DETAILED ACTION
1. Claims 1-24 were pending in this application for reissue of US Patent 10,719,261 (hereinafter “the '261 patent”) issued from application no. 16/138,569 (hereinafter “the '569 application”). Claims 1-18 are patented claims. Claims 19-24 are new claims added in this reissue application. This Office action is responsive to amendments and arguments filed on August 20, 2025 in response (“the Response”) to the Final Office action issued on March 21, 2025. In the Response, Applicant added the limitations of claims 4-6 to independent claims 1, 13, 18, 19 and cancelled claims 4-6. Claim 1-3 and 7-24 are pending.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior or Concurrent Proceedings
3. 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 the ‘261 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
4. 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.
Response to Amendments/Arguments
Claim objections – 37 CFR 1.173
5. Because changes to claim 13 are still not in accordance with 37 CFR 1.173, claim objections are maintained.
Claim rejections – 35 USC 251 and 35 USC 112
6. Claim rejections under 35 USC 251 and 112 made in the last Office Action are withdrawn in view of the amendments.
Claim rejection – 35 USC 103
7. Applicant’s argument that Calhoun does not teach the limitations of claim 4, which were moved to claim 1 in the Response, have been considered but they are not persuasive. At 2:11-23, the specification of the ‘261 patent discloses “The system may comprise a stored at least one link, for example a set of links of different types. The link or at least one of the links may comprise or represent an instruction to proceed from one of the actions to another of the actions. At least one of the links may comprise or represent instruction to proceed from one of the actions to another of the actions subject to at least one condition. The at least one condition may comprise or represent an operation, for example a logical operation, and/or be dependent on an output or an outcome of the operation. The at least one operation may comprise at least one ofan And, Or, If-Then, Nor, Xor, Nand or any other suitable operation.” On paragraph [0042], Calhoun discloses a conditional link (i.e., “instruction to proceed from one of the actions to another of the actions subject to at least one condition”) disclosed in the specification of the ‘261. On paragraph [0045], Calhoun discloses an unconditional link (i.e., “instruction to proceed from one of the actions to another of the actions”). Thus, Calhoun clearly teaches “a set of links of different types” of claim 1. In FIGs. 5 and 6, Calhoun further discloses graphical representation of links as dotted arrows linking elements of workflow.
Claim Objections - 37 CFR § 1.173
8. 37 CFR 1.173 (d) states:
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c) ). Matter added by reissue on compact discs must be preceded with "<U>" and end with "</U>" to properly identify the material being added.
Claim amendments are objected to because Applicant has used strike-through to indicate matter to be omitted in claim 13. Appropriate correction is required.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 9 is 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.
Claim 9 recite the limitation “the remote source.” There’s insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
11. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
12. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
13. Claims 1-3 and 7-24 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 2018/0321830 (“Calhoun) in view of US Pat. 7,475,203 (“Petrillo”).
14. With respect to claim 1, Calhoun discloses a method [for providing at least one of erasure of data from, or diagnosis of at least one condition of, a device, the method] comprising:
providing a stored set of actions (see FIG.2, Activity 112), [wherein the stored set of actions includes at least one of:
a) at least one erasure action that includes sending data or instructions to a storage device that includes a memory to delete or overwrite data stored in at least a region of the memory, or
b) at least one diagnosis action to determine at least one property of the device;
selecting actions from the stored set of actions and linking the actions to generate a sequence of actions;] and
outputting (see FIG. 5, sequence of actions are displayed on the output screen), storing (see FIG. 5) or performing the generated sequence of actions, wherein performing the sequence of actions (this is an alternate limitation not required when one other alternate limitation is taught) comprises performing at least one of the actions in dependence or based on data representative of: at least one property of the device, or a customer or client or business preference or requirement, or a regulatory requirement,
wherein a user interface is configured to display graphical representations of actions of the stored set of actions (see FIG. 5),
wherein the user interface and a processor are responsive to at least one of movement or insertion of the graphical representations of actions of the stored set of actions so as to form a linked sequence of actions (see FIGs 5 and 6, actions are linked with connectors 516; see also paragraph [0073] “FIG. 6 illustrates an example of an admin adding a new workflow …”) and
wherein the user interface is further configured to display graphical representations of links of a stored set of links, and based on user input to at least one of insert or move at least some of the graphical representations of the links within at least one window, thereby to link at least some of the actions (see FIGs 4, 5, and 6, actions are linked with connectors 516; see also paragraph [0073] “FIG. 6 illustrates an example of an admin adding a new workflow …”).
