Prosecution Insights
Last updated: July 17, 2026
Application No. 18/806,945

EXTENSION STORAGE MODULES FOR CHANGING FORM FACTOR OF STORAGE DEVICES, AND STORAGE DEVICES INCLUDING THE SAME

Non-Final OA §102§103
Filed
Aug 16, 2024
Priority
Dec 27, 2023 — RE 10-2023-0192210
Examiner
CRUM, GAGE STEPHEN
Art Unit
2841
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Samsung Electronics Co., Ltd.
OA Round
1 (Non-Final)
56%
Grant Probability
Moderate
1-2
OA Rounds
6m
Est. Remaining
87%
With Interview

Examiner Intelligence

Grants 56% of resolved cases
56%
Career Allowance Rate
101 granted / 180 resolved
-11.9% vs TC avg
Strong +30% interview lift
Without
With
+30.5%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
25 currently pending
Career history
219
Total Applications
across all art units

Statute-Specific Performance

§103
93.5%
+53.5% vs TC avg
§102
3.2%
-36.8% vs TC avg
§112
3.3%
-36.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 180 resolved cases

Office Action

§102 §103
DETAILED ACTION 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 . 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. Claims 1-4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Potter (US Publication No. 2017/0322605). Regarding claim 1, Potter discloses a storage device (see Figures 1A-2C) comprising: a main storage module (storage device 218); and an extension storage module (carrier module 200) comprising: a substrate (carrier board 214); a functional block (power storage component 216) on the substrate (214), wherein the functional block (216) is configured to provide a first function for the main storage module (218; see Paragraphs [0027]-[0029]); a control circuit (Paragraph [0024], regulator circuit) on the substrate (214), wherein the control circuit (regulator circuit) is configured to control the functional block (216; see Paragraphs [0023]-[0029]); a housing (carrier housing 202) that extends around the substrate (214), the functional block (216), and the control circuit (regulator circuit; see Figure 2C); and a connector (storage drive interface 212) that is connected to the substrate (214), wherein the connector (212) is configured to provide an electrical connection and a physical connection between the extension storage module (200) and the main storage module (218), wherein the extension storage module (200) is electrically and physically attachable to and detachable from the main storage module (218) through the connector (212), and wherein in response to the extension storage module (200) being detached from the main storage module (218), the main storage module (218) has a first form factor (see Paragraph [0022]). Regarding claim 2, Potter discloses the storage device of claim 1, and further discloses wherein, in response to the extension storage module (200) being attached to the main storage module (218), the storage device has a second form factor (form factor of 202), and wherein the first form factor (see Paragraph [0022]) is different from the second form factor (form factor of 202; see Paragraphs [0029]-[0031]). Regarding claim 3, Potter discloses the storage device of claim 1, and further discloses wherein the functional block (216) includes: an energy storage element (see Paragraph [0027]) that is configured to provide an auxiliary power supply voltage to the main storage module (218; see Paragraphs [0027]-[0029]). Regarding claim 4, Potter discloses the storage device of claim 3, and further discloses wherein the control circuit (regulator circuit) is configured to control the energy storage element (see Paragraph [0027]) to provide the auxiliary power supply voltage (see Paragraphs [0023]-[0029]) to the main storage module (218). Regarding claim 10, Potter discloses a storage device comprising: a main storage module (Figure 2B, storage drive 218) that has a first form factor (see Paragraph [0015]); and an extension storage module (Figure 2A, carrier module 200) that is configured to be electrically and physically attachable to and detachable from the main storage module (218), wherein the extension storage module (200) comprises: a first substrate (214); a functional block (power storage 216) on the first substrate (214), wherein the functional block (216) is configured to provide a first function for the main storage module (218; see Paragraphs [0027]-[0029]); a control circuit (Paragraph [0024], regulator circuit) on the first substrate (214), wherein the control circuit (regular circuit) is configured to control the functional block (216); a first housing (202) that extends around the first substrate (214), the functional block (216), and the control circuit (regulator circuit); and a first connector (storage drive interface 212) that is connected to the first substrate (214), wherein the first connector (212) is configured to provide an electrical connection and a physical connection with the main storage module (218), and wherein in response to the extension storage module (200) being attached to the main storage module (218), the storage device has a second form factor (see Paragraphs [0029]-[0031]) that is different from the first form factor (see Paragraph [0015]). 