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 .
Duty to Disclose
The Office hereby reminds the applicant, attorneys, agents, and other individuals who are subject to the duty of disclosure as set forth in CFR 1.56 of their duty to disclose information material to the patentability of the application to the USPTO. The Office recommends reviewing MPEP section 2000 – Duty to Disclose of the MPEP and its associated subsections.
MPEP section 2001.06 states:
The duty to disclose material information extends to information such individuals are aware of prior to or at the time of filing the application or become aware of during the prosecution thereof before the application is granted. Individuals covered by 37 CFR 1.56 may be or become aware of material information from various sources such as, for example, co-workers, trade shows, communications from or with competitors, potential infringers, or other third parties, related foreign applications (see MPEP § 2001.06(a)), prior or copending United States patent applications (see MPEP § 2001.06(b)), related litigation and/or post-grant proceedings (see MPEP § 2001.06(c)), preliminary examination searches and supporting information related to regulatory review (see MPEP § 2001.06(e)).
MPEP Section 2004 – Aids to Compliance with Duty of Disclosure offers possible procedures which could help avoid problems with the duty to disclose. The following is a subset of the listed aids that are most relevant:
9. Do not rely on the examiner of a particular application to be aware of other applications belonging to the same applicant or assignee. It is desirable to call such applications to the attention of the examiner even if there is only a question that they might be "material to patentability" of the application the examiner is considering. See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003) (contrary decision of another examiner reviewing substantially similar claims is ‘material’; copending application may be ‘material’ even though it cannot result in a shorter patent term, when it could affect the rights of the patentee to assign the issued patents). It is desirable to be particularly careful that prior art or other information in one application is cited to the examiner in other applications to which it would be material. Do not assume that an examiner will necessarily remember, when examining a particular application, other applications which the examiner is examining, or has examined. A "lapse on the part of the examiner does not excuse the applicant."KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1576, 228 USPQ 32, 35 (Fed. Cir. 1985); see also MPEP § 2001.06(b).
12. Submit information promptly. An applicant, attorney, or agent who is aware of prior art or other information and its significance should submit the same early in prosecution, e.g., before the first action by the examiner, and not wait until after allowance. Potentially material information discovered late in the prosecution should be immediately submitted. That the issue fee has been paid is no reason or excuse for failing to submit information. See Elmwood Liquid Products, Inc. v. Singleton Packing Corp., 328 F. Supp. 974, 170 USPQ 398 (M.D. Fla. 1971)
“The examiner does not investigate and reject original or reissue applications under 37 CFR 1.56.”, nor do they make determinations involving issues of fraud, inequitable conduct, and/or violation of duty of disclosure, these determinations are best left to the courts. However, the examiner asserts that the applicant was clearly aware of information that was "material to patentability" of the filed claims of this application, and at the very least did not submit such information in a timely fashion.
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 being unpatentable over claims 1-16 respectively of U.S. Patent No. 10,963,174. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the currently claimed subject matter is included in the patented claims.
Claims 1-16 are rejected on the ground of nonstatutory double patenting being unpatentable over claims 1-20 of U.S. Patent No. 11,567,678. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the currently claimed subject matter is included in the patented claims.
Claims 1-16 are rejected on the ground of nonstatutory double patenting being unpatentable over claims 1-18 of U.S. Patent No. 11,614,874. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the currently claimed subject matter is included in the patented claims.
Claims 1-16 are rejected on the ground of nonstatutory double patenting being unpatentable over claims 1-19 of U.S. Patent No. 12,197,752. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the currently claimed subject matter is included in the patented claims.
Please note that MPEP § 804 states:
“A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional. As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03. “
In accordance with MPEP § 804 and §714.03 the examiner will hold any response/amendments to this office action as NON-COMPLIANT without any additional extensions of time that do not contain one of:
An approved Terminal Disclaimer, OR
A Showing that the claims subject to the rejection are patentably distinct from the reference claims.
In regards to b.) The showing must be made against the claims subject to the rejection (not amended claims), as such the claims as they were originally written and rejected. A showing against amended claims is NOT proper, as the original claims have already been examined (i.e. elected by original presentation, see MPEP §821.03), and presenting all amended claims directed to another patently distinct invention will result in the claims not being entered and being the response designated as nonresponsive. A proper showing or a filing of a terminal disclaimer is required for further consideration of the rejection of the claims. Depending on the claims that have been filed and rejected under NSDP, it may be practically impossible for any arguments and/or evidence to be capable of providing a proper showing that the claims as filed are patentably distinct. In this case, the applicant should file the terminal disclaimer, as it is required for a complete response to this action, and further consideration of the application.
As show below, the filing of a Terminal Disclaimer is not an admission, creates no issues of estoppel, and can be petitioned to be removed once the claims are in condition for allowance and the applicant believes (and can show) the allowable claims are now patentably distinct from the original reference claims.
“The filing of a terminal disclaimer to obviate a rejection based on nonstatutory double patenting is not an admission of the propriety of the rejection. Quad Environmental Technologies Corp. v. Union Sanitary District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991). In Quad Environmental Technologies, the court indicated that the "filing of a terminal disclaimer simply serves the statutory function of removing the rejection of double patenting, and raises neither a presumption nor estoppel on the merits of the rejection." “(MPEP § 804.02).
“If a terminal disclaimer is filed in an application in which the claims are then canceled or otherwise shown to be patentably distinct from the reference claims, the terminal disclaimer may be withdrawn before issuance of the patent by filing a petition under 37 CFR 1.182 requesting withdrawal of the recorded terminal disclaimer. A terminal disclaimer may not be withdrawn after issuance of the patent. See MPEP § 1490, subsection VIII, for a complete discussion of withdrawal of a terminal disclaimer.” (MPEP § 804.02).
