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 .
This office action is in response to communication from applicant received on January 21, 2026.
Response to Amendment
Applicant's submission filed on January 21, 2026 has been entered. Claim 23 has been added. Claims 2-23 are pending in the current application. Claims 2-22 are rejected herein. Claim 23 is objected to.
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 1-19 of U.S. Patent No. 11,733,900 contains every element of claims 2-22 of the instant application and as such anticipates claims 2-22 of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claims 2-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,733,900. Although the claims at issue are not identical, they are not patentably distinct from each other because the teachings of claims 2-22 of the instant application are a broader version of the teachings of claims 1-19 of U.S. Patent No. 11,733,900, and thus are not patentably distinct from one another as the teachings of claims 2-22 of the instant application are essentially present in the teachings of claim 1-19 of U.S. Patent No. 11,733,900.
For example, the teachings of claims 2, 4, 12, 14 and 21 of the instant application are a broader version of the teachings of claims 1, 10 and 19 of U.S. Patent No. 11,733,900. Therefore, the teachings of claims 2, 4, 12, 14 and 21 of the instant application are present in the teachings of claims 1, 10 and 19 of U.S. Patent No. 11,733,900 without patentable distinction.
The teachings of claims 3 and 13 of the instant application are present in the teachings of claims 2 and 11 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claims 5 and 15 of the instant application are present in the teachings of claims 3 and 12 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claims 6 and 16 of the instant application are present in the teachings of claims 4 and 13 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claims 7 and 17 of the instant application are present in the teachings of claims 5 and 14 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claims 8 and 18 of the instant application are present in the teachings of claims 6 and 15 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claim 9 of the instant application are present in the teachings of claims 7 and 16 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claim 10 of the instant application are present in the teachings of claims 8 and 17 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claims 19 and 22 of the instant application are present in the teachings of claims 7, 16, 8 and 17 of U.S. Patent No. 11,733,900, without patentable distinction.
The teachings of claims 11 and 20 of the instant application are present in the teachings of claims 9 and 18 of U.S. Patent No. 11,733,900, without patentable distinction.
For the reasons provided, although the claims at issue are not identical, they are not patentably distinct from each other.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 2-5, 12-15 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vijayakumari Rajendran Nair et al. (Hereinafter Vijayakumari Rajendran Nair, U.S. Publication No. 2015/0363125.).
Regarding claim 2, Vijayakumari Rajendran Nair teaches:
A method for managing data in a storage system, the method comprising:
determining that a storage drive of the storage system is operating in a first mode (See [0058] “if the source data container is opened in a read-only mode or a shared read mode that only allows read access,” The first mode corresponds to the read-only mode.);
selecting, by the storage system, a first data transfer mode or a second data transfer mode from among a plurality of data transfer modes for movement of data, based on one or more predetermined factors (See Figure 2D, B213 “Based on a mode in which the data container was opened, use direct copy or point in time copy mode to generate a token”. See [0058] “if the source data container is opened in a read-only mode or a shared read mode that only allows read access, then the source data container cannot changed while that state remains unchanged and a direct copy mode is used, as described below in detail, otherwise, a point-in-time copy mode is used.” See Figure 2D, B213-B221. See Figure 2E, B244 and B246. See Figure 2F, B258, B260 and B264.);
based on selecting the first data transfer mode for movement of the data, copying a first data unit from the storage drive operating in the first mode to a logical or physical drive in the first data transfer mode according to a first management policy from among one or more management policies, the first mode of the storage drive being a read-only mode (See [0058] “if the source data container is opened in a read-only mode or a shared read mode that only allows read access, then the source data container cannot changed while that state remains unchanged and a direct copy mode is used, as described below in detail, otherwise, a point-in-time copy mode is used.” See Figure 2D, B213. See Figure 2E, B244 and B246. See Figure 2F, B258, B262 and B264. See [0030] “A copy-offload request may be received from one or more of clients 104 to copy certain data containers from a source location to a destination location.” See [0033]. See abstract and [0062]-[0063]. The first management policy corresponds to the policy used for the read-only mode (i.e. first mode), in which the first data transfer mode corresponds to the direct copy mode.); and
based on selecting the second data transfer mode, writing a second data unit from the storage drive operating in the read-only mode to the logical or physical drive or writing the data unit to the logical or physical drive according to a second management policy from among the one or more management policies (See [0058] “if the source data container is opened in a read-only mode or a shared read” See Figure 2E, B244 “Open source data container in a desired mode (Read or Read and Delete Mode (i.e. shared mode)). The second management policy corresponds to the policy used for the shared read mode. See Figure 2D, B213. See Figure 2F, B258. See [0025] “methods and systems for executing a copy-offload operation are provided. The method determines if content of a source data container cannot be changed based on a mode in which the source data container is opened, to copy the source data container from a source location to a destination location. A direct copy mode is used for generating a token for the copy-offload operation, without taking a point in time image of the data container, when the content cannot be changed.” See [0056] “FIG. 2C shows a high level system for executing a copy-offload operation using the direct copy mode, according to one aspect. Source data container 201A is managed by a source node 208.1 described above with respect to FIGS. 2A-2B and then copied to a destination data container 201B, managed by a destination node 208.2 (also shown in FIG. 2A), as described below with respect to the process flow of FIG. 2D-2I.” See [0058] “if the source data container is opened in a read-only mode or a shared read mode that only allows read access, then the source data container cannot changed while that state remains unchanged and a direct copy mode is used, as described below in detail, otherwise, a point-in-time copy mode is used.” See Figure 2D, B219 and B221. See Figure 2F, B256, B268, B262 and B264. See [0012] “The machine executable code further uses a direct copy mode for generating the token for the offload read operation, without taking a point in time image of the source data container, when the content cannot be changed based on a mode in which the source data container is opened;” See [0074] “FIG. 2H shows a process 282 for performing a write portion of a copy-offload operation (maybe referred to as “write offload”), according to one aspect.” See Figure 2H, B292 and B294. When a source data container is in a read-only mode, including a shared read mode, data is written from the source data container to a destination data container (i.e. storage drive.) using a direct copy mode. The second management policy corresponds to the policy used for the shared read mode. See Figure 2D, B213. See Figure 2F, B258.).
Regarding claim 3, Vijayakumari Rajendran Nair teaches:
The method of claim 2, further comprising copying a region within the storage drive comprising the first data unit to the logical or physical drive (See Figure 2D, B221. See Figure 2F, B262 and B264.) based on a request for the first data unit (See Figure 2D, B211. See Figure 2F, B256. See [0012] “The machine executable code further uses a direct copy mode for generating the token for the offload read operation, without taking a point in time image of the source data container, when the content cannot be changed based on a mode in which the source data container is opened;”).
Regarding claim 4, Vijayakumari Rajendran Nair teaches:
The method of claim 2,
wherein, for the second management policy, one or more data units is moved based on a read or write request (See [0058] “if the source data container is opened in a read-only mode or a shared read mode that only allows read access, then the source data container cannot changed while that state remains unchanged and a direct copy mode is used, as described below in detail, otherwise, a point-in-time copy mode is used.” See Figure 2D, B221. See Figure 2F, B256, B262 and B264. See [0012] “The machine executable code further uses a direct copy mode for generating the token for the offload read operation, without taking a point in time image of the source data container, when the content cannot be changed based on a mode in which the source data container is opened;”).
Regarding claim 5, Vijayakumari Rajendran Nair teaches:
The method of claim 4, wherein, based on the first data unit being copied from the storage drive to the logical or physical drive as a result of a read operation, or based on the second data unit being written to the logical or physical drive as a result of a write operation to the storage drive (See [0012] “The machine executable code further uses a direct copy mode for generating the token for the offload read operation”), the first data unit or the second data unit is recorded in an emergency table as moved to the logical or physical drive (See [0030] “In response to the client request, the token manager 124 generates a token, which is a representation of the data that is being copied at any given time. The token manager 124 uses a data structure 125 to track the tokens that are generated by the token manager 124.”).
Claim 12 and claim 21 are rejected for the same reasons as claim 2. Claim 13 is rejected for the same reasons as claim 3. Claim 14 is rejected for the same reasons as claim 2 and claim 4. Claim 15 is rejected for the same reasons as claim 5.
Claim Rejections - 35 USC § 103
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.
Claims 6-11, 16-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Vijayakumari Rajendran Nair in view of McAlister et al. (Hereinafter McAlister, U.S. Publication No. 2016/0210205).
Regarding claim 6, McAlister teaches:
The method of claim 5, additionally comprising redirecting another read or write to a data unit in the emergency table to the logical or physical drive (See [0056] “BLRM in such an embodiment will intercept all I/O requests and send those requests to the logical volume, which in turn can split the requests across multiple block storage volumes.” I/O requests are intercepted/redirected to the BLRM to sends the I/O requests to the logical volume which can split/redirect the requests to multiple storage volumes.).
It 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 to combine the copy-offload methods of Vijayakumari Rajendran Nair with the failover and recovery methods of McAlister to prevent data loss and maintain operational efficiency if the system experiences device failure.
Regarding claim 7, McAlister teaches:
The method of claim 6, additionally comprising, based on determining that data units in the storage drive are moved to the logical or physical drive, replacing the storage drive with the logical or physical drive as a storage drive (See [0073] “If the secondary replica cannot communicate with the primary replica, and the replicas were synchronized (e.g., had the same GI value), the monitoring component can issue a command to promote the secondary replica to the new primary replica 716.” After the data is replicated to the secondary replica, and the secondary replica cannot communicate with the primary replica, the secondary replica replaces the primary replica.).
