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 .
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.
DETAILED ACTION
This office action has been issued in response to arguments/amendments filed on 01/07/2026. Claims 27, 33 and 39 are cancelled. Claims 21-26, 28-32, 34-38, and 40 are presented for examination.
Response to Arguments
1. Applicant’s arguments/amendments regarding the rejection of claims 21-26, 28-32, 34-38, and 40, filed on 01/07/2026 as recited in pages 8-11, have been fully considered but arguments are moot because newly added limitation to the claim (s) requires a new ground of rejection necessitated by amendments.
Further, in response to applicant’s argument, in page 10, “nowhere in Crawford is there any disclosure of comparing performance metrics across multiple storage systems, nor of identifying systems that are similar based on such metrics”, examiner respectfully points out that the features upon which applicant argue (i.e., “comparing performance metrics across multiple storage systems”) are not recited in claim 21 as filed.
Although the claims are interpreted in light of the specification, limitations (i.e., “comparing performance metrics across multiple storage systems”) from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, examiner points out that the claimed feature is “identifying one or more storage systems of a fleet of storage systems that have performance metric characteristics that are similar to expected performance metric characteristics of a storage system to be added to the fleet” which is clearly discloses in Crawford, (para. [0041, 0051] and figure 1) that the planning module 402 is configured to determine requirements (in terms of bandwidth, IOPS, capacity, or some other quantifiable measure of resources) for a storage system (an original storage system that does not yet exist but is being planned (i.e. to be added) for build, or an existing storage system. Further, the reference Crawford teaches in (para. [0128]) that the management module 404 is configured to monitor a plurality of performance metrics for the storage system once it is installed and operating. These performance metrics are compared to projected workload behavior over the near-term view that are retrieved from the configuration file 412. Therefore, the rejection is maintained.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims of Patent # 11,8888,46 contains every element of claims of the instant application. Claims of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim. See the claim comparison below.
“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).
Furthermore, the ODP is not the only outstanding rejection and the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent. 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Claim Comparison
Instant Application # 18/419991
US Patent # 11,8888,46
21
A method comprising:
identifying one or more storage systems, of a fleet of storage systems, that have characteristics that are similar to characteristics of a storage system to be added to the fleet;
determining one or more configuration settings of the one or more storage systems; and applying the one or more configuration settings to the storage system based at least in part on the determination.
1
A method comprising:
receiving, by a fleet management service managing a fleet of storage systems, information identifying a storage system that is a storage system to be added to the fleet of storage systems, wherein the information includes one or more system characteristics associated with the storage system to be added; determining, based on the system characteristics associated with the storage system to be added, configuration information for one or more other storage systems in the fleet having system characteristics that are similar to the system characteristics of the storage system to be added;
providing, to the storage system to be added, the configuration information for the one or more other storage systems in the fleet; and
applying one or more configuration settings to the storage system to be added based at least in part upon the configuration information for the one or more other storage systems in the fleet having system characteristics that are similar to the system characteristics of the storage system.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
2. Claims 21-22, 25-26, 29, 31-32, 35, 37-38 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Crawford et al. (US Publication No. 2019/0235765, hereinafter “Crawford”).
Regarding claim 21, Crawford does disclose, a method comprising:
identifying one or more storage systems[[,]] of a fleet of storage systems[[,]] that have performance metric characteristics that are similar to expected performance metric characteristics of a storage system to be added to the fleet (Crawford, (para. [0041, 0051] and figure 1), the planning module 402 is configured to determine requirements (in terms of bandwidth, IOPS, capacity, or some other quantifiable measure of resources) for a storage system (an original storage system that does not yet exist but is being planned (i.e. to be added) for build, or an existing storage system). Moreover, the planningmodule 402 is configured to determine future storage system requirements of the storage system based on future and/or anticipated workload additions and/or deletions, along with future/anticipated changes to existing workloads; (para. [0128]), where the management module 404 is configured to monitor a plurality of performance metrics for the storage system once it is installed and operating. These performance metrics are compared to projected workload behavior over the near term view that are retrieved from the configuration file 412; (para. [0026]), … where one or more networks 104, 106, 108, may represent a cluster of systems commonly referred to as a “cloud”);
determining one or more configuration settings of the one or more storage systems, wherein the one or more configuration settings (Crawford, (para. [0041]), the planning module 402 is configured to determine future storage system requirements of the storage system based on future and/or anticipated workload additions and/or deletions, along with future/anticipated changes to existing workloads) comprise configuration values obtained from the one or more identified storage systems having performance metric characteristics similar to the expected performance metric characteristics of the storage system to be added to the fleet (Crawford, (para. [0119]), … … …, a number of storage systems that will be used, each existing workload at storage system initialization and anticipated performance thereof (using one or more performance metrics to describe the behavior), and each anticipated workload that will initialize after its associated storage system is initialized along with start date and anticipated performance thereof); (para. [0128]), where the management module 404 is configured to monitor a plurality of performance metrics for the storage system once it is installed and operating. These performance metrics are compared to projected workload behavior over the near term view that are retrieved from the configuration file 412); and applying the one or more configuration settings to the storage system based at least in part on the determined configuration of the one or more storage systems determination (Crawford, (para. [0050]), … …. the purchase file 422 includes details about all components of an original storage system after planning for the original storage system has concluded. Moreover, in other approaches, the purchase file 422 may include future/anticipated system components and/or upgrades that will be required to be purchased and installed in the storage system over the forward-looking time period to satisfy the existing and anticipated workloads).
