DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
RESPONSE TO ARGUMENTS
Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive.
In response to applicant’s arguments with regard to the independent claim 1 rejected under 35 U.S.C. 103(a) that the combination of the references does not teach/suggest the claimed feature “… a storage protocol of the storage device …” because Stark’s data mode and command mode of an SDN switch refer to operational states, and not protocols; applicant's arguments have fully been considered, but are not found to be persuasive.
The examiner respectfully disagrees, and to further clarify, Stark’s data mode would have a corresponding protocol for processing received data with payload and Stark’s command mode would have a corresponding protocol for processing received data as command, and as Stark’s data mode and command mode operate in associated with a storage device/data center, Stark’s data mode and command mode are equivocated to applicant’s claimed “storage protocols”.
Additionally, please note that the features upon which applicant relies (i.e., a set of rules and standards that define how data is stored, accessed, managed within a computer system or network) 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).
As applicant appears to be applying the above arguments for independent claim 1 towards independent claims 11 and 15, the examiner will also apply the above response for independent claim 1 towards independent claims 11 and 15.
I. REJECTIONS BASED 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,229,067. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the storage system described in claim 1 of the instant application (18/973,890) are taught/suggested in claim 1 of the patented application (US Patent 12,229,067). (Please note that as both the instant and patented applications claimed similar subject matters, the examiner is selecting one of the independent claims from the instant and patented applications for the instant double patenting rejection)
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,649,940 in view of Stark et al. (US Patent 9,503,372). (Please note that as both the instant and patented applications claimed similar subject matters, the examiner is selecting one of the independent claims from the instant and patented applications for the instant double patenting rejection)
As per claim 1, U.S. Patent No. 10,649,940 teaches/suggests a storage system comprising: a connector; and a storage device communicatively coupled to the connector, the storage device being configured according to a first protocol based on a first signal received by the connector, the first signal causing a network port of the storage device and a storage protocol of the storage device to operate accordingly (Claim 1).
U.S. Patent No. 10,649,940 does not teach the storage system comprising: change from a first status to a second status.
Stark teaches/suggests a storage system comprising: change from a first status to a second status (e.g. associated with changing between command mode and data mode: col. 3, ll. 39-46) (Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; and col. 10, l. 64 to col. 11, l. 57).
It would have been obvious for one of ordinary skill in this art, before the effective filing date of the claimed invention, to include Stark’s modes into U.S. Patent No. 10,649,940’s system to obtain the invention as specified in claim 1.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,119,963 in view of Stark et al. (US Patent 9,503,372). (Please note that as both the instant and patented applications claimed similar subject matters, the examiner is selecting one of the independent claims from the instant and patented applications for the instant double patenting rejection)
As per claim 1, U.S. Patent No. 11,119,963 teaches/suggests a storage system comprising: a connector; and a storage device communicatively coupled to the connector, the storage device being configured according to a first protocol based on a first signal received by the connector, the first signal causing the storage device and a storage protocol of the storage device to operate accordingly (Claim 1).
U.S. Patent No. 11,119,963 does not teach the storage system comprising: a network port to change from a first status to a second status.
Stark teaches/suggests a storage system comprising: network port to change from a first status to a second status (e.g. associated with changing between command mode and data mode: col. 3, ll. 39-46) (Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; and col. 10, l. 64 to col. 11, l. 57).
It would have been obvious for one of ordinary skill in this art, before the effective filing date of the claimed invention, to include Stark’s modes into U.S. Patent No. 11,119,963’s system to obtain the invention as specified in claim 1.
II. REJECTIONS BASED ON PRIOR ART
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Valavi et al. (US Pub.: 2004/0066790) in view of Stark et al. (US Patent 9,503,372).
As per claim 1, Valavi teaches/suggests a storage system comprising: a connector (e.g. associated with connector for single-port, multiple protocol output: [0033]); and a storage device (e.g. associated with server: [0019]) communicatively coupled to the connector, the storage device being configured according to a first protocol based on a first signal received by the connector, the first signal causing a network port of the storage device to operate accordingly (e.g. associated with detecting protocol and operating accordingly: [0004]; [0015]) ([0004]; and [0015]-[0032]).
