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 .
DETAILED ACTION
The Action is responsive to the Amendments and Remarks filed on 9/11/2025. Claims 1-14 are pending claims. Claims 1, 9, and 10 are written in independent form.
Priority
Acknowledgment is made of a claim for priority as a National Stage Entry of PCT/JP2022/003560, filed on 01/31/2022.
Claim Interpretation
Claims 1, 9, and 10 recite the phrase “to read and identify” which is being understood as the intent to read and identify, but is not actively performing any reading or identifying step/limitation. Examiner suggests to amend the claim limitations to recite all of the steps in a positive manner.
Claims 1, 9, and 10 recite the limitation “Transmit the isolated label added file to any one of the plurality of dedicated use storage apparatuses to read and identify a label of the acquired label added file” which is being interpreted to have a scope of “Transmit the isolated label added file to any one of the plurality of dedicated use storage apparatuses”. However, for the purpose of compact prosecution, the limitation is being addressed herein as if all of the steps are recited in a positive manner.
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 1-14 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. Independent Claims 1, 9, and 10 contain the subject matter “Transmit the isolated label added file to any one of the plurality of dedicated use storage apparatuses to read and identify a label of the acquired label added file” 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.
It is not clearly stated in the written description reading and/or identifying a label of the acquired label added file after transmitting the isolated label added file to any one of the plurality of dedicated use storage apparatuses. The written description appears to only recite performing the reading and identifying in relation to the Label Identification Part 42 in conjunction with Air Gap Part 41 located in the File Exchange Apparatus 40 (Fig. 1 & Paras. [0009], [0059], and [0067]) which is done upstream from and before sending data to any Dedicated Storage Apparatus 50A-N (Fig. 1).
For purposes of compact prosecution, the claim limitation is being interpreted as “read and identify a label of the acquired label added file” followed by “Transmit the isolated label added file to any one of the plurality of dedicated use storage apparatuses
Dependent Claims 2-8 and 11-14 inherit the deficiencies of their parent claims and are therefore being rejected based upon the same reason(s) stated for their parent claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claimed invention is directed to one or more abstract ideas without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than judicial exception. The eligibility analysis in support of these findings is provided below.
As per Independent Claims 1, 9, and 10,
STEP 1:In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), the claimed apparatus (claims 1-8), method (claims 9, and 11-12), and non-transitory computer readable recording medium (claims 10 and 13-14) are directed to one of the eligible categories of subject matter and therefore satisfies Step 1.
STEP 2A Prong One:The independent claims 1, 9, and 10 recite the following limitations directed to an abstract idea:
isolate the acquired label added file from the common use storage apparatus and a plurality of dedicated use storage apparatuses, and
The limitation recites a mental process of observation, evaluation, judgement, and/or opinion capable of being performed by the human mind by observing and evaluating the acquired label added file and making a judgement and/or decision to isolate/separate the label added file from the common usage storage apparatus and a plurality of dedicated use storage apparatuses.
read and identify a label of the acquired label added file,
The limitation recites a mental process of observation, evaluation, judgement, and/or opinion capable of being performed by the human mind by observing (reading) and evaluating a label added file and making a judgement and/or opinion of identified label(s).
STEP 2A Prong Two:Claim 1 recites that the steps are performed using “a file exchange apparatus”, “at least one processor”, “at least one memory”, “a common use storage apparatus” and “a plurality of dedicated use storage apparatuses”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Claim 9 recites that the steps are performed using “a file exchange apparatus”, “a common use storage apparatus” and “a plurality of dedicated use storage apparatuses”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Claim 10 recites that the steps are performed using “a non-transitory computer readable recording medium”, “a file exchange apparatus”, “a common use storage apparatus” and “a plurality of dedicated use storage apparatuses”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
The claims recite the following additional elements:
acquire a label added file stored in a common use storage apparatus,
The limitation recites an insignificant extra solution activity as sending/receiving data (ie. Mere data
gathering) as identified in MPEP 2106.05(g) and does not provide integration into a practical application.
transmit the isolated label added file to any one of the plurality of dedicated use storage apparatuses; and
The limitation recites an insignificant extra solution activity as sending/receiving data (ie. Mere data
gathering) as identified in MPEP 2106.05(g) and does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
STEP 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to “acquire a label added file stored in a common use storage apparatus,” identified as insignificant extra-solution activity above this is also WURC as court-identified see MPEP 2106.05(d)(II)(i).
