Rein, Todd et al.

Patent Trials and Appeals Board

Aug 21, 2020

12129972 - (D) (P.T.A.B. Aug. 21, 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.
12/129,972 05/30/2008 Todd Rein B686/208843 3076
121363 7590 08/21/2020
Shook, Hardy & Bacon L.L.P.
(Adobe Inc.)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
ADAMS, CHARLES D
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
08/21/2020 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):
seaton@shb.com
shbdocketing@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD REIN, EYLON STROH, SHASHI RAI,
MARCO QUALIZZA, ROMAN DOLGOV, and CHRIS ETHIER
Appeal 2019-002923
Application 12/129,972
Technology Center 2100
Before MICHAEL J. STRAUSS, JAMES W. DEJMEK, and
AMBER L. HAGY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6–9, 14–17, 19–22, and 27–36,
which constitute all of the claims pending in this appeal. See Final Act. 1.

1 We refer to the Specification, filed May 30, 2008 (“Spec.”); Final Office
Action, mailed December 28, 2017 (“Final Act.”); Appeal Brief, filed
August 29, 2018 as supplemented on September 17, 2018 (“Appeal Br.”);
and the Examiner’s Answer, mailed January 4, 2019 (“Ans.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2017). Appellant identifies the real party in interest as Adobe
Systems Incorporated. Appeal Br. 3.
Appeal 2019-002923
Application 12/129,972
2
Claims 5, 10–13, 18, and 23–26 have been cancelled. Supplemental Appeal
Br. 2–9, Claims App. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.

PRIOR APPEAL
This Application was subject to a prior appeal 2013-007592, decided
on September 22, 2015 (our “prior Decision”), in which the Board affirmed
the Examiner’s rejections of all of the claims then pending.
CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to setting privileges
for collaborative lists. Spec., Title. Claim 1, reproduced below with claim
element labels added in brackets, is representative of the claimed subject
matter:
1. A computer implemented method for selecting portions of
data within collaborative lists to be viewed by members that
can access the collaborative lists, the method comprising:
[(i)] obtaining a collaborative list that includes
collaborative data and a tree structure, the tree structure
representing a plurality of hierarchical positions, wherein a
hierarchical position in the plurality of hierarchical positions is
associated with an access privilege to access at least a portion of
the collaborative data;
[(ii)] receiving a request to access the collaborative data,
wherein the request is associated with a first hierarchical position
in the plurality of hierarchical positions; and
[(iii)] responsive to the request, providing a first portion of
the collaborative data based on a determination that the first
hierarchical position is associated with a first access privilege to
access the first portion of the collaborative data.
Appeal 2019-002923
Application 12/129,972
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Belknap et al. (“Belknap”) US 6,489,979 B1 Dec. 3, 2002
Baschy US 2004/0239700 A1 Dec. 2, 2004
Faitelson et al. (“Faitelson”) US 2009/0119298 A1 May 7, 2009
REJECTIONS3
Claims 14, 15–17, 19–22, and 31–33 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter. Final Act. 4–5.
Claims 1, 3–4, 6–9, 14, 16–17, 19–22, and 27–36 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Belknap and
Faitelson. Final Act. 5–17.
Claims 2 and 15 stand rejected under pre-AIA U.S.C. § 103(a) as
being unpatentable over Belknap, Faitelson, and Baschy. Final Act. 17–18.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

3 A separate rejection of all claims under 35 U.S.C. § 101, based on a
determination that the claimed invention is directed to a judicial exception
without significantly more (Final Act. 2–4), has been withdrawn. Ans. 3.
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Application 12/129,972
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OPINION
Rejection under 35 U.S.C. § 101
The Examiner rejected claims in the Application on two bases under
35 U.S.C. § 101, rejecting claims 1–4, 6–9, 14–17, 19–22, and 27–36 as
being directed to a judicial exception without significantly more (Final Act.
2–4), and separately rejecting claims 14, 15–17, 19–22, and 31–33 as
directed to non-statutory subject matter (not clearly reciting a process,
machine, manufacture, or composition of matter) (id. at 4). Although the
Examiner has withdrawn the rejection of claims under 35 U.S.C. § 101
based on reciting a judicial exception without significantly more (Ans. 3),
there is no indication the Examiner has withdrawn the rejection of claims 14,
15–17, 19–22, and 31–33 under 35 U.S.C. § 101 as directed to non-statutory
subject matter. Accordingly, the rejection is still outstanding. Appellant’s
Brief does not address this rejection. In the absence of any argument by
Appellant contesting the rejection, we summarily affirm the rejection of the
indicated claims. See 37 C.F.R. § 41.37(c)(1)(iv); MPEP § 1205.02.4