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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605) in view of Szeremeta (US Publication No. 9594409) and Yang (US Publication No. 2014/0160664). Regarding claim 5, Potter discloses the storage device of claim 1, but does not disclose wherein the functional block comprises: a cooling element that is configured to lower a temperature of the main storage module. However, Szeremeta teaches a main storage module (drive 20); an extension storage module (storage drive 100, excluding 20) comprising: a substrate (PCB 12); a functional block (fan 14) on the substrate (12; see col. 3, ln. 44-50), wherein the functional block (14) is configured to provide a first function for the main storage module (20); wherein the functional block (14) comprises: a cooling element (14) that is configured to lower a temperature of the main storage module (20; see col. 3, ln. 20-50; col. 4, ln. 3-28). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the fan of Szeremeta to the substrate of Potter. Doing so would have provided the system with a fan configured to cool the storage module (col. 3, ln. 20-50; col. 4, ln. 3-28 in Szeremeta). Potter in view of Szeremeta does not teach a control circuit on the substrate, wherein the control circuit is configured to control the functional block. However, Yang teaches a substrate (circuit board 20); a functional block (fan 260) on the substrate (20), wherein the functional block (260) is configured to provide a first function for the main storage module (SATA device 100); a control circuit (baseboard management controller (IBMC) 250) on the substrate (20), wherein the control circuit (250) is configured to control the functional block (260), wherein the functional block (260) comprises: a cooling element (see Paragraphs [0011]-[0013] and Figures 1-3) that is configured to lower a temperature of the main storage module (100). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the control circuit temperature sensors of Yang to the substrate and storage module of Potter as modified by Szeremeta. Doing so would have allowed the fan speed to be controlled based on the measured temperature of the storage module (see Paragraph [0013] in Yang). Regarding claim 6, Potter in view of Szeremeta and Yang teaches the storage device of claim 5, and further teaches (in Yang) wherein the control circuit (250) is configured to control the cooling element (260, corresponding to 14 in Szeremeta) to lower the temperature (see Paragraph [0013]) of the main storage module (100, corresponding to 218 in Potter). Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605) in view of Funawatari (US Publication No. 2004/0141253). Regarding claim 7, Potter discloses the storage device of claim 1, but does not teach wherein the housing has a rectangular parallelepiped shape, the housing comprising: an upper surface and a lower surface that are parallel to each other; and side surfaces that intersect the upper surface and the lower surface, and wherein the connector is at least partially exposed from one of the upper surface, the lower surface, and the side surfaces of the housing. However, Funawatari teaches a main storage module (PHD system 1); and an extension storage module (adaptor 2) comprising a housing (second housing 40) and a connector (second connector 43), wherein the housing (40) has a rectangular parallelepiped shape (see Figure 3), the housing (40) comprising: an upper surface (upper surface of 40) and a lower surface (lower surface of 40) that are parallel to each other (see Figures 3-4); and side surfaces (sides of 40) that intersect the upper surface (upper surface of 40) and the lower surface (lower surface of 40), and wherein the connector (43) is at least partially exposed from one of the upper surface, the lower surface, and the side surfaces (edge surfaces of 40) of the housing (40; see Figures 3-4). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module and extension storage module of Potter to be the parallelepiped shape taught in Funawatari, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605) in view of Wu (US Publication No. 2003/0183698). Regarding claim 8, Potter discloses the storage device of claim 1, but does not disclose wherein the housing has a two-step stair shape, the housing comprising: an upper surface, a middle surface, and a lower surface that are parallel to each other, wherein each of the upper surface, the middle surface, and the lower surface has a rectangular shape; a first side surface and a second side surface that intersect the upper surface, the middle surface, and the lower surface; a third side surface that intersects the upper surface and the middle surface; a fourth side surface that intersects the upper surface and the lower surface; and a fifth side surface that intersects the middle surface and the lower surface, and wherein the connector is at least partially exposed from the middle surface or the fifth side surface of the housing. However, Wu teaches a housing (main housing 11), wherein the housing (11) has a two-step stair shape (see Figures 1-3), the housing (11) comprising: an upper surface (upper surface of 11), a middle surface (112), and a lower surface (lower surface of 11) that are parallel to each other (see Figure 1), wherein each of the upper surface (upper surface of 11), the middle surface (112), and the lower surface (lower surface of 11) has a rectangular shape (see Figure 1); a first side surface (first side of 11) and a second side surface (second side of 11) that intersect the upper surface (upper surface of 11), the middle surface (112), and the lower surface (lower surface of 11); a third side surface (surface adjacent 114) that intersects the upper surface (upper surface of 11) and the middle surface (112); a fourth side surface (surface accommodating 122) that intersects the upper surface (upper surface of 11) and the lower surface (lower surface of 11); and a fifth side surface (surface accommodating 123) that intersects the middle surface (112) and the lower surface (lower surface of 11), and wherein the connector (123) is at least partially exposed from the middle surface or the fifth side surface (surface accommodating 123) of the housing (11). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module and extension storage module of Potter to have the stepped-engagement shape taught in Wu, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605) in view of Iyer (US Publication No. 2025/0076939). Regarding claim 9, Potter discloses the storage device of claim 1, but does not disclose wherein the first form factor is E3.S, E3.S 2T, or E3.L 2T. However, Iyer teaches wherein main storage module (memory module 300) having a first form factor (see Paragraph [0034]), wherein the first form factor is E3.S (see Paragraph [0034]). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module in Potter to be an E3.S form factor, as taught in Iyer, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Alternatively, claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605) in view of Lyons (US Publication No. 2021/0267083). Regarding claim 2, Potter discloses the storage device of claim 1, and further suggests wherein, in response to the extension storage module (202, 214) being attached to the main storage module (218), the storage device has a second form factor (form factor of 202), and wherein the first form factor (see Paragraph [0022]) is different from the second form factor (form factor of 202; see Paragraphs [0029]-[0031]). However, Lyons explicitly teaches a storage device comprising: a main storage module (Figure 3A, data storage device 120) having a first form factor (see Paragraph [0047]), and an extension storage module (adaptor 180A), wherein, in response to the extension storage module (180A) being attached to the main storage module (120), the storage device has a second form factor (see Paragraph [0047]), wherein the first form factor (see Paragraphs [0047]) is different from the second form factor (see Paragraph [0047]). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the storage module of Potter to have a second form factor as taught in Lyons, because the stated limitation is held to be merely a selection of optimal working parameters established through routine experimentation, and thus obvious to a person of ordinary skill in the art. MPEP § 2144.05(II)(A); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). A person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed size/shape because doing so would have allowed the storage module to fit into bays of server/computer sized to accommodate the second form factor (see Paragraph [0047] in Lyons; see Paragraphs [0029]-[0031] in Potter). Regarding claim 10, Potter discloses a storage device comprising: a main storage module (Figure 2B, storage drive 218) that has a first form factor (see Paragraph [0015]); and an extension storage module (Figure 2A, carrier module 200) that is configured to be electrically and physically attachable to and detachable from the main storage module (218), wherein the extension storage module (200) comprises: a first substrate (214); a functional block (power storage 216) on the first substrate (214), wherein the functional block (216) is configured to provide a first function for the main storage module (218; see Paragraphs [0027]-[0029]); a control circuit (Paragraph [0024], regulator circuit) on the first substrate (214), wherein the control circuit (regular circuit) is configured to control the functional block (216); a first housing (202) that extends around the first substrate (214), the functional block (216), and the control circuit (regulator circuit); and a first connector (storage drive interface 212) that is connected to the first substrate (214), wherein the first connector (212) is configured to provide an electrical connection and a physical connection with the main storage module (218), and wherein in response to the extension storage module (200) being attached to the main storage module (218). Potter suggests the storage device having a second form factor (see Paragraphs [0029]-[0031]) that is different from the first form factor (see Paragraph [0015]). However, Lyons explicitly teaches a storage device comprising: a main storage module (Figure 3A, data storage device 120) having a first form factor (see Paragraph [0047]), and an extension storage module (adaptor 180A), wherein the storage device has a second form factor (see Paragraphs [0047]) that is different from the first form factor (see Paragraph [0047]). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the storage module of Potter to have a second form factor as taught in Lyons, because the stated limitation is held to be merely a selection of optimal working parameters established through routine experimentation, and thus obvious to a person of ordinary skill in the art. MPEP § 2144.05(II)(A); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). A person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed size/shape because doing so would have allowed the storage module to fit into bays of server/computer sized to accommodate the second form factor (see Paragraph [0047] in Lyons; see Paragraphs [0029]-[0031] in Potter). Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605), Lyons (US Publication No. 2021/0267083), and in further view of Nam (US Publication No. 2023/0197116) and Lee (US Publication No. 2022/0053656). Regarding claim 11, Potter in view of Lyon teaches the storage device of claim 10, but does not explicitly teach wherein the main storage module comprises: a second substrate; a storage controller on the second substrate; a plurality of nonvolatile memories on the second substrate, wherein the storage controller is configured to control the plurality of nonvolatile memories; a buffer memory on the second substrate, wherein the storage controller is configured to control the buffer memory; and a second connector that is connected to the second substrate, wherein the second connector is configured to provide an electrical connection and a physical connection with the extension storage module. However, Nam teaches a main storage module comprising: a second substrate (substrate 110); a storage controller (controller 130) on the second substrate (110); a plurality of nonvolatile memories (NVM 140-1, 140-2, 140-3) on the second substrate (110), wherein the storage controller (130) is configured to control the plurality of nonvolatile memories (140-1, 140-2, 140-3); a buffer memory (buffer memory 150) on the second substrate (110), wherein the storage controller (130) is configured to control the buffer memory (150); and a second connector (113) that is connected to the second substrate (110), wherein the second connector (113) is configured to provide an electrical connection and a physical connection with the extension storage module (second 110, corresponding to 114 in Potter). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the SSD components of Nam to the SSD of Potter as modified by Lyons. Doing so would have provided components to the SSD essential for storing data and executing instructions (see Paragraphs [0028]-[0032] in Nam). Potter in view of Lyons and Nam does not teach a second housing that extends around the second substrate, the storage controller, the plurality of nonvolatile memories, and the buffer memory. However, Lee teaches a main storage module comprising: a second substrate (board BDH), a storage controller (controller 210), a plurality of nonvolatile memories (NVME 220), a buffer memory (buffer memory 216), and a second housing (enclosure 260), wherein a second housing (260) that extends around the second substrate (BDH), the storage controller (210), the plurality of nonvolatile memories (240), and the buffer memory (216). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the housing enclosure of Lee to the main storage module of Potter as modified by Lyons and Nam. Doing so would have protected the internal electronic components of the storage module (see Paragraphs [0055], [0074] in Lee). Claims 12-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605), Lyons (US Publication No. 2021/0267083), Nam (US Publication No. 2023/0197116), Lee (US Publication No. 2022/0053656), and in further view of Sohn (US Publication No. 2023/0140904). Regarding claim 12, Potter in view of Lyons, Nam, and Lee teaches the storage device of claim 11, and further teaches (in Potter) wherein responsive to determining that the extension storage module (200) is attached to the main storage module (218), the main storage module (218) communicates with the extension storage module (200, via signal pins of connector 212). Potter in view of Lyons, Nam, and Lee does not teach wherein the storage controller is configured to read module information from the extension storage module, to check the module information, and to transmit a request signal for the first function to the extension storage module based on the module information. However, Sohn teaches wherein a storage controller (Figures 1-2, controller 111) is configured to read module information from the extension storage module (aux power supply device 132), to check the module information (see Paragraph [0029]), and to transmit a request signal (see Paragraph [0030]) for the first function to the extension storage module (130) based on the module information (see Paragraph [0029]; see also Paragraphs [0027]-[0037]). Because Potter explicitly teaches the extension module is configured to initiate a dump/flush operation (see Paragraph [0028] in Potter), it would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the functionality of Sohn to the storage controller of Potter as modified by Lyons, Nam, and Lee. Doing so would have allowed the storage controller to initiate the dump operation upon a power disruption (see Paragraph [0028] in Potter; see Paragraphs [0027]-[0037] in Sohn). Regarding claim 13, Potter in view of Lyons, Nam, Lee, and Sohn teaches the storage device of claim 12, and further teaches (in Potter and Sohn) wherein (in Potter) the functional block (216 in Potter) includes: an energy storage element (see Paragraph [0027] in Potter) that is configured to provide an auxiliary power supply voltage to the main storage module (218 in Potter), wherein (in Sohn) the storage controller (111 in Sohn) is configured to: determine a dump size for a data dump operation based on the module information (Paragraphs [0027]-[0042], [0099]-[0110] and Figures 1-2 and 7, dump size being a positive value based on voltage level of aux power), and perform the data dump operation based on the auxiliary power supply voltage provided from the extension storage module (132) and the dump size responsive to determining that a data dump event