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 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, hereinafter “the ‘092 Patent”).
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 May 19, 2026, claims 28-30 have been canceled and claim 38 has been added. Claims 31-38 are pending, claims 31 and 38 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).
Content of Reissue Applications
The applicant has failed to satisfy the requirements of 37 CFR 1.173(c) in the amendment filed May 19, 2026:
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
Applicant has not provided a proper explanation of support for the claim amendments made. The examiner recommends providing an explicit citation and explanation of support for each and every limitation of the new claims separately to avoid the same error in the future.
Appropriate correction is required for the current amendment and all future amendments must also conform to this practice. Failure to conform to these practices for all previous amendments and any future amendments will result in the response being deemed as noncompliant.
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 12 of applicant’s most recent response is also improper. The proposed statement refers to the change from the phrase “resource node” in original claim 1 to “remote object” in new claim 38. The term “remote object” is not found anywhere in the specification, additionally the specification explicitly defines that a resource does not include data objects, “On the other hand, the term "resource," as used herein does not include a file or other data object because data objects are not fungible.” (column 6, lines 1-3 of the ‘092 Patent). The applicant has not provided appropriate support for either change. Thus, applicant is apparently attempting to introduce new matter (see rejections below). Based on this and the provided error statement there is no error being corrected in reference to the original patent.
Additionally, as explained below in reference to the rejection in view of impermissible recapture, the error on which the reissue is based on according to the declaration is not an error upon which reissue can be based because it amounts to impermissible recapture.
Claims 31-38 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 31-38 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 31-38 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 31 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 31 and 38) 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 31 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 § 251
Claim 38 is rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(A)) In the instant case and by way of the amendment, it appears Applicant seeks to broaden independent claim 1 with the addition of independent claim 38 in this reissue at least by deleting/omitting the patent claim language that was argued to make the claims allowable requiring that the steps of the method, including the “determining” step, are performed “by the resource consumer device”.
(Step 2: MPEP 1412.02(B)) The record of the prior 11/205,895 application prosecution indicates that in the Appeal Brief filed in March 26, 2010, the applicant/appellant argued in an attempt to overcome the applied prior art references (Frank et al. and Smith et al.) that none of the references suggest that a resource consumer device determines the organization structure from any names, “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 device 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 device 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” as recited in claim 1.
The teachings of paragraph [0040] and Figure 10 describe that the storage system 300 implements mirroring by assigning the same IP address to two or more partitions; however, there is nothing that would suggest that a resource consumer device determines the organizational structure from any names. In fact, the mirrored structure implemented by storage system 300 of Frank may be completely unknown to a requesting device. For example, a requesting device may simply send a read request with an IP address of IP9 to the storage system 300. The storage system 300 may respond with data from either partition 310C, 320C, or 330; however the requesting device may be completely ignorant of the fact that each of these partitions may provide the requested information.
(pages 15 and 16 of Appeal Brief filed 3/26/2010 in application 11/205,895, emphasis added)
The argument discussed above was effective in convincing the PTAB to reverse the examiner’s rejection of application claim 62 (patent claim 1).
Appellants argue independent claim 62 is improperly rejected. App. Br. 15-16. Appellants assert the combination of Frank and Smith does not teach “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 ... or a serial structure,” as recited in claim 62. App. Br. 15. Specifically, Appellants argue Frank merely describes associating a name with partitions, providing that name to obtain an IP address, and mirroring data by providing mirrored partitions with the same IP address. App. Br. 15 (quoting Frank || 30, 32, and 42). Appellants conclude that nothing in Frank “suggests] that a resource consumer device determines the organization structure from any names,” and that the structure of Frank’s storage system may not even be known to the requesting device. App. Br. 15-16.
The Examiner again refers to paragraph 41 of Frank, which provides a description of Figure 10, and finds Frank discloses using both parallel (mirrored information) and serial (no redundancy) structures. Ans. 22-23.
While we agree with the Examiner that Frank shows a system using both parallel and serial structures to provide access to data, we agree with Appellants that “having names and an organization structure does not teach determining the organization structure from the names.” Reply 5. Specifically, we do not see support for the Examiner’s finding that Frank teaches “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,” as recited in claim 62. Therefore, on the record before us, we do not sustain the Examiner’s rejection of claim 62.
(page 8 of Patent Board Decision mailed 9/25/2013 in application 11/205,895, emphasis added)
Thus, as previously stated the “determining, by the resource consumer device, from the names…” (emphasis added) limitation is considered to be a surrender-generating limitation.
Subject matter is previously surrendered during the prosecution of the original application by reliance on an argument/statement made by applicant that a limitation of the claim(s) defines over the art. Additionally, Reissue recapture applies to related family member applications (See MBO Laboratories, Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 94 USPQ2d 1598 at 1606 (Fed. Cir. Apr. 12, 2010) (a more limited recapture rule would undercut “the rule against recapture’s public-reliance rationale” and a patent family’s entire prosecution history should be reviewed “when applying both the rule against recapture and prosecution history estoppel.”)). It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application and the patent family's prosecution for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant case the omission of the surrender-generating limitations requiring “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 device 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 device 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” (emphasis added) equates to attempting to recapture surrendered subject matter and thus by omission some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It must be determined whether the reissue claim omits or broadens any limitation that was added/argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it includes other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu , 258 F.3d at 1371-72, 59 USPQ2d at 1600. Simply stated, claim 38 completely omit the language requiring “determining, by the resource consumer device...” as argued to make the claim allowable and instead state that the determining step is performed by an “electrical device”. As argued by the applicant, the “resource consumer device” is explicitly the requesting device used by the consumer, however a “electrical device” could be any electrical device capable of processing including a server device which would be broader than the argued limitation that overcame the rejection. Thus, the current representation of claim 38 amounts to impermissible recapture due to the omission of surrender-generating limitations. Additionally, reissue claim 38 is not materially narrowed in other respects that relate to the surrendered subject matter to avoid said impermissible recapture.
