AIRWATCH LLC

Patent Trials and Appeals BoardDec 27, 2021

2020006618 (P.T.A.B. Dec. 27, 2021)

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. 15/438,779 02/22/2017 SACHIN VAS W284.01 (500104-1300) 6954 152577 7590 12/27/2021 Thomas | Horstemeyer, LLP (VMW) 3200 Windy Hill Road, SE Suite 1600E Atlanta, GA 30339 EXAMINER AHMED, MAHABUB S ART UNIT PAPER NUMBER 2434 NOTIFICATION DATE DELIVERY MODE 12/27/2021 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@thomashorstemeyer.com ipadmin@vmware.com uspatents@thomashorstemeyer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SACHIN VAS, SUSHILVAS VASVAN, RAMANI PANCHAPAKESAN, and PAVITHRA NARAYANASWAMY _____________ Appeal 2020-006618 Application 15/438,779 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, JOHN A. EVANS, and CATHERINE SHIANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–20, which constitute all the claims pending in this application. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this appeal is “Airwatch LLC, the assignee of record and a Delaware Limited Liability Company, which is a wholly owned subsidiary of VMware, Inc., a Delaware corporation.” See Appeal Br. 2. Appeal 2020-006618 Application 15/438,779 2 STATEMENT OF THE CASE 2 Introduction Embodiments of Appellant’s claimed subject matter relate generally to the secure management of attachments. See Abstract. Illustrative Claim 1 1. A method, comprising: receiving, by at least one computing device, an invitee list and a schedule associated with an event; generating, by the at least one computing device, a calendar message for the event based on the invitee list and the schedule; identifying, by the at least one computing device, a file for attachment to the calendar message; determining, by the at least one computing device, that the file is permitted to be shared with at least one addressee identified in the invitee list based on an access policy of a management service in a managed computing device environment; generating, by the at least one computing device, a resource locator associated with the file, wherein the resource locator uniquely identifies the file in the managed computing device environment; inserting, by the at least one computing device, the resource locator into the calendar message; forwarding, by the at least one computing device, the calendar message to at least one managed computing device in 2 We herein refer to the Final Office Action, mailed January 2, 2020 (“Final Act.”); the Appeal Brief, filed June 2, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed July 22, 2020, and the Reply Brief, filed September 22, 2020 (“Reply Br.”). Appeal 2020-006618 Application 15/438,779 3 the managed computing device environment based on at least one addressee in the invitee list, to distribute the resource locator for access to the file; and retrieving the file, by the at least one computing device and in response to receiving a notification, at a time before an access start time associated with the access to the file using a secure content file manager. Appeal Br. 24. Claims App. (disputed claim limitation emphasized). Prior Art Evidence Relied Upon by the Examiner Name Reference Date Adams et al. (“Adams”) US 2007/0073810 A1 Mar. 29, 2007 Byrne et al. (“Byrne”) US 8,732,853 B1 May 20, 2014 Nguyen et al. (“Nguyen”) US 2018/0097757 A1 Apr. 5, 2018 Rejections Claims Rejected 35 U.S.C. § Reference(s)/Basis 1–15 103 Byrne, Adams, Nguyen 16–20 103 Byrne, Nguyen ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. Throughout this opinion, we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. Appeal 2020-006618 Application 15/438,779 4 See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A of Claim 1 Appellant advances several related arguments regarding the disputed dispositive “retrieving” step of method claim 1. In particular, Appellant urges that the limitation in dispute: “retrieving the file ... at a time before an access start time associated with the access to the file using a secure content file manager,” as recited in claim 1 (with emphasis added) should not be interpreted so broadly as being “the sender can download the file using the link at any time,” as the Office Action (p. 7, emphasis added) alleges of Byrne. Appeal Br. 8 (emphasis added). Appellant’s arguments in the Appeal Brief present the following issue on appeal: Under 35 U.S.C. § 103, has the Examiner erred in finding that Byrne, Adams, and Nguyen would have collectively taught or suggested the disputed “retrieving” limitation of claim 1: retrieving the file, by the at least one computing device and in response to receiving a notification, at a time before an access start time associated with the access to the file using a secure content file manager. Claim 1 (emphasis added). Turning to the evidence, we note that Byrne’s Figure 9 is relied upon by the Examiner to teach or suggest the “retrieving” limitation of claim 