has occurred (see Paragraphs [0027]-[0042], [0099]-[0110] and Figures 1-2 and 7), and wherein responsive to determining that the data dump event has occurred, the storage controller (111) is configured to move data from the buffer memory (112) to the plurality of nonvolatile memories (113; see Paragraphs [0054]-[0056]). Because Potter explicitly teaches the extension module is configured to initiate a dump/flush operation (see Paragraph [0028] in Potter), it would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the functionality of Sohn to the storage device of Potter as previously modified by Lyons, Nam, Lee, and Sohn. Doing so would have allowed the storage controller to initiate the dump operation upon a power disruption while increasing the life of the storage device and reducing manufacturing cost (see Paragraph [0028] in Potter; see Paragraphs [0027]-[0037] in Sohn). Regarding claim 14, Potter in view of Lyons, Nam, Lee, and Sohn teaches the storage device of claim 13, and further teaches (in Sohn) wherein responsive to determining that the data dump event has occurred, the storage controller (111) is configured to generate a data dump command (Paragraphs [0027]-[0042], [0099]-[0110] and Figures 1-2 and 7; see also Paragraph [0028] in Potter). Regarding claim 15, Potter in view of Lyons, Nam, Lee, and Sohn teaches the storage device of claim 13, and further teaches (in Sohn) wherein responsive to determining that a voltage level of a main power supply voltage of the main storage module (110) is lower than a reference voltage level (Sudden Power Off (SPO) situation), the storage controller (111) is configured to determine that the data dump event has occurred (see Paragraphs [0040]-[0046]; see also Paragraph [0028] in Potter). Regarding claim 20, Potter discloses a solid-state drive (SSD) device comprising: a main module (storage drive 218) that has a first form factor (see Paragraph [0022]); and an extension module (carrier module 200) that is configured to be electrically and physically attachable to and detachable from the main module (218), wherein the extension module (200) comprises: a first substrate (carrier board 214); an energy storage element (power storage component 216) on the first substrate (214), wherein the energy storage element (216) is configured to provide an auxiliary power supply voltage (see Paragraphs [0027]-[0028]) to the main module (218); an energy management circuit (Paragraph [0024], regulator circuit) on the first substrate (214), wherein the energy management circuit (regulator circuit) is configured to control the energy storage element (216); a first housing (housing 202) that extends around the first substrate (214), the energy storage element (216), and the energy management circuit (regulator circuit); and a first connector (connector 212) that is connected to the first substrate (214), wherein the first connector (212) is configured to provide an electrical connection and a physical connection with the main module (218). Potter suggests wherein the SSD device has a second form factor (see Paragraphs [0029]-[0031]) that is different from the first form factor (see Paragraph [0015]). However, Lyons explicitly teaches a storage device comprising: a main storage module (data storage device 120) having a first form factor (see Paragraph [0047]), and an extension storage module (adaptor 180A), wherein the storage device has a second form factor (see Paragraphs [0047]) that is different from the first form factor (see Paragraph [0047]). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the storage module of Potter to have a second form factor as taught in Lyons, because the stated limitation is held to be merely a selection of optimal working parameters established through routine experimentation, and thus obvious to a person of ordinary skill in the art. MPEP § 2144.05(II)(A); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). A person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed size/shape because doing so would have allowed the storage module to fit into bays of server/computer sized to accommodate the second form factor (see Paragraph [0047] in Lyons; see Paragraphs [0029]-[0031] in Potter). Potter in view of Lyons does not teach wherein the main module comprises: a second substrate; a storage controller on the second substrate; a plurality of nonvolatile memories on the second substrate, wherein the storage controller is configured to control the plurality of nonvolatile memories; a buffer memory on the second substrate, wherein the storage controller is configured to control the buffer memory; and a second connector that is connected to the second substrate, wherein the second connector is configured to provide an electrical connection and a physical connection with the extension module. However, Nam teaches a main module comprising: a second substrate (substrate 110); a storage controller (controller 130) on the second substrate (110); a plurality of nonvolatile memories (NVM 140-1, 140-2, 140-3) on the second substrate (110), wherein the storage controller (130) is configured to control the plurality of nonvolatile memories (140-1, 140-2, 140-3); a buffer memory (buffer memory 150) on the second substrate (110), wherein the storage controller (130) is configured to control the buffer memory (150); and a second connector (113) that is connected to the second substrate (110), wherein the second connector (113) is configured to provide an electrical connection and a physical connection with the extension storage module (second 110, corresponding to 114 in Potter). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the SSD components of Nam to the SSD of Potter as modified by Lyons. Doing so would have provided components to the SSD essential for storing data and executing instructions (see Paragraphs [0028]-[0032] in Nam). Potter in view of Lyons and Nam does not teach a second housing that extends around the second substrate, the storage controller, the plurality of nonvolatile memories, and the buffer memory. However, Lee teaches a main storage module comprising: a second substrate (board BDH), a storage controller (controller 210), a plurality of nonvolatile memories (NVME 220), a buffer memory (buffer memory 216), and a second housing (enclosure 260), wherein a second housing (260) that extends around the second substrate (BDH), the storage controller (210), the plurality of nonvolatile memories (240), and the buffer memory (216). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the housing enclosure of Lee to the main storage module of Potter as modified by Lyons and Nam. Doing so would have protected the internal electronic components of the storage module (see Paragraphs [0055], [0074] in Lee). Potter as modified by Lyons, Nam, and Lee does not teach wherein the storage controller is configured to: read module information from the extension module, check the module information, determine a dump size for a data dump operation based on the module information, responsive to determining that a data dump event has occurred, transmit a power request signal to the energy management circuit based on at least one of a generation of a data dump command and a decrease in a voltage level of a main power supply voltage, receive the auxiliary power supply voltage from the energy storage element, and perform the data dump operation based on the auxiliary power supply voltage and the dump size, and wherein responsive to determining that the data dump event has occurred, and the data dump operation is performed, the storage controller is configured to move data from the buffer memory to the plurality of nonvolatile memories. However, Sohn teaches wherein a storage controller (111) is configured to: read module information from the extension module (132), check the module information (see Paragraphs [0027]-[0042], [0099]-[0110] and Figures 1-2 and 7), determine a dump size for a data dump operation based on the module information (Paragraphs [0027]-[0042], [0099]-[0110] and Figures 1-2 and 7, dump size being a positive value based on voltage level of aux power), responsive to determining that a data dump event has occurred (sudden power off (SPO) situation), transmit a power request signal to the energy management circuit (133 in Sohn, corresponding to regulator circuit in Potter) based on at least one of a generation of a data dump command and a decrease in a voltage level of a main power supply voltage (sudden power off (SPO) situation), receive the auxiliary power supply voltage from the energy storage element (132, corresponding to 216 in Potter), and perform the data dump operation (see Paragraphs [0027]-[0042]) based on the auxiliary power supply voltage and data dump size, and wherein responsive to determining that the data dump event has occurred (see Paragraphs [0040]-[0046]), and the data dump operation is performed, the storage controller (111) is configured to move data from the buffer memory (112) to the plurality of nonvolatile memories (113; see Paragraphs [0054]-[0056]). Because Potter explicitly teaches the extension module is configured to initiate a dump/flush operation (see Paragraph [0028] in Potter), it would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have combined the functionality of Sohn to the storage device of Potter as modified by Lyons, Nam, and Lee. Doing so would have allowed the storage controller to initiate the dump operation upon a power disruption while increasing the life of the storage device and reducing manufacturing cost (see Paragraph [0028] in Potter; see Paragraphs [0027]-[0037] in Sohn). Claims 16-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605), Lyons (US Publication No. 2021/0267083), Nam (US Publication No. 2023/0197116), Lee (US Publication No. 2022/0053656), and in further view of Funawatari (US Publication No. 2004/0141253). Regarding claim 16, Potter in view of Lyons, Nam, and Lee teaches the storage device of claim 11, but does not teach wherein the first housing has a first rectangular parallelepiped shape, the first housing comprising: a first upper surface and a first lower surface that are parallel to each other; and first side surfaces that intersect the first upper surface and the first lower surface, wherein the second housing has a second rectangular parallelepiped shape, the second housing comprising: a second upper surface and a second lower surface that are parallel to each other; and second side surfaces that intersect the second upper surface and the second lower surface, and wherein when the extension storage module is attached to the main storage module, one of the first upper surface and the first lower surface of the first housing and one of the second upper surface and the second lower surface of the second housing are in contact with each other. However, Funawatari teaches a first housing (second housing 40) and a second housing (first housing 8), wherein the first housing (40) has a first rectangular parallelepiped