DETAILED ACTION
This communication is in responsive to Application 18/915475 filed on 10/15/2024. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims:
Claims 1-2 are presented for examination.
Restriction
The claims are obvious variation of each other at this stage. However, Applicants must keep in mind that when amending the claims to avoid any future restriction.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 4 of U.S. Patent No. 10311153. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims are obvious variations of current claims. The issued claims are narrower in scope than current claims which makes this rejection an anticipation double patenting rejection.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11567903. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims are obvious variations of current claims. The issued claims are narrower in scope than current claims which makes this rejection an anticipation double patenting rejection.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12117968. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims are obvious variations of current claims. The issued claims are narrower in scope than current claims which makes this rejection an anticipation double patenting rejection.
Claim Rejections - 35 USC § 112
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.
Claim 1 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1’s limitation “lock daemon” & “file system agent” have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the limitation meets the three-prong analysis where it uses a generic place holder “daemon” followed by functional language “configured to” where the placeholder “daemon” is not modified by sufficient structure. Note that “lock” is not known in the art to connote hardware.
Similarly, “agent” is a place holder followed by functional language “configured to” where the “agent” is not modified by sufficient structure. Note that file system is not clear here to provide the sufficient structure.
Also, the “first server” includes a processor but it is not clear whether this processor linked to the above limitations or not.
Thus, the boundaries of this claim limitation are ambiguous; 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.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Eshel et al. (hereinafter Eshel) EP0566895 A2 (attached)
Regarding Claim 1, Eshel teaches an apparatus for managing file locks in a shared network-attached file system (abstract; a common lock manager for client requests in a name space of stored files accessed using either Server Message Block, or SMB, and Network File System, or NFS, protocols [network-attached file system]), the apparatus comprising:
a first server comprising a processor, a network interface, a file system agent, and a lock daemon (the SMB client makes the request, and a processing routing makes a request using the common protocol to the file manager 30 on the host computer [a first server] which inherently has a processor, network interface since it is on a network, agent and lock mechanism, see Column 7, Lines 14-23; Column 10, Lines 1-20; Figure 1; Abstract; Column 1, Lines 53-55; Column 4, Lines 24-40; Figures 3a, 4a. Column 11, Lines 20-28; Column 23, Lines 2-9);
wherein the first server is in communication with a central lock server and a cloud-based storage via the network interface (the NFS client makes the request, and a processing routing makes a request using the common protocol to the file manager 30 on the host computer (a central lock server); Column 7, Lines 25-48; Column 10, Lines 30-37; Figure 1), wherein the lock daemon is configured to translate a local lock request for a shared file in the shared network-attached file system to a global lock request (converting the request from the NFS client 16 (local lock request) using the NFS protocol (first local protocol) to a corresponding request with a common protocol (a global lock request): Abstract; Column 3, Lines 4-18; Figure 1), the local lock request having a first protocol, the global lock request having a common protocol (converting the request from the NFS client 16 (local lock request) using the NFS protocol (first protocol) to a corresponding request with a common protocol: Abstract; Column 3, Lines 4-18; Figure 1),
Eshel does not expressly teach that the storage is “cloud storage” nor Eshel teaches and wherein the file system agent is configured to create and export to the cloud-based storage one or more structured data representations of a local file system to generate a version of the shared network-attached file system. However, these limitations are known in the art. For example, see ¶0003 in instant specification’s background as originally filed in application #14/735345, where these limitations are indicated as admitted prior art.
It would have been obvious to one of ordinary skill in the art before the effective filling date to incorporate the known in the art teachings in the system of Eshel in order to provide improved data protection, cost-effective long-term retention, and enhanced accessibility (common knowledge). Key benefits include disaster recovery, scalability, and centralized analytics (common knowledge).
Regarding Claim 2, Eshel teaches an apparatus associated with multiple filer entities, at least one of which creates and exports to a cloud data store one or more structured data representations comprising a shared versioned file system, the shared versioned file system accessible to each file entity, wherein filer entities do not interact with one another, comprising:
a processor; a computer memory storing computer program instructions executed by the processor to:
(a) intercept a local lock request initiated by the filer entity, the local lock request for write access to a shared file in the shared versioned file system (receiving a request by a second client to update a file (a local lock request) using a file manager of NFS client 16 (a user of a local file system); Abstract; Figure 1);
(b) translate the local lock request having a first local protocol to a global lock request having a common protocol (converting the request from the NFS client 16 (local lock request) using the NFS protocol (first local protocol) to a corresponding request with a common protocol (a global lock request): Abstract; Column 3, Lines 4-18; Figure 1);
(c) transmit the global lock request to a central lock server (the NFS client makes the request, and a processing routing makes a request using the common protocol to the file manager 30 on the host computer (a central lock server); Column 7, Lines 25-48; Column 10, Lines 30-37; Figure 1);
and (d) receive a global lock for the shared file if the central lock server determines that the global lock is available (calling a lock manager program to establish a lock by the host computer 12 (central lock server). determining the access/share status based on client request parameters (determines the global lock is available); Column 10, Lines 26-51; Figure 1).
Eshel does not expressly teach that the storage is “cloud storage” nor Eshel teaches at least one of which creates and exports to a cloud data store one or more structured data representations comprising a shared versioned file system. However, these limitations are known in the art. For example, see ¶0003 in instant specification’s background as originally filed in application #14/735345, where these limitations are indicated as admitted prior art.
It would have been obvious to one of ordinary skill in the art before the effective filling date to incorporate the known in the art teachings in the system of Eshel in order to provide improved data protection, cost-effective long-term retention, and enhanced accessibility (common knowledge). Key benefits include disaster recovery, scalability, and centralized analytics (common knowledge).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHRAN ABU ROUMI whose telephone number is (469)295-9170. The examiner can normally be reached Monday-Thursday 6AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emmanuel Moise can be reached at 571-272-3865. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MAHRAN ABU ROUMI
Primary Examiner
Art Unit 2455
/MAHRAN Y ABU ROUMI/ Primary Examiner, Art Unit 2455
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