wherein the stored set of links further comprises a set of links of different types (see Calhoun, paragraphs [0042]-[0045], Calhoun discloses conditional and unconditional links to the next action), and the linking comprises selecting a graphical representation of at least one link from the set of links of different types to link at least two of said selected actions (see FIGs 5, 6 and paragraphs [0066]-[0078]), wherein the stored set of links includes at least graphical representations of:,
a link providing a representation or instruction to proceed from one of the selected actions to another of the selected actions (see Calhoun, paragraphs [0042]-[0045], unconditional execution of the next action or workflow); and
a link providing a represents or instruction to proceed from one of the selected actions to another of the selected actions subject to an output or outcome of at least one logical operation (see Calhoun, paragraphs [0042]-[0045], conditional execution of the next action).
However, Calhoun does not specifically disclose that the actions include an erasure action or a diagnosis action (i.e., limitations shown in square brackets in italic font). On the other hand, Petrillo discloses methods and systems for enabling non-destructive erasure of data that include a step of
providing a stored set of actions wherein the stored set of actions includes at least one of:
a) at least one erasure action that includes sending data or instructions to a storage device that includes a memory to delete or overwrite data stored in at least a region of the memory (Petrillo, 4:55-67; see also Fig. 3), or
b) at least one diagnosis action to determine at least one property of the device;
selecting actions from the stored set of actions and linking the actions to generate a sequence of actions (this is an alternate limitation).
It would have been obvious to one of ordinary skill in the art to use Calhoun’s Screen- based workflow configuration and execution platform to implement Petrillo’s system for enabling non-destructive data erasure to configure and manage workflow associated with identifying storage system to erased and installation and execution of data erasure for selected storage systems to be able to easily adapt to modifications and changes to the systems and processes. Calhoun discloses that conventional systems require hard coding to create and modify screens and conditions governing task behavior (see Calhoun, paragraph [0003]-[0004]). Calhoun’s platform overcomes the disadvantages of conventional workflow programming (Calhoun, paragraph [0006]). Also, combining prior art elements according to known methods (i.e., using Calhoun’s platform as intended to create workflow system for non-destructive data erasure system of Petrillo) to yield predictable results (i.e., Petrillo’s non-destructive data erasure system implemented using Calhoun’s screen-based workflow configuration and execution platform) is obvious under KSR v Teleflex.
15. With respect to claims 13, 18, and 19, see the rejection of claim 1 above, Calhoun and Petrillo disclose a system that comprises a processor (see Calhoun, FIGs. 1-19) recited in claim 13. Computer readable storage medium of claim 18 is also disclosed by Calhoun (see for example, claim 47 and its dependent claims).
16. With respect to claim 2, Calhoun and Petrillo disclose a method according to claim 1, wherein the user interface is configured to, based on user input, at least one of insert or move at least some of the graphical representations of the actions within at least one window (see Calhoun, FIGs. 5 and 6).
17. With respect to claim 3, Calhoun and Petrillo disclose a method according to claim 2, wherein the user interface is configured to display graphical representations of actions of the stored set of actions, and based on user input to insert or move at least some of the graphical representations of the actions within at least one window (see Calhoun, FIGs. 5 and 6).
18. With respect to claim 7, Calhoun and Petrillo disclose a method, according to claim 1, comprising generating the sequence of actions to be executable to perform a desired erasure procedure (see Petrillo, 4:55-67) or a desired diagnostic procedure.
19. With respect to claim 8, Calhoun and Petrillo disclose a method, according to claim 7, wherein generating the executable sequence of actions comprises transmitting an executable program or dataset to a further apparatus (see Petrillo, FIG. 3, 310).