1, in addition to Byrne’s paragraph 8 (lines 59–65), and paragraph 9 (lines 26– 33). See Final Act. 6; Ans. 27. Appeal 2020-006618 Application 15/438,779 5 In the Answer, the Examiner further explains the basis for the rejection: [The] Examiner interprets the cited teachings (FIG. 9 and Col. [8, 151, Lines [59-65, 26-33]) teachings (FIG. 9 and Col. [8, 151, Lines [59-65, 26-33]) of Byrne as disclosing that an entity/person/user willing to share a document includes a link/pointer to the document/file in a message (FIG. 9 shows link of the file “Some Document” is attached/included), sets restriction as to who (recipient) and when the recipient of the message can download/retrieve the file using the link of the document included in the sent message. The restriction includes setting a download/retrieval time or time window. The access time can be anytime or a certain time of “from and to” (time window). The access type includes download. “Thus download and the access time as disclosed by Byrne allows the recipient of the message to download/retrieve the file using the link of the file attached to the message”. Ans. 28 (emphasis added). Claim Construction We begin our analysis with claim construction, which is an important step in a patentability determination. See e.g., Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two-step inquiries. The first step in both analyses is a proper construction of the claims. . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” (internal citations omitted)). But here the Examiner has it backwards with respect to the misplaced focus on: (1) interpreting the teachings of the reference (Ans. 28), and then, (2) improperly reading the reference on the claim. Cited prior art references do not “read on” claim limitations, rather, a particular claim limitation Appeal 2020-006618 Application 15/438,779 6 “reads on” the corresponding feature found in the prior art after the claim language is properly construed in accordance with the broadest reasonable interpretation consistent with the Specification. Cf. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”) (emphasis added). Thus, the correct approach requires: (1) interpreting the disputed claim limitation under BRI, and then, (2) reading the properly construed claim limitation on the corresponding feature found in the prior art.3 And when giving a claim limitation its broadest reasonable interpretation, we must provide “an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017) (citations omitted). And therein lies the problem with the Examiner’s rejection, because we conclude the disputed “retrieving” limitation of method claim 1 is more specific than the general teachings relied upon by the Examiner in Byrne.4 Cf. “This court has recognized that a prior ‘genus’ will not necessarily 3 See the mapping rule: 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” (emphasis added). 4 As noted above, Figure 9 of Byrne is relied upon by the Examiner to teach or suggest the disputed “retrieving” limitation of claim 1, in addition to Byrne’s paragraph 8 (lines 59–65), and paragraph 9 (lines 26–33). See Final Act. 6; Ans. 27. Appeal 2020-006618 Application 15/438,779 7 prevent patenting of a ‘species.’” Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d 1319, 1322–23 (Fed. Cir. 2005) (citing Eli Lilly & Co. v. Bd. of Regents of Univ. of Wa., 334 F.3d 1264, 1270 (Fed. Cir. 2003)). Here, Appellant’s claim 1 specifically requires “retrieving the file by the at least one computing device, and in response to receiving a notification, at a time before an access start time associated with the access to the file using a secure content file manager.” (emphasis added). In applying BRI, we turn to the Specification for context. Consistent with Appellant’s Specification, such notification is received by client devices 160 to inform the devices that “certain device management commands and/or data are queued for retrieval. In turn, when one of the client devices 160 receives a notification, it is configured to check in with (e.g., communicate with) the management service 140 of the computing environment 100 to retrieve the contents of the command queue or other data.” Spec. ¶ 33. Thus, under BRI, and consistent with the Specification (id.) we understand the following temporal sequence regarding the disputed “retrieving” limitation of claim 1: (1) the notification is received, and (2) the file is responsively retrieved by the at least one computing device, wherein both events (1) and (2) must occur before an access start time that is associated with (further) access to the file using a secure content file manager. Appeal 2020-006618 Application 15/438,779 8 As relied upon by the Examiner, we reproduce Figure 9 of Byrne below: Figure 9 of Byrne is reproduced above, depicting “a diagram illustrating a form for sharing a content item as a sharable link and for specifying restrictions on use