Regarding claim 8, McAlister teaches:
The method of claim 7, wherein the determining that the data units in the storage drive are moved comprises comparing a list of moved data units on the emergency table with a list of data units in the storage drive, or in determining that a table that indicates that the data units are moved (See [0060] “BLRM utilizes generation identifiers (“GIs”) to identify generations of replicated data. BLRM uses this mechanism to determine whether two nodes are in fact members of the same replica pair, as opposed to two nodes that were connected accidentally. GIs also can be used to determine the direction of background re-synchronization, if necessary, and determine whether partial or full re-synchronization is needed.” See [0070] “If the secondary replica confirms that the current GI is the same as the last known GI of the primary replica, and the secondary replica confirms the promotion request, the state can transition to a P_ONLY state 608, until a new secondary is instantiated and fully synchronized with the new primary, at which time the state can transition back to IN_SYNC 604.” See [0073] “If the secondary replica cannot communicate with the primary replica, and the replicas were synchronized (e.g., had the same GI value), the monitoring component can issue a command to promote the secondary replica to the new primary replica 716.” See [0080] “If so, the monitoring component causes the secondary replica to be promoted to be the new primary replica, if the previous state of the database was in IN_SYNC and if the current GI of the secondary replica is same as last known GI of the primary replica.” Generation identifiers (GI) that identify generations of replicated data may be compared to determine if data was moved/replicated to a secondary replica device.).
Regarding claim 9, McAlister teaches:
The method of claim 2, wherein the storage drive is configured to operate in the first mode based on a threshold (See [0065] “For example, P can be in an IN_SYNC state when both P and S are up and can communicate with each other, where all writes are synchronously written between P and S.” See [0070] “If, within a period of time such as T_failover seconds, the monitoring component is able to re-establish communications with the primary replica, the state can return to IN_SYNC 604. If the monitor is not able to communicate with the primary replica for at least T_failover seconds, the monitoring component can decide to promote the secondary replica to the new primary.” The primary replica may operate in an IN_SYNC mode based on a threshold of T_failover seconds.).
Regarding claim 10, McAlister teaches:
The method of claim 9, wherein the threshold is determined by one or more of: a raw-media error rate, a number of erase cycles for a portion of a storage media, and a product lifespan threshold being exceeded (See [0065] “For example, P can be in an IN_SYNC state when both P and S are up and can communicate with each other, where all writes are synchronously written between P and S.” See [0070] “If, within a period of time such as T_failover seconds, the monitoring component is able to re-establish communications with the primary replica, the state can return to IN_SYNC 604. If the monitor is not able to communicate with the primary replica for at least T_failover seconds, the monitoring component can decide to promote the secondary replica to the new primary.” The primary replica may operate in an IN_SYNC mode based on a threshold of T_failover seconds. T_failover seconds corresponds to the claimed product lifespan threshold.).
Regarding claim 11, McAlister teaches:
The method of claim 2, wherein the movement of data by the storage system is determined based on a storage policy comprising one or more of: a minimum throughput requirement, a minimum bandwidth requirement, a persistency requirement, a RAID level requirement, and a parity level requirement (See [0018] “Each instance can run a kernel that has a block-level replication mechanism (BLRM) kernel module installed for managing all input and output (I/O) operations for the data instance. All reads and writes can be executed at a primary replica, with the block-level replication mechanism replicating the information synchronously with the secondary replica.” See [0073] “In this example, the primary and secondary replicas are provisioned, connected, and synchronized 702.” See [0065] “For example, P can be in an IN_SYNC state when both P and S are up and can communicate with each other, where all writes are synchronously written between P and S.” Data movement (i.e. writes/replication) is based on persistency requirements, in which persistency requirements may correspond to the states/modes that permit data replication (i.e. IN_SYNC state(s).).
Claim 16 is rejected for the same reasons as claim 6. Claim 17 is rejected for the same reasons as claim 7. Claim 18 is rejected for the same reasons as claim 8. Claim 19 and claim 22 are rejected for the same reasons as claim 9 and claim 10. Claim 20 is rejected for the same reasons as claim 11.
Allowable Subject Matter
Claim 23 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed January 21, 2026 in regard to the amendments filed to all previous claims have been fully considered but are not persuasive. Applicant’s representative submitted that the amendments to the independent claims were not taught in the cited art. Examiner respectfully disagrees, as such amendments were taught in the prior art and are rejected herein (see rejection of independent claims). No prior art has been found for claim 23.
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 MICHAEL L WESTBROOK whose telephone number is (571)270-5028. The examiner can normally be reached Mon-Fri 9am-5pm.
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, Reginald Bragdon can be reached on (571) 272-4204. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL L WESTBROOK/Examiner, Art Unit 2139
/REGINALD G BRAGDON/Supervisory Patent Examiner, Art Unit 2139
Prosecution Insights