that are allowed to receive
reshared files; and notifying an author of the shared file of the
reshare of the shared file.
Final Act. 4. The Examiner refers to these as the “[i]nviting, allowing,
notifying steps.” Id. The Examiner characterizes these steps as the sharing
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and resharing of files, and finds these steps to describe managing personal
behavior or interactions between people. Ans. 5. The Examiner concludes
that these activities are the type of certain methods of organizing human
activity that is characterized as an abstract idea. Id. The Examiner further
describes these steps as manipulating existing information to generate the
relationship of data, finding such steps to be abstract by analogy to Electric
Power Group, LLC, v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), and
FairWarning IP, LLC v. Iatric Systems, 839 F.3d 1089 (Fed. Cir. 2016).
ii. Appellant’s Arguments and Analysis
Appellant argues that claim 1 is distinct from those claims previously
identified as abstract because claim 1 is directed to an improvement to
computer-related technology. Appeal Br. 18–19. Under USPTO procedure,
we address this consideration at Step 2A, Prong 2, in the next section.
Appellant also argues that the Examiner has not identified any
limitation that is directed to an abstract idea. Reply Br. 5. We are not
persuaded, as the Examiner has identified the entirety of the body of claim 1
as the abstract idea. Final Act. 4.
Appellant further characterizes claim 1 as describing a data file
management method and system, and not managing personal behavior or
interactions. Reply Br. 5. We are not persuaded by this argument, because
generic computer database management implementation does not preclude a
finding that a claim recites an abstract idea. See Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) (finding that a
computerized method of storing limits in a database, and communicating a
notification when a limit is reached, was an abstract method of organizing
human activity); MPEP § 2106.04(a)(2)(II)(C).
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iii. Further Analysis
We agree that the Examiner-identified steps of inviting an entity to
access a shared file, allowing the first entity to reshare the file with a second
entity as permitted by a user-determining resharing policy, and notifying an
author of the file of a reshare, is a manner of applying rules or instructions to
manage personal interaction. Claim 1’s inviting, allowing, and notifying
steps, which provide a policy for how and to whom data may be transmitted,
recite rules or instructions for transmitting data between persons, and thus
recite interactions between people that are the type of method of
organizing human activity previously identified as abstract. See MPEP
§ 2106.04(a)(2)(II)(C).
We also note that in Interval Licensing LLC. v. AOL, the Federal
Circuit determined that a computerized method for “providing someone an
additional set of information without disrupting the ongoing provision of an
initial set of information is an abstract idea.” Interval Licensing LLC, v.
AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018). The claim at issue in
Interval Licensing provided for a person to request data, and for the
acquisition and display of that data to be constrained by a detailed set of
instructions. Id. at 1339–1340. The court further explained that
“[r]ecitation. . . of . . . collection, organization, and display of two sets of
information on a generic display device is abstract absent a ‘specific
improvement to the way computers [or other technologies] operate.” Id. at
1345 (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016)). Accordingly, Interval Licensing supports the Examiner’s
finding that claim 1’s inviting, allowing, and notifying steps, which similarly
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provide a policy for how and to whom data may be transmitted, recite an
abstract idea.
Under our controlling guidance, consistent with Court precedent,
claim 1 satisfies Step 2A, Prong 1, such that the claim recites an abstract
idea.
b. “Directed to an Abstract Idea”
Having determined that claim 1 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of USPTO guidance, whether the claims
are directed to that abstract idea, or whether the claims have additional
elements that integrate the abstract idea into a practical application of that
abstract idea. MPEP § 2106.04.
i. Examiner’s Findings
The Examiner finds claim 1 to recite additional elements in the form
of a generically recited memory for storing data and a processor for
performing the recited steps. Final Act. 5. The Examiner finds these
elements to “amount to no more than implementing the abstract idea with a
computerized system.” Id. The Examiner finds that these elements do not
improve the functioning of a computer or any other technology. Id. at 5–6.