20. With respect to claim 9, Calhoun and Petrillo disclose a method, according to claim 1, comprising obtaining from a remote source the data representative of at least one property of the device (see Petrillo, figures 4, 6, and 7), or a customer or client or business preference or requirement, or a regulatory requirement.
21. With respect to claim 10, Calhoun and Petrillo disclose a method according to claim 1, wherein the erasure action consists of at least one of a file overwriting procedure, a data overwriting procedure (Petrillo, 4:62-64), and a cryptographic erasure procedure.
22. With respect to claim 11, Calhoun and Petrillo disclose a method according to claim 1, wherein the device consists of at least one of a portable device, phone, a smartphone, a tablet, a laptop computer (Petrillo, 3:58-61), a desktop computer (Petrillo, 3:15-45), a portable electronic device, a music device, and a video device.
23. With respect to claim 12, Calhoun and Petrillo disclose a method according to claim 1, wherein the memory consists of at least one of a Self-encrypting Drive (SED), a Hard Disk Drive (HDD), a Solid State Drive (SSD), Non- Volatile Memory, flash memory, NAND flash memory, Random Access Memory (RAM), 3D Cross Point, Re Ram, and Phase Change Memory (Petrillo, 3:42-45, 62-65).
24. With respect to claim 14, Calhoun and Petrillo disclose a system, according to claim 13, comprising:
a stored set of actions, wherein the stored set of actions includes at least one of
a) at least one erasure action that includes sending data or instructions to a storage device that includes a memory to delete or overwrite data stored in at least a region of the memory (Petrillo, 5:11-36), or
b) at least one diagnosis action to determine at least one property of the device; and
the user interface configured to enable a user to select a plurality of actions from the stored set of actions and to link the selected actions to produce the sequence of actions.
25. With respect to claim 15, Calhoun and Petrillo disclose a system, according to claim 13, wherein the processing resource is configured to generate a sequence of actions to be executable to perform a desired erasure procedure (Petrillo, 5:11-36) or a desired diagnostic procedure.
26. With respect to claim 16, Calhoun and Petrillo disclose a system, according to claim 15, wherein generating the executable sequence of actions comprises transmitting an executable program or dataset to a further apparatus (Petrillo, FIG. 3, 320 and 4:42-67).
27. With respect to claim 17, Calhoun and Petrillo disclose a system, according to claim 13, wherein the processing resource is configured to obtain from a remote source the data representative of at least one property of the device (Petrillo, FIGs. 4, 6, and 7), or a customer or client or business preference or requirement, or a regulatory requirement.
28. With respect to claim 20, Calhoun and Petrillo disclose the method according to claim 19, wherein the user interface is configured to, based on user input, at least one of insert at least some of the graphical icon representations of the actions within at least one window (Calhoun, FIGs, 5 and 6).
29. With respect to claim 21, Calhoun and Petrillo disclose the method of claim 20, wherein the user interface is configured to display graphical icon representations of actions of the stored set of actions, and based on user input to a dropdown menu (see Calhoun, FIG. 5).
30. With respect to claim 22, Calhoun and Petrillo disclose the method of claim 19, wherein the sequence of the diagnosis actions corresponding to the displayed graphical icon representations of actions of the stored set of actions are automatically ordered (see Calhoun, FIG. 5).
31. With respect to claim 23, Calhoun and Petrillo disclose the method of claim 19, wherein one or more of the graphical icon representations of actions represent classes or generic action types (see Calhoun, paragraph [0087]).
32. With respect to claim 24, Calhoun and Petrillo disclose the method of claim 23 wherein the one or more graphical icon representations are further configurable (see Calhoun, FIGs, 14-16).
Conclusion
33. All claims are identical to, patentably indistinct from, or have unity of invention with the claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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 Woo H Choi whose telephone number is (571) 272-4179. The examiner can normally be reached on weekdays between 9:00 am to 5:00 pm.
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, Hetul Patel can be reached on 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Woo H. Choi/
Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/ /H.B.P/Primary Examiner, Art Unit 3992 Hetul Patel Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights