Dropbox, Inc.

Patent Trials and Appeals Board

May 18, 2021

2019005948 (P.T.A.B. May. 18, 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.
15/393,684 12/29/2016 Benjamin Zeis Newhouse 085118-557243_P970US1 6112
78189 7590 05/18/2021
Dropbox
c/o Polsinelli PC
1401 Eye (
Washington, DC 20005
EXAMINER
ELLIS, MATTHEW J
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
05/18/2021 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):
DropboxMail@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN ZEIS NEWHOUSE, ALEX SYDELL, and
SHI CONG
Appeal 2019-005948
Application 15/393,684
Technology Center 2100
Before WILLIAM BAUMEISTER, MICHAEL J. STRAUSS, and
MICHAEL J. ENGLE, 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 1–7 and 9–22, which constitute all the
claims pending in this application. See Final Act. 1. Claim 8 is canceled.

1 We refer to the Specification, filed December 29, 2016 (“Spec.”); Final
Office Action, mailed October 10, 2018 (“Final Act.”); Appeal Brief, filed
February 6, 2019 (“Appeal Br.”); Examiner’s Answer, mailed June 17, 2019
(“Ans.”); and Reply Brief, filed August 6, 2019 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Dropbox, Inc. Appeal
Br. 3.
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Appeal Br. 23, Claims Appendix. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a file system that provides warnings of
moves of shared content items. Spec., Title. Claim 1, reproduced below with
labels added and disputed limitations emphasized in italics, is illustrative of
the claimed subject matter:
1. At least one non-transitory computer readable medium
comprising instructions, the instructions, when executed by a
computing system, cause the computing system to:
[(a)] detect a content item change event on a client device,
wherein the content item change event is associated with a user
account of a content management system and wherein the
content item change pertains to a shared content item accessible
to at least one other account of the content management system;
[(b)] compare a source file system path for the content
item change event with a destination file system path for the
content item change event to determine a canonical move
causing the content item change event;
[(c)] determine that the canonical move causing the
content item change event will result in making the shared
content item unavailable to the at least one other account of the
content management system; and
[(d)(i)] after determining that the content item change
event will result in making the shared content item unavailable
to the at least one other account of the content management
system, display a notification on the client device causing the
content item change event, [(d)(ii)] wherein the notification
informs the user account associated with the content item change
event that the content item change event will result in making the
shared content item unavailable to the at least one other account.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Houston US 8,825,597 B1 Sept. 2, 2014
Midgley US 2005/0071390 A1 Mar. 31, 2005
Stienhans US 2007/0233803 A1 Oct. 4, 2007
Zichterman US 2014/0289280 A1 Sept. 25, 2014
Melahn US 2015/0278323 A1 Oct. 1, 2015

REJECTIONS3
Claims 1–4, 9–11, 16, 17, and 20–22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Houston and Stienhans. Final Act. 10–20.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Houston, Stienhans, and Midgley. Final Act. 21–23.
Claims 7 and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Houston, Stienhans, and Zichterman. Final Act. 23–27.
Claims 12–15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Midgley, Houston, and Stienhans. Final Act. 27–32.
Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Houston, Stienhans, and Melahn. Final Act. 32–33.

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).

