GOOGLE LLC

Patent Trials and Appeals BoardAug 28, 2020

15807891 - (D) (P.T.A.B. Aug. 28, 2020)

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. 15/807,891 11/09/2017 Michael Sorvillo 25832.2837 (L2837C) 5237 101198 7590 08/28/2020 LOWENSTEIN SANDLER LLP / Google Patent Docket Administrator One Lowenstein Drive Roseland, NJ 07068 EXAMINER CHEUNG, EDDY ART UNIT PAPER NUMBER 2165 NOTIFICATION DATE DELIVERY MODE 08/28/2020 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): patents@lowenstein.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MICHAEL SORVILLO and MANDY RICHAU SLADDEN ________________ Appeal 2019-003100 Application 15/807,891 Technology Center 2100 ________________ Before RICHARD M. LEBOVITZ, JASON V. MORGAN, and JOHN A. EVANS, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 21–40, which constitute all the claims pending in this application. Claims 1–20 are canceled. Amend. After Final 2 (Oct. 8, 2018). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 Google LLC. Appeal Br. 3. Appeal 2019-003100 Application 15/807,891 2 Summary Of The Disclosure Appellant’s claimed subject matter relates to responding “to a request to access a file stored in a memory of a computing device [by] identifying a context in which the access to the file is being requested” so that “one or more computer files that at least partially match the context” can be identified to generate and display the files as “selectable by a user.” Abstract. Representative Claim (Key Limitations Emphasized And Bracketing Added) 21. A method implemented by a processor in response to instructions stored on a non-transitory computer readable medium, the method comprising: [1] receiving a file access request message indicating a request to select one or more files; [2] in response to receiving the file access request message, identifying file request context information associated with the request [3] such that the file request context information is unavailable to external systems; identifying one or more candidate files based on the file request context information; identifying one or more candidate user contacts based on the file request context information, wherein each candidate user is associated with a communication that includes at least one of the one or more candidate files; generating a display portion of a user interface for selecting the one or more files, the display portion including a representation of at least one of the one or more candidate files and a representation of at least one of the one or more candidate user contacts; and outputting the display portion for display to a user. Appeal 2019-003100 Application 15/807,891 3 The Examiner’s rejections and cited references The Examiner rejects claims 21–40 under 35 U.S.C. § 103 as being unpatentable over Donneau-Golencer et al. (US 2010/0180200 A1; published July 15, 2010) (“Donneau-Golencer”), Gupta et al. (US 2013/ 0007198 A1; published Jan. 3, 2013) (“Gupta”), Brezina et al. (US 2009/ 0030872 A1; published Jan. 29, 2009) (“Brezina”). Final Act. 7–35. ANALYSIS In rejecting claim 21 as obvious, the Examiner finds that Donneau- Golencer’s context-driven triggering of document attachment suggestions teaches or suggests both (1) “receiving a file access request message indicating a request to select one or more files” and (2) “in response to receiving the file access request message, identifying file request context information associated with the request.” See Final Act. 8–9 (citing Donneau-Golencer ¶¶ 17–20, 23, Fig. 2); Adv. Act. 2 (Oct. 31, 2018); Ans. 4–5. The Examiner’s findings accord with Donneau-Golencer’s teaching that watcher 104 “tracks what the user is doing on his desktop (e.g., creating a presentation, writing an email, etc.)” to identify context that “may be considered as a ‘trigger’ that indicates when it might be appropriate to make a suggestion to the user” (Donneau-Golencer ¶ 18) such as attaching a document to a presentation or email (id. ¶ 20). Thus, the Donneau-Golencer disclosure of a user taking an action, such as creating a presentation, teaches or suggests receiving a file access request message (a trigger) indicating a request to select one or more files (indicating it might be appropriate to make a suggestion to the user of files to attach). In other words, when the Appeal 2019-003100 Application 15/807,891 4 presentation is created by the user, the system sees the presentation creation as a trigger or request to select files relevant to the presentation. Donneau- Golencer further teaches that suggestion generator 108 uses additional information (e.g., the content of the slide the user is working on or the analysis of documents the user most recently accessed) to determine the particular suggestions to make (e.g., spreadsheet information relevant to the current slide). See id. ¶¶ 20, 23. Thus, Donneau-Golencer further teaches or suggests in response to receiving the file access request message (i.e., in response to the trigger indicating it might be appropriate to make a suggestion), identifying file request context information associated with the request (e.g., identifying the content of the slide the user is working on by analyzing documents the user most recently accessed). Appellant contends the Examiner erred in finding Donneau-Golencer teaches or suggests recitation [1] of claim 21 because “[t]here is no mention of ‘receiving a file access request message’ in Donneau-Golencer.” Appeal Br. 6. Appellant argues that “Donneau-Golencer requires invasively constantly monitoring all of a user’s activity, potentially making inconvenient recommendations when