Claim Objections
Claim 16 is objected to because of the following informalities: It appears claim 16 should depend on claim 14 and not claim 4. Prior art has been applied as if the claim depends on claim 14. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Waterhouse (US 7,734,643).
In regards to claims 1 and 12 Waterhouse teaches
a data generating source configured to generate a data streams; (Col. 8:50-53 teaches a data object (data stream) is received to be stored in the storage system (i.e. a source is generating the data to be stored).
a plurality of nodes in which each of the nodes of the plurality of nodes includes a processor and memory, (fig. 2 teaches a plurality of peer node computer systems 202A-202n), fig. 3 teaches each node contains a processor 302 and memory 304)
is configured to receive the generated data stream. (Col. 8:50-53 teaches the archive module 410 receives the data object (data stream), which as seen via figs. 2-4 the archive module 410 is part of symmetric storage system application 204 that is located on each peer node computer system 202A-202n)
In regards to claims 2 and 13 Waterhouse teaches
wherein the system is configured to fragment the data stream, and store different fragments on different nodes of the plurality of nodes. (Col 3:4-16 and fig. 1 teaches the received data object (data stream) is fragmented and the data is stored on the data storage system in different nodes dependent on the layout (see also fig. 11).
In regards to claims 3 and 14 Waterhouse teaches
wherein the system is configured to associate metadata to a fragment of the data stream providing instructions on how to recreate the data stream from the fragment. (Col 12:37-39 teaches the layout map ID is stored with each data fragment. Fig. 9. shows a layout map which shows what nodes (and alternative nodes) each data fragment is stored on (i.e. so the fragments can be reconstructed).
In regards to claims 4 and 15 Waterhouse teaches
wherein the metadata indicates a node to store the fragment but not a specific address of a memory location being used for the fragment. (Fig. 9 shows a node and associated storage disk for where fragments are to be stored, but doesn’t indicate a specific address)
In regards to claims 5 and 16 Waterhouse teaches
wherein a node is configured to receive the fragment and store the fragment at the memory of the node if the metadata indicates the node or pass the fragment to another node if the metadata indicates the fragment is not for the node. (Col 3:4-16 and fig. 1 teaches the received data object (data stream) is fragmented and the data is stored on the data storage system in different nodes dependent on the layout (see also fig. 11).
In regards to claim 6 Waterhouse teaches
wherein the system is configured to save the fragments in file formats in which a memory location corresponding to a fragment is unknown to other nodes of the plurality of nodes except the node in which the fragment is stored. (Fig. 9 teaches fragments are stored via a layout map which only indicates nodes and disks where each fragment are stored. Fig. 3 teaches each node contains a file management system 310 for storing the fragments (i.e. in a file format). Col 8:61-67 teaches that the each object contains a unique object ID which can be used to determine the location of the object and its fragments.)
In regards to claim 7 Waterhouse teaches
wherein a mapping of specific memory locations is managed locally on a local node providing the memory for a specific fragment of the data stream. (Fig. 3 teaches each node contains a file management system 310 for storing the fragments (i.e. the storing of each fragment is managed locally by the file management system).
In regards to claim 8 Waterhouse teaches
wherein the system does not include a centralized data storage location. (Fig. 2 and Col 3:20-30 teaches data is distributively stored on the peer nodes and that each node contains an interface for storing/receiving data from the distributed data storage system.)
In regards to claim 9 Waterhouse teaches
wherein the plurality of nodes are configured to store portions of the data stream to define a decentralized storage network. (Fig. 2 and Col 3:20-30 teaches data is distributively stored on the peer nodes and that each node contains an interface for storing/receiving data from the distributed data storage system.)
In regards to claim 10 Waterhouse teaches
further comprising a memory controller associated with each node of the plurality of nodes, wherein the memory controller is configured with a naming convention that identifies available memory for each of the plurality of nodes without knowing a specific memory location within the node. (fig. 3 teaches each node contains a processor, operating system and file management system (i.e. memory controller), where the fragments are stored/allocated/accessed by the file management system)
In regards to claim 11 Waterhouse teaches
wherein the memory controller is configured to have access to the memory and specific memory locations available to the node associated with the memory controller. (fig. 3 teaches each node contains a processor, operating system and file management system (i.e. memory controller), where the fragments are stored/allocated/accessed by the file management system)
EXAMINER’S NOTE
Examiner has cited particular paragraphs, figures, and/or columns and line numbers in the references applied to the claims above for the convenience of the Applicants. 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 Applicants in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
The applicant is reminded of what constitutes a proper reply to this office action is detailed in 37 CFR 1.111, and that the examiner has the discretion to treat any response that fails to meet ALL the requirements of that section as NON-RESPONSIVE without any additional extensions of time (see MPEP 714.03).
Conclusion
This is a continuation of applicant's earlier Application No. 18/171,870 and 16/777,613. Where these exact claims were finally rejected in the final rejection dated 7/20/2023 for the ‘870 application, and were rejected in the non-final rejection dated 6/8/2020 in the ‘613 application. All claims are drawn to the same invention claimed in the earlier applications and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON W BLUST whose telephone number is (571)272-6302. The examiner can normally be reached 12-8:30 EST.
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, Hosain Alam can be reached on (571) 272-3978. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON W BLUST/Primary Examiner, Art Unit 2137