ii. Appellant’s Arguments
Appellant argues that claim 1 provides an improvement to the data
security of computing devices by indicating who may receive shared files
and reshared files. Appeal Br. 16; Reply Br. 13 (citing Enfish and McRO,
Inc. dba Planet Blue v. Bandai Namco Games Am., Inc., 837 F.3d 1299
(Fed. Cir. 2016)). Appellant further states that the improvement is an
enhanced ability to verify the integrity of student work, reduce server load,
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increase data transmission rates, and increase the flexibility of administering
digital assignments. Appeal Br. 19–20.
iii. Analysis
USPTO guidance provides considerations, drawn from prior court
precedent, that indicate that an additional element or combination of
elements may have integrated a recited abstract idea into a practical
application. MPEP § 2106.04(d)(I). One such consideration, advanced by
Appellant, is whether the additional element(s) reflects an improvement in
the functioning of a computer or another technology or technical field. Id.
A contrary consideration, advanced by the Examiner, is whether a lack of a
practical application of the recited abstract idea include additional element(s)
that amount to an instruction to implement the abstract idea on a computer or
to otherwise instruct to “apply [the abstract idea].” Id. Under this
framework, we analyze the additional elements in claim 1.
Claim 1 contains, in addition to the abstract idea, a generically
described online file sharing system implemented by a server, characterized
by the Examiner as a generic memory and processor.
Appellant has not explained, not does the Specification describe, how
the claimed invention acts to verify the integrity of student work, reduce
server load, increase data transmission rates, and increase the flexibility of
administering digital assignments. Unclaimed features do not support patent
eligibility. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769
(Fed. Cir. 2019); Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir.
2018). Accordingly, we are not persuaded by such alleged improvements to
the function of the claimed computer.
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We turn to Appellant’s allegation that claim 1 provides enhanced data
security by ensuring that the authorized user will not reshare that file with an
unauthorized person, which is explained by Appellant and described in the
Specification. Reply Br. 7; Spec. ¶ 15 (“different members of an
organization are often under different contractual obligations than one
another regarding privacy and security matters”). The Examiner finds that
claim 1 “merely uses the computer as a tool to process sharing,” and the
Examiner points to the Specification as showing that sharing files among an
organization is common practice. Ans. 4 (citing Spec. ¶ 2). The Examiner
further finds that the claimed resharing policies manage interactions between
people, and that this is insignificant to integrate the abstract idea into a
practical application of the abstract idea.
The courts have addressed alleged improvements to computer data
security in prior cases. In some cases, the courts have found claims eligible.
SRI Int’l v. Cisco Sys., Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019)
(addressing claims to “using network monitors to detect suspicious network
activity based on analysis of network traffic data, generating reports of that
suspicious activity, and integrating those reports using hierarchical
monitors”); Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed.
Cir. 2018) (addressing “a new kind of file,” in the form of a security profile
for a downloadable “that enables a computer security system to do things it
could not before . . . allow[ing] access to be tailored for different users and
ensur[ing] that threats are identified before a file reaches a user’s
computer”). In both cases, the court decided that a specific improvement in
computer functionality supported eligibility, rather than “the abstract idea of
computer security writ large.” Id. at 1305 (finding the security profile
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allowing the system to “accumulate and utilize newly available, behavior-
based information about potential threats”); SRI Int’l, 930 F.3d at 1304
(“improv[ing] the technical functioning of the computer and computer
networks by reciting a specific technique” that is unlike performance by a
human mind, which is “not equipped to detect suspicious activity by using
network monitors and analyzing network packets,” and thus is “not the type
of human activity that § 101 is meant to exclude”). We have further
considered the eligible cases of McRO (improvements to animation
technology through rules distinct from human-performed animation
processes) and Enfish (a self-relational database comprising an improvement
to database technology), cited by Appellant. Reply Br. 14; McRO, 837 F.3d
at 1314; Enfish, 822 F.3d at 1337.
In other cases, the courts have held claims ineligible. Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016)
(“filtering files”); Ultramercial, Inc. v. Hulu, 772 F. 3d 709, 712, 714 (Fed.
