DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive. Applicant’s arguments are summarized as:
Prior art of record does not teach the new limitation, “duplicating the data to the other volume while avoiding accessing the volume”.
Regarding argument ‘a’, applicant asserts prior art teaches a “flash copy” operation that does not actually copy the data, but instead merely creates links to the data to be copied. The real copy operation is delayed until a later time, but the copy request is satisfied sooner. In contrast, the applicant argues, the present invention copies the date while avoiding access to the volume being copied. However, this appears to contract applicant’s own specification, paragraph 36, which states “the storage controller is able to perform the requested copy offload operation without actually copying the data blocks in question. Instead, the copy offload operation is fulfilled solely by making changes to the volume-to-medium mapping table and the medium mapping table. Paragraph 38 further explains “the steps of the copy offload operation corresponding to the source volume may be delayed until a request targeting the source volume is received by the storage controller”. This appears to resemble the “flash copy” operation of the prior art, in that the data at the source is actually copied at first, but just a mapping table is updated.
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 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As stated in the response to applicant’s arguments, applicant’s specification (paragraphs 36-38) states that “the storage controller is able to perform the request copy offload operation without actually copying the data blocks in question”, and that “the steps of copy offload operations corresponding to the source volume may be delayed until request targeting the source volume is received by the storage controller”. Therefore, while delayed, the copy offload operation still has to access the volume when the operation is finally carried out. It is unclear how the real (although delayed) duplication of data of a volume can occur without accessing the volume.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-4, 6-11, 13-20 is/are rejected under pre-AIA 35 U.S.C. 102b as being anticipated by Hutchison (pub #US 20100250882 A1).
Regarding claim 1, Hutchison discloses a method (method of using the storage system shown in figure 1, method details are shown in figures 3-9), comprising: receive a request to duplicate data from a volume to another volume (copy sections of data, A-T, from 12a to 12b, paragraph 28), associating, by a processing device (storage controller in figure 1) metadata that is also associated with a physical storage address for the data to the other volume (flashcopy 20 that creates logical data structure linking to the original physical data, without actually copying the data from the physical address, data structure illustrating 12a shown in figure 3, paragraph 28), servicing the request by duplicating the data to the other volume while avoiding accessing the volume (satisfies the current copy request without actually copying the data from the physical address until a later operation; paragraph 28).
Regarding claim 2, the above reference discloses the method of claim 1 wherein upon fulfilling the request, the duplicated data is accessible through the other volume without accessing the volume (flashcopy does not actually write the original data, but simply links another storage volume to the original data, paragraph 28; after the data is finally copied at a later time, it implicitly can be accessed at the new location without accessing the original location).
Regarding claim 3, the above reference discloses the method of claim 1, further comprising delaying the creation of the metadata until receiving a duplicate request targeting the volume (the flashcopy 20 is causes the creation of the reference data, paragraph 29).
Regarding claim 4, the above reference discloses the method of claim 1, further comprising: receiving a duplicate request targeting the other volume; (new backup volume 12c, paragraph 31); creating third metadata (figure 7); storing an indication that the second metadata underlies the third metadata (figure 7); and associating the other volume with the additional metadata (a new backup volume 12c, represented by the data structure shown in figure 7, paragraph 31).
Regarding claim 6, the above reference discloses the method of claim 1, wherein the request to duplicate data at the volume to a first range of the other volume is a copy operation to copy the data at a first range of the volume to a second range of the other volume (flashcopy 20 is a copy of the original volume 12a, paragraph 28).
Regarding claim 7, the above reference discloses the method of claim 6, further comprising: buffering the copy operation (delaying the actual copying of data of the flashcopy until later, when a data write is made, paragraphs 28-29); receiving a second request to duplicate data to the first range of the volume (another copy request, figure 7, paragraph 31); and responsive to receiving the second request, proceeding to perform the copy operation (a new backup volume 12c, represented by the data structure shown in figure 7, paragraph 31).
Regarding claims 8-11, 13-20, examiner notes that these claims are substantially similar to claims 1-4, 6, and 7 above. The same grounds of rejection are applied.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C SUN whose telephone number is (571)272-2675. The examiner can normally be reached Monday - Friday, 12-8:30 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, Idriss Alrobaye can be reached on (571) 270-1023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT C SUN/Primary Examiner, Art Unit 2181