With respect to “transmit the isolated label added file to any one of the plurality of dedicated use storage apparatuses;” identified as insignificant extra-solution activity above this is also considered to be WURC as court-identified see MPEP 2106.05(d)(II)(i).
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
As per Dependent Claims 2-8 and 11-14,
STEP 1:In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), the claimed apparatus (claims 1-8), method (claims 9, and 11-12), and non-transitory computer readable recording medium (claims 10 and 13-14) are directed to one of the eligible categories of subject matter and therefore satisfies Step 1.
STEP 2A Prong One:The dependent claims 2-8 and 11-14 recite the following limitations directed to an abstract idea:
The limitation(s) of Dependent Claim(s) 2, 5, 7, 11, and 13 includes the step(s) of:
create the label added file by adding a label to a label non-added file stored in the common use storage apparatus based on a predetermined criterion set in advance.
The limitation recites a mental process of observation, evaluation, judgement, and/or opinion capable of being performed by the human mind by observing and evaluating the label non-added file and predetermined criterion set in advance and making a judgement and/or opinion to label the label non-added file based on the observation and evaluation, thus creating the label added file.
The limitation(s) of Dependent Claim(s) 3, 6, 8, 12, and 14 includes the step(s) of:
calculate a hash value based on data included in the label non-added file or the label added file using a predetermined function set in advance
The limitation recites a mathematical concept of executing a “predetermined function” or formula using “data included in the label non-added file or the label added file” as input to the function and the calculated hash value being the output of the function.
add the calculated hash value to the label non-added file or the label added file.
The limitation recites a mental process of observation, evaluation, judgement, and/or opinion capable of being performed by the human mind by observing and evaluating the hash value and the label non-added file or the label added file and making a judgement and/or opinion to add the hash value to the label non-added file or the label added file.
The limitation(s) of Dependent Claim(s) 5 and 7 further include the step(s) of:
manage files stored in the common use storage apparatus.
The limitation recites a mental process of observation, evaluation, judgement, and/or opinion capable of being performed by the human mind by observing and evaluating files stored in a common use storage apparatus and making judgements and/or opinions to manage the files based on the observing and evaluating.
STEP 2A Prong Two:The claim(s) recite the following additional elements:
The limitation(s) of Dependent Claim(s) 4 includes the step(s) of:
a file exchange system, comprising:
a common use storage apparatus configured to be accessible from a common use network;
The claim is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
a plurality of dedicated use storage apparatuses configured to be inaccessible from the common use network; and
The claim is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
the file exchange apparatus.
The claim is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
The limitation(s) of Dependent Claim(s) 5 and 7 further include the step(s) of:
the file exchange system is configured to communicably connect to the common use network and the common use storage apparatus,
The claim is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
STEP 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mehta et al. (U.S. Pre-Grant Publication No. 2021/0089555, hereinafter referred to as Mehta).
Regarding Claim 1:
Mehta teaches a file exchange apparatus comprising:
At least one processor (Paras. [0067]-[0068]); and
At least one memory storing instructions (Paras. [0067]-[0068]),
Wherein the at least one processor is configured to
Acquire a label added file stored in a common use storage apparatus,
Mehta teaches “secondary storage computing devices 106 or other components in secondary storage subsystem 118 may process the data received from primary storage subsystem 117 and store a secondary copy including a transformed and/or supplemented representation of a primary data object and/or metadata that is different from the original format, e.g., in a compressed, encrypted, deduplicated, or other modified format” (Para. [0093]) and “a media agent 144 may be associated with a particular secondary storage device 108 if that media agent 144 is capable of one or more of: routing and/or storing data to the particular secondary storage device 108; coordinating the routing and/or storing of data to the particular secondary storage device 108;” (para. [0136]).
