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 .
Response to Amendment
The Amendment filed 26 August, 2025 has been entered. Claims 23-43 remain pending in the application. Applicant’s amendments to the Specification, Drawings, and Claims have overcome each and every objection previously set forth in the Non-Final Office Action mailed 30 May, 2025, as well as statutory double patenting concerns and rejections under 35 U.S.C. § 112. Nonstatutory double patenting concerns are still present and have been modified to address new claims. Examiner further acknowledges the cancellation of claims 1-22 and addition of claims 23-43, which have been rejected under 35 U.S.C. § 103.
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.
“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 23-26 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, 10, and 11 of U.S. Patent No. 11,449,253 in view of Lowes et al (U.S. Patent Pub. No. 2011/0302301), hereinafter referred to as Lowes.
Claim 1 of U.S. Patent No. 11,449,253 contains every element of claim 23 of the instant application, and as such claim 23 is found obvious over claim 1 of ‘253. While claim 23 of the instant application includes a limitation specifying a “last used” model, this would be obvious given the disclosure of ¶ 0013 and Fig. 4 of Lowes which teach utilizing a last used model for prediction, as well as being a natural result of the method of claim 1 of Patent ‘253. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the disclosure of Lowes in order to compare previous models and "control one or more processing resources to prevent a maximum resource capacity from being exceeded”, an outcome of the instant invention. Claim 23 of the instant application also includes determining, based on the comparison, whether the last-used prediction model satisfies a condition for generating a disk usage growth prediction, but this is analogous to claim 1 of ‘253 including the limitations comparing validation results… and based on the comparing, selecting one of the plurality of prediction models.
Claim 6 of U.S. Patent No. 11,449,253 renders claim 24 of the instant application obvious.
Claims 8 and 9 of U.S. Patent No. 11,449,253 render claim 25 of the instant application obvious.
Claim 10 of U.S. Patent No. 11,449,253 renders claim 26 of the instant application obvious.
Claim 11 of U.S. Patent No. 11,449,253 renders claim 33 obvious given the obviousness rationale of the non-statutory double patenting rejection of claim 23.
Claims 23-26 and 33-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9-12, 18, 20-21, and 22 of U.S. Patent No. 11,941,275 in view of Lowes et al (U.S. Patent Pub. No. 2011/0302301), hereinafter referred to as Lowes.
Claim 1 of U.S. Patent No. 11,941,275 contains every element of claim 23 of the instant application, and as such claim 23 is found obvious over claim 1 of ‘275. While claim 23 of the instant application includes a limitation specifying a “last used” model, this would be obvious given the disclosure of ¶ 0013 and Fig. 4 of Lowes which teach utilizing a last used model for prediction, as well as being a natural result of the method of claim 1 of Patent ‘275. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the disclosure of Lowes in order to compare previous models and "control one or more processing resources to prevent a maximum resource capacity from being exceeded”, an outcome of the instant invention. Claim 23 of the instant application also includes determining, based on the comparison, whether the last-used prediction model satisfies a condition for generating a disk usage growth prediction, but this is analogous to claim 1 of ‘275 including the limitations comparing validation results… and based on the comparing, selecting one of the plurality of prediction models.
Claim 7 of U.S. Patent No. 11,941,275 renders claim 24 of the instant application obvious.
Claims 9 and 10 of U.S. Patent No. 11,941,275 render claim 25 of the instant application obvious.
Claim 11 of U.S. Patent No. 11,941,275 renders claim 26 of the instant application obvious.
Claim 12 of U.S. Patent No. 11,941,275 renders claim 33 obvious given the obviousness rationale of the non-statutory double patenting rejection of claim 23.
Claim 18 of U.S. Patent No. 11,941,275 renders claim 34 of the instant application obvious.
Claims 20 and 21 of U.S. Patent No. 11,941,275 render claim 35 of the instant application obvious.
Claim 22 of U.S. Patent No. 11,941,275 renders claim 36 of the instant application obvious.
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 23-29, 32-39, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Chamness (U.S. Patent No. 8,688,927) in view of Lowes.