Rejections under 35 U.S.C. § 103(a)
We are not persuaded the Examiner erred in rejecting all pending
claims under 35 U.S.C. § 103(a). We agree with and adopt, as our own, the
Examiner’s findings and reasoning in the Final Office Action and in the

4 “If a ground of rejection stated by the examiner is not addressed in the
appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner's answer.” MPEP
§ 1205.02
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Answer and add any additional findings of fact appearing below for
emphasis.
The Examiner finds Belknap’s database interface that assigns users
differing levels of access privileges teaches the limitations of claim 1 but for
the requirement that a collaborative list include a tree structure representing
a plurality of hierarchical positions. Final Act. 5–6. The Examiner relies on
Faitelson’s user interface for teaching the claimed tree structure. Id. at 7.
According to the Examiner, it would have been obvious to incorporate
Faitelson’s user interface into Belknap’s interface to allow “an administrator
to review privileges of users and see the view that a selected user would see”
and “more quickly and clearly see the access permissions and user views.”
Id.
Appellant contends the rejection is improper, alleging the combination
of Belknap and Faitelson fails to teach
a. The collaborative list include the recited tree structure of
hierarchical positions associated with access privileges to
collaborative data (Appeal Br. 25–31), i.e., the “tree structure
collaborative list” limitation as recited by claim element (i); and
b. Providing a portion of the collaborative data based on a
determination that a first hierarchical position is associated with a
first access privilege (id. at 31–34), i.e., the “providing” limitation
as recited by claim element (iii).
We address Appellant’s contentions seriatim in the order presented in the
Appeal Brief. Id. at 25–34.

