DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s Remarks, filed May 15th, 2026, has been fully considered and entered. Accordingly, claims 1-20 are pending in the case. Claims 1, 3, 6, 8, 10, 13, 15, 17, and 20 were amended. Claims 1, 8, and 15 are the independent claims.
Claim Rejections - 35 USC § 103
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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tilbury et al. (US 2023/0409521 A1) in view of Shah et al. (US 2020/0204570 A1).
Regarding claim 1, Tilbury teaches a computer-implemented method, comprising operations for:
monitoring a current application configuration of a current application to generate application configuration data based on determining changes from a prior application configuration and the current application configuration (see Tilbury, Paragraphs [0068]-[0069], “FIG. 4 is a flowchart depicting a process that may be carried out in response to a change in one of the identification, property extraction or validation tools in the tools 124. A change to one of these tools may occur, for example, in response to a change in a property extraction policy for a particular file format, addition of a new tool, or in response to updating of an existing tool within the tools 124. … At step 400, the preservation system 100 receives an indication of a change to one of the tools 124.” [An indication of a change to one of the tools may be received (i.e., monitoring a current application configuration of a current application to generate application configuration data based on determining changes from a prior application configuration and the current application configuration).]);
reconfiguring application settings to create one or more rules for preemptive conversion based on the application configuration data and based on a risk data list, wherein the risk data list identifies one or more data files that are at risk of becoming at least one of redundant, obsolete, and trivial (see Tilbury, Paragraphs [0042], [0070]-[0073], “The technical registry 120 includes one or more mappings 126 indicating which of the tools 124 and/or the actions that those tools can perform apply to which of the file formats listed in the file format database 122. … At step 402, the preservation system 100 identifies file formats affected by the change to the tool. For example, the preservation system 100 may identify which entries in the file format database for which properties were extracted or validation was carried out using an older version of the tool. Identifying file formats affected by the change may comprise receiving a selection of file formats affected by the change. For example, a list of affected file formats may be prepared by a technical expert and input to the preservation system 100 at step 402. … At step 404 the preservation system 100 identifies assets affected by the change. … Where an existing identification is identified as being incorrect, the new, corrected, format is saved in metadata and the property and validation processes are repeated using the tools associated with the newly identified format. For files that were incorrectly identified in their metadata, when the correct properties have been extracted, the files may be compared against the user policy, and any necessary migrations performed, as described with reference to step 310 above.” [The new, corrected format may be saved in metadata, and migrations may be performed (i.e., reconfigure application settings) based on mappings (i.e., application configuration data) and based on a list of affected file formats and assets (i.e. risk data list).]);
However, Tilbury does not explicitly teach:
reconfiguring application settings to create one or more rules for preemptive conversion based on the application configuration data and based on a risk data list, wherein the risk data list identifies one or more data files that are at risk of becoming at least one of redundant, obsolete, and trivial;
Shah teaches:
reconfiguring application settings to create one or more rules for preemptive conversion based on the application configuration data and based on a risk data list, wherein the risk data list identifies one or more data files that are at risk of becoming at least one of redundant, obsolete, and trivial (see Shah, Paragraph [0036], “At block 404, the security device checks whether the format of the file, as well as the format of embedded files, if any, are obsolete. For example, the security device may check if the file format is in an obsolete file format list that is retrieved from the network security service provider or maintained by the user of the local computer. If the file format is in the list, the security device may determine that the file format is obsolete. In another example, the security device may send the file format to the cloud or the network security service provider to detect if the file format is obsolete. Responsive to the request from the security device, the network security service provider may check the obsolete file format list and return the result (e.g., obsolete, not obsolete) to the security device.” [The security device may check if the file format is in an obsolete file format list (i.e., risk data list) in order determine if any file formats are obsolete (i.e., create one or more rules for preemptive conversion).]);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Tilbury (teaching automatic preservation) in view of Shah (teaching protection against obsolete file formats) and arrived at a method that incorporates a preemptive conversion. One of ordinary skill in the art would have been motivated to make such a combination for the purposes of preemptively identifying obsolete file formats (see Shah, Paragraph [0005]). In addition, both the references (Tilbury and Shah) teach features that are directed to analogous art and they are directed to the same field of endeavor, such as data processing. The close relation between both the references highly suggests an expectation of success.