In regard to claim 23, Chamness teaches A computer-implemented method for updating disk usage growth prediction of a storage device in an information management system (Chamness Column 2 discloses that the invention is utilized for disk usage growth prediction as well as updating predictions using gathered data), the computer-implemented method comprising: determining updated usage status data of the storage device (Column 4, lines 53-58, receives capacities of data storage). Chamness does not explicitly teach the remaining limitations of claim 1. However, a combination with Lowes teaches performing a validation check using a last-used prediction model based on at least a portion of the updated usage status data (¶ 0013 of Lowes teaches utilizing stored model descriptors (e.g. the last used predictive model, see Fig. 4) and in ¶ 0112 discloses checking the models against historical data (e.g. some portion of updated data, since in several embodiments it will change between model uses) and re-optimizing parameters if inaccurate); comparing a result of the validation check to a remaining portion of the updated usage status data (a selected model is a result of the previous validation check, and ¶ 0041 of Lowes teaches that comparisons can be made on accuracy indicators from data predicted by the model, see Fig. 3 model is applied to newly collected data); determining, based on the comparison, whether the last-used prediction model satisfies a condition for generating a disk usage growth prediction (¶ 0041 discloses that accuracy indicators are used to assess confidence for a wide range of automated actions, combined with the process of Chamness Column 7, line 55 to Column 8, line 6 which discloses selecting a model for prediction based on accuracy indicators, the claimed limitation is achieved.); and generating the disk usage growth prediction for the storage device using at least one of: the last-used prediction model or an alternative prediction model (see Chamness Fig. 6 and Fig. 7, steps may be carried out in different orders (multiple indicators listed in Columns 7-8 do not require a forecast to be made first, see Column 1 lines 60-62), so models may be qualified before prediction, achieving the claimed limitation). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the disclosure of Lowes in order to compare previous models and "control one or more processing resources to prevent a maximum resource capacity from being exceeded" (Lowes ¶ 0002).
As for claim 24, the previously cited references teach the method of claim 23. Additionally, Chamness predicts based on capacity points (Fig. 4), achieving the claimed limitation.
As for claim 25, The previously cited references teach the method of claim 23. Additionally, Chamness teaches that the capacity forecaster 206 (see Fig. 2) can forecast a full capacity time (Column 4, lines 55-58), achieving the claimed limitation.
As for claim 26, The previously cited references teach the method of claim 23. Additionally, Chamness Column 7, lines 24-26 disclose filtering capacity points before prediction which would include updating data points, achieving the claimed limitation.
As for claim 27, The previously cited references teach the method of claim 26. Additionally, Chamness Column 7, lines 24-26 disclose filtering capacity points before prediction, and specifically references using a moving average, which functionally supplants missing data.
As for claim 28, The previously cited references teach the method of claim 26. Additionally, Chamness Column 7, lines 24-26 disclose filtering capacity points before prediction, and specifically references using a moving average, which would remove anomalous points based on some threshold from historical usage (i.e. the moving average value), achieving the claimed limitation.
As for claim 29, The previously cited references teach the method of claim 23. Additionally, Lowes teaches time series forecasting (see Fig. 4), achieving the claimed limitation.
In regard to claim 32, the previously cited references teach the method of claim 23. Additionally, Lowes ¶ 0042 teaches automated actions to be taken based on determinations from predictive models, including activating additional capacity, achieving the claimed limitation.
As for claim 33, Applicant is directed to the rejection of claim 23, as the claims include the same limitations and are therefore rejected on the same rationale. A physical system is implicit in the disclosures cited (e.g. Fig. 2 of Chamness)
As for claim 34, Applicant is directed to the rejection of claim 24, as the claims include the same limitations and are therefore rejected on the same rationale.
As for claim 35, Applicant is directed to the rejection of claim 25, as the claims include the same limitations and are therefore rejected on the same rationale.
As for claim 36, Applicant is directed to the rejection of claim 26, as the claims include the same limitations and are therefore rejected on the same rationale.