Mehta further teaches a label added file by teaching “an e-discovery classification policy might define a classification tag ‘privileged’ that is associated with documents or data objects that (1) were created or modified by legal department staff, or (2) were sent to or received from outside counsel via email, or (3) contain one of the following keywords: “privileged” or “attorney” or “counsel,” or other like terms.” (Para. [0253]).
Isolate the acquired label added file from the common use storage apparatus and a plurality of dedicated use storage apparatuses, and
Mehta teaches isolating the acquired file from the primary storage device(s) and the secondary storage device(s) at the “secondary storage computing devices 106 or other components in secondary storage subsystem 118” which “may process the data received from primary storage subsystem 117 and store a secondary copy including a transformed and/or supplemented representation of a primary data object and/or metadata that is different from the original format, e.g., in a compressed, encrypted, deduplicated, or other modified format” (Para. [0093] & Fig. 1C) and the secondary storage computing devices 106 comprise “a media agent 144 [that] may be associated with a particular secondary storage device 108 if that media agent 144 is capable of one or more of: routing and/or storing data to the particular secondary storage device 108; coordinating the routing and/or storing of data to the particular secondary storage device 108;” (para. [0136] & Fig. 1C).
Read and identify a label of the acquired label added file, and
Mehta teaches “Secondary copies 116 may have been processed by…media agent 144 in the course of being created (e.g., compression, deduplication, encryption, integrity markers, indexing, formatting, application-aware metadata, etc.)” (Para. [0086]) thereby teaching a label identification part that reads and identifies labels of the acquired label added data.
Transmit the isolated label added file to any one of the plurality of dedicated use storage apparatuses.
Mehta teaches “Where system 100 includes multiple media agents 144 (see, e.g., FIG. 1D), a first media agent 144 may provide failover functionality for a second failed media agent 144. In addition, media agents 144 can be dynamically selected to provide load balancing. Each client computing device 102 can communicate with, among other components, any of the media agents 144, e.g., as directed by storage manager 140. And each media agent 144 may communicate with, among other components, any of secondary storage devices 108, e.g., as directed by storage manager 140. Thus, operations can be routed to secondary storage devices 108 in a dynamic and highly flexible manner, to provide load balancing, failover, etc.” (Para. [0145] & Fig. 1D). Therefore, Mehta teaches the secondary storage computing device(s) in the secondary storage subsystem configured to transmit the acquired label added file to the dedicated secondary storage device.Mehta further teaches “Each data agent 142 may be specialized for a particular application 110. For instance, different individual data agents 142 may be designed to handle Microsoft Exchange data, Lotus Notes data, Microsoft Windows file system data, Microsoft Active Directory Objects data, SQL Server data, SharePoint data, Oracle database data, SAP database data, virtual machines and/or associated data, and other types of data. A file system data agent, for example, may handle data files and/or other file system information. If a client computing device 102 has two or more types of data 112, a specialized data agent 142 may be used for each data type.” (Para. [0131]).
Regarding Claim 2:
Mehta further teaches wherein the at least one processor is further configured to:
create the label added file by adding a label to a label non-added file stored in the common use storage apparatus based on a predetermined criterion set in advance.
Mehta teaches “Files or other data objects can be associated with identifiers (e.g., tag entries, etc.) to facilitate searches of stored data objects. Among a number of other benefits, the metabase can also allow efficient, automatic identification of files or other data objects to associate with secondary copy or other information management operations. For instance, a metabase can dramatically improve the speed with which system 100 can search through and identify data as compared to other approaches that involve scanning an entire file system” (Para. [0195]).