Valavi does not teach the system comprising: a storage protocol of the storage device to change from a first status to a second status.
Stark teaches/suggests a storage system comprising: a storage protocol of the storage device to change from a first status to a second status (e.g. associated with protocol for data center to change between command mode and data mode, wherein the command mode would have corresponding protocol for processing data as command and data mode would have corresponding protocol for processing received data with payload: col. 3, ll. 39-46) (Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; and col. 10, l. 64 to col. 11, l. 57).
It would have been obvious for one of ordinary skill in this art, before the effective filing date of the claimed invention, to include Stark’s modes into Valavi’s system for the benefit of implementing a less expensive architecture that efficiently detect and handle data flow (Stark, col. 1, ll. 8-10; col. 2, ll. 36-37; col. 14, ll. 39-43; col. 15, ll. 53-56) to obtain the invention as specified in claim 1.
As per claim 2, Valavi and Stark teach/suggest all the claimed features of claim 1 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the storage device is reconfigurable according to a second protocol based on a second signal received by the connector, the second signal causing the network port of the storage device to change from the second status to the first status (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57).
As per claim 3, Valavi and Stark teach/suggest all the claimed features of claim 1 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the network port comprises an Ethernet port (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57).
As per claim 4, Valavi and Stark teach/suggest all the claimed features of claim 1 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the second status corresponds to a network engine of the storage device being enabled (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57).
As per claim 5, Valavi and Stark teach/suggest all the claimed features of claim 4 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the network port is configured as a data plane in the second status (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 6, Valavi and Stark teach/suggest all the claimed features of claim 4 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the second status corresponds to an interconnect lane of the storage device being configured to operate as a control plane (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 7, Valavi and Stark teach/suggest all the claimed features of claim 1 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the first status corresponds to an interconnect engine of the storage device being enabled (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 8, Valavi and Stark teach/suggest all the claimed features of claim 1 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the connector is capable of supporting a peripheral component interconnect express (PCIe) protocol (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 9, Valavi and Stark teach/suggest all the claimed features of claim 1 above, where Valavi and Stark further teach/suggest the storage system further comprising a midplane communicatively coupled to the connector, the midplane comprising a drive bay to insert the storage device and to insert a second storage device (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 1-3; Fig. 5; col. 1, ll. 15-62; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 10, Valavi and Stark teach/suggest all the claimed features of claim 9 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the midplane configures the storage device to operate in a high-availability (HA) mode (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 11, Valavi teaches/suggests a storage system comprising: a logic device configured as an interface to a storage device (e.g. associated with interfacing with server: [0033]), the logic device being configured according to a first protocol based on a first signal causing a network port of the storage device to operate accordingly (e.g. associated with detecting protocol and operating accordingly: [0004]; [0015]) ([0004]; and [0015]-[0032])
Valavi does not teach the system comprising: a storage protocol of the storage device to change from a first status to a second status.
Stark teaches/suggests a storage system comprising: a storage protocol of the storage device to change from a first status to a second status (e.g. associated with protocol for data center to change between command mode and data mode, wherein the command mode would have corresponding protocol for processing data as command and data mode would have corresponding protocol for processing received data with payload: col. 3, ll. 39-46) (Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; and col. 10, l. 64 to col. 11, l. 57).
It would have been obvious for one of ordinary skill in this art, before the effective filing date of the claimed invention, to include Stark’s modes into Valavi’s system for the benefit of implementing a less expensive architecture that efficiently detect and handle data flow (Stark, col. 1, ll. 8-10; col. 2, ll. 36-37; col. 14, ll. 39-43; col. 15, ll. 53-56) to obtain the invention as specified in claim 11.
As per claim 12, Valavi and Stark teach/suggest all the claimed features of claim 11 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the logic device is capable of reconfiguring the storage device according to a second protocol based on a second signal (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 13, Valavi and Stark teach/suggest all the claimed features of claim 11 above, where Valavi and Stark further teach/suggest the storage system comprising wherein the logic device is a field-programmable gate array (FPGA) or an application-specific integrated circuit (ASIC) (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious and/or well-known to one of ordinary skilled in the art to use ASIC or FPGA for implementing the integrated circuit architecture.