shape (see Figure 3), the first housing (40) comprising: a first upper surface (surface accommodating 43) and a first lower surface (surface opposite 43) that are parallel to each other (see Figures 3-4); and first side surfaces (side surfaces of 40) that intersect the first upper surface (surface accommodating 43) and the first lower surface (surface opposite 43), wherein the second housing (8) has a second rectangular parallelepiped shape (see Figures 3-4), the second housing (8) comprising: a second upper surface (surface opposite connector 10) and a second lower surface (surface accommodating connector 10) that are parallel to each other (see Figures 3-4); and second side surfaces (side surfaces of 8) that intersect the second upper surface (surface opposite 10) and the second lower surface (surface accommodating 10), and wherein when the extension storage module (2) is attached to the main storage module (1), one of the first upper surface (surface accommodating 43) and the first lower surface of the first housing (40) and one of the second upper surface and the second lower surface (surface accommodating 10) of the second housing (8) are in contact with each other (via connectors 10, 43; see Figures 3-4). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module and extension storage module of Potter as modified by Lyons, Nam, and Lee to be the parallelepiped shape taught in Funawatari, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Regarding claim 17, Potter in view of Lyons, Nam, and Lee teaches the storage device of claim 11, but does not teach wherein the first housing has a first rectangular parallelepiped shape, the first housing comprising: a first upper surface and a first lower surface that are parallel to each other; and first side surfaces that intersect the first upper surface and the first lower surface, wherein the second housing has a second rectangular parallelepiped shape, the second housing comprising: a second upper surface and a second lower surface that are parallel to each other; and second side surfaces that intersect the second upper surface and the second lower surface, and wherein when the extension storage module is attached to the main storage module, one of the first side surfaces of the first housing and one of the second side surfaces of the second housing are in contact with each other. However, Funawatari teaches a first housing (second housing 40) and a second housing (first housing 8), wherein the first housing (40) has a first rectangular parallelepiped shape (see Figures 3-4), the first housing (40) comprising: a first upper surface (upper surface of 40) and a first lower surface (lower surface of 40) that are parallel to each other (see Figures 3-4); and first side surfaces (side surfaces of 40) that intersect the first upper surface (upper surface of 40) and the first lower surface (lower surface of 40), wherein the second housing (8) has a second rectangular parallelepiped shape (see Figures 3-4), the second housing (8) comprising: a second upper surface (upper surface of 8) and a second lower surface (lower surface of 8) that are parallel to each other (see Figures 3-4); and second side surfaces (side surfaces of 8) that intersect the second upper surface (upper surface of 8) and the second lower surface (lower surface of 8), and wherein when the extension storage module (2) is attached to the main storage module (1), one of the first side surfaces (side surface of 40) of the first housing (40) and one of the second side surfaces (side surface of 8) of the second housing (8) are in contact with each other (via connectors 10, 43; see Figures 3-4). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module and extension storage module of Potter as modified by Lyons, Nam, and Lee to be the parallelepiped shape taught in Funawatari, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Regarding claim 19, Potter in view of Lyons, Nam, and Lee teaches the storage device of claim 11, but does not teach wherein the first housing and the second housing have a same width. However, Funawatari teaches a first housing (40) and a second housing (8), wherein the first housing (8) and the second housing (40) have a same width (see Figures 3-4). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module and extension storage module of Potter as modified by Lyons, Nam, and Lee to be the parallelepiped shape taught in Funawatari, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Potter (US Publication No. 2017/0322605), Lyons (US Publication No. 2021/0267083), Nam (US Publication No. 2023/0197116), Lee (US Publication No. 2022/0053656), and in further view of Wu (US Publication No. 2003/0183698) (NOTE: Claim 19 rejected in the alternative). Regarding claim 18, Potter in view of Lyons, Nam, and Lee teaches the storage device of claim 11, but does not teach wherein the first housing has a two-step stair shape, the first housing comprising: a first upper surface, a first middle surface, and a first lower surface that are parallel to each other, wherein each of the first upper surface, the first middle surface, and the first lower surface has a rectangular shape; a first side surface and a second side surface that intersect the first upper surface, the first middle surface, and the first lower surface; a third side surface that intersects the first upper surface and the first middle surface; a fourth side surface that intersects the first upper surface and the first lower surface; a fifth side