Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Oct 26, 2020

2019003874 (P.T.A.B. Oct. 26, 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.
14/946,579 11/19/2015 John Lincoln DeMaris MS2-0177US 7804
142810 7590 10/26/2020
Newport IP, LLC
1400 112th Ave SE
Suite 100
Bellevue, WA 98004
EXAMINER
ABU ROUMI, MAHRAN Y
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
docketing@newportip.com
eofficeaction@appcoll.com
scott@newportip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LINCOLN DeMARIS and OMAR HUSSEIN SHAHINE

Appeal 2019-003874
Application 14/946,579
Technology Center 2400

Before JOHN A. EVANS, JUSTIN BUSCH, and
JOHN P. PINKERTON, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which are all the claims pending.
We have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134(a).

We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Microsoft Technology Licensing, LLC. Appeal Br. 3.
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STATEMENT OF THE CASE
INTRODUCTION
The invention relates generally to “privately editing shared files in a
collaborative space.” Spec. ¶ 3. In some embodiments, responsive to a user
request, a system may make a personal copy of a shared file in a personal
storage space associated with the user. Spec. ¶ 31. The user may edit the
personal copy and publish the edited version back to the collaborative space.
Spec. ¶ 32. The Specification describes that “in this manner, the user’s edits
will be available to other users only when the user decides the file is ready.”
Spec. ¶ 32. As part of this process, the system may determine whether the
shared file has been edited since the personal copy was made. Spec. ¶ 32. If
so, the user may overwrite the changes to the shared file or merge the edited
personal copy with the changes to the shared file. Spec. ¶ 32.
Claims 1 (system), 13 (method), and 19 (server computing device) are
independent. Claim 1 is reproduced below:
1. A system for allowing a user to privately edit shared files
in a collaborative space, comprising:
at least one processor; and
a memory storing instructions that, when executed by the
at least one processor, perform a method, comprising:
generating a user interface comprising a listing of a
plurality of shared files accessible in the collaborative space and
an edit privately control to privately edit a personal copy of an
identified shared file of the plurality of shared files;
receiving, as a result of an actuation of the edit privately
control, an indication to privately edit the identified shared file;
generating the personal copy of the identified shared file;
providing the generated personal copy to a personal
storage location for the user to privately edit; and
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updating metadata associated with the identified shared
file to indicate that the personal copy has been generated.
Appeal Br. 28 (Claims App.).
THE PENDING REJECTION2
Claims 1–20 stand rejected under 35 U.S.C. § 103 as obvious in view
of Antebi (US 2012/0192055 A1; July 26, 2012). Final Act. 8–14.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues the
Examiner erred in rejecting independent claim 1 as obvious over Antebi.
See Appeal Br. 12–15; Reply Br. 2–6. Appellant argues the rejection of
independent claims 13 and 19 for the same reasons as independent claim 1.
Appeal Br. 9. Appeal Br. 16–17. Claims 2–12 depend ultimately from
independent claim 1; claims 14–18 depend ultimately from independent
claim 13; and claim 20 depends from independent claim 19. Appellant
argues the rejections of these claims should be reversed for the same reasons
as the independent claims from which they depend. See Appeal Br. 17;
Reply Br. 6. We select claim 1 as representative. See 37 C.F.R.

2 The Examiner also rejected claims 1–20 under 35 U.S.C. § 101 as being
directed to a judicial exception (i.e., an abstract idea) without significantly
more. Final Act. 6–8. But the Examiner withdrew that rejection in the
Answer. Ans. 3.