Appeal 2019-002923
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a. Tree Structure Collaborative List
Appellant contends:
Belknap and Faitelson fail to teach or suggest: “obtaining a
collaborative list that includes collaborative data and a tree
structure, the tree structure representing a plurality of
hierarchical positions, wherein a hierarchical position in the
plurality of hierarchical positions is associated with an access
privilege to access at least a portion of the collaborative data”
as recited by claim 1.
Id. at 26. Appellant argues, rather than a tree structure, “Belknap teaches a
relational database and an interface that relies on a separate user table for
rights-limited navigation of that database.” Id. Appellant argues “Faitelson
fails to cure the deficiencies of Belknap” because “Faitelson merely
describes a way to view user and group access rights to files and directories
utilizing a tree-like organizational structure—the treelike structure does not
serve any underlying functional purpose but is provided for an organized
way to present queried data (i.e. users’ access rights) to a system
administrator.” Id. at 29.
The Examiner responds, explaining Belknap’s data tables may be
accessed by multiple users, thereby teaching collaborative data and that
Belknap’s user tables define group level access privileges as recited by claim
1. Ans. 5. The Examiner finds, although Belknap uses a table rather than a
hierarchical structure such as a tree,
[Belknap’s] user table does contain access rights to different
levels of data, wherein the access rights are defined according to
an organizational hierarchy (see 9:1-17 and Table 6). Notably,
various users exist, in which one user is a president, another user
is a sales manager, and another user is a field salesperson. One
of ordinary skill in the art would consider the claimed
“hierarchical position . . . associated with an access privilege” to
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Application 12/129,972
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be obvious in view of an organizational hierarchy containing a
“president,” “sales manager,” and “fields sales person,” each of
which have access to different levels of data.
Id. at 6. To address Belknap’s use of a table rather than the recited tree
structure representing the claimed hierarchical positions, the Examiner relies
on Faitelson’s disclosure of displaying users “in a tree structure containing a
navigable list including expandable elements, wherein the users are positions
in the tree structure may inherit access rights and may be members of
expandable user groups.” Id. at 7. The Examiner finds Faitelson’s display
of users teaches the recited “tree structure . . . containing a plurality of
hierarchal positions.” Id. The Examiner concludes “[t]hus, a combination
of Belknap in view of Faitelson does teach the claimed subject matter to the
extent with which it is claimed.” Id.
Appellant’s contention is unpersuasive because it fails to address the
Examiner’s findings with respect to the individual references. Appellant
argues that each reference individually fails to teach the entirety of the
disputed limitation rather than explaining why the references fail to teach the
respective elements relied upon by the Examiner. Thus, Appellant’s
argument is, in effect, an improper attack on the references individually
when the rejection is based on the combination of Belknap and Faitelson.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant next contends the combination of Belknap and Faitelson is
improper, arguing the Examiner is improperly “picking and choosing
elements from among these two references in order to disclose the features
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presently claimed” and “has failed to provide any rationale why one skilled
in the art would have modified or combined the references to arrive at the
present claims.” Appeal Br. 30.
The Examiner responds as follows:
[A]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made, and
does not include knowledge gleaned only from the Appellant’s
disclosure, such a reconstruction is proper.
Ans. 13. The Examiner further explains the reason for modifying Belknap
to include Faitelson’s tree-structured user interface is to allow Belknap’s
administrator “to more quickly and clearly see the access permissions and
user views associated with users of Belknap.” Id. at 14 (citing Faitelson
¶¶ 4–9 describing the desirability of increasing efficiency in determining
user views of database systems).
Appellant’s contention is unpersuasive of reversible Examiner error.
The Examiner reasons:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have modified Belknap et al.
by the teachings of Faitelson et al., because Faitelson et al.
provides a user interface for an administrator to review privileges
of users and see the view that a selected user would see. This
would allow an administrator of Belknap et al. to more quickly
and clearly see the access permissions and user views of Belknap
et al.
Final Act. 7; see also Ans. 14–15 (providing additional reasoning in support
of the combination). Accordingly, the Examiner has articulated reasoning
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with rational underpinnings sufficient to justify the legal conclusion of
obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Appellant further argues:
There is no indication of how Belknap might be modified by
Faitelson to at least arrive at “a collaborative list that includes
collaborative data and a tree structure, the tree structure
representing a plurality of hierarchical positions, wherein a
hierarchical position . . . is associated with an access privilege to
access at least a portion of the [included] collaborative data.”
The claimed hierarchical positions are themselves each
associated with an access privilege which drives access to the
collaborative data. Neither reference discusses utilizing any sort
of hierarchical position that is associated with an access privilege
to access portions of data. Instead, Belknap uses a user table with
independent user entries that are referenced when a user logs in
to determine an access level, and Faitelson merely provides a
way to organize and view user access privileges in a tree-like
structure. Consequently, there is no “hierarchical position in the
plurality of hierarchical positions [. . .] associated with an access
privilege to access at least a portion of the collaborative data” as
neither reference mentions anywhere that access to data is based
on a hierarchical position associated with an access privilege.
The organizational way of viewing access privileges described
by Faitelson, describing only a way to view access privileges,
would not be implemented in the user table of Belknap, as
Belknap does not describe any relationships between the users in
the user table, they are indeed independent entries.
Appeal Br. 30–31.
The Examiner responds:
Belknap shows that roles in an organizational hierarchy may be
associated with different levels of data access rights to
collaborative data and stored in a user table (see 9:59-10:17 and
an organizational hierarchy containing a “president,” “sales
manager,” and “fields sales person,” each of which have access
to different levels of data). Faitelson shows that user positions
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within a tree, such as being a member of a user group or
inheriting permissions, is associated with data access rights to
collaborative data (see paragraphs [0055] - [0059] and Figure 4).
The combination of references teaches the claimed subject
matter, wherein user data may exist in a tree structure, and each
element of user data in the tree is associated with an access
permission.
Ans. 15–16.
Addressing Appellant’s contention that Faitelson only describes a way