surface that intersects the first middle surface and the first lower surface, wherein the second housing has a rectangular parallelepiped shape, the second housing comprising: a second upper surface and a second lower surface that are parallel to each other; and sixth side surfaces that intersect the second upper surface and the second lower surface, and wherein when the extension storage module is attached to the main storage module, the first middle surface of the first housing and one of the second upper surface and the second lower surface of the second housing are in contact with each other, and the fifth side surface of the first housing and one of the sixth side surfaces of the second housing are in contact with each other. However, Wu teaches a first housing (main housing 11) and a second housing (drawable housing 21), wherein the first housing (11) has a two-step stair shape (see Figure 1), the first housing (11) comprising: a first upper surface (upper surface of 11), a first middle surface (projection section 112), and a first lower surface (lower surface of 11) that are parallel to each other (see Figure 1), wherein each of the first upper surface (upper surface of 11), the first middle surface (112), and the first lower surface (lower surface of 11) has a rectangular shape (see Figure 1); a first side surface (first side of 11) and a second side surface (second side of 11) that intersect the first upper surface (upper surface of 11), the first middle surface (112), and the first lower surface (lower surface of 11); a third side surface (surface adjacent 114) that intersects the first upper surface (upper surface of 11) and the first middle surface (112); a fourth side surface (surface accommodating 122) that intersects the first upper surface (upper surface of 11) and the first lower surface (lower surface of 11); a fifth side surface (surface accommodating 123) that intersects the first middle surface (112) and the first lower surface (lower surface of 11), wherein the second housing (drawable housing 21) has a rectangular parallelepiped shape (see Figure 1), the second housing (2) comprising: a second upper surface (upper surface of 2) and a second lower surface (lower surface of 2) that are parallel to each other (see Figure 1); and sixth side surfaces (side surfaces of 2) that intersect the second upper surface (upper surface of 2) and the second lower surface (lower surface of 2), and wherein when the extension storage module (1) is attached to the main storage module (2), the first middle surface (112) of the first housing (11) and one of the second upper surface and the second lower surface (lower surface of 2) of the second housing (21) are in contact with each other (see Figure 1), and the fifth side surface (surface accommodating 123) of the first housing (11) and one of the sixth side surfaces (side surfaces of 2) of the second housing (2) are in contact with each other (see Figure 1). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module and extension storage module of Potter as modified by Lyons, Nam, and Lee to have the stepped-engagement shape taught in Wu, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Regarding claim 19, Potter in view of Lyons, Nam, and Lee, teaches the storage device of claim 11, but does not teach wherein the first housing and the second housing have a same width. However, Wu teaches a first housing (main housing 11) and a second housing (drawable housing 21), wherein the first housing (11) and the second housing (2) have a same width (see Figure 3). It would have been prima facie obvious to one of ordinary skill in the art before the effective file date of the claimed invention to have modified the shape of the main storage module and extension storage module of Potter as modified by Lyons, Nam, and Lee to have the stepped-engagement shape taught in Wu, considering a change in shape has been held to be an obvious matter of design choice to a person of ordinary skill in the art, absent persuasive evidence that the particular configuration of the claimed feature is significant. See MPEP § 2144.04 and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent/Publication Nos. 20220171542 20190114218 11733883 teach initiating dump operations based on sudden power off conditions. US Patent/Publication Nos. 20170308132 20090292852 5155663 6795318 7499282 20030007321 10120824 teach the specific parallelepiped and/or stepped shaped housings. DE Publication No. 102006017854 teaches the specific parallelepiped and/or stepped shaped housings US Publication Nos. 20210195745 20210045247 20170011002 20170220505 20170017600 10120824 20170164501 20080239649 RE36968 20210294386 20060027664 20050007745 11229140 20180217642 also anticipate the claimed device. US Patent No. 11317540 teaches a functional module being a fan. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GAGE STEPHEN CRUM whose telephone number is (571)272-3373. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen Parker can be reached at (303)297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /GAGE CRUM/Examiner, Art Unit 2841 gsc
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Prosecution Timeline

Aug 16, 2024
Application Filed
May 19, 2026
Non-Final Rejection mailed — §102, §103
Jul 09, 2026
Interview Requested

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1-2
Expected OA Rounds
56%
Grant Probability
87%
With Interview (+30.5%)
2y 5m (~6m remaining)
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