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§ 41.37(c)(1)(iv). Appellant presents additional arguments for dependent
claim 9, which we address separately below. Appeal Br. 16.
Claims 1–8 and 12–20
The Examiner finds Antebi teaches or suggests every limitation
recited in representative claim 1, except that “Antebi does not expressly
teach privately editing.” Final Act. 9–10. The Examiner finds, however,
that
one skilled in the art would easily understand . . . [Antebi’s] local
copies on local devices to be substantially similar to privately
editing. Utilizing such teachings enable users coauthoring a
document, document merging, discovering and displaying
context-sensitive metadata on a software dashboard based on
permissions associated with the metadata and/or a client
computing device, caching, symmetric distributed document
merge with the multiple service providers, and integrated search
and insertion of multimedia data in documents, among others.
Final Act. 10 (citing Antebi, Abstract). Of particular relevance to this
Appeal, the Examiner finds Antebi discloses or renders obvious the
following claim limitations (with key disputed features italicized):
generating a user interface comprising a listing of a
plurality of shared files accessible in the collaborative space and
a an edit privately control to privately edit a personal copy of an
identified shared file of the plurality of shared files;
receiving, as a result of an actuation of the edit privately
control, an indication to privately edit the identified shared file;
generating the personal copy of the identified shared file;
providing the generated personal copy to a personal
storage location for the user to privately edit; and
updating metadata associated with the identified shared
file to indicate that the personal copy has been generated.
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Final Act. 10 (citing Antebi ¶¶ 62–65, 94–102, Figs. 3, 6, Abstract); Ans. 3–
16; see Appeal Br. 14. Independent claims 13 and 19 recite similar
limitations, for which the Examiner relies on the same findings. See Appeal
Br. 30, 31 (Claims App.); Final Act. 13–14; Ans. 18.
Antebi relates to a client-server system and method for co-authoring a
document, in which: a first client computing device can make a first set of
changes to a first version of a particular document; a second client
computing device can make a second set of changes to a second version of
the particular document; and a third-party collaboration service provider can
communicate the first and second sets of changes to the first and second
client computing devices, respectively. Antebi ¶ 2. Antebi’s system may
include various plug-in software components that “are integrated with
document processing software suites” and “provide a set of integrated
interfaces for collaborative document processing in conjunction with
multiple remote file, data, and third party application service providers.”
Antebi ¶ 22.
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Figure 7A of Antebi is reproduced below.