As for claim 37, Applicant is directed to the rejection of claim 27, as the claims include the same limitations and are therefore rejected on the same rationale.
As for claim 38, Applicant is directed to the rejection of claim 28, as the claims include the same limitations and are therefore rejected on the same rationale.
As for claim 39, Applicant is directed to the rejection of claim 29, as the claims include the same limitations and are therefore rejected on the same rationale.
As for claim 42, Applicant is directed to the rejection of claim 32, as the claims include the same limitations and are therefore rejected on the same rationale.
Claims 30-31 and 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Chamness in view of Lowes and Lin et al (U.S. Patent No. 10,146,450), hereinafter referred to as Lin.
In regard to claim 30, the previously cited references teach the method of claim 23. They do not teach the remaining limitations of claim 30. However, Lin Column 8, line 61 to Column 9, lines 2 discloses a GUI showing time remaining until a storage pool is full, achieving the claimed limitation. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the disclosure of Lin in order to implement an improved technique for managing storage pools (Column 4, lines 45-47).
In regard to claim 31, the previously cited references teach the method of claim 23. They do not teach the remaining limitations of claim 30. However, Lin Column 9, lines 23-27 disclose generating an alert when the amount of time left until a storage device is expected to become full is below a certain amount. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the disclosure of Lin in order to implement an improved technique for managing storage pools (Column 4, lines 45-47).
As for claim 40, Applicant is directed to the rejection of claim 30, as the claims include the same limitations and are therefore rejected on the same rationale.
As for claim 41, Applicant is directed to the rejection of claim 31, as the claims include the same limitations and are therefore rejected on the same rationale.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Chamness in view of Tanimoto et al (U.S. Patent Pub. No. 2018/0082185), hereinafter referred to as Tanimoto. Chamness teaches a computer-implemented method for improving disk usage growth prediction (Chamness Column 2 discloses that the invention is utilized for disk usage growth prediction as well as updating predictions using gathered data), comprising: generating a disk usage growth prediction for a storage device based on usage status data (Chamness Fig. 4); and evaluating the accuracy of the disk usage growth prediction by comparing the prediction to subsequently observed usage status data (Fig. 5, updated data is used for improving linear regression, including generating an R squared value e.g. evaluating accuracy, Column 8 lines 20-40). Chamness does not explicitly teach the remaining limitations of claim 43. However, Tanimoto teaches using a machine learning model trained with historical prediction accuracy data to update at least one threshold used to (i) identify anomalous usage behavior or (ii) re-select a prediction model, wherein the updated threshold is applied in subsequent disk usage growth predictions. Paragraphs 0022-0023 disclose using a predictive model update determination unit to perform relearning on a model based on an evaluation index (i.e. threshold) which can include a level of accuracy degradation. Re-learning would result in replacing the old model with a new one (see Fig. 6) having a new level of accuracy degradation. When combined with the disclosure of Chamness, this would be analogous to updating a threshold used to re-select a prediction model, with the threshold being applied in subsequent disk growth predictions. A new model would be trained and selected whenever this threshold is reached over the course of predicting data, achieving the claimed limitation. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine Tanimoto in order to improve growth predictions and "reduce personnel costs when updating a predictive model" (Tanimoto ¶ 0005).
Response to Arguments
Applicant's arguments filed 26 August, 2025 (see pages 1-2 of remarks) have been fully considered but they are not persuasive. Applicant must discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Additionally, in response to applicant's arguments against the references individually (Chamness, see page 2 of response), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s arguments also rely on language solely recited in the preamble recitation in claim 23 (see page 2 of response). When reading the preamble in the context of the entire claim, the recitation a computer-implemented method for updating disk usage growth prediction of a storage device in an information management system is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
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 ZAKARIA MOHAMMED BELKHAYAT whose telephone number is (571)270-0472. The examiner can normally be reached Monday thru Thursday 7:30AM-5:30PM EST.
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/ZAKARIA MOHAMMED BELKHAYAT/Examiner, Art Unit 2139
/REGINALD G BRAGDON/Supervisory Patent Examiner, Art Unit 2139