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 § 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 10-14, 77-81, 138 and 142 are rejected under 35 U.S.C. 103 as being unpatentable over Kramer et al. (US 7,636,872), hereinafter referred to as Kramer in view of Oyoshi (US 2016/0246524), hereinafter referred to as Oyoshi.
Referring to claim 10, Kramer teaches, as claimed, a method for backing up data, comprising: receiving, by a host controller of a data storage device in a computing system, an indication of a threatening event (i.e.-detecting an imminent threat to data integrity, col. 1, lines line 53; col. 4, lines 8-12 & 19-20 and see fig. 2, block 210) in the computing system; and backing up, by the host controller, one or more data files in the data storage device (i.e.-backup copy of stored data, col. 1, lines 54-55; col. 4, lines 50-56; and col. 5, lines 1-8 & 34-38).
However, Kramer does not teach the steps of: delaying, by the host controller, the threatening event; and allowing, by the host controller, the threatening event after completion of the backing up of the one or more data files.
On the other hand, Oyoshi disclsoes delaying of a threatening event (i.e.-temporarily terminating operation of data processing, such as data erasure/deletion, page 3, ¶37, lines 10-12); and allowing the threatening event after completion of the backing up of the one or more data files (i.e.-allowing erasure of the data after data backup completion, page 3, ¶38, lines 15-17; 28-34 and 37-40).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the teachings of Kramer and incorporate the steps of delaying, by the host controller, the threatening event; and allowing, by the host controller, the threatening event after completion of the backing up of the one or more data files, as taught by Oyoshi. The motivation for doing so would have been to identify and backup non-corrupted and/or clean data and, continue erasing any compromised data due to the threatening event.
As to claim 11, the modified Kramer teaches the method of claim 10, wherein the threatening event poses a threat to the one or more data files (col. 4, lines 8-11).
As to claim 12, the modified Kramer teaches the method of claim 10, wherein the one or more data files are pre-selected for back up by a user of the computing system (col. 4, lines 48-53).
As to claim 13, the modified Kramer teaches the method of claim 10, wherein the one or more data files are backed up by storage of the one or more data files in a predetermined location of the data storage device (col. 5, lines 1-8).
As to claim 14, the modified Kramer teaches the method of claim 10, wherein the threatening event is deletion or modification of the one or more data files (col. 4, lines 9-11 and 15-20).
As to claim 138, the modified Kramer in view of Oyoshi innately teaches the method of claim 10, wherein the data storage device comprises a flash memory, and the predetermined location within the data storage device comprises one or more data storage blocks of the flash memory (see Oyoshi, page 2, ¶23, lines 29-31 and page 5, ¶55, lies 28).
Referring to claims 77-81 and 142, the claims are substantially the same as claims 10-14 and 138, hence the rejection of claims 10-14 and 138 is applied accordingly.
Examiner’s note:
Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the Applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passages as taught by the prior art or disclosed by the Examiner.
Claim Objections
Claims 135-137 and 139-141 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed on 06/05/2026 have been fully considered but they are not deemed to be persuasive.
Applicants argued:
The "event" the Examiner maps onto the claimed "threatening event" is therefore Oyoshi's own deliberate data-erasure operation, initiated by the apparatus itself in response to a lifetime determination, not an externally-originating threat to the integrity of the data that is detected and reacted to as in the present independent claim 10.
The Examiner disagrees with the above statement. In response to applicants’ argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e.-an externally-originating threat) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argued:
Oyoshi describes the apparatus "temporarily terminat[ing] the operation of the data processing apparatus" upon occurrence of an error and rejecting user operation. That is an error-driven shutdown of the apparatus; it is not the act of holding a detected threat in abeyance so that the very same threat may later be permitted to proceed. Likewise, paragraph [0038] of Oyoshi asserted by the Examiner to disclose the "allowing" step of the present independent claim 10 describes the apparatus carrying out its own collective erasure after backup completes. Thus, in Oyoshi, there is no antecedent external threat that is first detected, then delayed, and then allowed; rather, there is only the apparatus performing a backup and then performing the erasure it itself decided to perform.
The Examiner disagrees with the above statement. As discussed above, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., holding a detected threat and antecedent external threat that is first detected,…) are not recited in the rejected claim(s). See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argued:
Reading Oyoshi's self-initiated erasure as the claimed "threatening event" therefore requires the term to mean something entirely different from what it means when applied to Kramer. In Kramer, the "threat" is an incoming malware infection or hardware failure that the system reacts against. In Oyoshi, the "event" is the system's own housekeeping erasure. A prior-art combination that depends on assigning two incompatible meanings to the same claim term does not establish a prima facie case of obviousness, because no single event in the combined teachings satisfies the detect-delay-allow sequence the claim requires.
The Examiner disagrees with the above statement. Kramer in view of Oyoshi, as combined, do teach detecting of a threat, delaying the threat, backing up of any stored data, and allowing the delayed (i.e.-temporarily terminated) threat as discussed in the claim rejections above.
Applicants argued:
First, the stated motivation impermissibly fuses two unrelated mechanisms drawn from two different references and, in doing so, reveals its reliance on hindsight gleaned from Applicant's own disclosure. The notion of identifying "non-corrupted and/or clean data" comes from Kramer's clean-snapshot teaching, while "continue erasing any compromised data" comes from Oyoshi's end-of-life erasure. Neither reference suggests joining these concepts, and the only place the detect-delay-backup-allow sequence appears as an integrated whole is in the present application. As the Supreme Court has instructed, "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also MPEP § 2143. Reliance on a motivation that materializes only when one already knows the claimed invention is the hallmark of impermissible hindsight reconstruction and lacks the requisite rational underpinning.
The Examiner disagrees with the above statement. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation for combining the references would have been to identify and backup non-corrupted and/or clean data and, continue erasing any compromised data due to the threatening event.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicants argued:
Therefore, Kramer does not disclose, teach, or suggest backing up the data files "in a predetermined location of the data storage device" as recited in claims 13 and 80. Indeed Kramer teaches away from the limitations of claims 13 and 80.
…like Kramer, Oyoshi preserves data by moving it off the at-risk device, not by storing it in a predetermined location within that same device. Accordingly, withdrawal of the rejections under 35 U.S.C. § 103 is respectfully requested for these further reasons with respect to claims 13 and 80.
The Examiner disagrees with the above statement. Kramer innately disclsoes “a predetermined location of the data storage device" (i.e.-a target media on which backup data are stored, such as a storage device 150 which may be the component of the computing device 100. Please see fig. 1 and col. 5, lines 1-3 and 5-7).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIAS MAMO whose telephone number is (571)270-1726. The examiner can normally be reached Mon-Thu, 7 AM - 5 PM.
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/Elias Mamo/Primary Examiner, Art Unit 2184
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