The combination of Tilbury, and Shah further teaches:
preemptively converting a data file of the data files in an existing data format to a new data format based on the one or more rules of the reconfigured application settings (see Shah, Paragraph [0038], “At block 405, a message may be sent to the user of the file to warn the user that the file is in an obsolete file format and may be insecure for opening. Options for operations on the file, such as open, delete, quarantine or convert to a new format may also be provided together with the warning message.” [The files may be converted based on file format determined to be obsolete.]);
attempting to verify the conversion by using the reconfigured application settings (see Tilbury, Paragraphs [0040], [0072], “Validation that a migration from one format to another has performed successfully … At step 406, the preservation system 100 identifies the files within the assets identified at step 404. At step 408, the preservation system 100 performs a format identification process on the identified files, to ensure that the file was correctly identified in the metadata associated with that file. Where the existing identification is correct, the preservation system 100 performs property extraction and validation using the updated tool and saves the results to the metadata associated with the file.” [The reconfigured application settings may be validated.]);
in response to determining that the conversion succeeded, receiving a request from a new application to open the data file created in the existing data format; and opening the data file having the new data format; and in response to determining that the conversion failed, sending an error message to request update of server data (see Tilbury, Paragraphs [0040], [0041], [0072], [0073], “Validation that a migration from one format to another has performed successfully … Rendering of content (e.g., to enable a user to interact with the content) … At step 408, the preservation system 100 performs a format identification process on the identified files, to ensure that the file was correctly identified in the metadata associated with that file. Where the existing identification is correct, the preservation system 100 performs property extraction and validation using the updated tool and saves the results to the metadata associated with the file. … Where an existing identification is identified as being incorrect, the new, corrected, format is saved in metadata and the property and validation processes are repeated using the tools associated with the newly identified format. For files that were incorrectly identified in their metadata, when the correct properties have been extracted, the files may be compared against the user policy, and any necessary migrations performed, as described with reference to step 310 above.” [A user may be enabled to interact with the content using an updated tool (i.e., receiving a request from a new application to open a data file based a successful conversion), in which an incorrect identification is determined, and then corrected (i.e., in response to determining that the conversion failed, sending an error message to request update of server data).]).
Regarding claim 2, Tilbury in view of Shah teaches all the limitations of claim 1. Tilbury further teaches:
wherein reconfiguring the application settings comprises creating a mapping between the new application and the existing data format (see Tilbury, Paragraph [0042], “The technical registry 120 includes one or more mappings 126 indicating which of the tools 124 and/or the actions that those tools can perform apply to which of the file formats listed in the file format database 122.” [A mapping may be created between the tools and file formats (i.e., creating a mapping between the new application and the existing data format).]).
Regarding claim 3, Tilbury in view of Shah teaches all the limitations of claim 1. Tilbury further teaches:
wherein the server data comprises criteria, an application list, a data format list, an application and data format structure, an application-data mapping structure, and a user profile (see Tilbury, Paragraphs [0033]-[0035], [0042]-[0043], “The configuration data of the preservation system 100 further comprises data which may be conceptually grouped into a technical registry 120. Generally, the technical registry 120 includes information regarding known file formats and the tools that manage them within the preservation system 100. … The technical registry 120 includes a file format database 122. The file format database 122 comprises a list of all file formats known to the preservation system 100. The file format database may include data that indicates ways in which a particular file format can be identified, e.g., by inspecting the binary content of a file. … The technical registry 120 further includes tools 124, comprising one or more tools for performing actions on files in one or more of the file formats indicated in the file format database. The tools may be stand-alone software tools. An individual tool may be able to perform one or more of the following actions with respect to one or more file formats: … The technical registry 120 includes one or more mappings 126 indicating which of the tools 124 and/or the actions that those tools can perform apply to which of the file formats listed in the file format database 122. … The technical registry 126 may also include one or more predetermined preservation actions 128. The predetermined preservation actions 128 may include indications of preservation actions that may be used with particular file formats and in which circumstances. Users may subscribe to particular predetermined preservation actions. For example, a user may include rules within their user policies to subscribe to one or more of the predetermined preservation actions 128. A plurality of the predetermined preservation actions 128 may be grouped to perform particular migration operations.” [The preservation system (i.e., server data) comprises predetermined preservation actions (i.e., criteria), tools (i.e., application list), file format database (i.e., data format list), technical registry (i.e., application and data format structure), mappings (i.e., application-data format mapping structure), and user policies (i.e., user profile).]).
Regarding claim 4, Tilbury in view of Shah teaches all the limitations of claim 1. Tilbury further teaches:
wherein the application configuration data indicates that a default application has changed (see Tilbury, Paragraphs [0042]-[0043], “The technical registry 120 includes one or more mappings 126 indicating which of the tools 124 and/or the actions that those tools can perform apply to which of the file formats listed in the file format database 122. … a predetermined preservation action may specify conversion of all possible textual documents to Portable Document Format (PDF), specifying all file formats that can be converted to PDF and which tools can be used to do so.” [The mappings may indicate that a default application has changed.]).
