Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
This is a Non-Final Action.
Application 17/571,311 is a continuation reissue of reissue application 16/422,873 which is a continuation reissue of reissue application 15/247,779. All of 17/571,311, 16/422,873 and 15/247,779 are reissues of application 11/205,895 (U.S. Patent No. 8,819,092).
Claims 1-7 were initially pending in the application, which were cancelled in a preliminary amendment. The amendment filed previously on March 13, 2024 contained new claims 8-27.
In the most recent amendment filed October 15, 2025, claims 1-7 have been canceled and claims 28-37 have been added. Claims 28-37 are pending, claims 28 and 31 are independent claims. This amendment has been entered.
Reissue
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 8,819,092 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because it fails to properly identify at least one error being correct by the continuation reissue application. See 37 CFR 1.175 and MPEP § 1414(II)(D)(1). As stated in MPEP § 1414(II)(D)(1), “Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration.”
Examiner notes that the proposed error statement found on page 6 of applicant’s response is also improper. The proposed statement refers to the change from the phrase “resource node” in original claim 1 to “resource system” in new claim 28. The term “resource system” is not found anywhere in the specification. The alleged support provided by the applicant and dependent claims 29 and 30 are directed to the definition of a “resource node’. Thus, applicant is either attempting to introduce new matter (see rejections below) or use the term “resource system” interchangeably with the term “resource node” (which results in duplicate claim issues as discussed below). If the terms were nothing more than interchangeable then the amendment would constitute making no changes to the scope of claim 1. Based on this and the provided error statement there is no error being corrected in reference to the original patent. Examiner notes that the addition of either of dependent claims 29 and 30 could be the basis of a proper error statement.
Claims 28-37 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 28-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In its recent decision, Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (hereinafter “Alice Corp."), the Supreme Court made clear that it applies the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) (Mayo), to analyze claims directed towards laws of nature and abstract ideas. Alice Corp. also establishes that the same analysis applies for all categories of claims (e.g., product and process claims).
When considering subject matter eligibility under 35 U.S.C. 101, the basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I). First, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Second, if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). The two part test provided in Alice Corp. to determine whether a claim directed towards an abstract idea is statutory under § 101 requires an evaluation to determine 2A) whether the claims are directed to an abstract idea and 2B) if an abstract idea is present in the claim, whether the claim amounts to significantly more than the abstract idea itself.
In Step 1, it first noted that Claims 28-37 are directed to a method, which falls in the statutory category of a process. Thus, Step 1 is satisfied.
In Step 2, in particular Step 2A of the § 101 eligibility analysis, a two prong test must be applied when attempting to determine the subject matter eligibility of the claims in question (2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) published in the Federal Register (84 FR 50) on January 7, 2019). Prong one requires a determination of whether the claim “recites” an abstract idea, law of nature, or natural phenomenon. The examiner has determined that the claims are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) because they recite an abstract idea. Specifically, the claims are directed to an abstract idea that falls into the grouping of mental processes (concepts performed in the human mind including observation, evaluation, judgement, or opinion) by reciting making a determination of an organizational structure based on a resource name. Prong two requires a determination of if the claim recites additional elements that integrate the judicial exception into a practical application. Using claim 1 as an example, the claim does not integrate the claimed process into a practical application and thus is still directed to a judicial exception. Specifically, the steps of transmitting a discovery request and receiving information that includes the names for each of the one or more systems (claims 28 and 31) does not constitute integrating the judicial exception into a practical application. Rather, the limitations amount to generally linking the use of a judicial exception to a particular technological environment or field of use, which does not constitute properly integrating a judicial exception to a practical application. Thus, the claims are directed to an abstract idea.
In Step 2B of the §101 eligibility analysis, it is next observed that the claims do not include additional elements or a combination of elements that amount to significantly more than the judicial exception because the additional elements are merely directed to instructions to implement the idea on a computer and/or computer implemented functions that are well-understood, routine, and conventional activities previously known to the art. Using claim 28 as an example, the claims require transmitting a discovery request and receiving information, which are pre-solution activities of merely obtaining preexisting data. The limitations found in the claims requiring “determining”, constitute an evaluation based on received information which is the abstract idea as described above. Examiner notes that the final step in the claims is literally “determining” without actually performing any other action.
Thus, looking at the elements as a combination does not add anything more than the elements analyzed individually. Therefore, the claims do not amount to significantly more than the abstract idea itself. The claims in question are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 28-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not use the term “resource system” or provide any explicit definition for the term. Based on citation of alleged support provided by the applicant and the language of dependent claims 29 and 30 regarding what a “resource system” comprises it has become clear that the applicant is trying to use the term “resource system” interchangeably with the term “resource node”. For example, the language found in dependent claims 29 and 30 for what a “resource system” comprises is found only in the section that is providing an explicit definition for a “resource node” (column 6, lines 28-49 of the ‘092 specification). Thus, the attempted use of the term “resource system” as being somehow different than the term “resource node” (error statement found on page 6 of applicant’s response) constitutes new matter. The examiner strongly recommends only using terminology that actually exists in the specification when drafting claims. Proper correction is required.
