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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Referring to claim 1, 8 and consequently their dependent claims, “the one or more storage objects” lacks antecedent basis. It is understood to refer to “one or more storage objects.
Referring to claim 7, 14, 20, “the failover” lacks antecedent basis. It is understood to refer “failover”.
Referring to claim 11, and consequently its dependent claim, “the asynchronous update schedule” lacks antecedent basis. It is understood to refer to “an asynchronous update schedule”.
Referring to claim 15, and consequently its dependent claims, “the one or more storage objects”, “the third storage node”, and “the primary storage site” each lack antecedent basis. They are understood to refer to “one or more storage objects”, “a third storage node”, and “a primary storage site”, respectively.
Referring to claim 18, “the synchronous update schedule” refers to an antecedent introduced in the previous indent of the same claim, but follows the same structure of claims 4 and 11. This further appears to conflict with the sync engine being inactive and having the synchronous replication relationship being out-of-sync. This instead appears to have been intended to refer to “an asynchronous update schedule”, similar to claims 4, 11, and this application’s parent, 18/160557 which was corrected for a similar error. See specification at paragraphs 104 and 108. For the purpose of examination, this is understood to refer to “an asynchronous update schedule”.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12197291. Although the claims at issue are not identical, they are not patentably distinct from each other. The referenced claims of the instant application are anticipated by the claims of the patent in that the claims of the patent contain all of the limitations of the referenced claims of the instant application. The referenced claims of the instant application therefore are not patently distinct from the other claims, and as such are unpatentable (In re Goodman (CAFC) 29 USPQ2d 2010).
Allowable Subject Matter
Claims 1-20 are rejected, but would be allowable if rewritten as understood above, further resolving the double patenting rejection above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20230046983 A1, see abstract.
US 7225307 B2, see abstract.
US 11256586 B2, see abstract.
US 20220245172 A1, see abstract.
US 11657019 B2, see abstract.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL L CHU whose telephone number is (571)272-3656. The examiner can normally be reached weekdays 8 am to 5 pm.
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/GABRIEL CHU/Primary Examiner, Art Unit 2114