Figure 7A depicts an example client-server computing environment
according to an embodiment of Antebi. Server view 722 may include a
document 724 as well as a merge & communication module 726. Antebi
¶ 95. The server may be in communication via a computer network with a
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first client device 700, which has a client view 702 that includes a document
copy 704 and a dashboard panel 706. Antebi ¶ 95.
A first user of the first client device may connect with the server to
edit a copy of a document. Antebi ¶ 96. For example, the user may launch
and use integrated document processing software with a plug-in component
that allows the user to store, find, and retrieve files from specific service
providers. Antebi ¶ 62, Fig. 7A (item 702). The user may click on or select
the “open” button from the set of buttons and a control showing a list of
folders and files may be presented either on the user’s client device or from
the remote servers of the service providers. Antebi ¶ 64. The user may
select a file to open, and a copy of the document may be downloaded from
the server to the client device by the user. Antebi ¶ 96.
The copy may be independently edited by the user on the client
device. Antebi ¶ 98. Periodically, the client device may communicate with
the server to determine whether changes have been made to the document by
a second client device or user. Antebi ¶ 98. Such changes may be signified
by timestamps, flags, hash functions, cyclic redundancy checks, and other
similar techniques. Antebi ¶ 98. The first client device may communicate
with the server any changes made by the user to the local copy of the
document. Antebi ¶ 99. In response, the server may record such changes,
for example, in a time-stamped database, incorporate the changes into the
document, and communicate the changes to the other client devices. Antebi
¶ 99.
Metadata related to a document or file being edited by a user may be
searched for and found—for example, by a plug-in component or an
autonomous software agent—and updated in the dashboard panel of the
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client view on the user’s client device. Antebi ¶¶ 65, 87, 95, Fig. 6 (item
620), Fig. 7A (item 706). The metadata may include file information
(filename, creation date, and change history), author information (primary
author or document owner, and edit history for each author), presence
information (contact information of collaborating authors and an online or
offline indicator), and other data items. Antebi ¶¶ 87–93, Fig. 6 (items 622,
624), Fig. 7A (item 706).
If changes are made to the document by a second user on a second
client device, the first client device may download those changes from the
server to update its own local copy. Antebi ¶ 99. Changes made by a
second user to a local copy of the document on the second user’s client
device may be communicated, by the server, to the first user’s client device
and then merged with the first user’s local copy of the document on the first
user’s client device. Antebi ¶ 101. The first user’s client device may also
work off-line (not connected to the servers via computer networks), such
that changes made to the local copy of the document may be cached and
later merged with changes made by other users to their respective copies of
the document only upon reconnection to the servers via computer networks.
Antebi ¶ 104.
Appellant argues Examiner error because Antebi fails to disclose or
render obvious “the claimed ‘edit privately control’ or ‘receiving . . . an
indication to privately edit the identified shared file,’ much less ‘providing
[a] generated personal copy’ and ‘updating metadata . . . to indicate that the
personal copy has been generated.’” Appeal Br. 14; see also Appeal Br. 12–
15; Reply Br. 2–6. In particular, Appellant asserts that “Antebi is wholly
dissimilar to the claimed system ‘for allowing a user to privately edit shared
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files in a collaborative space,’ and instead discloses techniques for
collaborative, shared editing.” Appeal Br. 14. According to Appellant,
Antebi’s disclosure of “enabling multiple users to simultaneously edit copies
of the same document is directly in contrast to the claimed ‘edit privately
control to privately edit a personal copy of an identified shared file.”
Appeal Br. 14; Reply Br. 2–5. Appellant also asserts that “the Examiner
ignores the claimed edit privately control to conclude that Antebi teaches the
claimed subject matter.” Reply Br. 3. Appellant asserts further that,
because “Antebi is silent with respect to privately editing a file, Antebi
simply cannot teach or suggest ‘updating metadata . . . to indicate that the
personal copy has been generated.’” Appeal Br. 15; see Reply Br. 5–6.
We are not persuaded of Examiner error because, as the Examiner
finds, Antebi at least suggests the subject matter recited in claim 1. Final
Act. 8–10; Ans. 5. First, the cited disclosures of Antebi at least suggest “an
edit privately control.” Antebi discloses that a user may select a file to open
from a server, and in response, a copy of the associated document is
downloaded locally from the server and opens in a corresponding word
processing application on the user’s client device for the user to edit. Antebi
¶¶ 64, 96; Final Act. 10. Antebi discloses further that “local document
copies on user client devices are independently edited.” Antebi ¶¶ 98–102;
Ans. 8; Final Act. 10. Moreover, Antebi discloses the use of controls (such
as buttons) for actuating various functions on its document processing
software, allowing the user to store, find, and retrieve her files from specific
service providers. Antebi ¶ 62; Final Act. 10; see also Antebi ¶ 59. These
disclosures would have at least suggested to one of ordinary skill in the art
that Antebi’s system includes “an edit privately control”—that is, a control
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(such as a button or selectable item) whose actuation brings about the
downloading operation and opening of the local document copy in the user’s
document processing software, through which the user can make edits
independently without immediately sharing them with other users. This is
consistent with Appellant’s Specification, which describes the “edit privately
control” as a selectable item from a drop down menu, which, upon actuation,
operates to generate a personal copy of the associated item for private
editing. Spec. ¶ 85, Fig. 7 (item 384). And, even if we were to assume that
Antebi does not expressly disclose or suggest “an edit privately control,”
given the cited disclosures of Antebi, creating that particular control would
