Dropbox, Inc.

Patent Trials and Appeals Board

Apr 1, 2022

2021000574 (P.T.A.B. Apr. 1, 2022)

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. 16/012,005 06/19/2018 Michael Roeder 381805-301401/P267USC1 2197 136442 7590 04/01/2022 DLA Piper LLP (US) 11911 Freedom Dr. Suite 300 Reston, VA 20190 EXAMINER CHOI, YUK TING ART UNIT PAPER NUMBER 2153 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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 MICHAEL ROEDER, SEAN BEAUSOLEIL, and VERONICA ZHENG ____________________ Appeal 2021 -000574 Application 16/012,0051 Technology Center 2100 ____________________ Before MARC S. HOFF, BETH Z. SHAW, and JOYCE CRAIG, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s invention is a method and system for search and retrieval of messages using a message management service. The service receives criteria from a client to search for messages of interest. The message 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant states that the real party in interest is Dropbox, Inc. Appeal Br. 1. Appeal 2021-000574 Application 16/012,005 2 management service can send one or more initial responses with information descriptive of all or some of the messages that satisfy the search criteria. The service can the provide supplemental responses that include additional information about messages identified in the initial responses. Spec. ¶¶ 6, 7. Claim 1 is reproduced below: 1. A method comprising: receiving, at a server computer, a search query from a client device requesting a search of a corpus of messages for an account with a messaging service provider, wherein the corpus of messages includes messages stored for the account at the messaging service provider; searching, by the server computer, the corpus of messages for the account to identify a set of messages that satisfy the search query; sending, from the server computer, an initial response to the client device, the initial response including information descriptive of at least a first message in the set of messages; identifying, by the server computer, information associated with the initial response, the information identifying a relationship of at least one message in the set of messages to at least one message not in the set of messages; continuing, by the server computer, to search the corpus of messages for the account to identify one or more other messages related to the first message based at least on the identified information associated with the initial response; determining, by the server computer, that the one or more other messages related to the first message exists based on the information associated with the initial response, wherein the one or more other messages are not identified by the search query; and after sending the initial response, automatically sending, by the server computer, a supplemental response to the client device, the supplemental response including supplemental information indicating that the one or more other messages are related to the first message. Appeal 2021-000574 Application 16/012,005 3 The prior art relied upon by the Examiner as evidence is: Name Reference Date Takatsuka US 2005/0076024 A1 Apr. 7, 2005 Wilson US 2008/0033918 A1 Feb. 7, 2008 Glickstein US 2008/0270548 A1 Oct. 30, 2008 Dervan US 2009/0276732 A1 Nov. 5, 2009 Ambrose US 7,945,683 B1 May 17, 2011 Palay US 2013/0218896 A1 Aug. 22, 2013 Roeder US 10,033,668 B2 July 24, 2018 Claims 1-20 are rejected on the grounds of nonstatutory double patenting over claims 1-16 of U.S. Patent No. 10,033,668. Claims 1-9, 12-14, and 17-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Palay and Wilson. Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable over Palay, Wilson, and Dervan. Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable over Palay, Wilson, and Ambrose. Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Palay, Wilson, and Takatsuka. Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable over Palay, Wilson, and Glickstein. Throughout this decision, we refer to the Appeal Brief (“Appeal Br.,” filed Aug. 5, 2020), the Reply Brief (“Reply Br.,” filed Oct. 28, 2020), and the Examiner’s Answer (“Ans.,” mailed Sept. 18, 2020) for their respective details. Appeal 2021-000574 Application 16/012,005 4 ISSUE Does the combination of Palay and Wilson teach or suggest identifying, by the server computer, information associated with an initial response, the information identifying a relationship of at least one message in the set of messages to at least one message not in the set of messages? ANALYSIS Rejection of claims 1-9, 12-14, and 17-20 over Palay and Wilson Claim 1 recites, in pertinent part, “identifying, by the server computer, information associated with the initial response, the information identifying a relationship of at least one message in the set of messages to at least one message not in the set of messages,” as well as “continuing, by the server computer, to search the corpus of messages for the account to identify one or more other messages related to the first message based at least on the identified information associated with the initial response.” Independent claims 9 and 19 recite analogous limitations. Appellant argues that Wilson fails to teach the identification of a relationship of at least one message in the set of messages to at least one message not in the set of messages, as claimed. Reply Br. 3 (emphasis added). Appellant further contends that Wilson does not teach the use of its supplemental data in a subsequent or continuing query, and that Wilson’s predictive search criteria do not correspond to the claimed “continuing . . . to search the corpus of messages for the account to identify one or more other messages related to the first message based at least on the identified information associated with the initial response.” Appeal Br. 8-9. Appeal 2021-000574 Application 16/012,005 5 The Examiner relies on a finding that Wilson’s client server CS “can generate supplemental data,” which the Examiner finds corresponds to the claimed “information identifying a relationship of at least one message in the set of messages to at least one message not in the set of messages.” Final Act. 15; Wilson ¶ 75. Wilson defines “supplemental data” as follows: As referred to herein, the term “supplemental data” is intended to be interpreted broadly and can refer to any suitable data resulting from the execution and/or initiation of a command and generated for communication to a client device. The supplemental