DETAILED ACTION
Claims 1-20 are currently pending in the application. Claims 1-20 are original claims to patent US 11,232,006 B2 to Legtchenko et al. (herein Legtchenko).
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 .
Reissue Applications
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.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,232,006 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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 material to patentability of the claims under consideration in this reissue application.
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/22/2025 is considered by the examiner in accordance with 37 CFR 1.97, 37 CFR 1.98, MPEP 609, and MPEP 1406, to the fullest extent of the items presented including any concise explanation. Documents not meeting particular criteria are lined through and not considered.
Claim Objections
Claims 1-20 are objected to because of the following informalities in the amendment of 12/29/2025: (1) the amendment does not provide a proper parenthetical expression as required by 37 CFR 1.173(b)(2) or a proper status as required by 37 CFR 1.173(c); (2) the amendment does not preserve the claim numbering of the patent as required by 37 CFR 1.173(e); (3) the amendment does not make changes relative to the patent as required by 37 CFR 1.173(g); (4) the amendment does not make changes by marking as required by 37 CFR 1.173(d); and (5) the amendment does not provide proper support from the disclosure for the changes as required by 37 CFR 1.173(c). Appropriate correction is required.
First, with regard to claims 5-9, the amendment of 12/29/2025 does not use a proper parenthetical expression for the claims. The claim language recited by the amendment for claims 5-9 is not the claim language provided by the original claims 5-9 of patent 11,232,006 and therefore cannot be listed as “(original)”.
Second, with regard to claims 5-9, the amendment of 12/29/2025 does not preserve the claim numbering of the patent. Amendment claim 5 appears to be the language of patent claim 8 (identical except for the listed dependency). Amendment claim 6 appears to be patent claim 9 (identical except for the listed dependency). Amendment claim 7 appears to be patent claim 5 (identical except for the listed dependency). Amendment claim 8 appears to be patent claim 6 (identical except for the listed dependency). Amendment claim 9 appears to be patent claim 7 (identical except for the listed dependency).
Third, with regard to claims 5-9, the amendment of 12/29/2025 does not make changes relative to the patent. For example, if the intention is to change the text of patented claim 5 to the text of patented claim 8, after the claim number and the parenthetical expression (changed from “original” to “amended”), an amendment would enclose in brackets all the text of patented claim 5 and recite all the text of patented claim 8 underlined.
Fourth, with regard to claims 1-20, the amendment of 12/29/2025 does not make changes using the proper markings for a reissue application/proceeding (see 37 CFR 1.173(d) and MPEP 1453). Specifically, claims 1, 10, 12, and 18 delete claim language using strike-through markings instead of enclosing the material in brackets. Also, claims 1, 10, and 18 use double brackets for deletion, instead of single brackets. Claims 5-9 make changes with no markings at all.
Fifth, with regard to claims 1-20, the provided citations of support do not address the newly added claim language: “an application programming interface (API) configured to present the modular overall switch to a control function as a single unified switch, independent of the individual switches and the individual switches respective configuration settings” (claim 1); “presenting the modular overall switch to a control function as a single unified switch, independent of the individual switches and the individual switches respective configuration settings” (claim 10); and “an application programming interface (API) configured to present the modular overall switch to a control function as a single unified switch, independent of the individual switches and the individual switches respective configuration settings” (claim 18).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claims 1-20 are 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 original disclosure does not provide support for the newly added independent claim 1 limitation: “an application programming interface (API) configured to present the modular overall switch to a control function as a single unified switch, independent of the individual switches and the individual switches respective configuration settings”. Independent claims 10 and 18 suffer from similar defects. In particular, the original disclosure does not show, “independent of the individual switches and the individual switches respective configuration settings” in conjunction with “an application programming interface (API) configured to present the modular overall switch to a control function as a single unified switch”.
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.
Claims 1-9 and 18-20 are 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.
Independent claim 1 recites “a control function” in the newly added limitation (second to last line of the claim). However, “a control function” is already referenced by the claim. Proper antecedent basis requires the newly added limitation to refer to “the control function”. Claim 18 suffers from a similar defect. Claims 2-9 and 19-20 do not correct the defect. The claim language of the newly added limitations will be interpreted as “the control function”.
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 (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.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 7,275,103 B1 to Thrasher et al. (herein Thrasher) in view of US 2013/0212134 A1 to S et al. (herein S).