have been within the “inferences and creative steps that a person of ordinary
skill in the [software arts] would employ.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
Second, the Examiner finds, and we agree, that Antebi’s disclosure
that the copy of a document file may be “independently edited” by the user
satisfies claim 1’s requirement “to privately edit a personal copy of an
identified shared file.” Final Act. 10; Ans. 4; Antebi ¶ 98, see also Antebi
¶¶ 65, 96. The document file is an “identified shared” file because other
users on other client devices are also able to find and download copies of the
same document file from the server to their client devices. Antebi ¶ 96.
Contrary to Appellant’s arguments, Antebi is not limited to collaborative and
shared editing, but also discloses periods of “private” editing, during which
edits are not shared over the network with the server or other users. It is
important to remember that “[a]ll the disclosures in a reference must be
evaluated, including nonpreferred embodiments.” Application of Mills, 470
F.2d 649, 651 (CCPA 1972); see also In re Mouttet, 686 F.3d 1322, 1331
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(Fed. Cir. 2012) (“A reference may be read for all that it teaches, including
uses beyond its primary purpose.”). For example, although Antebi describes
dynamically synchronizing and merging all local copies of a particular
document across client devices, Antebi also describes an alternative scenario
in which a user must first receive a change made by another user to a
particular document and then merge those changes with the user’s local copy
of the document in order to update the document. Antebi ¶ 101. In addition,
Antebi describes that a client device may work off-line (not connected to the
servers via computer networks) and continuously cache changes made to
documents locally until reconnected to the servers. Antebi ¶ 104. During
these times of off-line activity, any edits by a first user would be private
because they would not be accessible to other users on different devices.
These disclosures are consistent with Appellant’s Specification, which
similarly describes a user who edits their own copy of a shared file without
immediately sharing the edits with other users, but still eventually publishes
the edited version back to the collaborative space. See, e.g., Spec. ¶¶ 28, 45.
Third, the cited disclosures of Antebi at least suggest “receiving . . .
an indication to privately edit the identified shared file” as claimed. Antebi
discloses opening the local document copy in the word processing
application, such that the user may view and interact with the application in
order to edit the document. See Final Act. 10; Antebi ¶¶ 64, 96, Fig. 6
(items 610, 612, 614, 616). This sequence of events at least suggests that the
user has received an indication to privately edit the identified shared file,
especially when the user is making edits independently or offline. See, e.g.,
Antebi ¶¶ 101, 104. Appellant’s Specification similarly describes generating
a personal copy of the associated item for private editing upon actuation of
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the edit privately control. Spec. ¶¶ 4, 85. Although the Specification also
describes the ability to “[n]otify others editing this document that you’re
working on a private copy,” the claim language is not so limiting as it does
not specify the entity receiving the indication. Spec. Fig. 8; (item 416); see,
e.g., Spec. ¶¶ 88, 90, 91. Notably, the Specification portions Appellant cites
as supporting this limitation describe actuating an edit privately control, but
fail to describe any received “indication.” Appeal Br. 7 (citing Spec. ¶¶ 4,
51, 84; Figs. 3 (item 212), 7 (item 384)).
Fourth, we agree with the Examiner that Antebi discloses “providing
the generated personal copy” with its disclosure of a local document copy
that a user may access and edit on the user’s client device. See Final Act. 10
(citing Antebi ¶¶ 98–102); Ans. 4–5; Antebi ¶¶ 64, 96, 98, 101, 104. The
copy is “personal” because it is stored locally on, and is unique to, the user’s
client device. See, e.g., Antebi ¶¶ 98, 99. In addition, the copy is “personal”
because access to the copy may depend on a user successfully logging into
his or her account, providing credentials to access the server that has the
desired document file for download, or having the requisite file access
permissions to view and edit the document. See, e.g., Antebi ¶¶ 34, 62 (user
credentials may be required to access user’s files), 63 (user may change file
access permissions). And, as the Examiner explains, Antebi’s disclosures of
generating a local document copy are consistent with a plain reading of the
claims in view of the Specification, which does not provide a limiting
definition of a “personal copy” and, at most, describes non-limiting
examples of the term as a private or public document. See Ans. 5 (citing
Spec. ¶ 45).
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Fifth, we agree with the Examiner that Antebi teaches “updating
metadata associated with the identified shared file to indicate that the
personal copy has been generated” because Antebi discloses updating the
metadata of a particular document or file being edited by a user, as shown in
the dashboard panel of the client view on the user’s client device. Final Act.
10; Ans. 14–16; Antebi ¶¶ 4, 65, 87, 95, Fig. 6 (item 6203), Fig. 7A (item
706). This metadata is “associated with the identified shared file,” for
example, when it describes a local copy of a document that is being edited
by multiple users on separate client devices. See, e.g., Antebi ¶¶ 90–93, 101,
Fig. 6 (items 622, 624, 626, 628). The metadata also serves “to indicate that
the personal copy has been generated” because it may include file
information (such as the filename, creation date, and change history) and
author information (such as the primary author or document owner, and edit
history for each author). Antebi ¶¶ 87, 90–91, Fig. 6 (items 622, 624), Fig.
7A (item 706).
Appellant additionally argues that “there is no motivation to modify
Antebi as alleged by the Office Action.” Appeal Br. 15. We are not
persuaded by this argument. The “Examiner used a single reference 103
rejection because Antebi, as stated in the Final Rejection, does not expressly
spell out the term ‘privately editing.’” Ans. 5; see Final Act. 10. But, as
discussed above, Antebi does disclose this claim element. See, e.g., Antebi
¶¶ 98, 101, 104. And, in fact, the Examiner finds this in the Answer, stating
that “Antebi anticipates all the limitation [sic] of claim 1.” Ans. 5.