Regarding Claim 3:
Mehta further teaches wherein the at least one processor is further configured to:
calculate a hash value based on data included in the label non-added file or the label added file using a predetermined function set in advance and add the calculated hash value to the label non-added file or the label added file.
Mehta teaches “Data agent 142 also may compress, deduplicate, and encrypt certain primary data 112, as well as capture application-related metadata before transmitting the processed data to media agent 144.” (Para. [0130]) thereby teaching a hash value adding part configured to calculate a hash value (encryption) on data included in the label non-added file or the label added file using
Regarding Claim 4:
Mehta further teaches:
a file exchange system comprising:
a common use storage apparatus configured to be accessible from a common use network;
Mehta teaches “one or more primary storage devices 104 can be shared by multiple client computing devices 102, e.g., via a local network, in a cloud storage implementation, etc.” (Para. [0080]).
a plurality of dedicated use storage apparatuses configured to be inaccessible from the common use network; and
Mehta teaches “A media agent 144 may be associated with a particular secondary storage device 108 if that media agent 144 is capable of one or more of: routing and/or storing data to the particular secondary storage device 108; coordinating the routing and/or storing of data to the particular secondary storage device 108;” (para. [0136]) thereby teaching transmitting the “data” to “a particular [dedicated] secondary storage device”.
Mehta further teaches “one or more primary storage devices 104 can be shared by multiple client computing devices 102, e.g., via a local network, in a cloud storage implementation, etc.” (Para. [0080]) and “storage devices are provided in a cloud storage environment (e.g., a private cloud or one operated by a third-party vendor), whether for primary data or secondary copies or both.” (Para [0069]) thereby teaching the secondary storage devices being inaccessible from the local network connecting the multiple client computer devices102 to the primary storage device(s) 104.
the file exchange apparatus.
Mehta teaches “secondary storage computing devices 106 or other components in secondary storage subsystem 118 may process the data received from primary storage subsystem 117 and store a secondary copy including a transformed and/or supplemented representation of a primary data object and/or metadata that is different from the original format, e.g., in a compressed, encrypted, deduplicated, or other modified format” (Para. [0093])
Regarding Claim 5:
Some of the limitations herein are similar to some or all of the limitations of Claim 2.
Mehta further teaches:
wherein the file exchange system is configured to communicably connect to the common use network and the common use storage apparatus and manage files stored in the common use storage apparatus.
Mehta teaches a storage manager 146 configured to communicably connect to the client computer device(s) and the primary storage device(s) connected via a local network (Para. [0080] Figs. 1C & 1D). Mehta further teaches “Storage manager 140 is a centralized storage and/or information manager that is configured to perform certain control functions and also to store certain critical information about system 100—hence storage manager 140 is said to manage system 100.” (Para. [0096]).
Regarding Claim 6:
All of the limitations herein are similar to some or all of the limitations of Claim 3.
Regarding Claim 7:
All of the limitations herein are similar to some or all of the limitations of Claims 2, 4, and 5.
Regarding Claim 8:
All of the limitations herein are similar to some or all of the limitations of Claim 3.
Regarding Claim 9:
All of the limitations herein are similar to some or all of the limitations of Claim 1.
Regarding Claim 10:
Some of the limitations herein are similar to some or all of the limitations of Claim 1.
Mehta further teaches:
a non-transitory computer readable recording medium storing a program executable by a file exchange apparatus to perform processing (Para. [0067]).
Regarding Claim 11:
All of the limitations herein are similar to some or all of the limitations of Claim 2.
Regarding Claim 12:
All of the limitations herein are similar to some or all of the limitations of Claim 3.
Regarding Claim 13:
All of the limitations herein are similar to some or all of the limitations of Claim 2.
Regarding Claim 14:
All of the limitations herein are similar to some or all of the limitations of Claim 3.
