Dropbox, Inc.

Patent Trials and Appeals Board

Dec 16, 2021

2020006234 (P.T.A.B. Dec. 16, 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.
14/725,982 05/29/2015 Sean Beausoleil 381805-305600/P590US1 4571
136442 7590 12/16/2021
DLA Piper LLP (US)
11911 Freedom Dr.
Suite 300
Reston, VA 20190
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
12/16/2021 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):
BostonIPDocketing@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN BEAUSOLEIL, MATTEUS PAN, JEAN-DENIS GREZE,
and ANTHONY DeVINCENZI
Appeal 2020-006234
Application 14/725,982
Technology Center 2400
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DIXON, 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, 3–8, 10–15, and 17–25. 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(a) (2019). Appellant identifies the real party in interest as Dropbox,
Inc. Appeal Br. 1.
Appeal 2020-006234
Application 14/725,982
2
CLAIMED SUBJECT MATTER
The claims are directed to shared folder backed integrated workspaces
with a user interface to present representations of content items associated
with the workspace and allow the user to provide input to generate, view,
edit, and share content items associated with the workspace. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for displaying workspace messages in a
collaborative workspace, the method comprising:
generating, by a client device, a graphical user interface
visually representing a workspace message stream managed by
a content management system, where the workspace message
stream includes an existing workspace message;
receiving, by the client device, an indication from the
content management system that a new workspace message for
the workspace message stream was received;
scrolling, by the client device, the workspace message
stream in response to receiving an indication to visually
represent the new workspace message in the workspace
message stream;
determining, by the client device, that a user is
interacting with the existing workspace message in the
workspace message stream, wherein interacting with the
existing workspace message comprises providing textual input
in response to the existing workspace message to a text input
element;
freezing, by the client device, the workspace message
stream in response to determining that the user is providing
textual input in response to the existing workspace message to
the text input element;
receiving, by the client device, a second indication from
the content management system that a second new workspace
message for the workspace message stream was received;
determining, by the client device that the user continues
the interacting with the existing workspace message in the
message stream; and
Appeal 2020-006234
Application 14/725,982
3
upon determining, by the client device that the user is no
longer providing textual input in response to the existing
workspace message to the text input element,
continuing to scroll the workspace message stream to
visually represent the new workspace message in the workspace
message stream; and
adding the second new workspace message in the message
stream to the new workspace message.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tsuchiya US 2009/0131116 A1 May 21, 2009
Ishikawa et al. US 2010/0138503 A1 June 3, 2010
Anderson et al. US 2012/0182384 A1 July 19, 2012
Honeyman et al. US 2014/0365263 A1 Dec. 11, 2014