3 Antebi identifies the dashboard panel as item 620, but Figure 6 erroneously
identifies the dashboard panel and each metadata presentation area in the
dashboard as item 616. Antebi ¶ 87, Fig. 6.
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Therefore, because Antebi discloses “privately editing,” it is immaterial
whether a motivation exists to modify Antebi with another prior art teaching
or with the knowledge of one of ordinary skill in the art to arrive at this
claim element. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548
(Fed. Cir.1983) (quoting In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982))
(“[A] disclosure that anticipates under § 102 also renders the claim invalid
under § 103, for ‘anticipation is the epitome of obviousness.’”).
We therefore sustain the Examiner’s § 103 rejection of claims 1–8 and
12–20 as obvious in view of Antebi.
Claims 9–11
Claim 9 depends from claim 8, which depends from claim 7, which
depends from independent claim 1. Appeal Br. 29 (Claims App.).
Appellant argues that Antebi fails to teach or suggest “wherein upon
actuation of the access file control, the server computing device determines
whether personal copies of the identified shared file have been generated”
because “Antebi is silent with respect to an ‘edit privately control,’ much
less ‘updating metadata . . . to indicate that the personal copy has been
generated,’” as recited in independent claim 1. Appeal Br. 16. As discussed
above, however, we agree with the Examiner that Antebi discloses or
suggests these limitations. See discussion for claim 1, above. Thus, we are
not persuaded by this argument.
Appellant additionally argues that “Antebi simply cannot teach the
claimed ‘presenting information related to the personal copies of the user’
when it is determined ‘that personal copies of the identified shared file have
been generated,’ as Antebi discloses no mechanism for determining when a
personal copy has been generated.” Appeal Br. 16. But, as the Examiner
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finds, Antebi discloses that the server records local document copy changes
using timestamps in a time-stamped database. Ans. 17; Antebi ¶¶ 98–99.
And Antebi’s system monitors and stores metadata for each document or
file, including the date a document or file is created. Antebi ¶¶ 65, 88–90;
see also Final Act. 10, 11 (rejection of claim 6). Contrary to Appellant’s
argument, these disclosures show that Antebi does disclose a mechanism for
determining when a personal copy has been generated.
Therefore, on this record, we are not persuaded the Examiner erred in
rejecting claim 9 as obvious in view of Antebi. Nor are we persuaded the
Examiner erred in rejecting claims 10 and 11 (which depend from claim 9)
because Appellant does not separately argue these claims with particularity.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 9–11 as
obvious in view of Antebi.

CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20 under
35 U.S.C. § 103.
DECISION SUMMARY
Claims Rejected 35 U.S.C. § References Affirmed Reversed
1–20 103 Antebi 1–20
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