Dropbox, Inc.Download PDFPatent Trials and Appeals BoardDec 16, 20212020006234 (P.T.A.B. Dec. 16, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation