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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-20 of U.S. Patent No. 12,222,814. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application claims a system that corresponds to the computer readable medium of the reference patent. Refer to the following chart:
18/916,156
US 12,222,814
Same/Different?
Claim 1. A system, comprising: one or more hardware processors; and a non-transitory storage medium having stored therein instructions that are executable by the one or more hardware processors to perform operations comprising:
Claim 11. A non-transitory storage medium having stored therein instructions that are executable by one or more hardware processors to perform operations comprising:
Different
assigning, at a production site, a priority to one portion of a dataset to be backed up, and the one portion is one of a group of portions that together make up the dataset, and a respective priority of each of the portions of the dataset is relative to the respective priorities of the other portions of the dataset; and
assigning, at a production site, a priority to one portion of a dataset to be backed up, and the one portion is one of a group of portions that together make up the dataset, and a respective priority of each of the portions of the dataset is relative to the respective priorities of the other portions of the dataset; and
Same
when an air gap between the production site and a storage vault is closed, and based on a relationship between the priority of the one portion and the respective priorities of one or more of the other portions, backing up, by way of the closed air gap, the one portion of the dataset to the storage vault.
when an air gap between the production site and a storage vault is closed, and based on a relationship between the priority of the one portion and the respective priorities of one or more of the other portions, backing up, by way of the closed air gap, the one portion of the dataset to the storage vault.
Same
The table above shows that, although the corresponding claims are directed towards different statutory categories, US Patent 12,222,814 implemented with one or more hardware processors would render the claims in the instant application obvious. It is clearly obvious that US Patent 12,222,814 substantially discloses the subject matter of claim 1 of the present application. Dependent claims 2-10 of the present application similarly correspond to the dependent claims 12-20 of the reference patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN DARE whose telephone number is (571)272-4069. The examiner can normally be reached M-F 9:00-5:00.
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/RYAN DARE/Examiner, Art Unit 2132
/HOSAIN T ALAM/Supervisory Patent Examiner, Art Unit 2132