the user is not interested in attaching a file, and says nothing in particular about making recommendations when the user actually wants to attach a file.” Id. at 7; see Reply Br. 3. Appellant’s arguments are not commensurate with the scope of claim 21 and thus are not persuasive of Examiner error. Neither the claim recitations nor the Specification limit the claimed file access request message to an explicit message that shows that “the user actually wants to attach file” and that ensures that recommendations or suggestions are not “inconvenient.” To be sure, the Specification provides an example of “a user Appeal 2019-003100 Application 15/807,891 5 selecting an ‘add attachment’ icon” to explicitly indicate that the user wants to select a file to attach. Spec. ¶ 61; see id. ¶ 37, Fig. 4. But this example does not define the claimed “file access request message” as precluding an implicit indication that the user may want to select a file to attach. However, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Thus, the recitation of “receiving a file access request message indicating a request to select one or more files” encompasses the Donneau- Golencer’s tracking of user activities to determine if activity such as creating a presentation or writing an email means “it might be appropriate to make a suggestion to the user.” Donneau-Golencer ¶ 18. Therefore, we agree with the Examiner that Donneau-Golencer teaches or suggests recitation [1] of claim 21. Final Act. 8. Appellant contends the Examiner erred in finding Donneau-Golencer teaches or suggests recitation [2] of claim 21 because “Donneau-Golencer would only detect the user activity [(i.e., the ‘trigger’)] based on evaluating the previously identified context, thus Donneau-Golencer cannot be said to be ‘identifying file request context information associated with the request’ ‘in response to receiving the file access request message.’” Appeal Br. 8. That is, Appellant argues [b]ecause Donneah-Golencer . . . teaches that the ‘content information’ was ‘identified and gathered’ in order to automatically trigger suggestions, and because the ‘file access request message’ . . . is only received after the suggestions are triggered, then identifying the ‘context information’ cannot be interpreted as being “in response to receiving the file access request message.” Appeal 2019-003100 Application 15/807,891 6 Reply Br. 4. In short, Appellant argues claim 21 recites identifying file request information in response to receiving a file access request message rather than triggering a file access request response. Appellant’s arguments are not persuasive because the context disclosed in Donneau-Golencer includes multiple facets, some of which trigger a file access request message and some of which affect how the file access request message is handled. For example, Donneau-Golencer teaches that watcher 104 tracks that it might be appropriate to make a suggestion when the user is creating a presentation. See Donneau-Golencer ¶¶ 18, 20. But Donneau-Golencer also teaches that suggestion generator 108 receives information from watcher 104 (i.e., receives a file access request message) and “may suggest one or more spreadsheets containing information that is relevant to the slide.” Id. ¶ 20. Thus, in Donneau-Golencer some context (the user creating a presentation) triggers identifying additional context (information needed to determine what is relevant to the slide) to make a suggestion (e.g., relevant spreadsheets). Therefore, we agree with the Examiner that Donneau-Golencer teaches or suggests recitation [2] of claim 21. Final Act. 9. The Examiner further finds that Donneau-Golencer “does not explicitly teach identifying file request context information associated with the request such that the file request context information is unavailable to external systems.” Final Act. 10. Thus, the Examiner relies on Gupta to teach or suggest this additional feature (limitation [3] of claim 21). Id. at 10–11 (citing Gupta ¶¶ 22–25); Ans. 5–6. Appellant contends the Examiner in relying on the combined teachings of Donneau-Golencer and Gupta to teach or suggest recitation [3] Appeal 2019-003100 Application 15/807,891 7 of claim 21 because Donneau-Golencer’s described technology “is implemented in a local user device,” but Gupta’s described technology “is implemented in a server and the concept of a current workflow is irrelevant since the technology described therein is based on an expressly received request.” Appeal Br. 8; Reply Br. 4–5. Appellant’s arguments are not persuasive because, as Appellant acknowledges, Donneau-Golencer is implemented in a local user device. This is sufficient to show that Donneau-Golencer alone suggests that the file request context information (i.e., information from the user’s workflow on the local system) is unavailable to external systems. See also Donneau- Golencer ¶ 17 (documents indexed and processed may be retrieved locally). Because Gupta is not needed to cure the posited deficiency in Donneau- Golencer, Appellant’s arguments do not show error in the Examiner’s reliance on the combination of Donneau-Golencer and Gupta to teach or suggest recitation [3] of claim 21. Final Act. 10–12. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 21, and claims 22–40, which Appellant does not argue separately. Appeal Br. 8. Appeal 2019-003100 Application 15/807,891 8 CONCLUSION Claims Rejected 35 U.S.C. § References Affirmed Reversed 21–40 103 Donneau-Golencer, Gupta, Brezina 21–40 TIME PERIOD FOR RESPONSE No time period for taking 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