Neil Mc Erlean et al.

Patent Trials and Appeals Board

Sep 15, 2020

2019000583 (P.T.A.B. Sep. 15, 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.
14/170,364 01/31/2014 Neil Mc Erlean 46294-501002US 4947
64046 7590 09/15/2020
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
EXAMINER
HERSHLEY, MARK E
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEIL MC ERLEAN, TUNA AKSOY, NICK BURCH,
MICHAEL FARMAN, PAUL HOLMES-HIGGIN, JOHN NEWTON,
BRAIN REMMINGTON, MARK ROGERS, JAN VONKA, and
DAVID WEBSTER
____________

Appeal 2019-000583
Application 14/170,364
Technology Center 2100
____________

BEFORE DENISE M. POTHIER, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–23, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Alfresco Software, Inc., as the real party in interest. Appeal. Br. 3.

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STATEMENT OF THE CASE
The invention relates to content management systems. Abstract;
Spec. ¶¶ 2, 6–8, Figs. 1, 5. Claim 1 reproduced below, is illustrative of the
subject matter on appeal (emphasis added):
1. A computer program product comprising a non-transitory
machine-readable medium storing instructions that, when
executed by at least one programmable processor, cause the at
least one programmable processor to perform operations of a first
installation of a content management system, the operations
comprising:
establishing authentication between a first repository
managed by the first installation and a second repository
managed by a second installation of the content management
system, (L1) the first installation being protected by a firewall
preventing access to the first repository by an external user;
(L2) linking a content item maintained by the first
repository with a copy of the content item maintained by the
second repository such that the copy of the content item is
accessible by an external user subject to one or more access
controls enforceable by the second installation, the copy
comprising both content of the content item and a set of metadata
in common with the content item at the first repository; and
(L3) synchronizing the set of metadata between the copy
of the content item and the content item in the first repository,
the synchronizing occurring via a push to the second installation
of changes to the content item at the first repository for writing
to the copy of the content item at the second repository, and via
a pull to the first installation of changes to the copy of the content
item at the second repository for writing to the content item at
the first repository, the first installation initiating both the push
and the pull.
Appeal Br. 18. (Claims Appendix). (L1), (L2), and (L3) added and also
referred to as “disputed limitations.”
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REFERENCES
Prior art relied upon by the Examiner:
Name Reference Date
Hugh US 2003/0227487 Al Dec. 11, 2003
Storm US 2013/0097687 Al Apr. 18, 2013

