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 .
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-13, 16, and 18-20 of U.S. Patent No. 12,158,821. Although the claims at issue are not identical, they are not patentably distinct from each other because the entirety of claims 1-16 of the instant application are comprised within claims 1-5, 7-13, 16, and 18-20 of U.S. Patent No. 12,158,821.
Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-5 and 9 and 12-14 and 18 of U.S. Patent No. 12,158,821. Although the claims at issue are not identical, they are not patentably distinct from each other because the computer-readable medium disclosed in claims 17-20 of the instant application is intrinsic to the method recited in claims 1-5, 7-13, 16, and 18-20 of U.S. Patent No. 12,158,821 and using the computer program product of claims 17-20 of the instant application to emulate a computer hardware system, such as the system recited in claims 12-14 and 18 of U.S. Patent No. 12,158,821 is inherent in the art.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter.
As per claim(s) 15-20, they are rejected because the applicant has provided evidence that the applicant intends the term "non-transitory computer-readable medium" to include non-statutory matter. The applicant describes a computer-readable storage medium as including open ended language and thus it is reasonable to interpret it to include all possible mediums, including non-statutory mediums (A non-transitory storage medium may be any available medium that can be accessed by a general purpose or special purpose computer. By way of example, and not limitation, non-transitory computer-readable media can comprise RAM, ROM, electrically erasable programmable ROM (EEPROM), compact disk (CD) ROM or other optical disk storage, magnetic disk storage or other magnetic storage devices, or any other non-transitory medium that can be used to carry or store desired program code means in the form of instructions or data structures and that can be accessed by a general-purpose or special-purpose computer, or a general-purpose or special-purpose processor. Also, any connection is properly termed a computer-readable medium. For example, if the software is transmitted from a website, server, or other remote source using a coaxial cable, fiber optic cable, twisted pair, digital subscriber line (DSL), or wireless technologies such as infrared, radio, and microwave, then the coaxial cable, fiber optic cable, twisted pair, DSL, or wireless technologies such as infrared, radio, and microwave are included in the definition of medium. Disk and disc, as used herein, include CD, laser disc, optical disc, digital versatile disc (DVD), floppy disk and Blu-ray disc where disks usually reproduce data magnetically, while discs reproduce data optically with lasers. Combinations of the above are also included within the scope of computer-readable media, [0139]). The words "storage", "tangible", and/or "recording" are insufficient to convey only statutory embodiments to one of ordinary skill in the art absent an explicit and deliberate limiting definition or clear differentiation between storage media and transitory media in the disclosure. As such, the claim(s) is/are drawn to a form of energy. Energy is not one of the four categories of invention and therefore this/these claim(s) is/are not statutory. Energy is not a series of steps or acts and thus is not a process. Energy is not a physical article or object and as such is not a machine or manufacture. Energy is not a combination of substances and therefore not a composition of matter.
Since the specification describes "a non-transitory computer-readable medium" as comprising both transitory and non-transitory media, the claim encompasses both and is therefore non-statutory.
The examiner suggests amending the specification to remove the term "non-transitory” in order to not redefine the term.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yadav (U.S. Patent No. 12,135,613) discloses a system for conducting full, incremental, and differential snapshot backups (col. 9, ln. 47 – col. 10, ln. 55, col. 13, ln. 41 – col. 14, ln. 3).
Nehra (U.S. Patent No. 12,131,050) discloses restoring a captured snapshot into an initially empty volume (col. 18, ln. 3-26, col. 20, ln. 64 – col. 21, ln. 20).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA P LOTTICH whose telephone number is (571)270-3738. The examiner can normally be reached Mon - Fri, 9:00am - 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bryce Bonzo can be reached on 5712723655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA P LOTTICH/ Primary Examiner, Art Unit 2113
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