Cir. 2014) (determining which persons may receive media files based upon
the receiver’s advertisement viewing through a process including “restricting
general public access to said media product”); FairWarning, 839 F.3d at
1093 (“detecting fraud and/or misuse in a computer environment based on
analyzing data such as in log files, or other similar records, including user
identifier data.”). In these cases, the claimed invention lacked a “specific or
limiting recitation of . . . improved computer technology.” Intellectual
Ventures I, 838 F.3d at 1316. In Intellectual Ventures I, the court noted that
the claim “contains no restriction on how the result is accomplished . . .
[and] [t]he mechanism . . . is not described, although this is stated to be the
essential innovation.” Id. In Ultramercial, the court reasoned that
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narrowing the abstract idea to a particular technological environment, in that
case, to the Internet, was insufficient to “provide any ‘practical assurance
that the process is more than a drafting effort designed to monopolize the
[abstract idea] itself.’” Ultramercial, 772 F.3d at 716. In FairWarning, the
court found the “incorporation of a computer, not the claimed rule, that
purportedly ‘improve[s] [the] existing technological process’ by allowing
the automation of further tasks.” FairWarning, 839 F.3d at 1095.
In light of these precedents, we are not persuaded of error in the
Examiner’s determination that the claims do not improve a computer or
another technology. There is neither a “new kind of file” providing new
technological capabilities, as present in Finjan, nor is the claimed technique
of tagging a file to identify its permitted users of such character that a human
mind would be incapable of determining which receivers are authorized, as
present in SRI Int’l. Instead, the claimed invention is, as in Intellectual
Ventures I, unconstrained by a particular mechanism for performing the
security. Spec. ¶ 35 (the resharing policies set by a system administrator are
effected through an “authority interface (106) [which] may include any
applicable hardware and software necessary to achieve this functionality”).
To the extent that the claim secures the files in a computer system, rather
than physical files, it is, as in FairWarning, the incorporation of a computer
that purportedly improves the process by automating the restrictions on
sharing. In sum, claim 1’s alleged improvement is the provision of a list of
users to direct the automation of restricting file access by any applicable
hardware and software necessary to achieve this functionality.
An improvement to computer technology may alternately occur where
the improvement derives from an unconventional arrangement of computer
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devices. Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300–
01 (Fed. Cir. 2016) (utilizing network devices and gatherers, ISMs
[Information Source Modules], a central event manager, a central database, a
user interface server, and terminals or clients to enhance data in a distributed
fashion; see also BASCOM Glob. Internet Servs. v. AT&T Mobility LLC,
827 F.3d 1341, 1350–51 (Fed. Cir. 2016) (finding eligibility where
installation of a filtering tool at a specific location, remote from the end-
users and with customizable filtering features specific to each user, realizes
the benefits of filters on both local and remote servers).
Here, the claims require a memory and one or more processors.
Appellant has not argued, nor does the Specification evince, any
unconventional arrangement of the memory and processors such that the
computer architecture itself provides an improvement to computer
technology in the manner of BASCOM or Amdocs. See infra section II(2)(c)
at 14–15.
Accordingly, we are not persuaded by Appellant’s arguments that
claim 1 improves a computer or other technology.
Based upon our controlling guidance and court precedent, we
determine that claim 1 is directed towards the recited abstract idea, and that
the recited abstract idea is not integrated into a practical application of that
idea.
c. Significantly More than the Abstract Idea
Having determined that claim 1 is directed to an abstract idea, we next
determine, under Step 2B of the 2019 Guidance, whether the claims amount
to significantly more than the abstract idea itself. 84 Fed. Reg. at 56. A
determination that the claims are significantly more may be indicated where
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additional limitations, either alone or in combination, are not well-
understood, routine, conventional activity in the field. Id.
The Examiner finds the additional elements to be limitations that are
generic computer elements providing conventional computer functions.