Claim 1
Thrasher discloses a server system comprising (Thrasher: figure 1; column 5, lines 44-60):
a plurality of processing devices (Thrasher: figure 1, elements 302) arranged to provide a service (Thrasher: figure 1, elements 320; column 1, lines 45-52, services) to a client system via an external network (Thrasher: column 5, lines 44-66, “… One or more end-user platforms (not shown) may access the SAN, typically via a LAN or WAN connection to one or more of the hosts 302”); and
a storage fabric (Thrasher: figure 1, element 318; column 5, lines 44-60) that couples the plurality of processing devices to a respective storage device of a plurality of storage devices that store data relating to the service (Thrasher: figure 1, elements 302 connected to elements 304; column 1, lines 38-55), the storage fabric comprising:
a modular overall switch built from a plurality of individual switches (Thrasher: figures 1 and 3A, element 308 made of switches; column 10, lines 5-8, “When zoning is implemented on a SAN fabric, the switches (e.g. switch 308)”), the plurality of individual switches having a respective configuration setting that determine which of the plurality of processing devices are allocated to use which of the plurality of storage devices in providing the service to the client system (Thrasher: column 10, lines 2-11, individual switches using tables to determine zone providing a path between host and storage; column 9, lines 62-63; figure 3A);
a control function that detects a demand change of the service and dynamically reconfigures topology of the modular overall switch based on the detected demand change (Thrasher: column 4, lines 3-15; column 7, lines 4-13; column 8, line 49 to column 9, line 19, “…If the utilization reaches or passes a certain percentage of the total throughput possible for the path or a component of the path (i.e. reaches or passes a high utilization threshold), and an alternative path with lower utilization is found, storage path monitor 300 may switch usage to the alternative path …”); and
an application programming interface (API) configured to … the modular overall switch to a control function as a single unified switch (Thrasher: column 12, lines 4-8; column 13, lines 48-62; column 24, lines 4-22, users/administrators using “… a collection of devices to be viewed as one entity for activities such as reporting, configuring, and monitoring …”).
Thrasher does not explicitly state “… present the modular overall switch … independent of the individual switches and the individual switches respective configuration settings”. S demonstrates that it was known before the effective filing date of the claimed invention to present a device independent of the individual switches and the individual switches respective configuration settings (S: figure 2; [0013]-[0015], [0019]-[0020], showing a simplified representation of nodes of “devices”, such that the nodes are presented as independent entities made of sub-devices and configurations, for example “primordial pool 204” shown as a simplified node of other components) to be presented to other processes/functions such as a discovery process (S: [0014], [0019]-[0020]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the single switch representation of Thrasher as being presented as an independent entity made of switches and their configurations, to be presented to the other management elements such as a control function, as suggested by the teachings of S. This implementation would have been obvious because one of ordinary skill in the art would have found: presentations of tree structures with nodes offer clear organization in presenting large or complicated information/relationships (S: figure 2); the implementation of is an application of a known element/technique yielding a predictable result using an acceptable piece of prior art; and both Thrasher and S are directed to SAN technology.
Claim 2
Thrasher and S show the server system of claim 1, wherein the plurality of components are divided into independent domains, whereby a given item of data is duplicated across two or more of the plurality of storage devices in different ones of the independent domains, the independent domains being divided such that if one component of the plurality of components is unavailable in one of the independent domains, the given item of data is still accessible from a storage device in another of the independent domains (Thrasher: column 5, lines 61-65, at least RAID – Redundant Array of Independent Disks).
Claim 3
Thrasher and S show the server system of claim 2, wherein the one component of the plurality of components is unavailable due to at least one of: failure, downtime, planned maintenance, or other demand (column 5, lines 61-65, at least RAID – Redundant Array of Independent Disks).
Claim 4
Thrasher and S show the server system of claim 1, wherein the control function is an in-band control function implemented on at least one of the plurality of components (Thrasher: column 6, lines 64-67, host in the system).
Claim 5
Thrasher and S show the server system of claim 4, further comprising: an API that discovers a topology of the storage fabric, including an internal topology of the modular overall switch, and provides the topology to the control function (Thrasher: column 13, lines 48-62; column 12, lines 50-61; column 14, lines 51-54; column 15, lines 34-44).