of the sharable link for access to the content item.” Byrne col. 2, ll. 53–55. In contrast to the temporal sequence required under our BRI claim construction supra, we note the form depicted in Byrne’s Figure 9 is filled out by the team member (sender) of the shared link, which points to downloadable content: Appeal 2020-006618 Application 15/438,779 9 If Team Members are permitted to share Team content items with anyone, then the Link Sharer can select specific Team Member Link Recipients and restrictions for those selected Team members. In addition, the Link Sharer can specify restrictions for everyone else. This is shown by example in FIG. 9. Byrne, col. 15, ll. 41–46. Although Byrne describes temporal restrictions such that “the Link Sharer can specify a period of time or one or more period of times during which the sharable link can be used to access the content item” (col. 13, ll. 47–50), this description is not what Appellant specifically claims under the “retrieving” step of method claim 1, in accordance with our BRI claim construction above. On this record, and given our claim interpretation of the disputed “retrieving” limitation of claim 1 (as discussed above), we do not find the portions of Byrne cited by the Examiner teach or suggest the disputed claim elements, even after considering the Examiner’s reliance upon Byrne in combination with any related teachings or suggestions found in Adams and/or Nguyen. Nor has the Examiner established on this record how Adams or Nguyen overcomes the aforementioned deficiencies in Byrne. Based upon our review of the record, we find a preponderance of the evidence supports Appellant’s contention that “Byrne fails to explicitly disclose several elements of the claims, and at least fails to disclose or suggest retrieving ‘at a time before an access start time associated with the access to the file using a secure content file manager,’ as recited in claim 1.” Reply Brief. 7 (emphasis added). We note that the Examiner appears to be reading the “secure file manager” of claim 1 on either CMS client 240 or CMS client 280 of Appeal 2020-006618 Application 15/438,779 10 Nguyen. See Final Act. 21–22. However, we find the Examiner has not fully developed the record to explain how the CMS client found in Nguyen works in tandem with the cited teachings of Byrne. See supra, n.4. We additionally find a preponderance of the evidence supports Appellant’s arguments that there is no inherent teaching in Byrne that would render the disputed “retrieving” limitation of claim 1 obvious. See Reply Br. 8–9. To the extent that the Examiner may be relying upon a theory of inherency under section 103, our reviewing court has long “recognized that inherency may supply a missing claim limitation in an obviousness analysis.” PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc. 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). However, the Federal Circuit cautions that, [t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. In re Oelrich, 666 F.2d at 581 (emphasis added) (citations and quotation marks omitted). Thus, our early precedent, and that of our predecessor court, established that the concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the “natural result” of the combination of prior art elements. Id. PAR Pharm., 773 F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (emphasis added). Here, we find the evidence cited by the Examiner (Final Act. 6–7; Ans. 27) is insufficient to show that “the natural result flowing from the operation as taught would result in the performance of the questioned Appeal 2020-006618 Application 15/438,779 11 function.” PAR Pharm., 773 F.3d at 1194–95 (internal citation omitted). Nor has the Examiner shown that either of the secondary Adams and Nguyen references overcomes the aforementioned deficiencies of Byrne, as discussed above. Accordingly, for essentially the same reasons argued by Appellant in the Briefs, as further discussed above, we are constrained on this record to reverse the Examiner’s obviousness Rejection A of independent claim 1. Remaining independent claims 9 and 16 recite the disputed “retrieving” limitation of claim 1 using similar language having commensurate scope. For the same reasons, we also reverse the Examiner’s Rejection A of independent claim 9, and Rejection B of independent 16 (over Byrne and Nguyen, omitting Adams under Rejection B). Because we have reversed the Examiner’s rejection of each independent claim on appeal, for the same reasons, we reverse the Examiner’s obviousness rejections of each dependent claim on appeal. CONCLUSION The Examiner erred in rejecting claims 1–20 under 35 U.S.C. § 103 over the collective teachings and suggestions of the cited references. Appeal 2020-006618 Application 15/438,779 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–15 103 Byrne, Adams, Nguyen 1–15 16–20 103 Byrne, Nguyen 16–20 Overall Outcome 1–20 REVERSED