Final Act. 4–5 (citing then-controlling USPTO guidance); Ans. 4 (citing
Spec. ¶ 2). Appellant argues (1) that the Examiner fails to provide support
for this conclusion, and (2) that the additional elements do not provide
merely conventional implementation because claim 1 is allegedly unobvious
over the references of record. Appeal Br. 20.
i. Analysis
As an initial matter, issues of novelty and nonobviousness under
35 U.S.C. §§ 102 and 103 may not be substituted for the issue of subject
matter eligibility under 35 U.S.C. § 101. Mayo, 566 U.S. at 91. Novelty
and nonobviousness do not “resolve the question of whether the claims
embody an inventive concept” under Step 2B. Intellectual Ventures I,
838 F.3d at 1315. Accordingly, we are not persuaded by Appellant’s
arguments against the subject-matter eligibility rejection based on novelty
and nonobviousness.
With respect to the conventionality of the additional elements, we
agree with the Examiner that Appellant’s Specification characterizes
network-based file sharing as commonly performed. Spec. ¶ 2.
Furthermore, the courts have found conventional the use of computers to
perform generic tasks involving obtaining data, comparing data, issuing
automated instructions or determining undesirable transactions, and
restricting public access to media by rules. Alice, 573 U.S. at 2359–60;
FairWarning, 839 F.3d at 1094; Ultramercial, 772 F.3d at 716–17. The
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conventionality of generic computer components for transmitting data,
storing and retrieving data in a memory, and updating data in a log, is also
supported by USPTO guidance. MPEP § 2105.05(d)(II).
Accordingly, we are not persuaded that claim 1, as a whole, recites
significantly more than the recited abstract idea.
In view of the foregoing, under USPTO Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has not shown
the Examiner erred in concluding claim 1 is directed to a judicial exception,
i.e., an abstract idea, without significantly more. We therefore affirm the
Examiner’s rejection of claim 1. Because Appellant argues claims 2–20 on
the same grounds as claim 1, we affirm the Examiner’s rejection of claims
1–20. 37 C.F.R. § 41.37(c)(1)(iv) (2018).
III. Obviousness Rejections over Li and Beyda
1. Claims 1, 8, and 13
With respect to claim 1, the issue raised by Appellant is whether the
combination of Li and Beyda teaches or suggests the limitation that a
“resharing policy determines users that are allowed to receive reshared
files.” Appeal Br. 21.
The Examiner cites, for that limitation, Li’s description of a resharing
state in which a sharing receiver is allowed to reshare the target information,
where the sharing receiver may be specified from a contact list. Final Act. 7
(citing Li ¶¶ 7, 43); Ans. 6 (citing Li ¶¶ 43, 71). The Examiner also cites to
Beyda for that limitation, characterizing Beyda as describing that resharing
of a message to others may be indicated by further action with respect to the
original message; i.e., by rules that determine the resharing address. Final
Act. 8 (citing Beyda ¶¶ 24, 35–37); Ans. 6.
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Appellant argues that Li describes sharing a file from A to B and
determining whether the file may be reshared, “for example,” to C. Appeal
Br. 22 (quoting Li ¶ 28); Reply Br. 10–11. Appellant argues that Li does not
teach or suggest any limitation on resharing based upon “users that are
allowed to receive reshared files.” Id. (quoting Claim 1). Appellant further
argues that Beyda does not remedy the deficiencies of Li. Appeal Br. 23;
Reply Br. 11.
We are not persuaded by Appellant’s arguments that the combination
of Li and Beyda fails to teach or suggest determining users that are allowed
to receive reshared files. Appellant admits that Li teaches that information
from A received by B may then be reshared to C. Appeal Br. 22 (quoting Li
¶ 28). While Appellant characterizes this description as describing no more
than switching on or off a resharing state, this description at least suggests
determining a particular resharing receiver — C. Further, Li explains that
the information owner may “cancel the re-sharing of the information with a
certain user” as an alternative to cancelling all of the resharing relationships
of the information. Li ¶ 44. Such user-specific cancellation supports the
Examiner’s finding that Li teaches or suggests determining whether a
specified user is allowed (or not) to receive reshared files.