Claims 28-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The specification does not use the term “resource system” or provide any explicit definition for the term. Based on citation of alleged support provided by the applicant and the language of dependent claims 29 and 30 regarding what a “resource system” comprises it has become clear that the applicant is trying to use the term “resource system” interchangeably with the term “resource node”. For example, the language found in dependent claims 29 and 30 for what a “resource system” comprises is found only in the section that is providing an explicit definition for a “resource node” (column 6, lines 28-49 of the ‘092 specification). Thus, the attempted use of the term “resource system” as being somehow different than the term “resource node” (error statement found on page 6 of applicant’s response) is indefinite because it is impossible to determine what the metes and bounds of a “resource system” would be that would somehow make it different than a “resource node”. The examiner strongly recommends only using terminology that actually exists in the specification when drafting claims. Proper correction is required.
Claim Objections
Applicant is advised that should claim 28 be found allowable, claim 31 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). As discussed above, the specification does not use the term “resource system” or provide any explicit definition for the term. Based on citation of alleged support provided by the applicant and the language of dependent claims 29 and 30 regarding what a “resource system” comprises it has become clear that the applicant is trying to use the term “resource system” interchangeably with the term “resource node”. For example, the language found in dependent claims 29 and 30 for what a “resource system” comprises is found only in the section that is providing an explicit definition for a “resource node” (column 6, lines 28-49 of the ‘092 specification). The examiner strongly recommends only using terminology that actually exists in the specification when drafting claims. Proper correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 28-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. RE47,411. Although the claims at issue are not identical, they are not patentably distinct from each other because (using claim 1 of RE47,411 and claim 28 of the current application as example) at least the independent claims of the current application are slightly broader versions of the claims of the RE47,411 patent, thus the features of at least the independent claims of the current application can be fully rejected on the grounds of nonstatutory double patenting in view of the claims of the RE47,411 patent.
Claims 28-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-29 of U.S. Patent No. RE48,894 in view of Smith et al. (hereinafter Smith, U.S. Patent Application Publication No. 2004/0181476, as found in the IDS filed January 7, 2022).
Using Claim 31 in the current application as example:
Rejection in view of Claim 8 of RE48,894 and Smith:
31. A method comprising: transmitting, by a resource consumer device, a discovery request to each of a plurality of resource nodes that each have a unique Internet protocol address and, collectively, present a logical representation of a plurality of physical resources;
8. A method, comprising:
Claim 8 does not explicitly disclose transmitting a discovery request to each of a plurality of resource nodes. However, Smith discloses transmitting a discovery request to each of a plurality of resource nodes (paragraphs [0115] and [0116] of Smith).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have combined the teachings of claim 8 of RE48,894 with the teachings of Smith. A motivation to combine the references would be to formulate a complete picture of the resources available including their state and configuration (paragraphs [0115] and [0116] of Smith).
receiving, by the resource consumer device from one or more resource nodes of the plurality of resource nodes, node information that includes a name for each of the one or more resource nodes; and
receiving, at a resource consumer device, node names corresponding to each of a plurality of resource nodes;
determining, by the resource consumer device from the names of each of the one or more resource nodes, an organizational structure of the plurality of resource nodes, the organizational structure being a parallel structure that will provide the resource consumer with access to a first data block of a data set stored on the plurality of physical resources through at least two resource nodes, or a serial structure that will provide the resource consumer with access to the first data block through a first resource node and access to a second data block, which is consecutive with the first data block, of the data set through a second resource node.
determining, using the resource consumer device, an organizational structure of the plurality of resource nodes based on the received node names, the organizational structure being a parallel structure that enables access to a data set through at least two of the plurality of resource nodes or a serial structure that enables access to a first data block of the data set through a first resource node and to a second data block consecutive to the first data block of the data set through a second resource node; and generating, using the resource consumer device, a resource map based at least in part on the organizational structure; and messaging, by the resource consumer device, one or more resource nodes of the plurality of resource nodes about the data set based at least in part on the resource map.
Response to Arguments
Applicant’s arguments filed October 15, 2025 have been fully considered but they are moot in view of the new grounds of rejection presented in this action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA D CAMPBELL whose telephone number is (571)272-4133. The examiner can normally be reached 7:30-4:00 M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D CAMPBELL/Primary Examiner, Art Unit 3992
Conferees:
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992