As per claim 14, Valavi and Stark teach/suggest all the claimed features of claim 11 above, where Valavi and Stark further teach/suggest the storage system comprising wherein: the first status comprises being enabled for a data transfer; and the second status comprises being disabled for the data transfer (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 15, Valavi teaches/suggests a method for storage, the method comprising receiving, by a connector (e.g. associated with connector for single-port, multiple protocol output: [0033]) communicatively coupled to a storage device (e.g. associated with server: [0019]), a first signal, the first signal causing a network port of the storage device to operate accordingly (e.g. associated with detecting the protocol and operating accordingly: [0004]; [0015]) ([0004]; and [0015]-[0032]).
Valavi does not teach the method comprising: a storage protocol of the storage device to change from a first status to a second status.
Stark teaches/suggests a method comprising: a storage protocol of the storage device to change from a first status to a second status (e.g. associated with protocol for data center to change between command mode and data mode, wherein the command mode would have corresponding protocol for processing data as command and data mode would have corresponding protocol for processing received data with payload: col. 3, ll. 39-46) (Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; and col. 10, l. 64 to col. 11, l. 57).
It would have been obvious for one of ordinary skill in this art, before the effective filing date of the claimed invention, to include Stark’s modes into Valavi’s system for the benefit of implementing a less expensive architecture that efficiently detect and handle data flow (Stark, col. 1, ll. 8-10; col. 2, ll. 36-37; col. 14, ll. 39-43; col. 15, ll. 53-56) to obtain the invention as specified in claim 15.
As per claim 16, Valavi and Stark teach/suggest all the claimed features of claim 15 above, where Valavi and Stark further teach/suggest the method further comprising receiving, by the connector, a second signal, the second signal causing the network port of the storage device to change from the second status to the first status (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57).
As per claim 17 , Valavi and Stark teach/suggest all the claimed features of claim 15 above, where Valavi and Stark further teach/suggest the method comprising wherein the network port comprises an Ethernet port (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57).
As per claim 18, Valavi and Stark teach/suggest all the claimed features of claim 15 above, where Valavi and Stark further teach/suggest the method comprising wherein the second status corresponds to a network engine of the storage device being enabled (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57).
As per claim 19, Valavi and Stark teach/suggest all the claimed features of claim 18 above, where Valavi and Stark further teach/suggest the method comprising wherein the network port is configured as a data plane in the second status (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
As per claim 20, Valavi and Stark teach/suggest all the claimed features of claim 18 above, where Valavi and Stark further teach/suggest the method comprising wherein the second status corresponds to an interconnect lane of the storage device being configured to operate as a control plane (Valavi, [0004]; [0015]-[0032]; and Stark, Fig. 3; Fig. 5; col. 3, l. 37 to col. 4, l. 7; col. 5, l. 43 to col. 7, l. 18; col. 10, l. 64 to col. 11, l. 57), wherein it would have been obvious that the resulting combination of the references would further teach/suggest the above claimed features.
III. PERTINENT RELATED PRIOR ART
Venkatesan et al. (US Pub.: 2015/0256400): discloses self-configuring port system that is configured to couple to a network switch port that is configured to operate in a plurality of different modes, and selecting a first mode of the plurality of different modes for use in transmitting data between the network switch port and the respective peer device
IV. CLOSING COMMENTS
CONCLUSION
STATUS OF CLAIMS IN THE APPLICATION
The following is a summary of the treatment and status of all claims in the application as recommended by M.P.E.P. 707.07(i):
CLAIMS REJECTED IN THE APPLICATION
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
DIRECTION OF FUTURE CORRESPONDENCES
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHUN KUAN LEE whose telephone number is (571)272-0671. The examiner can normally be reached Monday-Friday.
IMPORTANT NOTE
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Idriss Alrobaye can be reached on (571) 270-1023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHUN KUAN LEE/Primary Examiner
Art Unit 2181 August 24, 2026
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