Therefore, impermissible recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
Claim 38 is rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: The specification does not use the term “remote object” or provide any explicit definition for the term. The applicant has made no attempt to provide support for said amended language. It would appear that the applicant is trying to use the term “remote object” in place of the term “resource node” to somehow change the definition of said term. Unfortunately, there is no discussion in the specification of performing the claimed invention using “remote object” or “remote objects” as presented in claim 38. In fact, the specification explicitly states that “objects” remote or otherwise are not included in the “resource(s)” being discussed in the ‘092 Patent, “On the other hand, the term "resource," as used herein does not include a file or other data object because data objects are not fungible.” (column 6, lines 1-3 of the ‘092 Patent). The examiner strongly recommends only using terminology that actually exists in the specification in the context it is used in the specification when drafting claims. Proper correction is required.
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.
Claim 38 is 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 “remote object” or provide any explicit definition for the term. The applicant has made no attempt to provide support for said amended language. It would appear that the applicant is trying to use the term “remote object” in place of the term “resource node” to somehow change the definition of said term. Unfortunately, there is no discussion in the specification of performing the claimed invention using “remote object” or “remote objects” as presented in claim 38. In fact, the specification explicitly states that “objects” remote or otherwise are not included in the “resource(s)” being discussed in the ‘092 Patent, “On the other hand, the term "resource," as used herein does not include a file or other data object because data objects are not fungible.” (column 6, lines 1-3 of the ‘092 Patent). The examiner strongly recommends only using terminology that actually exists in the specification in the context it is used 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 31-38 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 31 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 31-38 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 May 19, 2026 have been fully considered but they are not persuasive.
Regarding arguments to the rejection under 35 U.S.C. 101:
Applicant argues that the “organizational structure” as claimed is more than a structure of organization. More specifically, applicant argues that the organizational structure is a structure that is formed by the resource consumer device and then interacted with by resource consumers. Additionally, Applicant argues that the examiner truncates the “determining” limitation and has not properly addressed it.
Examiner respectfully disagrees. First, the examiner does not remotely agree with or understand the arguments made on page 6 in reference to the claims being interpreted as a structure of an organization, which could apply as broadly as the structure of business entity. The examiner has never taken this position and thus the arguments appear to have no bearing on the current proceeding.
The claim does not require the “organizational structure” to be formed by the resource consumer device in any way. The claim requires “determining” of a preexisting organizational structure from the resource node names which the specification explicitly states, “Resource node names provide one or more pieces of information to remote consumers including identification or group membership information, logical position information within a disaggregated resource, partial role information, or other information that a resource consumer might need to access a disaggregated resource.” (column 12, lines 51-56 of the ‘092 Patent, emphasis added). In other words, the node names that are claimed and discussed in the specification provide the explicit information to “determine” what the preexisting organizational structure is. As stated in the rejection 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. The applicant’s assertion that the “resource consumer device” is responsible for “forming an organization structure” is a misrepresentation of what is disclosed in the specification and is simply not correct. The portion of the specification the applicant is referring to is provided below:
At step 910, the manager establishes an organizational structure for the resource nodes. The organization structure provides definitions for the roles and responsibilities of each resource node. Once the roles and responsibilities are established, a manager creates a corresponding set of resource node information and resource maps for deployment into the resource nodes. Resource consumers use knowledge of the rules for forming the organizational structure in order to convert resource node information in a useable map of the disaggregated resource or determine if the disaggregated resource has coherency. In a preferred embodiment, the organizational structure comprises a hierarchy based on group types. In an especially preferred embodiment, the hierarchy groups include mirrors, stripes, composites, or spans. Other contemplated hierarchical structures include trees, or directed graphs. Non-hierarchical structures are also contemplated including flat sequential lists with no preferred ordering of resource nodes.
(column 19, line 43-60 of the ‘092 Patent, emphasis added)
As can be seen in the citation above, the “manager”, and most certainly not the “resource consumer”, establishes (forms) the organizational structure. The resource consumer is not “forming the organizational structure” in this passage as alleged by the arguments, rather the resource consumer is using the “knowledge of the rules for forming the organizational structure” to use the information provided (“resource node names”) to determine the preexisting organizational structure previously established by the manager. There is no discussion of any kind of the “resource consumer” establishing or forming the organization structure in the claim language or the specification, thus the arguments do not remotely apply to the claimed language or for that matter the ‘092 Patent specification. Claims 31 and 38 also have no requirement for interaction with the organizational structure, rather the claims merely detail that the preexisting organizational structure that was previously established by the manager, as discussed above, “will provide” access. The claims do not ever positively recite said access, rather they allude to the capability of the preexisting structure for providing said access, which has no impact on the rejection presented above. Additionally, Examiner once again notes that the final step in the claims is literally “determining” without actually performing any other action.
Regarding the truncation of the limitations in the rejection, the examiner possesses the knowledge that the applicant has a copy of the claims in question. For example, when discussing the “determining” limitation the rejection states the following, “The limitations found in the claims requiring “determining”” is not merely directed to the term “determining”, rather it is very clearly directed to the limitation requiring “determining” which in claim 31 for example is as follows, “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.”
Regarding arguments directed to the reissue oath/declaration:
Applicant argues that the proposed error statement would be proper.
Examiner respectfully disagrees. As discussed in the rejection above, the proposed error statement is not proper.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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
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