to view access privileges, the Examiner explains that the claims do not recite
the argued “functional relationship between a hierarchal position in the ‘tree
structure’ relative to other hierarchal positions and the access rights the
position receives.” Id. at 16. According to the Examiner “[t]here is no claim
limitation that states, for example, that a position ‘higher’ in the tree, such as
a parent element, would receive different access rights than a child element
based on the relationship. All the claimed limitations appear to require is
that a user access permission associated with a position in some sort of tree
structure.” Id. (formatting altered).
We agree with the Examiner. During examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Construing claims broadly during prosecution
is not unfair to the applicant, because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage. Acad. of Sci. Tech
Ctr., 367 F.3d at 1364; see also In re Skvorecz, 580 F.3d 1262, 1267–68 (Fed.
Cir. 2009) (“Applicant always has the opportunity to amend the claims
during prosecution, and broad interpretation by the examiner reduces the
Appeal 2019-002923
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possibility that the claim, once issued, will be interpreted more broadly than
is justified.” (quoting Manual of Patent Examining Procedure § 2111)).
Under a broad but reasonable interpretation, claim 1 does not require
the argued access to data be based on a hierarchical tree position associated
with an access privilege. Therefore, Appellant’s argument is unpersuasive
as it is not commensurate in scope with claim 1. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be
relied upon for patentability). Accordingly, the combination of Belknap and
Faitelson teaches or suggests the argued limitation.
b. Providing a First Portion of the Collaborative Data
Appellant argues:
[Belknap’s] relational database and the use of reference user
tables to browse through navigational tables cannot be said to be
similar to “responsive to the request, providing a first portion of
the collaborative data based on a determination that the first
hierarchical position is associated with a first access privilege to
access the first portion of the collaborative data” as there is no
hierarchical position associated with any of the users in the user
table of Belknap. Instead, according to Belknap access to a
database is based solely on unrelated entries in a user table-each
user is assigned to an access level, but nowhere is there any
discussion of a “hierarchical position . . . associated with an
access privilege.”
Appeal Br. 32. Addressing Faitelson, Appellant argues Faitelson fails to
disclose the claimed tree structure for reasons argued in connection with the
tree structure collaborative list limitation addressed above. Appellant
continues, arguing, “No determination is made in Faitelson to provide data
based on a hierarchical position where the hierarchical position is associated
with an access privilege. At best, Faitelson describes a user at a position in
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a structure (organizational directory) and when the user is selected one can
view what access privileges that user has.” Id. at 34.
The Examiner responds, again explaining the argued relationship
between access privileges and relative tree position is not recited by the
claim, as follows:
Appellant’s argument appears to be rooted in the idea that the
position itself possesses a degree of access privilege based on the
location of the position in the tree relative to other positions.
This is incorrect, and not what the claim language requires.
Rather, the claim requires that a hierarchal position in a tree
structure has an associated access privilege. It is noted that this
access permission appears to be independent and unrelated to
other access permissions in the hierarchal data structure, as no
claim limitation describing any such relation exists in the
independent claims.
Ans. 18. That is, according to the Examiner, “the claims are directed
toward[] accessing data based on an access privilege that is associated with a
hierarchal position, NOT based on, as Appellant argues, the position of the
hierarchical position relative to other positions within the hierarchy itself.”
The Examiner further notes:
Appellant concedes that Belknap shows that a user may have a
position within a company, or hierarchal organization, which
dictates what access levels that user has been assigned. Belknap
shows that an access level a user has been assigned in a company
controls what data a user has access to because roles are
associated with data access (see 9:11-17 and 10:30-57). Thus, it
would be obvious in view of these facts, shown in Belknap, that
a user’s position within a hierarchy is associated with access
privileges, and that a given position in a hierarchy will receive
access to a first portion of collaborative data based on an access
privilege associated with that hierarchy.
Id. at 20.
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Appellant’s contention that the prior art fails to teach or suggest the
subject providing limitation (iii) is unpersuasive for the reasons discussed
above in connection with the tree structure collaborative list limitation. In
particular, we agree with the Examiner that the claims only require an access
privilege be associated with a hierarchical position, not that the hierarchical
position relative to other hierarchical positions be determinative of an access
privilege. Thus, Appellant’s argument is not commensurate in scope with
claim 1. Instead, we agree with the Examiner in finding Belknap’s table that
associates a user with that user’s access privilege in combination with
Faitelson’s use of a tree structure teaches or suggests the argued access
privilege determination.
Furthermore, we agree with the Examiner that one skilled in the art
would have appreciated that a hierarchical position within an organization is
indicative of an access level provided to that position. Therefore, even if
claim 1 was narrowly interpreted as argued by Appellant, the combination of
Belknap and Faitelson would nonetheless teach or suggest the argued
relationship that a given position in a hierarchy, as indicated by a tree
structure, would receive access to a first portion of collaborative data based
on an access privilege associated with that hierarchy.
For the reasons discussed above, Appellant’s contentions are
unpersuasive of reversible Examiner error. Accordingly, we sustain the
rejection of independent claim 1 under pre-AIA 35 U.S.C. § 103(a) over
Belknap and Faitelson together with the rejection of independent claims 14,
27, and 28 which are argued on the basis of claim 1. See Appeal Br. 34. We
further sustain the rejection of dependent claims 3, 4, 6–9, 16, 17, 19–22,
and 29–36 which are not argued separately with particularity. Id.
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Rejection of Claims 2 and 15
Appellant does not present any additional arguments traversing the
rejection of claims 2 and 15 other than to allege the addition of the Baschy
reference fails to cure the argued deficiencies in the rejection of claim 1.
Appeal Br. 34–35. Thus, claims 2 and 15 are not separately argued. Having
found no reversible error in the rejection of claim 1, we likewise sustain the
rejection of claims 2 and 15 under pre-AIA 35 U.S.C. § 103(a) over
Belknap, Faitelson, and Baschy.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14–17, 19–
22, 31–33
101 Non-statutory
subject matter
14–17, 19–
22, 31–33

1, 3–4, 6–9,
14, 16–17,
19–22, 27–
36
103(a) Belknap, Faitelson 1, 3–4, 6–9,
14, 16, 17,
19–22, 27–
36

2, 15 103(a) Belknap, Faitelson,
Baschy
2, 15
Overall
Outcome
1–4, 6–9,
14–17, 19–
22, 27–36

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