THE REJECTIONS
Claims 1–11, 14–18, and 21–23 are rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Hugh. Final Act. 11–17.
Claims 12, 13, 19, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hugh and Storm. Final Act. 18–20.
ANALYSIS
The § 102 rejection of claims 1–11, 14–18, and 21–23
Appellant argues the Examiner errs in finding Hugh discloses
independent claim 1 disputed limitations (L1, (L2), and (L3) as required for
anticipation. Appeal Br. 10–15; Reply Br. 4–12. Appellant additionally
argues the Examiner errs in finding Hugh anticipates claim 1 by selecting
elements from many different Hugh embodiments. Appeal Br. 15–16; Reply
Br. 13–14.
Regarding disputed limitation (L1) “the first installation protected by
a firewall preventing access to the first repository by an external user,” the
Examiner finds Hugh discloses client servers and a Brain (remote) server,
and the Brain (remote) server is protected by a firewall and requires
authentication to access. Final Act. 12 (citing Hugh ¶¶ 980, 997). In the
Answer, the Examiner additionally refers to Hugh, paragraphs 1021, 1043,
and 1045. Answer 11. In particular, the Examiner finds paragraph 1021
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discloses the use of a firewall within the Brain system that may limit
communication but allows certain email ports. Id. at 10–11. The Examiner
refers to paragraph 1043 as disclosing firewall restrictions that prohibit
direct connections between the Brain server and remote locations. The
Examiner finds paragraph 1045 provides further support in that both the
Brain client and the Brain server have firewall and security protections in
which an email communication method was preventing threats. Id. at 11.
The Examiner then concludes that “Hugh discloses a firewall at a first
repository that prevents communication from other/remote repositories.” Id.
Appellant argues the Hugh portions cited (Hugh paragraphs 980, 997)
by the Examiner in the Final Action merely indicate that firewalls have
exceptions and that is not the same as the claimed firewall of disputed
limitation (L1). Appeal Br. 11. In the Reply Brief, Appellant argues the
Examiner’s reference in the Answer to additional Hugh paragraphs 1021,
1043, and 1045 as teaching the claimed firewall is a new ground of rejection
that should not be considered. Reply Br. 4. Appellant then additionally
argues that none of the newly cited paragraphs of Hugh discloses the
claimed firewall. Id. at 5. According to Appellant, Hugh paragraphs 1043
and 1045 are generally directed to email content synchronization and
avoiding “same contact” conflict, and there is no disclosure of providing a
firewall or protection. Id. Appellant argues paragraph 1021 of Hugh also
does not disclose a firewall that protects the claimed first repository as
recited in disputed limitation (L1). Id. Appellant additionally argues
paragraph 1021 of Hugh seems to teach away because, in contrast to the
disputed limitation, Hugh suggests a firewall that fails to protect the server
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when a direct connection is established for the purpose of synchronization.
Id. at 5.
We are persuaded by Appellant’s arguments that the Examiner has not
presented sufficient evidence to establish a prima facie case of anticipation.
In our analysis below, we highlight and address specific findings and
arguments for emphasis.
A claim is anticipated only if each and every element as set forth in
the claims is found, either expressly or inherently described in a single prior
art reference, and arranged as required by the claim. Verdegaal Bros., Inc. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citations omitted).
Regarding disputed limitation (L1), Hugh provides a high level
reference to firewalls, but no clear disclosure of “first installation being
protected by a firewall preventing access to the first repository by an
external user.” Initially, we note that the Specification states “[t]he term
firewall is generally used throughout this disclosure to refer to network
security controls, features, functionality, etc. that restrict access to users
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outside of the firewall to content retained on one or more repositories inside
of that firewall.” Spec. ¶ 21. Also, it is helpful to refer to Figure 1, which
illustrates a firewall. See also Spec. ¶ 25 (element 110).
For example, cited paragraph 980 of Hugh does not utilize the term
“firewall” nor suggest a firewall. Cited paragraph 997 of Hugh states “most
firewall’s have exceptions that permit ports in the firewall for email,” but
provides no disclosure of the placement and function of the firewall as
recited in disputed limitation (L1). The Examiner’s reliance on additional
Hugh paragraphs 1021, 1043, and 1045 also does not provide clear
disclosure of disputed limitation (L1). For example, paragraph 1043 does
not utilize the term “firewall” nor suggest a firewall. Paragraph 1045 does
not utilize the term “firewall” as the paragraph states in its entirety: “Now an
example of same-content conflict will be explored.” Hugh’s paragraph 1021
utilizes the term “firewall” without discussion of the placement and function
recited in disputed limitation (L1). In particular, paragraph 1021 describes
synchronization of email communication between a Brain client and server
and, in that context, “avoiding the firewall and security threats to Brain
Client and Brain Server that could be caused by requiring a direct
connection.”
Applying a broad and reasonable interpretation, Hugh does not
disclose disputed limitation (L1) as required for anticipation. In particular,
on the record before us, the Examiner does not sufficiently show that the
firewall is described and arranged as required by the disputed limitation.
We also are not persuaded by Appellant’s argument that the
Examiner’s findings regarding the additional Hugh paragraphs should not be
considered. Insofar as Appellant protests a failure to designate a new ground
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of rejection, it is presented to an inappropriate entity. The Manual of Patent
Examining Procedure (MPEP) explains that 37 C.F.R. § 41.40 provides the
“exclusive procedure” for requesting review of a failure to designate a new
ground of rejection, i.e., through a petition to the Director under 37 C.F.R.
§ 1.181. MPEP § 1207.03(b) (9th ed. Rev. 07.2015 Nov. 2015). The MPEP
also explains that “[t]his procedure should be used if an appellant feels an
answer includes a new ground of rejection that has not been designated as
such and wishes to reopen prosecution . . . .” Id. Upon review of the record,
we fail to find that Appellant has submitted a petition to the Director. The
“[f]ailure of [an] appellant to timely file such a petition will constitute a
waiver of any arguments that a rejection must be designated as a new ground
of rejection.” 37 C.F.R. § 41.40(a).
We now refer to disputed limitation (L2):

linking a content item maintained by the first repository with a
copy of the content item maintained by the second repository
such that the copy of the content item is accessible by an
external user subject to one or more access controls enforceable
by the second installation, the copy comprising both content of
the content item and a set of metadata in common with the
content item at the first repository.
The Examiner finds Hugh discloses linking of content between
disparate data repositories and the Brain server. Final Act. 12 (citing Hugh
¶ 842). The Examiner finds Hugh discloses data and associated information
about the data (metadata). Id. (citing Hugh ¶¶ 842–845).
Appellant argues Hugh’s accessing a repository that contains a list of
links is not the same as disputed limitation (L2). Appeal Br. 11–12.
According to Appellant:

