Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jul 7, 2020

2019002589 (P.T.A.B. Jul. 7, 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.
14/296,450 06/04/2014 Akash J. Sagar 329613-US-DIV 3454
39254 7590 07/07/2020
Barta, Jones & Foley, P.C.
(Patent Group - Microsoft Corporation)
3308 Preston Road
#350-161
Plano, TX 75093
EXAMINER
OBERLY, VAN HONG
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
docket@bjfip.com
usdocket@microsoft.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte AKASH J. SAGAR, RICHARD Y. CHUNG,
and RAYMOND E. ENDRES1
_____________

Appeal 2019-002589
Application 14/296,450
Technology Center 2100
______________

Before JOSEPH L. DIXON, JOHN A. EVANS, and
JOYCE CRAIG, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1, 2, 4–9, and 11–20, all claims on
appeal. Appeal Br. 3. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicants” as defined in
37 C.F.R. § 1.42(a). The Appeal Brief identifies Microsoft Technology
Licensing, LLC, as the real party in interest. Appeal Br. 1.
Appeal 2019-002589
Application 14/296,450

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INVENTION
The invention is directed to a system to manage a file synchronization
environment. See Abstract. Claims 1, 8, and 15 are independent. Claim 1,
reproduced below, is illustrative of the invention.
1. A method performed on at least one computing device of
a cloud computing environment, the method comprising:
first receiving, by the cloud computing environment from
a first device, a first request to synchronize first data on the first
device to the cloud computing environment, the first request
including a first etag;
sending, by the cloud computing environment to the first
device in response to the first request, an indication that the first
request is denied;
sending, by the cloud computing environment to the first
device subsequent to sending the indication that the first request
is denied, an updated etag;
uploading, by the cloud computing environment from the
first device subsequent to sending the updated etag, at least a
portion of the first data from the first device to the cloud
computing environment.

PRIOR ART
Name Reference Date
Novak US 6, 393,419 B1 May 21, 2002
Davis US 2009/0024827 A1 Jan. 22, 2009
Cairns US 2011/0087690 A1 Apr. 14, 2011

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REJECTIONS2 AT ISSUE3
1. Claims 1, 2, 4–6, 8, 9, 11–13, and 15–194 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Cairns and Davis. Final Act.
3–9.
2. Claims 7, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cairns, Davis, and Novak. Final Act. 10–11.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejections.
CLAIMS 1, 2, 4–6, 8, 9, 11–13, AND 15–19:
OBVIOUSNESS OVER CAIRNS AND DAVIS.
Claim 1, the sole independent claim, recites, inter alia:
first receiving, by the cloud computing environment from a first
device, a first request to synchronize first data on the first

2 The present application is being examined under the pre-AIA first to invent
provisions. Final Act 2.
3 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
June 13, 2018, the Reply Brief (“Reply Br.”) filed February 11, 2019, the
Final Office Action (“Final Act.”) mailed November 24, 2017, the
Examiner’s Answer mailed December 10, 2018, and the Specification
(“Spec.”) filed June 4, 2014.
4 Each claim is discussed in the body of the rejection, but only Claims 1, 2,
and 4–6 are listed in the header of the rejection. We find the omission
harmless error.
Appeal 2019-002589
Application 14/296,450

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device to the cloud computing environment, the first request
including a first etag.
Claim 1. Cairns discloses a request from a client to a cloud-based server to
store a file on the server, the request including a hash value, the Examiner
finds this disclosure teaches the claimed limitation. Final Act. 3–4 (citing
Cairns ¶¶ 18–20).
Appellant contends hash values, as taught by Cairns (and Davis), are
not equivalent to the claimed etags. Appeal Br. 14. Appellant argues, unlike
the claimed etag, a hash value is determined by the data subject to the hash
function. Id. Appellant argues etags “are used to effectively keep track of
the syncs from various member computing devices of a synchronization
environment.” Id. (quoting Spec., ¶ 7). However, Appellant argues, the
value of an etag is not determined by the data corresponding to a sync event.
Rather, when created, an etag may be left uninitialized in an invalid state, or
may be initialized, typically to a value of zero. Id. (citing Spec., ¶ 43).
The Examiner concludes “etags, as claimed, can be reasonably and
broadly interpreted as a value that accompanies a request to synchronize data
to a cloud environment.” Ans. 4. The Examiner finds “etags, are used to
effectively keep track of the syncs from various member computing devices
of a synchronization environment.” Ans. 5 (citing Spec., 5). The Examiner
finds “Cairns teaches a sync request and an associated hash value that is
used to keep track of syncs from various members of the cloud computing
platform.” Id. (citing Cairns, ¶ 18). In view thereof, the Examiner finds a
hash equivalently teaches an etag. Id.
Appellant contends the Specification discloses hash values in the
context of hashing files. Appeal Br. 15 (citing Spec., ¶¶ 45, 49, 52, 78, 79,
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and 100). Appellant argues the Specification clearly distinguishes file hash
values from etags. We agree.
We find the Specification distinguishes a hash value from an etag. In
disagreement with the Examiner, we find the hash values of Cairns and/or
Davis fail to teach or suggest the claimed etags. In view of the foregoing,
we decline to sustain the rejection of Claims 1, 2, 4–6, 8, 9, 11–13, and 15–
19 under 35 U.S.C. § 103.
CLAIMS 7, 14, AND 20: OBVIOUSNESS OVER CAIRNS, DAVIS, AND NOVAK.
The Examiner does not apply Novak to teach the etag limitation. See
Ans. 5.
In view of the foregoing, we decline to sustain the rejection of Claims
7, 14, and 20 under 35 U.S.C. § 103.

CONCLUSION5
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 8,
9, 11–13,
15–19
103 Cairns, Davis 1, 2, 4–6, 8,
9, 11–13,
15–19
7, 14, 20 103 Cairns, Davis,
Novak
7, 14, 20

5 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellants’ further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”). We, therefore, decline to reach Appellant’s contentions
that Cairns is not prior art against the present application.

Appeal 2019-002589
Application 14/296,450

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Overall 1, 2, 4–9,
and 11–20

REVERSED