Regarding claim 5, Tilbury in view of Shah teaches all the limitations of claim 1. Tilbury further teaches:
wherein the application configuration data indicates that a default data format has changed (see Tilbury, Paragraph [0063], “At a step 300, an indication of a change to the file format database 120 is received. For example, the indication of the change may be detection of the change, or notification of the change. The change may be any change to the file format database 120. For example, the change may be addition of an entry or an update/modification of an existing entry.” [A change to the file format database may be indicated.]).
Regarding claim 6, Tilbury in view of Shah teaches all the limitations of claim 1. Tilbury further teaches:
updating an application and data format structure in accordance with the new application associated with the new data format being added by adding a new row with the new data format and an associated new application that opens the data file in the new data format and showing as deleted the existing data format and the current application that opens the data file in the existing data format (see Tilbury, Paragraphs [0042], [0048], [0068], [0070], “The technical registry 120 includes one or more mappings 126 indicating which of the tools 124 and/or the actions that those tools can perform apply to which of the file formats listed in the file format database 122. … a) New file formats may be added to the file format database 122. For example, as standards develop and new content creation tools are released, new file formats may emerge and these may need adding to the file format database 122.” [The mappings track how the tools or applications are associated with the formats, and file format database stores the file formats.]).
Regarding claim 7, Tilbury in view of Shah teaches all the limitations of claim 1. Tilbury further teaches:
wherein the server data is updated and a new risk data list is generated (see Tilbury, Paragraph [0064], “At step 302, the preservation system 100 may identify file formats affected by the change to the file format database. For example, the preservation system 100 may identify which entries in the file format database have changed and determine the state of those entries prior and subsequent to the change. Identifying file formats affected by the change may comprise receiving a selection of file formats affected by the change. For example, a list of affected file formats may be prepared by a technical expert and input to the preservation system 100 at step 302.” [The preservation system identifies and updates a list of affected file formats (i.e., server data is updated and a new risk data list is generated).]).
Regarding claims 8-20, Tilbury in view of Shah teaches all the limitations of claims 1-7, in method form rather than in computer program product form and system form. Tilbury also discloses a computer program product [0011] and system [0011]. Therefore, the supporting rationale of the rejection to claims 1-7, applies equally as well to those limitations of claims 8-20.
Response to Arguments
Applicant’s Arguments, filed May 15th, 2026 have been fully considered, but are not persuasive.
Applicant argues on page 16 of Applicant's Remarks that the cited references do not teach or suggest “monitoring a current application configuration of a current application to generate application configuration data based on determining changes from a prior application configuration and the current application configuration.” The Examiner respectfully disagrees.
Tilbury discloses in paragraph [0068], “FIG. 4 is a flowchart depicting a process that may be carried out in response to a change in one of the identification, property extraction or validation tools in the tools 124. A change to one of these tools may occur, for example, in response to a change in a property extraction policy for a particular file format, addition of a new tool, or in response to updating of an existing tool within the tools 124.” As shown, Figure 4 shows a process carried out in response to a change for a particular file format, addition of a new tool, or in response to updating of an existing tool, therefore, the system monitors the applications in order to determine if a change has occurred, which is based on the current or existing tools or current and existing application configurations.
Applicant also argues on page 16 of Applicant's Remarks that the cited references do not teach or suggest “reconfiguring application settings to create one or more rules for preemptive conversion based on the application configuration data and based on a risk data list, wherein the risk data list identifies one or more data files that are at risk of becoming at least one of redundant, obsolete, and trivial; and preemptively converting a data file of the data files in an existing data format to a new data format based on the one or more rules of the reconfigured application settings.” The Examiner respectfully disagrees.
Applicant’s Arguments filed May 15th, 2026, have been fully considered, but are moot in light of the new grounds of rejection.
For the above reasons, it is believed that the rejections should be sustained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
1.) McGuinness et al. (US 2021/0342205 A1), which discloses a method and apparatus for predicting hard drive failure.
2.) Singuru et al. (US 2019/0251193 A1), which discloses a method for managing redundant, obsolete, and trivial data.
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUSAM TURKI SAMARA whose telephone number is (571)272-6803. The examiner can normally be reached on Monday - Thursday, Alternate Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Apu Mofiz can be reached on (571)-272-4080. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUSAM TURKI SAMARA/Examiner, Art Unit 2161
/APU M MOFIZ/Supervisory Patent Examiner, Art Unit 2161
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