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However, accessing a repository that contains a list of links is
not the same as “linking a content item maintained by the first
repository” with “a copy of the content item” that is
“maintained by the second repository” and that a result of this
linking is that “the copy of the content item is accessible by an
external user subject to one or more access controls enforceable
by the second installation.” In other words, the “linking”
recited in Claim 1 relates to a content item maintained by the
first repository (protected by a firewall and managed by the first
installation of the CMS) being linked with a copy of that
content item maintained by the second repository managed by
the second installation of the CMS.

Id.
Similar to our discussion regarding disputed limitation (L1) supra, the
Examiner does not sufficiently show that Hugh’s paragraphs 842–845
description of a “list of links” disclose a copy of the content item as recited
in the disputed limitation. In particular, the Examiner does not show Hugh
discloses disputed limitation (L2) described and arranged as required for
anticipation. We agree with Appellant that Hugh’s “list of links” does not
sufficiently disclose “linking a content item maintained by the first
repository with a copy of the content item maintained by the second
repository such that the copy of the content item is accessible by an external
user subject to one or more access controls enforceable by the second
installation.”
Independent claims 16, 22, and 23 include limitations similar to claim
1. The rejection of these claims suffers from similar issues to those noted
above for claim 1.
Dependent claims 2–11, 14, 15, 17, 18, and 21 depend from claims 1
and 16. The rejection of these claims suffers from similar issues to those
noted above for claims 1 and 16.
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In view of the above, we do not sustain the anticipation2 rejection of
representative claim 1, and claims 2–11, 14–18, and 21– 23.
The § 103 rejection of dependent claims 12, 13, 19, and 20
Dependent claim 12 recites “A computer program product as in Claim
1, wherein the first repository comprises an on-premise repository protected
from access by external users by a firewall, and the second repository
comprises a cloud-based tenant repository outside of the firewall.”
The Examiner finds that Hugh discloses the limitations of claim 1 but
does not explicitly disclose the limitations of dependent claim 12 (emphasis
added). Final Act. 19. The Examiner finds Storm teaches an on-premises
server and a cloud server. Id. (citing Storm ¶ 48). The Examiner concludes
“it would have been obvious to one of ordinary skill in the art to modify
Hugh's disclosure of synchronizing data between repositories and Storm’s
use of on-premise and cloud servers in order to provide secure content
sharing and synchronization with cloud capable software delivery and
execution.” Id.
Appellant does not expressly address the § 103 rejection. Appeal
Br. 16. Instead, Appellant argues claims 2–15 and 17–21 are allowable
based on dependency, “the reasons discussed above” regarding
representative claim 1, and unidentified additional features of the dependent
claims. Id.

2 On the record before us, the rejection of independent claim 1 is under
§ 102, not § 103. We render no opinion whether Hugh’s teachings suggest
the limitations in claim 1. Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02.
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As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness . . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Although we agree with the Examiner’s unrebutted findings that
Storm teaches the dependent claim 12 (and claim 19) limitations, the
Examiner provides no additional reasoning why Hugh teaches the claim 1
limitations under § 103. Similarly, we agree with the Examiner’s unrebutted
finding that Storm teaches the dependent claims 13 and 20 limitations but
that the Examiner provides no additional reasoning why Hugh teaches the
claim 1 limitations under § 103. Furthermore, the Examiner has not relied
on Storm to cure the noted deficiencies in Hugh. See Final Act. 19–20.
Thus, the Examiner does not provide sufficient “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness” for claims 12, 13, 19, and 20. See In re Kahn, 441 F.3d at 988.
In view of the above, we do not sustain the obviousness rejection of
claims 12 and 13, which depend from claim 1, and the obviousness rejection
of dependent claims 19 and 20, which depend from independent claim 16.
CONCLUSION
In summary:

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 14–18,
21– 23
102 Hugh 1–11, 14–
18, 21– 23
12, 13, 19, 20 103 Storm 12, 13, 19,
20
Overall
Outcome
1–23

REVERSED