REJECTIONS
Claims 1, 3–8, 10–15, and 17–24 stand rejected under 35 U.S.C. § 103
as being unpatentable over Honeyman in view of Anderson and Tsuchiya.
Claim 25 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Honeyman/Anderson/Tsuchiya as applied to claim 24 above, and
further in view of Ishikawa.
OPINION
35 U.S.C. § 103
With respect to independent claims 1, 8, and 15, Appellant does not
set forth separate arguments for patentability and relies upon the same
arguments for each of the independent claims. We select independent claim
Appeal 2020-006234
Application 14/725,982
4
1 as the illustrative claim and note that independent claims 8 and 15 contain
similar limitations.
With respect to illustrative independent claim 1, the Examiner relies
upon paragraphs 57, 62, and 63 of the Tsuchiya reference for teaching or
suggests the “freezing” of the workspace message stream. Final Act. 5–6.
The Examiner further finds that paragraphs 63 and 80 of the Tsuchiya
reference teaches or suggests the steps of “determining” that the user is no
longer providing textual input and “continuing” to scroll the workspace
message stream. Final Act. 6.
Appellant argues that
at no point does Tsuchiya freeze the scrolling of log screen 31.
As such, at no point does Tsuchiya discuss an input that would
trigger the freezing of the automatic scrolling of log screen 31.
Instead, Tsuchiya only provides a selected information screen 33
in which a message may be pinned so that the user can reply to
the message without the message disappearing from automatic
scrolling. Most notably, however, the pinning of a selected
message to selected information screen 33 does not stop the
automatic scrolling of log screen 31. Tsuchiya never
contemplates this functionality.
Appeal Br. 10. Appellant further contends that the Tsuchiya reference log
screen 31 continues to automatically scroll through new messages when a
selected message is pinned to selected information screen 33 and the user
has selected message 12 in log screen 31. Appeal Br. 10. Appellant also
contends that the device of the Tsuchiya reference pins message 12 to
selected information screen 33 and 12 is notably absent from log screen 31
because the device does not freeze automatic scrolling of log screen 31
when the user selects message 12. Appeal Br. 10. Specifically, Appellant
argues that even assuming that the selection of a message for inclusion in
Appeal 2020-006234
Application 14/725,982
5
selected information screen 33 of the Tsuchiya reference may be equated to
freezing the automatic scrolling of log screen 31 the action that triggers this
“freezing” is not equivalent to “textual input” that triggers the freezing as
required by claim 1 where the selection (i.e., a click or touch of the
message)–and not textual input–that triggers the device to isolate the
message in selected information screen 33. Appeal Br. 10–11. Appellant
argues that in the Tsuchiya reference it is not a textual input that triggers this
isolation, but the textual input is provided only after the message is moved
from log screen 31 to selected information screen 33. Appeal Br. 10–11.
The Examiner attempts to clarify the combination of the teachings in
the Advisory Action stating that “the applicant ignores the combination of
the references as presented.” Adv. Act. 2. Instead, the Examiner finds that:
“[t]he combination of Honeyman and Anderson relied upon
to teach freezing the workspace upon determining that a user is
interacting with a workspace message and resuming/unfreezing
the automatic scrolling of the workspace message when it is
determined that the user is not interacting. . . Tsuchiya is relied
upon to teach the specific method of triggering the start and
stop freezing the workspace [message]. That is Tsuchiya
teaches that the fixing of a selected workspace message if for the
purpose of preventing scrolling and that the cessation of the fixed
display is cancelled by various triggers.
Adv. Act. 2 (emphasis added); see also Appeal Br. 11.
Appellant specifically contends that Tsuchiya does not disclose, teach,
or suggest the starting or stopping of any scrolling of messages, and
Tsuchiya isolates a message while the messages continue to scroll where
isolating a message is not equivalent to freezing the scrolling. Appeal Br.
11. Appellant further contends Tsuchiya still fails to contemplate the
specific input that triggers “the start and stop freezing the workspace
Appeal 2020-006234
Application 14/725,982
6
message,” and the textual input in response to the fixed message plays
absolutely no role in the alleged freezing of the log screen 31. Appeal Br.
11. Appellant further contends that the Examiner’s reliance upon
Appellant’s Specification at paragraph 146 (paragraph 149 of the originally
filed Specification) is improper because Appellant chose to amend the
claims to focus on a specific embodiment (i.e., textual input) as the input
corresponding to an interaction with a message that triggers the freezing or
unfreezing of the message stream. Appeal Br. 12. Appellant also contends
the Examiner’s attempt to read limitations from the Specification into the
claims and broaden the claim language is clearly improper and cannot
support a finding of obviousness. Appeal Br. 12.
The Examiner finds that the Tsuchiya reference does not specifically
teach that the main message log screen portion 31 is frozen, but the
Examiner contends that Tsuchiya still teaches the freezing of a workspace
message stream in response to a user providing textual input to an existing
workspace message. Ans. 3. The Examiner further finds that
while Tsuchiya does not teach the main message stream 31
freezes in response to selection of a message for comment,
Tsuchiya teaches in ¶57 freezing in the selected screen portion
33, of a message of the main message stream 31 in response to
the selection of such a message as part of the action of entering
a comment in text box 32 to the selected message.

Ans. 4. The Examiner further finds “that freezing of a selected workspace
message in a separate screen is reasonably what is meant be freezing a
workspace message stream.” Ans. 5.
We find that the Examiner’s findings are not based upon the broadest
reasonable interpretation of the claimed “freezing” step, but we find that the
Examiner’s findings dissect the claim language, and the Examiner does not
Appeal 2020-006234
Application 14/725,982
7
address the claim as a whole. Because the claimed step of “freezing”
freezes a portion of the selected “workspace message stream,” the Examiner
finds that the Tsuchiya reference teaches or suggests the claimed “freezing,
by the client device, the workspace message stream,” but the Examiner does
not identify how the Tsuchiya reference teaches the “in response to
determining that the user is providing textual input in response to the
existing workspace message to the text input element,” which is the
triggering event for the step of “freezing [of only a portion workspace
message stream].” Although we agree with the Examiner that the freezing
of a portion of the workspace message stream may meet the language of the
“freezing” limitation in the claim, the Examiner does not address the
remainder of the limitations that are performed subsequent to the proffered
freezing a portion and steps performed in response to the freezing step or as
using as a condition precedent or that the scrolling is inhibited.
Appellant argues that the Examiner’s statements directly support
Appellant’s position that the Tsuchiya reference does not teach anything
related to freezing of the message stream in response to determining the user
is providing textual input in response to the existing workspace message to
the text input element. Reply Br. 1. Appellant further argues that the
Examiner’s position “that freezing of a selected workspace message in a
separate screen is reasonably what is meant to be freezing a workspace
message stream” is unsupported by 35 U.S.C. § 103. Reply Br. 1 citing Ans.
5. Appellant further identifies that “the freezing of the message stream stops
Appeal 2020-006234
Application 14/725,982
8
the upward (or downward) scrolling behavior of the message stream.”2
Reply Br. 1. Appellant further argues that while the Tsuchiya reference
discusses isolation of a selected message from log screen 31 to selected
information screen 33, the messages within log screen 31 continue scrolling
of the message stream. Reply Br. 1. Appellant further argues that isolating
a message from log screen 31 in selected information screen 33 is not
reasonably what is meant to be freezing a workspace message stream. Reply
Br. 2. Appellant further argues that the Examiner’s reliance upon paragraph
149 of the Specification is unreasonable. Reply Br. 2–3. We agree with
Appellant that the Examiner’s reliance upon the Specification is an attempt
to broaden the express language of independent claim 1.
Furthermore, the Examiner also relies upon the Anderson reference
for teaching the “freezing” and “upon determining” steps when a “user is
interacting with respect to the existing workspace message” (Final Act. 3–4
citing Anderson ¶¶ 191, 195), the Examiner additionally relies upon the
Tsuchiya reference to teach or suggest the steps of “freezing” and “upon
determining” because Anderson does not teach the trigger event of “freezing

