Dropbox, Inc.

Patent Trials and Appeals BoardDec 10, 2021

2020005342 (P.T.A.B. Dec. 10, 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. 14/872,019 09/30/2015 Jack Benjamin STRONG 20033.100.8_P536USC8 9467 122246 7590 12/10/2021 Keller Jolley Preece / Dropbox 1010 North 500 East, Suite 210 North Salt Lake, UT 84054 EXAMINER KHOSHNOODI, FARIBORZ ART UNIT PAPER NUMBER 2157 NOTIFICATION DATE DELIVERY MODE 12/10/2021 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@kjpip.com gjolley@kjpip.com ljohnson@kjpip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACK BENJAMIN STRONG and GIBU THOMAS Appeal 2020-005342 Application 14/872,019 Technology Center 2100 Before JEREMY J. CURCURI, JAMES W. DEJMEK, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, 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 rejecting claims 21–40. Claims 1–20 have been cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). Appellant identifies Dropbox, Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-005342 Application 14/872,019 2 CLAIMED SUBJECT MATTER The claims are directed to synchronizing user-defined settings between client devices. Claim 21, reproduced below, illustrates the claimed subject matter: 21. A method for synchronizing user-defined settings between client devices, the method comprising: receiving, by at least one server from a first client device associated with a user, a set of user-defined settings associated with an application installed on the first client device; storing the set of user-defined settings in a memory location of the at least one server; detecting an installation process of the application on a second client device associated with the user; and in response to detecting the installation process of the application on the second client device and based on the set of user-defined settings associated with the application as previously installed on the first client device, causing, by the at least one server, the second client device to automatically restore the set of user-defined settings on the second client device as part of the installation process of the application on the second client device. Appeal Br. 18 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Chen et al. (“Chen”) US 6,496,979 B1 Dec. 17, 2002 Sezan et al. (“Sezan”) US 2005/0198015 A1 Sept. 8, 2005 Rohatgi et al. (“Rohatgi”) US 2005/0208803 A1 Sept. 22, 2005 Appeal 2020-005342 Application 14/872,019 3 REJECTIONS Claims 21, 22, 24–29, 31–36, and 38–40 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Rohatgi and Chen. Final Act. 3–7. Claims 23, 30, and 37 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Rohatgi, Chen, and Sezan. Final Act. 7–8. OPINION Claims 21, 22, 24, 26–29, 31, 33–36, 38, and 40 Appellant argues the claims subject to the first ground of rejection as a group. Appeal Br. 6. We select claim 21 as representative of the group, with claims 22, 24, 26–29, 31, 33–36, 38, and 40 standing or falling with claim 21. 37 C.F.R. § 41.37(c)(1)(iv). We address Appellant’s arguments for dependent claims 25, 32, and 39 separately below. Appeal Br. 14. On this record, we see no error in the Examiner’s reliance on the cited references for collectively teaching or suggesting the elements recited in claim 21. We adopt as our own the findings set forth by the Examiner in the Final Rejection and Answer. See Final Act. 3–7; Ans. 3–6. The Examiner found that Rohatgi teaches a method for synchronizing user-defined settings between client devices (Rohatgi ¶¶ 16, 40, Fig. 4), the method comprising: receiving, by at least one server from a first client device associated with a user, a set of user-defined settings associated with an application installed on the first client device (Rohatgi ¶¶ 35, 44), storing the set of user-defined settings in a memory location of the at least one server (Rohatgi ¶¶ 35, 50), and causing, by the at least one server (Rohatgi ¶ 53), the second client device to automatically restore the set of user- Appeal 2020-005342 Application 14/872,019 4 defined settings to on the second client device as part of the installation process of the application on the second client device (Rohatgi ¶¶ 28–29, 35). Final Act. 3–4. Appellant does not dispute these findings made by the Examiner. Appellant argues that the combination of Rohatgi and Chen fails to teach or suggest “detecting an installation process of [an] application on a second client device associated with [a] user,” as recited in claim 21. Appeal Br. 9. Appellant has not persuaded us that the Examiner erred in finding that the combination of Rohatgi and Chen teaches the disputed “detecting” limitation. For example, we agree with the Examiner that Chen teaches a single setup package file that is device independent and that contains setting associated with an application. See Final Act. 4 (citing Chen col. 10:11–25, 38–40). We also agree that Chen teaches an installation process in which an installer module on a mobile device can determine whether an application program should be installed, before installing it on the mobile device. See id. The Examiner concluded that the limitation “detecting an installation process of the application” is broad enough to include Chen’s teaching of detecting that the application program is already installed on a mobile device. See Ans. 4 (citing Chen col. 11:52–62). Appellant has not persuaded us that the Examiner’s interpretation of the disputed limitation is overly broad, unreasonable, or inconsistent with Appellant’s Specification. Rather, Appellant argues in a conclusory manner that the portion of Chen cited by the Examiner does not “relate to ‘detecting an installation process’ of an application,” but is “related to either detecting a completed installation or a completed uninstallation of an application on a mobile device.” Reply Br. 3. Appellant does not provide any basis for this Appeal 2020-005342 Application 14/872,019 5 argument. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). We give claim 21 its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In the Summary of Claimed Subject Matter in the Appeal Brief, Appellant identifies paragraph 43 of the Specification as describing the disputed “detecting” limitation. Appeal Br. 3. The Specification does not explicitly define “detecting an installation process of an application.” Paragraph 43 of the Specification describes in part that “[w]hen a user installs an application that he has previously used on another system, all settings and data are automatically restored to their most recent state as part of the install process.” Spec. ¶ 43. Appellant has not identified, nor do we find, that the Specification describes “detecting an installation process” as something other than determining that an application has already been used.2 Thus, we are not persuaded that the Examiner’s finding that Chen teaches or suggests the disputed “detecting” limitation is in error. Appellant next contends that, although the portions of Rohatgi cited by the Examiner teach “a restoration of a user profile, they fail to teach or 2 In the event of further prosecution, we leave it to the Examiner to determine whether independent claims 21, 28, and 35 comply with the written description requirement of 35 U.S.C. § 112(a). 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. Appeal 2020-005342 Application 14/872,019 6 suggest causing a second client device to restore user defined settings of an installation process of an application ‘in response to detecting the installation process of the application on the second client device and based on the set of user-defined settings associated with the application as previously installed on the first client device.’” Appeal Br. 11 (emphasis omitted). Appellant further argues that “the cited portions of Chen discuss restoring certain values and settings upon installing an application,” but “[t]hese values and settings do not correspond to an application previously installed on a different device.” Id. at 12. Appellant, however, attacks Rohatgi and Chen individually, even though the Examiner relied on the combination of Rohatgi and Chen in rejecting claim 21. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (“[T]he test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.” (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981))). With regard to the combined teachings of the prior art, Appellant merely argues in a conclusory manner that “even if a system resulting from the combination of Rohatgi and Chen could implement the external storage device of Rohatgi to transfer a user profile between computing devices and further implement the capabilities of Chen in determining whether those devices already have the user profile downloaded, such a system would still fail to teach or suggest the above-recited limitations.” Appeal Br. 13–14. Appellant has not persuasively argued that the combined teachings of the references would not have suggested the claimed subject matter to those having ordinary skill in the art. Accordingly, we are not persuaded that the Appeal 2020-005342 Application 14/872,019 7 Examiner erred in finding that the combination of Rohatgi and Chen teaches or suggests the disputed “causing” limitation. For these reasons, we sustain the Examiner’s obviousness rejection of independent claim 21 and grouped claims 22, 24, 26–29, 31, 33–36, 38, and 40. Claim 25, 32, and 39 In addition to the arguments made for independent claim 21, discussed above, Appellant argues that the Examiner erred in rejecting dependent claims 25, 32, and 39, which further recite “receiving, by the at least one server, an update to the set of user-defined settings from a third client device associated with the user,” and “sending the update to the set of user-defined settings to the second client device.” Appeal Br. 15. We agree with Appellant that the Examiner has not sufficiently explained how Rohatgi teaches or suggests this claim limitation. The disputed limitation requires “a server,” “a third client device,” and “a second client device.” See Appeal Br. 19 (Claims App.). The Examiner has not sufficiently mapped the teachings of Rohatgi to the claim elements. See Final Act. 6 (citing Rohatgi ¶¶ 7, 44, 47); Ans. 6–8. Accordingly, on the record before us, we reverse the Examiner’s obviousness rejection of dependent claims 25, 32, and 39. Claims 23, 30, and 37 Appellant argues that dependent claims 23, 30, and 37 are patentable because Sezan fails to cure the deficiencies of Rohatgi and Chen, discussed above in the context of claim 21. Appeal Br. 15–16. Because we sustain the Examiner’s rejections of independent claims 21, 28, and 35, from which claims 23, 30, and 37 respectively depend, and Appeal 2020-005342 Application 14/872,019 8 because Appellant makes no other substantive arguments related to the dependent claims, we sustain the Examiner’s rejection of claims 23, 30, and 37. CONCLUSION We affirm the Examiner’s § 103(a) rejections of claims 21–24, 26–31, 33–38, and 40. We reverse the Examiner’s § 103(a) rejections of claims 25, 32, and 39. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 22, 24–29, 31–36, 38–40 103(a) Rohatgi, Chen 21, 22, 24, 26–29, 31, 33–36, 38, 40 25, 32, 39 23, 30, 37 103(a) Rohatgi, Chen, Sezan 23, 30, 37 Overall Outcome 21–24, 26– 31, 33–38, 40 25, 32, 39 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 IN PART