Dropbox, Inc.

Patent Trials and Appeals Board

Jan 27, 2021

2019005548 (P.T.A.B. Jan. 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.
14/660,162 03/17/2015 Chris Beckmann 085118-523393_P59USC2 7298
78189 7590 01/27/2021
Dropbox
c/o Polsinelli PC
1401 Eye (
Washington, DC 20005
EXAMINER
KHOSHNOODI, FARIBORZ
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
01/27/2021 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):
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 CHRIS BECKMANN, JOSHUA JENKINS,
FRANCOIS ALEXANDER ALLAIN, and
JEFFREY BARTELMA

Appeal 2019-005548
Application 14/660,162
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JOHN A. EVANS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. We have jurisdiction 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. Appellant identifies the real party in interest as Dropbox,
Inc. Appeal Br. 2.
Appeal 2019-005548
Application 14/660,162

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to migrating content
items from a source user account to a target user account. Spec. ¶ 2. Three
independent claims are on appeal. Claim 1 is illustrative, and we reproduce
claim 1 below while adding emphasis to a key recitation on appeal:
1. A method comprising:
storing, by a server device, a content item identifiable by
a first content entry in a content directory, wherein the content
item is associated with a first user account;
receiving, by a server device, a request from a client
application on a client device to migrate the content item from
the first user account to a second user account;
migrating, by a server device, the content item from the
first user account to the second user account, wherein migrating
includes:
receiving, by a server device, a request from the
client application on the client device to access the
content item, the request identifying the first user account
and the content item;
identifying, by the server device, the first content
entry in the content directory, the first content entry
corresponding to the first user account and the content
item;
obtaining from the first content entry, by the
server device, a first pointer;
creating, by the server device, a second content
entry in the content directory based on the obtained first
content entry, the second content entry corresponding to
the second user account and the content item;

2 In this Decision, we refer to the Final Office Action dated October 19,
2018 (“Final Act.”), the Appeal Brief filed March 22, 2019 (“Appeal Br.”),
the Examiner’s Answer dated May 16, 2019 (“Ans.”), and the Reply Brief
filed July 16, 2019 (“Reply Br.”).
Appeal 2019-005548
Application 14/660,162

3
creating from the second content entry, by the
server device, a second pointer to the memory location of
the content item; and
associating, by the server device, the second
pointer with the second content entry in the content
directory.

Appeal Br. 20 (Claims App.). Independent claim 8 recites a computer-
readable medium including instructions which cause “obtaining from the
first content entry, by the server device, a first pointer.” Id. at 22.
Independent claim 15 recites a system comprising a computer-readable
medium which causes “obtaining from the first content entry a first pointer.”
Id. at 24.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Srinivasan et al.
(“Srinivasan”)
US 2004/0236798 A1 Nov. 25, 2004
Goodman et al.
(“Goodman”)
US 2006/0059253 A1 Mar. 16, 2006
Saika US 2006/0090049 A1 Apr. 27, 2006
Day US 7,251,670 B1 July 31, 2007
Lieblich et al.
(“Lieblich”)
US 2011/0296025 A1 Dec. 1, 2011
Newstadt et al.
(“Newstadt”)
US 9,613,382 B1 Apr. 4, 2017

REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1–4, 8–11, 15–17, and 23 under 35 U.S.C. § 103 as obvious
over Saika in view of Srinivasan and Lieblich. Final Act. 3.
Appeal 2019-005548
Application 14/660,162

4
B. Claims 5–7, 12–14 and 18–20 under 35 U.S.C. § 103 as obvious over
Saika in view of Srinivasan, Lieblich, and Day. Id. at 9.
C. Claims 21 and 22 under 35 U.S.C. § 103 as obvious over Saika in
view of Srinivasan, Lieblich, and Goodman. Id. at 11.
D. Claim 24 under 35 U.S.C. § 103 as obvious over Saika in view of
Srinivasan, Lieblich, and Newstadt. Id. at 13.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies.
Because we decide this appeal based on a recitation appearing, in substance,
in each independent claim, we focus our analysis on claim 1. This analysis
is equally applicable to each of the independent claims and, therefore, all of
the dependent claims as well.
Appeal 2019-005548
Application 14/660,162

5
Claim 1 recites a method requiring “obtaining from the first content
entry, by the server device, a first pointer.” Appeal Br. 20 (Claims App.).
Appellant argues that the Examiner has not adequately established that the
art teaches a first pointer that is “obtained from the first content entry.”
Appeal Br. 13; Reply Br. 4–5. Appellant’s Specification explains how
content entries can include pointers at, for example, paragraph 37.
Appellant’s argument is persuasive of error.
The Examiner relies on Srinivasan to address this claim recitation.
Final Act. 4. The Examiner cites paragraphs 79, 87, 88, 96, and 148 of
Srinivasan as teaching this recitation. Id.; Ans. 7. The Examiner also
explains that Srinivasan teaches pointers and that Srinivasan teaches a “sever
configured to store an appropriate pointer in the parent directory and the new
file/directory’s location on one of the other server[s].” Ans. 7. While
Srinivasan may teach pointers, the Examiner does not adequately explain
how Srinivasan discloses or suggests a pointer that is obtained from a
content entry. For example, the Examiner does not adequately explained
how the cited portions of Srinivasan teach a pointer that is obtained from a
first content entry.
The Examiner treatment of dependent claims does not cure this error.
We, thus, do not sustain the Examiner’s rejections.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 8–11,
15–17, 23
103 Saika, Srinivasan,
Lieblich
1–4, 8–11,
15–17, 23
Appeal 2019-005548
Application 14/660,162

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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
5–7, 12–14,
18–20
103 Saika, Srinivasan,
Lieblich, Day
5–7, 12–
14, 18–20
21, 22 103 Saika, Srinivasan,
Lieblich, Goodman
21, 22
24 103 Saika, Srinivasan,
Lieblich, Newstadt
24
Overall
Outcome
1–24

REVERSED