DETAILED ACTION
Response to Amendment
1. This written action is responding to the amendment dated on 12/03/2025.
2. The present application, filed on or after March 16, 2013, is being examined under
the first inventor to file provisions of the AIA .
3. Objection to drawings is withdrawn.
4. The 112(b) rejection to claims 1-20 is withdrawn.
5. The double patenting rejection to claims 1-20 is maintained.
6. Claims 8-14 are interpreted under the 112(f).
7. Claims 2-20 are amended.
8. Claims 1-20 are submitted for examination.
9. Claims 1-20 are rejected.
10. The Examiner would like to point out that this action is made second Non-Final.
11.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 11,762,781. Although the claims at issue are not identical, they are not patentably distinct from each other because all above claims of the instant application are taught by claims of Patent No. 11,762,781.
12.
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.This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a processing device operably coupled to the memory, configured to: receive an input/output (I/O) request that refers to a logical volume of a storage system that is encrypted with a first key associated with the logical volume, wherein different logical volumes resident on the storage system are encrypted using different keys of a plurality of keys associated with the respective volumes, the first key being associated with a property of the logical volume; and in response to the I/O request, process the I/O request including performing a cryptographic operation using a second key of the plurality of keys subsequent to decrypting data stored at the logical volume using the first key associated with a property of the logical volume, the second key being associated with a property of data stored at the logical volume” (Claim 8), “the processing device is further configured to perform a data reduplication operation” (Claim 9), “the processing device is further configured to perform a data rehydration operation” (Claim 10), and “the processing device is further configured to perform a data decompression operation” (Claim 11). If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
13.
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 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.
Claims 1, 5-8, 12-15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kamaraju et al, US. 2018/0034787 (hereinafter Kamaraju), in view of Miller et al, US. 8,719,923 (hereinafter Miller).
Regarding claim 1 Kamaraju teaches a method comprising:
receiving an input/output (I/O) request that refers to a storage system that is encrypted with a first key associated with the storage system (Kamaraju teaches a host may send a read request to a storage system, wherein the storage system reads the second key encrypted data from the storage memory [0022] and [0041), wherein different storage systems are encrypted using different keys of a plurality of keys associated with the storage systems, the first key being associated with a property of the storage system (Kamaraju teaches the storage system may use either the same or another encryption/decryption module, and the storage local second key, to encrypt the deduplicated and/or compressed data, and stores the second key encrypted, deduplicated and or compressed data in the storage memory [0021], wherein the storage local key is local to the storage system and is not available to any of the hosts [0018], and wherein each storage system has its own local storage key; both the first key of a host and the storage local key are stored in the local storage system [0027] and fig. 4); and
in response to the I/O request, processing the I/O request including performing a cryptographic operation using a second key of the plurality of keys subsequent to decrypting data stored at the storage system using the first key associated with a property of the storage system (Kamaraju teaches utilizing the storage local second key and the encryption/decryption module to decrypt the data, wherein the storage system uses a shared first key and the same or another encryption/decryption module to encrypt the data [0022]),
the second key being associated with a property of data* stored at the storage system (Kamaraju teaches a plurality of first keys for each of one or more hosts, and each first key is specific to one or more blocks or chunks of write data for encryption by that host, and decryption by a targeted storage system, with the first keys managed by the data security management system 102. Read data is handled in a related manner 0027]). Although Kamaraju discloses a secure volume manager layer (para. 0041), Kamaraju does not disclose the storage system is a logical volume. Miller et al. discloses a storage abstraction layer and organizing data blocks as a logical volume, whereby each individual logical volume is secured using a key unique to each volume (col. 1, lines 15-33 and line 64-col. 2, line 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the storage system of Kamaraju to be one of several logical volumes, whereby each logical volume is secure with its own encryption key. One would have been motivated to do so to organize an organization’s storage to enable flexible and scalable storage as known to one of ordinary skill in the art, while limiting unauthorized data exposure to a logical object/volume if a storage key is subject to unauthorized access.
Regarding claim 5 Kamaraju as modified teaches the method of claim 1 wherein the first key is an encryption key received from a key management service (Kamaraju teaches a data security management system managing a shared first key for host that encrypts data with first key, and a storage system that decrypts the data with the first key [0018] and fig. 1).
Regarding claim 6 Kamaraju as modified teaches the method of claim 5 wherein the encryption key is received from the key management service based on a security identifier associated with a logical volume, a logical volume range, or a client identifier associated with the data (Kamaraju teaches a data security management system managing a shared first key for host that encrypts data with first key, and a storage system that decrypts the data with the first key [0018] and fig. 1, and further Miller teaches Upon receipt of a request, the storage device controller may retrieve data from the indicated disk and the encryption engine may decrypt the retrieved data using the key associated with the key ID supplied by security engine (col. 16, lin. 10-14) and (col. 17, lin. 61-64).
Regarding claim 7 Kamaraju as modified teaches the method of claim 1 further comprising: performing at least one data reduction operation on a first decrypted data to generate a first reduced data; encrypting the first reduced data using a second encryption key to generate encrypted data; and storing the encrypted data on the storage system (Kamaraju teaches data may be compressed, encrypted with a second storage local encryption key and then stored in a storage memory [0005], [0038], fig. 1 and fig. 7).
In response to Claim 8: Rejected for the same reason as claim 1
In response to Claim 12: Rejected for the same reason as claim 5
In response to Claim 13: Rejected for the same reason as claim 6
In response to Claim 14: Rejected for the same reason as claim 7
In response to Claim 15: Rejected for the same reason as claim 1
In response to Claim 19: Rejected for the same reason as claim 5
In response to Claim 20: Rejected for the same reason as claim 6
14.
Claims 2-4, 9-11 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kamaraju and Miller as mentioned above, in view of Chernow et al, US. 2012/0303590 (hereinafter Chernow).
Regarding claim 2 Kamaraju as modified teaches the method of claim 1 further comprising performing a data operation to reconstitute the data (Kamaraju teaches the storage system uses the compression module and/or the deduplication module to decompress and/or reconstitute the data [0022]). The combination of Kamaraju and Miller does not teach performing a data reduplication operation. Chernow substantially teaches performing a reduplication of deduplicated data in a data storage system [0015].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kamaraju and Miller such that the invention further includes performing a data reduplication operation. One would have been motivated to do so to for a high availability and reliability, for example data remains accessible even during disruptions, wherein the user can access a redundant copy.
Regarding claim 3 Kamaraju as modified teaches the method of claim 2 wherein performing the data operation to reconstitute the data further comprises performing a data rehydration operation (Kamaraju: 0022] and Chernow: [0016]).
Regarding claim 4 Kamaraju as modified teaches the method of claim 2 wherein performing the data operation to reconstitute the data further comprises performing a data decompression operation (Kamaraju: 0022]).
In response to Claim 9: Rejected for the same reason as claim 2
In response to Claim 10: Rejected for the same reason as claim 3
In response to Claim 11: Rejected for the same reason as claim 4
In response to Claim 16: Rejected for the same reason as claim 2
In response to Claim 17: Rejected for the same reason as claim 3
In response to Claim 18: Rejected for the same reason as claim 4
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AYOUB ALATA whose telephone number is (313)446-6541. The examiner can normally be reached on Monday - Friday 7:30 - 5:00 Est.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jung (Jay) Kim can be reached on (571)272-3804. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/AYOUB ALATA/Primary Examiner, Art Unit 2494
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