3 A rejection of claims 1–19 under 35 U.S.C. § 101 as being directed to a
judicial exception (Final Act. 2–10) has been withdrawn. Ans. 3.
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OPINION
We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken and (2) the Examiner’s Answer in response to
Appellant’s Appeal Brief, and concur with the conclusions reached by the
Examiner. We highlight the following for emphasis.
Examiner’s Findings and Appellant’s Contentions of Error
The Examiner finds that Houston’s synchronization of a folder system
over a network teaches the detection limitation (a), comparing limitation (b),
determining limitation (c), and the displaying limitation (d)(i). Final
Act. 11–12. The Examiner relies on Stienhans’ unplanned system shutdown
notifications for claim element (d)(ii). Id. at 12–13.
Appellant contends the rejection is improper, presenting the following
three contentions of Examiner error:
(i) Houston and Stienhans fail to disclose or suggest
limitation (d)(i), “after determining that the content item change
event will result in making the shared content item unavailable
to the at least one other account of the content management
system, display a notification on the client device causing the
content item change event.” Appeal Br. 13–14.
(ii) Houston and Stienhans fail to disclose or suggest
limitation (d)(ii), “wherein the notification informs the user
account associated with the content item change event that the
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content item change event will result in making the shared
content item unavailable to the at least one other account.”
Appeal Br. 14–15.
(iii) The combination of Houston and Stienhans is improper. Appeal
Br. 15–18.
We address each of Appellant’s contentions of error as follows.

