DETAILED ACTION
This action is in response to an amendment filed on January 6, 2026 for the application of Venkatesh et al., for a “Disaster recovery for distributed file servers, including metadata fixers” filed on August 15, 2023, which is a continuation of 17302343, filed April 30, 2021, now U.S. Patent No. 11775397, which is a continuation of 15832310, filed December 05, 2017, now U.S. Patent No. 11294777. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . IDS filed on January 6, 2026 has been considered.
Claims 3-23 are pending in the application.
Claims 3-23 are rejected under nonstatutory double patenting rejection.
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 3-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11294777. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-25 of U.S. Patent No. 11294777 contain(s) every element of claim(s) 3-23 of the instant application and as such anticipate(s) claim(s) 3-23 of the instant application.
Claims 3-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 11775397. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-36 of U.S. Patent No. 11775397 contain(s) every element of claim(s) 3-23 of the instant application and as such anticipate(s) claim(s) 3-23 of the instant application.
Claims 3-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 19212458. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-24 of copending Application No. 19212458 contain(s) every element of claim(s) 3-23 of the instant application and as such anticipate(s) claim(s) 3-23 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
In view of applicant’s arguments filed on January 6, 2026, the previous 35 USC § 102 rejection of claims 3-23 have been withdrawn.
Reasons for allowance
The following is an examiner’s statement of reasons for allowance:
After a complete search of all the relevant prior art the examiner has determined the claims are in condition for allowance. The following limitations when viewed in combination with the remainder of the claim as a whole place this application in condition for allowance.
As per independent claims 3, 10, and 17, the examiner finds the novel and non obvious feature of claims, when read as whole to be replicating a share of a first virtualized file server (VFS) located at a first site to update a second VFS located at a second site, each VFS of each site including a respective plurality of file server virtual machines (FSVMs) hosted on a respective plurality of host machines, each of the FSVMs presenting a namespace of storage items including the share; and in response to disaster recovery of the first VFS, activating the second VFS to recover the share for at least a portion of the first VFS.
The closest prior art are Jagannatha et al. (U.S. Patent No. 10061660) and Zimran et al. (U.S. PGPUB 20070055703), which were cited in the previous office action mailed on October 6, 2025.
Jagannatha teaches replicating a share of a first virtualized file server (VFS) located at a first site to update a second VFS located at a second site (col. 8, lines 30-33), each VFS of each site including a respective plurality of file server virtual machines (FSVMs) hosted on a respective plurality of host machines (col. 4, lines 51-63) and in response to disaster recovery of the first VFS, activating the second VFS to recover the share for at least a portion of the first VFS (col. 4, lines 1-6).
Zimran teaches replicating a share of a first virtualized file server (VFS) located at a first site to update a second VFS located at a second site ([0102]) and in response to disaster recovery of the first VFS, activating the second VFS to recover the share for at least a portion of the first VFS ([0045] and [0111]).
However, Jagannatha or Zimran, alone or in combination fail to teach replicating a share of a first virtualized file server (VFS) located at a first site to update a second VFS located at a second site, each VFS of each site including a respective plurality of file server virtual machines (FSVMs) hosted on a respective plurality of host machines, each of the FSVMs presenting a namespace of storage items including the share as recited in claims 3, 10, and 17.
Therefore, the prior art does not teach the claimed invention as recited in independent claims 3, 10, and 17. Claims 4-9, 11-16, and 18-23 are allowed because the claims are dependent upon independent claims 3, 10, and 17.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. 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 Elmira Mehrmanesh whose telephone number is (571)272-5531. The examiner can normally be reached on M-F from 10-6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bryce Bonzo, can be reached at telephone number (571) 272-3655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elmira Mehrmanesh/
Primary Examiner, Art Unit 2113