Regarding claim 22, Crawford further disclose, the method of claim 21 further comprising implementing a fleet management service within a cloud services provider (Crawford, (para. [0026]), one or more networks 104, 106, 108, may represent a cluster of systems commonly referred to as a “cloud.” In cloud computing, shared resources, such as processing power, peripherals, software, data, servers, etc., are provided to any system in the cloud in an on-demand relationship, thereby allowing access and distribution of services across many computing systems).
Regarding claim 25, Crawford further disclose, the method of claim 21 wherein: identifying one or more performance characteristics associated with the storage system wherein the configuration information for one or more storage systems that are characterized by similar performance characteristics (Crawford, (para. [0041]), the planning module 402 is configured to determine future storage system requirements of the storage system based on future and/or anticipated workload additions and/or deletions, along with future/anticipated changes to existing workloads; (para. [0119]), … … …, a number of storage systems that will be used, each existing workload at storage system initialization and anticipated performance thereof (using one or more performance metrics to describe the behavior), and each anticipated workload that will initialize after its associated storage system is initialized along with start date and anticipated performance thereof)).
Regarding claim 26, Crawford further disclose discloses, the method of claim 21 wherein: identifying workload types expected to be supported by the storage system wherein the configuration setting or one or more storage systems [[that]] support similar workload types as the workload types expected to be supported by the storage system (Crawford, (para. [0119]), the planning module 402 generates projected workload behavior, which is one or more files, possibly included in the configuration file 412, that describe the expected behavior of the known and anticipated workloads over a near term view and a long term view, the long term view being greater in duration than the near term view. This projected workload behavior may include, but is not limited to, a number of storage systems that will be used, each existing workload at storage system initialization and anticipated performance thereof (using one or more performance metrics to describe the behavior), and each anticipated workload that will initialize after its associated storage system is initialized along with start date and anticipated performance thereof).
Claim 27 is cancelled.
Regarding claim 29, the substance of the claimed invention is similar to that of claim 21. Accordingly, this claim is rejected under the same rationale.
Regarding claim 31, the substance of the claimed invention is similar to that of claim 25. Accordingly, this claim is rejected under the same rationale.
Regarding claim 32, the substance of the claimed invention is similar to that of claim 26. Accordingly, this claim is rejected under the same rationale.
claim 33 is cancelled.
Regarding claim 35, the substance of the claimed invention is similar to that of claim 21. Accordingly, this claim is rejected under the same rationale.
Regarding claim 37, the substance of the claimed invention is similar to that of claim 25. Accordingly, this claim is rejected under the same rationale.
Regarding claim 38, the substance of the claimed invention is similar to that of claim 26. Accordingly, this claim is rejected under the same rationale.
Claim 39 is cancelled.
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 of this title, 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.
3. Claims 23-24, 28, 30, 34, 36, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Crawford et al. (US Publication No. 2019/0235765, hereinafter “Crawford”) in view of Mukherjee et al. (US Publication No. 2017/0250863, hereinafter “Mukherjee”).
Regarding claim 23, Crawford further disclose, the method of claim 2.
Crawford does not explicitly disclose but the analogous art Mukherjee discloses, wherein the fleet management service is implemented within a computing device in a data center that contains the fleet of storage systems (Mukherjee, (para. [0045] and figure 3), … … … a location of the server may be received or identified. … the location may correspond to a physical location within a data center or within a network rack of servers. …).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Crawford by including a computing device in a data center taught by Mukherjee for the advantage of improve the reliability of the configuration data by diversifying the locations of the servers that are in the configuration cluster (Mukherjee, (para. [0046])).
Regarding claim 24, the combination of Crawford-Mukherjee discloses, the method of claim 21 further comprising: identifying one or more system characteristics associated with the storage system wherein the configuration setting for one or more storage systems [[that]] are characterized by similar system characteristics (Mukherjee, (para. [0045] and figure 3), the processing logic may identify a characteristic of the server that is to be added to the distributed file system (block 520). For example, a location of the server may be received or identified. … the location may correspond to a physical location within a data center or within a network rack of servers. …).
Regarding claim 28, the combination of Crawford-Mukherjee discloses, the method of claim 21 wherein the storage system is an unconfigured storage system that is being added to the fleet (Mukherjee, (para. [0014]), when one of the servers receives a request to add a new server to the cluster of servers of the distributed file system, then the configuration data that is stored at each of the servers may be updated to reflect the adding of the new server).
Regarding claim 30, the substance of the claimed invention is similar to that of claim 24. Accordingly, this claim is rejected under the same rationale.
Regarding claim 34, the substance of the claimed invention is similar to that of claim 28. Accordingly, this claim is rejected under the same rationale.
Regarding claim 36, the substance of the claimed invention is similar to that of claim 24. Accordingly, this claim is rejected under the same rationale.
Regarding claim 40, the substance of the claimed invention is similar to that of claim 28. Accordingly, this claim is rejected under the same rationale.
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 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 MORSHED MEHEDI whose telephone number is (571) 270-7640. The examiner can normally be reached on M - F, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Linglan Edwards can be reach on (571) 270-5440. The fax number for the organization where this application or proceeding is assigned is (571) 273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from their Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (In USA or Canada) or 571-272-1000.
/MORSHED MEHEDI/Primary Examiner, Art Unit 2408