1. Whether Houston teaches claim element (d)(i), “display a notification on
the client device causing the content item change event”
Appellant agrees with the Examiner’s finding that Houston teaches
synchronization of content items generally, updating “any subscribing
clients” of a potential problem upon deletion of a file. Appeal Br. 14.
Appellant’s point of disagreement however extends to whether Houston’s
“subscribing clients” discloses or suggests claim element (d)(i)’s “display on
the client device causing the content item change event.” Id.
The Examiner finds that Houston teaches a metadata server receives
and executes an instruction for deleting a content item (e.g. a file) and all
clients subscribed to the affected folder are subsequently notified. Ans. 4
(citing Houston col. 6, l. 53–col. 7, l. 3). The Examiner further directs
attention to Houston’s disclosure of selectively omitting notification of the
change sent to the client that initiated the change as evidence that, in the
alternative, in addition to all other clients, the initiating client is also
notified. Id. (citing Houston col. 5, ll. 28–50).
We are persuaded that a person having ordinary skill in the art at the
time of the effective filing of the application would have construed
Houston’s disclosure of “updat[ing] any subscribing clients,” to encompass
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the user initiating the change to the file. Houston col. 6, ll. 56–59. At issue is
whether this is a reasonable interpretation of Houston.
“The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.” In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983) (quoting In
re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)); see also MPEP § 2123(I).
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill the art, including nonpreferred
embodiments. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989); see also Upsher-Smith Labs., Inc. v. Pamlab, L.L.C., 412 F.3d
1319, 1323 (Fed. Cir. 2005) (reference disclosing optional inclusion of a
particular component teaches compositions that both do and do not contain
that component); MPEP § 2123(I).
Here, Houston discloses a synchronization of folders among multiple
clients. Houston, Abstract. In the embodiment originally cited by the
Examiner in the Final Office Action, the context is within deletion of files or
subfolders in a shared synchronized folder. Houston col. 6, ll. 44–52. A
metadata server 103 changes attributes of the file to indicate its deleted
status and then the notification server 106 will update “any subscribing
clients.” Id. at col. 6, ll. 56–59. As noted in a different portion of Houston,
the synchronization of files is performed upon receiving and successfully
executing a commit instruction to inform “all clients subscribed to the folder
that the folder contents have changed.” Id. at col. 5, ll. 52–55. This includes
the user making the change. Id. at col. 5, ll. 42–47 (“[A]ssume that a user of
a first client 108a has created a folder and invited a user of client 108b to
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share the folder. . . . [B]oth client 108a and client are noted by notification
server 106 as being associated with that folder.”). The same process occurs
for deletions. Id. at col. 6, ll. 53–59 (“When a file is deleted, . . . notification
server 106 updates any subscribing clients.”).
Therefore, read as a whole, we find that Houston’s disclosure of
informing all subscribed clients to encompass informing the client device
initiating the change.
Appellant belatedly argues for the first time in the Reply Brief that
Houston fails to disclose “display a notification on the client device causing
the content item change event.” Reply Br. 2. Additionally, Appellant
belatedly argues that the portion of the claim limitation (d)(i), “after
determining that the content item change event will result in making the
shared content item unavailable to at least one other account of the content
management system,” was not addressed by the Examiner despite no such
arguments being presented by Appellant in its Brief.
Appellant fails to show good cause for these new arguments, and as
such, Appellant’s belated arguments are deemed waived as untimely.
37 C.F.R. § 41.41(b)(2) (2016); see also In re Hyatt, 211 F.3d 1367, 1373
(Fed. Cir. 2000) (noting that an argument not first raised in the brief to the
Board is waived on appeal).
Furthermore, even if timely presented, Appellant’s argument would be
unpersuasive of reversible Examiner error. In particular, Stienhans describes
the display of a system status window. Stienhans, Fig. 7; Final Act. 12
(citing Stienhans ¶¶ 8, 40). Figure 7 of Stienhans is reproduced below:
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Figure 7 of Stienhans Depicting a Status Window
Additionally, Stienhans discloses that the system status window is
displayed with information about unsaved data. Stienhans, Fig. 7, 701. We
find that the information regarding the unsaved data is displayed after a
determination that such data would be unavailable after a system shutdown.
Thus, contrary to Appellant belated argument, Stienhans teaches or
suggests the argued limitations of claim element (d)(i).
Consequently, we are unpersuaded of any reversible error by
Appellant’s contention (1).
2. Whether Houston combined with Stienhans teaches claim element (d)(ii),
“the notification informs the user account associated with the content item
change event that the content item change event will result in making the
shared content item unavailable to the at least one other account”
The Examiner finds Stienhans teaches that, when a shutdown process
has been initiated by an administrator, a system status window displays
information indicating which computers have unsaved data in an unsaved
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data field and displays information about applications still in use on other
computers in an application status window. Final Act. 12 (citing Stienhans
¶¶ 8, 40).
Appellant agrees, stating that Stienhans is a method directed toward
“implementing an unplanned shutdown of a computer system” and a display
of a “[s]ystem status window 700 . . . indicating which computers have
unsaved data.” Appeal Br. 14–15. Appellant contends, without further
explanation, that this system status window is not the same as the
“notification on the client device causing the content item change event,” as
required in claim element (d)(ii), as Examiner found. Id. at 15.
As an initial issue, Appellant’s response to the outstanding rejection is
facially inadequate. Appellant fails to specifically address the Examiner’s
findings including the prior art disclosed in the portions of the references
