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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/24/2026 has been entered.
Response to Amendment
This office action is written in response to an amendment filed on 6/24/2026. As directed by amendment: Claims 1, 11, and 19 were amended. Claims 10 and 20 were cancelled. Claims 21-22 were newly added. Thus, Claims 1-9, 11-19, and 21-22 are presently pending in this application.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive. Therefore, the rejection still stands.
Argument 1: Claims 2 and 3 are rejected under 35 U.S.C. 112(f) as allegedly invoking means plus function language due to using the term "configured to" with functional language without reciting sufficient structure to achieve the function. (Office Action, page 12). Applicant respectfully disagrees.
Claim 2 recites "wherein the one or more storage systems comprises a fabric
module configured to provision a software defined network for storage resources." Claim
3 recites "wherein the fabric module of the one or more storage systems presents the namespace." Accordingly, both claims 2 and 3 specifically recite a fabric module for provisioning software defined network for storage resources and for presenting a namespace.
A fabric module is defined in the specification as a communication component "used to support a software defined network." (Application as Filed, paragraph 241). FIG. 13 illustrates and describes using a fabric module for "provisioning (1302)...a software defined network for storage resources", where "a software defined network is a6
network architecture in which a network control plane and a data plane are separated." (Application as Filed, paragraph 245). The specification also describes a fabric module for "presenting (1304) a single namespace for the plurality of racks." (Application as Filed, paragraph 246).
Accordingly, claims 2 and 3 specifically recite using a fabric module for
provisioning and presenting, and the specification supports the claim language. As such, Applicant submits that the rejection of claims 2 and 3 under 35 U.S.C. 112(f) is improper and respectfully requests withdrawal.
Examiner’s Response: Regarding Claim 2, “a fabric module configured to provision a software defined network for storage resources”. There is no corresponding structure or algorithm disclosed for a fabric module configured to provision a software defined network for storage resources.
Regarding Claim 3, “wherein the fabric module of the one or more storage systems presents the namespace for the at least one rack”. There is no corresponding structure or algorithm disclosed for a fabric module of the one or more storage systems presenting the namespace for the at least one rack.
MPEP 2181(I) states “Accordingly, examiners will apply 35 U.S.C. 112(f) to a claim limitation if it meets the following 3-prong analysis:
(A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
MPEP 2181(I)(A) further states “With respect to the first prong of this analysis, a claim element that does not include the term "means" or "step" triggers a rebuttable presumption that 35 U.S.C. 112(f) does not apply. When the claim limitation does not use the term "means," examiners should determine whether the presumption that 35 U.S.C. 112(f) does not apply is overcome. The presumption may be overcome if the claim limitation uses a generic placeholder (a term that is simply a substitute for the term "means"). The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir. 2008); Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354, 80 USPQ2d 1225, 1228 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 704, 48 USPQ2d at 1886–87; Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017 (Fed. Cir. 1998). Note that there is no fixed list of generic placeholders that always result in 35 U.S.C. 112(f) interpretation, and likewise there is no fixed list of words that always avoid 35 U.S.C. 112(f) interpretation. Every case will turn on its own unique set of facts.”
In this case, a fabric module is being modified by functional language, without being modified by sufficient structure, material, or acts for performing the claimed function, thereby meeting the 3-prong analysis.
Further, Applicant did not provide where an algorithm and structure for a fabric module configured to provision a software defined network for storage resources or for the fabric module of the one or more storage systems presents the namespace for the at least one rack is disclosed in the specification.
The Applicant further argues that a fabric module is defined in the specification as a communication component "used to support a software defined network. However, a communication component is not sufficient structure for a fabric module. There is no specific structure such as a processor, memory, computer, or hardware tied to the fabric module in the specification.
Therefore, the 112(f) interpretation and 112(b) rejection still stand.
Argument 2: Claims 10 and 20 are rejected under 35 U.S.C. 112(a) as allegedly failing to comply with the written description requirement. Claims 2-4 are rejected under 35 U.S.C. 112(b) as allegedly being indefinite for failing to particularly point out and distinctly claim subject matter regarded as the invention. Applicant respectfully disagrees.
Claims 10 and 20, which have been canceled and incorporated into claims 1 and 11 respectively, are rejected for reciting a "scaling operation [comprising] updating the namespace to reflect added storage resources without reconfiguration of at least one GPU server." The Office Action asserts that the specification does not provide support for such claim limitations. Applicant, however, turns to paragraph 243, which discloses "presenting (1304) a single namespace for the plurality of racks. The single namespace enables no additional cabling, non-disruptive upgrades, scalability without downtime, and more. Any of the GPU servers may access data within the single namespace." Therefore, the specification expressly discloses scaling to update the namespace. Avoiding reconfiguration of a GPU server is implicitly taught, as the GPU server accesses storage through a persistent single namespace, which is maintained as storage resources are added. (Application as Filed, paragraphs 235, 241-247).
Accordingly, Applicant submits that claims 10 and 20 are supported by the specification and therefore rejection of the claims under 35 U.S.C. 112(a) should be withdrawn.
Examiner’s Response: The specification still does not disclose wherein the scaling operation comprises updating the namespace to reflect added storage resources without reconfiguration of the at least one GPU server. There is no mention of avoiding reconfiguration of the GPU server while updating the namespace to reflect added storage resources during scaling. The current claim language changes scope and adds to what is disclosed in the specification.
Therefore, there is insufficient support from the specification for the newly amended claims.
Argument 3: Claims 2-4 are rejected under 35 U.S.C. 112(b) for failing to disclose a
corresponding algorithm for a fabric module configured to provision a software defined network for storage resources or for presenting the namespace for at least one rack. However, Applicant submits that paragraphs 216-220 and FIGS. 10 and 13 of the Application as Filed describe various aspects of network architecture and relate to the fabric module. Accordingly, Applicant submits that claims 2-4 are supported by the specification and therefore humbly requests that claim rejections under 35 U.S.C. 112(b) be withdrawn.
Examiner’s Response: Refer to the response to Argument 1.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claims 2-3 are interpreted under 35 U.S.C. 112(f) because it/they use(s) the term “configured to” with functional language without reciting sufficient structure to achieve the function.
Regarding Claim 2, “a fabric module configured to provision a software defined network for storage resources”. There is no corresponding structure or algorithm disclosed for a fabric module configured to provision a software defined network for storage resources.
Regarding Claim 3, “wherein the fabric module of the one or more storage systems presents the namespace for the at least one rack”. There is no corresponding structure or algorithm disclosed for a fabric module of the one or more storage systems presenting the namespace for the at least one rack.
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 10 and 20 is 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. The claim(s) contains subject matter 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 10, Claim 10 recites “wherein the scaling operation comprises updating the namespace to reflect added storage resources without reconfiguration of the at least one GPU server.” The specification does not teach “wherein the scaling operation comprises updating the namespace to reflect added storage resources without reconfiguration of the at least one GPU server.”
Regarding Claim 20, Claim 20 recites “wherein the scaling operation comprises updating the namespace to reflect added storage resources without reconfiguration of the at least one GPU server.” The specification does not teach “wherein the scaling operation comprises updating the namespace to reflect added storage resources without reconfiguration of the at least one GPU server.”
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b) (b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’") (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)).
In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012); Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that "a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). "‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’" EON Corp., 785 F.3d at 621, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). "‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer." EON Corp., 785 F.3d at 623 (citations omitted). "Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient." Id. at 622. Thus, "[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm."
Claims 2-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding Claim 2, Claim 2 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
There is no corresponding algorithm disclosed for a fabric module configured to provision a software defined network for storage resources.
Regarding Claim 3, Claim 3 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
There is no corresponding algorithm disclosed for wherein the fabric module of the one or more storage systems presents the namespace for the at least one rack.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding Claims 4, Dependent Claims 4 is rejected under 35 U.S.C. 112(b) for inheriting the deficiencies of Claims 2-3.
Allowable Subject Matter
Claims 1, 5-9, 11-19, and 21-22 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 2-4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and 112(b), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In interpreting the currently amended claims, in light of the specification, the Examiner finds the claimed invention to be patentably distinct from the prior art of record.
Regarding Claims 10 and 20, the closest prior art of record Feng et al (“Feng”, US 20170220949) in view of Siebel et al (“Siebel”, US 20170006135) in further view of Shiozawa et al (“Shiozawa”, US 20090006500) and in further view of Gu (“Gu”, US 20110172963) does not teach a method comprising: performing, by a processing device for at least one component of a system, a scaling operation that is non-disruptive to another component of the system, wherein the system comprises one of more storage systems including one or more storage resources that store data and at least one Graphical Processor Unit (GPU) server configured to execute artificial intelligence (AI) or machine learning (ML) applications using the data, and wherein the scaling operation comprises updating a namespace that exposes the one or more storage resources and updating the namespace to indicate added storage resources while avoiding reconfiguration of the at least one GPU server.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Maki et al (US 20070271430), Abstract - A computer includes a management computer connected to a host computer, first and second primary storage systems, first and second secondary storage systems, a primary external storage system connected to the first and second primary storage systems and a secondary external storage system connected to the first and second secondary storage systems. The management computer controls to start copying as processing for storing copied data in the second storage area into a fourth storage area in response to a command for starting processing for storing copied data in the first storage area into a third storage area.
Wu et al (US 20140359235), Abstract - An application may store data to a dataset comprising a plurality of volumes stored on a plurality of storage systems. The application may request a dataset image of the dataset, the dataset image comprising a volume image of each volume of the dataset. A dataset image manager operates with a plurality of volume image managers in parallel to produce the dataset image, each volume image manager executing on a storage system. The plurality of volume image managers respond by performing requested operations and sending responses to the dataset image manager in parallel. Each volume image manager on a storage system may manage and produce a volume image for each volume of the dataset stored to the storage system. If a volume image for any volume of the dataset fails, or a timeout period expires, a cleanup procedure is performed to delete any successful volume images.
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/RAQIUL A CHOUDHURY/Examiner, Art Unit 2444
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