The Examiner has also pointed to Beyda’s teaching of rules
identifying an entity to which a message may next be sent after the message
has been initially received by a receiver. Final Act. 8; Ans. 6; Beyda ¶ 78,
claims 1, 6. We agree with the Examiner that Bedya provides a teaching of
determining a user that is allowed to receive a reshared message. In view of
these teachings and suggestions of Li and Beyda, we are not persuaded by
Appellant’s arguments, and sustain the Examiner’s rejection of claim 1.
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Claims 6–8, 12–14, and 16–19 have been rejected under the same
combination of Li and Beyda, and have not been argued separately. See
generally Appeal Br. Accordingly, we also sustain the Examiner’s rejection
of claims 6–8, 12–14, and 16–19. 37 C.F.R. § 41.37(c)(1)(iv).
2. Claim 2
Appellant further argues against the rejection of claim 2 over Li and
Beyda, in that the combination fails to teach or suggest that the “second
entity is an unauthorized recipient of the reshared file.” Appeal Br. 25.
Appellant argues that Li does not describe the characteristics of a resharing
recipient, or any determination that the resharing recipient would be
unauthorized. Id. at 25–26. The Examiner finds that Li’s system prevents
the sharing receiver from sharing data with others, i.e., unauthorized
recipients. Ans. 7.
We are not persuaded by Appellant’s argument. As discussed above,
Li specifically describes that the information owner may prevent resharing
with others, including “cancel[ling] the re-sharing of the information with a
certain user” or all users. Li ¶ 44. Accordingly, we agree with the Examiner
that Li teaches or suggests preventing data from being shared with those
who are not authorized to receive reshared information. We sustain the
Examiner’s rejection of claim 2.
3. Claim 5.
Appellant argues that Li does not teach or suggest claim 5’s limitation
of “allowing a user to see the resharing policy associated with the shared
file.” Appeal Br. 26. Appellant argues that the Examiner’s reliance on Li
for viewing “sharing-related information” does not include a user’s viewing
of any resharing policy. Id. Appellant argues that, although Li’s user
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performs various operations through the user interface, and that sharing is
determined based on user selection, Li does not teach or suggest a sharing
policy, and thus, does not teach or suggest that such a policy may be viewed
by a user. Id. at 26.
The Examiner finds Li to describe the user performing operations
through an interface, including viewing sharing-related information such as
a description of the sharing provider and sharing time. Ans. 8.
We are not persuaded by Appellant’s arguments. Both the Examiner
and Appellant agree that a user sets the sharing through the interface, and
views sharing-related information. As explained with respect to claim 1, we
agree with the Examiner’s finding of Li and Beyda to teach or suggest the
user setting a resharing policy specifying particular users. Supra at 17.
Consequently, we are not persuaded by Appellant’s argument that Li fails to
teach or suggest a sharing policy, and instead agree with the Examiner that
Li’s description of a user setting resharing policy through the interface and
viewing sharing-related information teaches or suggests the limitation of
claim 5. We sustain the Examiner’s rejection of claim 5.
4. Claims 9–11
Claims 9–11 further limit the permitted resharing receivers, by
attributes of either the first receiving entity (claim 9), the author of the file
(claim 10), or the shared file itself (claim 11).
Appellant argues that Li’s selection is based on direct user selection,
and not by attributes of the receiving entity, author, or file. Appeal Br. 27–
28. The Examiner cites to various paragraphs of Li, finding that the user
selects resharing options, and selects sharing receivers based on the user’s
contact list. Final Act. 9–10 (citing Li ¶¶ 11, 24, 27, 43, 71–73); Ans. 8–9.
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The Examiner further finds Beyda teaches or suggests the user/sender
establishing resharing rules. Ans. 9.