cited by the Examiner (Final Act. 11–13) or explain why the Examiner’s
findings regarding those disclosures are erroneous. See Appeal Br. 14–15.
A general denial that fails to address the Examiner’s findings is
insufficient. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement [that] merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).
Nonetheless, Appellant’s contentions also are substantively
inadequate. In particular, Appellant’s naked contention that “Stienhans . . . is
not the same as ‘a notification on the client device causing the content item
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change event’ that ‘informs the user account associated with the content item
change event that the content item change event will result in making the
shared content item unavailable to the at least one other account,’” (Appeal
Br. 15) fails to address the Examiner’s finding that Houston in combination
with Stienhans, not Stienhans singly, teaches or suggest these operations. As
the Examiner notes, Stienhans is modified with Houston “in order to more
clearly teach that specific users are affected by an action of a computer
system such that data may be lost.” Ans. 5.
Thus, Appellant’s contention is further unpersuasive because it is
based on an improper attack on the Stienhans reference individually when
the rejection is based on the combination of Houston and Stienhans. “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)).
Consequently, Appellant has not persuaded us of reversible error in
the Examiner’s finding that Houston combined with Stienhans teaches claim
element (d)(ii), “the notification informs the user account associated with the
content item change event that the content item change event will result in
making the shared content item unavailable to the at least one other
account.”
3. Combinability of Houston and Stienhans
The Examiner determines it would have been obvious to modify
Houston in view of Stienhans, “in order to notify one user that other users
may be affected by an action; this is advantageous because it can allow a
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vote from the other users for whether an action should continue or not.”
Final Act. 13.
Appellant alleges the combination is improper, first contending that
the combination of Houston and Stienhans “would change the principle of
operation of Houston.” Appeal Br. 17. Second, according to Appellant, the
combination would require requiring substantial reconstruction and redesign
of the elements shown in Houston as well as a change in the basic principle
under which the synchronization system of Houston was designed to
operate. Id. Third, Appellant contends the combination would have no
reasonable expectation of success in achieving the claimed invention. Id. at
17–18.
The Examiner responds, explaining Stienhans’ shutdown alert to the
system would not conflict with Houston’s synchronization of folders; the
different types of notifications disclosed by Stienhans would be an
improvement to the sharing of data over a network. Ans. 6.
Appellant replies, asserting that Houston’s subscribing client
receiving a notification from the notification server “directly conflicts” with
Stienhans’ disclosure of an administrator receiving a notification from users
because they are not the same. Reply Br. 4–5.
We are unpersuaded by Appellant’s arguments that the combination
of Houston and Stienhans is improper. Other than attorney argument,
Appellant fails to provide sufficient evidence or persuasive technical
explanation in support of the asserted contentions. For example, Appellant
does not provide sufficient explanation or evidence establishing Houston’s
principle of operation or details about the alleged reconstruction and design
changes that would be required by the modification of Houston to
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incorporate the teachings of Stienhans. Attorney argument is not evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument
take the place of evidence lacking in the record. Likewise, Appellant
provides insufficient evidence that modification of Houston’s system
according to the teachings of Stienhans would require substantial (i.e., an
unacceptable degree of) reconstruction and redesign of the Houston’s
synchronization system to implement the combination.
We are also unpersuaded one of ordinary skill in the art would have
had no reasonable expectation of success in combining the references’
teachings, as proposed by the Examiner. See Appeal Br. 8. Appellant does
not proffer sufficient persuasive evidence or technical reasoning to explain
how combining the teachings of Houston and Stienhans in an operable
manner would be beyond the level of ordinary skill in the art. See also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). We further
note “[o]bviousness does not require absolute predictability of success.” In
re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Accordingly, we are not
persuaded that successfully combining the teachings of Houston and
Stienhans would be beyond the skill and creativity of an ordinary artisan.
Moreover, the Examiner provides a rationale why a person of ordinary skill
would have combined Houston in view of Stienhans.
Therefore, for the reasons discussed above, we disagree with
Appellant that the Examiner erred in finding the combination of Houston
and Stienhans teaches or suggests the argued limitations of claim 1 or that
the combination of Houston and Stienhans is improper. As such, we sustain
the Examiner’s rejection of claims 1 and 10 together with the rejections of
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dependent claims 2–9 and 11–18, which are not argued separately with
particularity.
CONCLUSION
We affirm the Examiner rejection of claims 1–4, 9–11, 16, 17, and
20–22 under 35 U.S.C. § 103 over Houston and Stienhans.
We affirm the Examiner rejection of claims 5 and 6 under 35 U.S.C.
§ 103 over Houston, Stienhans, and Midgley.
We affirm the Examiner rejection of claims 7 and 19 under 35 U.S.C.
§ 103 over Houston, Stienhans, and Zichterman.
We affirm the Examiner rejection of claims 12–15 under 35 U.S.C.
§ 103 over Midgley, Houston, and Stienhans.
We affirm the Examiner rejection of claim 18 under 35 U.S.C. § 103
over Houston, Stienhans, and Melahn.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–11,
16, 17, 20–
22
103 Houston, Stienhans 1–4, 9–11,
16, 17, 20–
22

5, 6 103 Houston, Stienhans,
Midgley
5, 6
7, 19 103 Houston, Stienhans,
Zichterman
7, 19
12–15 103 Midgley, Houston,
Stienhans
12–15
18 103 Houston, Stienhans,
Melahn
18
Overall
Outcome
1–7, 9–22

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