2 Spec. ¶ 80:
when a user interacts with (e.g., hovers a cursor or pointer over,
composes a reply to, provides some active or passive input to,
etc.) an existing message or an existing message thread (e.g.,
message thread 326), the message stream 316 will stop the
upward scrolling behavior while the user is interacting with the
existing message or message thread. Thus, while the user is
composing a reply to a message or message thread, the messages
in message stream 316 will remain (e.g., freezes) in place. Once
the user is no longer interacting with a message or message
thread, message stream 316 can resume scrolling messages as
new messages are generated in chat like fashion.
Appeal 2020-006234
Application 14/725,982
9
. . . in response to determining that the user is providing textual input in
response to the existing workspace message to the text input element” (Final
Act. 5–6 citing ¶¶ 57, 62, 63). We further find that the Anderson reference
teaches freezing of the workspace message stream by placement of the
“scroll position” away from the last message at the time of the new message
is received rather than in response to a text input element. Anderson ¶ 195.
As a result, we agree with Appellant that the Tsuchiya reference does
not teach or suggest a user input that would trigger the freezing of the
automatic scrolling of the log screen 31. Additionally, we find the
Examiner’s alternative reliance upon the Anderson reference to teach or
suggest freezing the scrolling of the screen does not teach an input that
would trigger the freezing of the scrolling of the workspace message stream.
We further find that the Examiner’s statements that the Tsuchiya reference is
only relied upon to teach the specific method of triggering the start and stop
of the freezing of the workspace message (Advisory Act. 2) does not
reasonably interpret the claim language as it relates to the subsequent steps
in the remainder of claim 1. Although the Examiner has identified that the
combination of the Honeyman and Anderson references teaches or suggests
these limitations (Advisory Act. 2), they are not taught with respect to the
specific triggering event and the subsequent state of workspace message
stream. Moreover, we find the Examiner’s findings dissect the claim
language and do not address the invention as a whole. Consequently, we
find the Examiner’s factual findings do not support the Examiner’s ultimate
conclusion of obviousness of illustrative independent claim 1.
Although the Tsuchiya reference teaches freezing a portion of the
workspace message stream and continuing to display the remainder of the
workspace message stream, the Tsuchiya reference does not teach or suggest
Appeal 2020-006234
Application 14/725,982
10
“freezing, by the client device, the workspace message stream in response to
determining that the user is providing textual input in response to the
existing workspace message to the text input element,” as recited in the
language of illustrative independent claim 1. (Emphasis added).
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
As a result, merely freezing a portion of the workspace message
stream is insufficient to meet the language of illustrative independent claim
1 where “determining that the user is providing textual input in response to
the existing workspace message to the text input element” must be
performed and then “determining, by the client device that the user
continues the interacting with the existing workspace message in the
message stream.” Therefore, we find the Examiner has not made the
requisite factual findings to support the ultimate conclusion of obviousness
based upon the prior art references, and the Examiner’s claim interpretation
unreasonably dissects and unreasonably interprets the claimed invention
rather than addressing the claim as a whole.

CONCLUSION
We reverse the Examiner’s obviousness rejections of claims 1, 3–8,
10–15, and 17–25.
Appeal 2020-006234
Application 14/725,982
11
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–8, 10–
15, 17–24
103 Honeyman,
Anderson,
Tsuchiya
1, 3–8, 10–
15, 17–24
25 103 Honeyman,
Anderson,
Tsuchiya, Ishikawa
25
Overall
Outcome
1, 3–8, 10–
15, 17–25

REVERSED