Response to Amendment
Applicant’s Amendments, filed on 9/11/2025, are acknowledged and accepted.
In light of the Amendments and Remarks filed on 9/11/2025, the Claim Objection to Claim 4 has been withdrawn.
In light of the Amendments and Remarks filed on 9/11/2025, the 112(b) rejection to claims 1-8 have been withdrawn.
Response to Arguments
On pages 7-8 of the Remarks filed on 9/11/2025, Applicant notes that “the subject matter for which patent protection is being sought provides for a technological advantage, namely, ‘to avoid hindrances in file management even if one common use storage apparatus is divided into a plurality of dedicated use storage apparatuses.’ Applicant therefore submits that the claims are patent subject matter eligible at least because they provide for a practical application of any alleged abstract idea or other judicial exception.”Applicant’s argument is not convincing because it is not clear how the claims are avoiding any hindrances in file management, and further it is unclear what hindrances Applicant is arguing as being avoided.
On page 8 of the Remarks filed on 9/11/2025, Applicant states that “Mehta does not describe an ‘air gap’ that provides complete physical isolation of the file.”Applicant’s argument is not convincing because the argument does not appear to be related to any particular limitation since the amended claims no longer refer to the term “air gap”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Auradkar et al. (U.S. Pre-Grant Publication No. 2011/0145593) teaches selective access for obscured data at a remote site or in a cloud service, distributing trust across multiple entities to avoid a single point of data compromise. Based on the pattern, a "trustworthy envelope" for any kind of payload enables curtained access through a variety of decorations or seals placed on the envelope that allow for a gamut of trust ranging with guarantees such as, but not limited to, confidentiality, privacy, anonymity, tamper detection, integrity, etc. Verifiable trust is provided through families of techniques that are referred to as wrapper composition. Multiple concentric and/or lateral transform wrappers or layers can wholly or partially transform data, metadata or both to mathematical transform (e.g., encrypt, distribute across storage, obscure) or otherwise introduce lack of visibility to some or all of the data, metadata or both.
Foreign Patent Publication JP2000066977A teaches a network 4 and a service switching part 5 which are physically disconnected from each other are physically connected by a switch 2 and data to a network 3 are transferred from the network 4 to the service switching part 5. When a switch 1 is turned on, the switching part 5 transfers the data received from the network 4 to the network 3. When there are data to be transferred from the network 3 to the network 4, the data are transferred from the network 3 to the switching part 5. Finally the switching part 5 transfers the data received from the network 3 to a server 8 in the network 4 when the switch 2 is turned on, and when there are data to be transferred from the network 4 to the network 3, receives the data. Thus data communication service can be executed between the disconnected networks 3, 4 by repeating a series of operation described above.
Foreign Patent Publication JP2003030081A teaches a transfer controller 3 designates the file name, the transfer source and the transfer destination of the transfer file. The transfer controller composes a command for file transfer from control file information which the transfer controller 3 has and the transfer file name, the transfer source and the transfer destination. The designated transfer file is transferred from a transfer source device 1 to a transfer destination device 2 by performing the composed command.
Danziger et al. (U.S. Patent No. 11,232,080) teaches an application server receives from a user device a first request to create a data file that is to be stored at a third-party storage server. Responsive to receiving the first request to create a data file that is to be stored at the third-party storage server, the application server sends to the third-party storage server a second request indicating that the data file is to be created at the third-party storage server. An indication that the data file has been created at the third-party storage server is received from the third-party storage server. Responsive to receiving the indication that the data file has been created at the third-party storage server, the application server generates an instance of the data file that is stored at the application server. The application server provides to the user device the instance of the data file for edit via a relevant application.
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 ROBERT F MAY whose telephone number is (571)272-3195. The examiner can normally be reached Monday-Friday 9:30am to 6pm.
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/ROBERT F MAY/Examiner, Art Unit 2154 11/3/2025
/BORIS GORNEY/Supervisory Patent Examiner, Art Unit 2154