We are persuaded by Appellant with respect to claims 9 and 11,
because the Examiner has not pointed to any attributes of the receiver (claim
9) or the shared file (claim 11) in either Li, Beyda, or their combined
teachings or suggestions. However, we are not persuaded by the Appellant
with respect to the use of attributes of the author of the shared file (claim
10). Appellant and the Examiner agree the user sets the sharing, and the
Examiner finds that such sharing is based on the contact list of the user,
which is an attribute of the user/author of the file. Ans. 9. Appellant agrees
that the cited portions of Li “relate to viewing contacts and whether
information is allowed to be re-shared or not.” Reply Br. 14. Accordingly,
we sustain the Examiner’s rejection of claim 10 and reverse the Examiner’s
rejection of claims 9 and 11.
IV. Obviousness Rejections over Li, Beyda, and Feng
1. Claims 3 and 12
Claims 3 and 12 were not argued separately from claim 1. For the
reasons expressed above in sustaining claim 1, we sustain claims 3 and 12.
2. Claim 4
Appellant argues that the combination of references does not teach or
suggest the added limitation of claim 4; i.e., “allowing a user to see the
resharing policy associated with the group,” because Li does not mention
any sort of resharing policy. Appeal Br. 28; Reply Br. 16.
The Examiner finds Li to teach viewing a sharing policy through
showing sharing-related information to the user who logs into the system.
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Ans. 10. The Examiner further finds Feng to teach a group sharing policy.
Id.
As explained with respect to claim 1, we agree with the Examiner’s
finding of Li and Beyda to teach or suggest the user setting a resharing
policy specifying particular users. Supra at 17. Further, we agree that the
addition of Feng teaches a group sharing policy. Accordingly, we sustain
the rejection of claim 4.
3. Claim 15
Appellant argues that the combination of references does not teach or
suggest the added limitation of claim 15; i.e., “a first resharing policy
applied to entities within a group; and a second resharing policy applied to
entities within a subgroup of the group.” Appeal Br. 29; Reply Br. 16.
Appellant argues that Feng teaches this limitation by describing a sharing
style that corresponds to a specific sharing relationship between a
community member and the publisher, such that sharing between
community members is a first policy and multiple views based sharing is
seen as a second policy teaches this limitation. Ans. 11. Appellant argues
that Feng describes different groups with different sharing relationships, and
that there is no mention of one policy applying to a group and another policy
applying to a subgroup. Appellant further argues that “a sharing style (how
something is presented) is not a ‘resharing policy’ that indicates who/what
can be reshared.” Reply Br. 16.
We are persuaded by Appellant’s arguments. The Examiner has not
shown Feng to describe two different policies governing the resharing of a
shared file, as required by claim 15, which incorporates the limitations of
claim 13 from which it depends. Nor has the Examiner explained how
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Feng’s community-member sharing and views-based sharing teaches or
suggests a subgroup having a single views-based file resharing policy and
also having a single community-member sharing policy of the group from
which it depends. Consequently, we reverse the Examiner’s rejection of
claim 15.
V. Obviousness Rejection of Claim 20 over Li, Beyda, and Lim
Appellant argues claim 20 for the same reasons as presented against
the rejection of claim 13. For the same reasons expressed in sustaining the
rejection of claim 13, supra, we sustain the rejection of claim 20.

CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejections
of claims 1–20 for nonstatutory double patenting and as being ineligible
subject matter under 35 U.S.C. § 101. We further affirm the Examiner’s
obviousness rejections of claims 1–8, 10, 12–14, and 16–20. We reverse the
Examiner’s obviousness rejections of claims 9, 11, 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 Nonstatutory Double
Patenting
1–20
1–20 101 Eligibility 1–20
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1, 2, 5–
11, 13,
14, 16–19
103 Li, Beyda 1, 2, 5–8,
10, 13, 14,
16–19
9, 11
3, 4, 12,
15
103 Li, Beyda, Feng 3, 4, 12 15
20 103 Li, Beyda, Lim 20
Overall
Outcome
1–20

AFFIRMED