Claim 6
Thrasher and S show the server system of claim 5, wherein the plurality of individual switches are arranged to be controllable by the control function via the API (Thrasher: column 12, lines 4-8; column 13, lines 48-62).
Claim 7
Thrasher and S show the server system of claim 5, wherein the API controls the overall modular switch as if it is a single switch (Thrasher: column 24, lines 4-22, “… group utility for creating and managing logical groups of SAN objects including … interconnects, other groups, and other objects … viewed as one entity for activities such as reporting, configuring …”).
Claim 8
Thrasher and S show the server system of claim 1, wherein the control function is an out-of-band management function running on a server management computer separate from the plurality of components (Thrasher: column 6, line 64 to column 7, line 3, external system).
Claim 9
Thrasher and S show the server system of claim 8, wherein the modular overall switch built from the plurality of individual switches further comprises:
connectors between the plurality of individual switches having a mechanical design enabling the out-of-band management function to determine a relative physical orientation of the plurality of individual switches and based thereon to report a physical location of an unavailable switch (Thrasher: column 15, lines 34-58, discovering and tracking physical connections and locations using the physical/mechanical connectors; column 14, line 67 to column 15, line 2; column 15, lines 6-8).
Claim 10
The limitations of claim 10 correspond to the limitations of claim 1 and as such are rejected in a corresponding manner.
Claim 11
The limitations of claim 11 correspond to the limitations of claim 2 and as such are rejected in a corresponding manner.
Claim 12
The limitations of claim 12 correspond to the limitations of claim 3 and as such are rejected in a corresponding manner.
Claim 13
The limitations of claim 13 correspond to the limitations of claim 4 and as such are rejected in a corresponding manner.
Claim 14
The limitations of claim 14 correspond to the limitations of claim 8 and as such are rejected in a corresponding manner.
Claim 15
The limitations of claim 15 correspond to the limitations of claim 9 and as such are rejected in a corresponding manner.
Claim 16
The limitations of claim 16 correspond to the limitations of claim 5 and as such are rejected in a corresponding manner.
Claim 17
The limitations of claim 17 correspond to the limitations of claim 6 and as such are rejected in a corresponding manner.
Claim 18
The limitations of claim 18 correspond to the limitations of claim 1 and as such are rejected in a corresponding manner.
Claim 19
The limitations of claim 19 correspond to the limitations of claim 5 and as such are rejected in a corresponding manner.
Claim 20
The limitations of claim 20 correspond to the limitations of claim 4 and as such are rejected in a corresponding manner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,809,926. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the instant application are found in the limitations of the ‘926 patent. For example, instant claim 1 limitations are found in the ‘926 claims: “a server system” (‘926: claim 1); “a plurality of processing devices” (‘926: claim 1); “a storage fabric … a plurality of storage devices” (‘926: claim 1); “a modular overall switch … “ (‘926: claim 1, “wherein the storage fabric comprises a plurality of individual switches, and the individual switches have a modular design by which the overall switch is built from the plurality of individual switches”), “… individual switches having a respective configuration setting …” (‘926: claim 1); “a control function …” (‘926, claim 1, “the server system further comprises an API enabling an in-band software control function …”); “… that detects a demand change … and dynamically reconfigures topology of the modular overall switch …” (‘926: claim 7); and “an application programming interface (API) configured to present the modular overall switch to a control function as a single unified switch, independent of the individual switches and the individual switches respective configuration settings” (‘926: claim 1, “the API is operable to receive from the control function an overall mapping of the storage devices to the processing devices instead of requiring the individual configuration settings of each of the individual switches to be specified by the control function, the API being configured to convert the overall mapping into the individual configuration settings of the individual switches to produce said overall mapping”). Claims 2-20 are similarly found in claims 1-20 of the ‘926 patent.
Response to Arguments
Patent Owner's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
First, the amendments of 12/29/2025 to the claims do not correct the issues objected (see above Claim Objections section). It is believed this discrepancy is the result of a clerical error in referring to the underlying application claims instead of the claims as renumbered at the time of issue (see 16/997,442, Issue Information of 09/22/2021). The patent claims as issued are controlling and are to what amendments in this reissue application should be referring. Further, the new amendment of 12/29/2025 introduce additional issues of error (see above Claim Objections section).
Second, Patent Owner’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Due to the previous omission of the Double Patenting Rejection (see above), this Office Action is made Non-Final.
Correspondence Information
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/William H. Wood/
Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992