data can include or be an invisible or visible portion of command results that is not included in a document in a display format. Further, the supplemental data can include or be compressed data and/or encrypted data. In one example, supplemental data can include search result data based on a search query from a client device. Supplemental data can be tagged or include metadata indicating that the data is not for immediate display by a client device. In one example, supplemental data can be tagged or include metadata indicating that the data is to be stored by a network server. In this example, the supplemental data can be stored by the network server until requested by a client device or deleted by the network server. Exemplary supplemental data includes data files, text files, program files, directory files, and web data. Supplemental data can include an executable including instructions for analyzing command results included in the supplemental data, for analyzing search results in the communicated document, and/or for conducting additional searches based on a command received from a client device. Supplemental data can include data resulting from a database search, such as a database containing web data (e.g., web site data from the Internet). In one example, supplemental data can include data results from a metasearch (i.e., a search combining results from more than one search, with each search typically Appeal 2021-000574 Application 16/012,005 6 being conducted over a different content collection). Supplemental data can include location-related data. Wilson ¶ 28. The Examiner, in equating Wilson’s supplemental data to the “identifying” step of the claimed invention, refers to “identifying supplemental data that are related to location, which is another portion of the results that is not included [in] the first search result in response to the query.” Final Act. 15-16 (emphasis omitted). For the combination of Palay and Wilson to render the invention under appeal obvious, the supplemental data taught by Wilson must “identify[] a relationship of at least one message in the set of messages [i.e., the set in the initial response] to at least one message not in the set of messages,” as independent claim 1 requires. Wilson, quoted supra, may teach that “supplemental data can include or be an invisible or visible portion of command results,” and “ can include search result data based on a search query from a client device,” but we find that Wilson does not explicitly teach supplemental data that identify a relationship between one message (in the set of messages in the initial response) to at least one message not in said set of messages in the initial response. For the Board to infer from Wilson’s language about “any suitable data” that Wilson does teach identifying such a relationship would require unreasonable speculation concerning Wilson’s invention. We find that Wilson does not teach the argued claim limitation concerning identifying information that identifies a relationship of at least one message in the set of messages in the initial response to at least one message not in the initial response. We further find that Wilson, then, also Appeal 2021-000574 Application 16/012,005 7 does not teach continuing to search for one or more other related messages based on such identified information. The Examiner further finds that Wilson teaches “predictive search criteria” based on a first search result that produces a second search result. Ans. 6-7. We do not agree that Wilson’s predictive search criteria correspond to the claimed “searching the corpus of messages to identify one or more other messages related to the first message based on the identified information.” Wilson discloses that its predictive search criteria are “search criteria generated based on search criteria or queries generated by a user” and/or “search results generated from the user search criteria or queries.” Wilson ¶ 29. Neither of these definitions corresponds to continuing to search the corpus of messages to identify one or more other messages related to the first message based on the identified information associated with the initial response. Appeal Br. 9-10. We find that the combination of Palay and Wilson does not teach or suggest all the limitations of independent claims 1, 9, and 19. We do not sustain the Examiner’s § 103 rejection of claims 1-9, 12-14, and 17-20. Claims 10, 11, 15, and 16 Each of these claims depends from independent claim 9, whose rejection over Palay and Wilson we do not sustain, supra. The Examiner does not make findings that Dervan, Ambrose, Takatsuka, and/or Glickstein teach identifying information that identifies a relationship between at least one message in the set of messages in the initial response and at least one message not in said set of messages. Final Act. 20-23. Thus, none of these further references remedies the deficiencies of the combination of Palay and Wilson. Appeal 2021-000574 Application 16/012,005 8 As a result, for the reasons given supra with respect to independent claim 9, we do not sustain the Examiner’s rejection of claim 10 over Palay, Wilson, and Dervan; of claim 11 over Palay, Wilson, and Ambrose; of claim 15 over Palay, Wilson, and Takatsuka; or of claim 16 over Palay, Wilson, and Glickstein. Double Patenting Rejection Claims 1-20 stand rejected on the ground of nonstatutory obviousness-type double patenting over claims 1-16 of U.S. Patent No. 10,033,668. Final Act. 3. Appellant argued only that the rejection be held in abeyance. Appeal Br. 6. The Examiner’s Answer does not include any withdrawal of the rejection. Therefore, we sustain the obviousness-type double patenting rejection of claims 1-20 pro forma. CONCLUSION The combination of Palay and Wilson does not teach or suggest identifying, by the server computer, information associated with an initial response, the information identifying a relationship of at least one message in the set of messages to at least one message not in the set of messages. DECISION SUMMARY The Examiner’s decision to reject claims 1-20 is affirmed. Appeal 2021-000574 Application 16/012,005 9 In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1-20 Nonstatutory Double Patenting US 10,033,668 B2 1-20 1-9, 12-14, 17-20 103 Palay, Wilson 1-9, 12-14, 17-20 10 103 Palay, Wilson, Dervan 10 11 103 Palay, Wilson, Ambrose 11 15 103 Palay, Wilson, Takatsuka 15 16 103 Palay, Wilson, Glickstein 16 Overall Outcome 1-20 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