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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
a means for … in claim 12.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recites sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-10 and 12 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Independent claim 1 and 12 recites a system claim with no hardware. A processor and memory need to be positivity recited as components of the system (if supported by the spec). Thus, claims 1-10and 12 are software per se leaving the system claim non-statutory.
Claim Rejections - 35 USC § 102
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 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)(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) 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Renner et al. ("Endolith: A blockchain-based framework to enhance data retention in cloud storages", 2018 26th Euromicro International Conference on Parallel, Distributed and Network-Based Processing (PDP), pp 627 634, IEEE, 2018).
As to claim 1, Renner teaches a system for data storage in cloud systems by bringing cloud storage and blockchain technologies together into a single, secure and seamless service using one or a plurality of governing smart contracts and application programming interface API integration (see abstract: auditing framework using smart contract-based blockchain for verifying and tracking file history; Page 627, LH Column: cloud object storage; Page 627, RH Column: decoupling via an API),
wherein the API provides a mechanism for a data owner to interact with one or a plurality of cloud- based storage platforms and one or a plurality of blockchain platform accounts (see page 629, RH Column: File System API provides an interface between the storage and Endolith smart contract system)
in a manner that provides immutable large scale cloud storage (see page 630, LH Column: files are immutably recorded on the blockchain network.), file history and integrity information (see page 630, LH Column: File History Tracking & File Validation. It is further considered that the immutable nature of blockchains means that files stored in a blockchain will inherently include a file history and integrity information.).
As to claim 2, Renner teaches where in the API/smart contract system performs a range of programmed functions that includes, but is not limited to, user authentication (see Page 630, LH Column: Auditing API), access token passing and management, data encoding, data unencoding, data encryption, data decryption (see Page 629, RH Column, Para 1), data storage, data retrieval (see Page 629, RH Column: File System API), file sharing, metadata lookup and searching whilst operating asynchronously with a master smart contract to provide the interface between one or more user selected blockchain(s) (see abstract) and one or more user selected cloud storage system(s) where the cloud storage is controlled programmatically by the API/Smart contract and is outside the control of the user directly (see col 2, ln paragraph 3-4, “Endolith’s implementation and evaluation are based on Ethereum, a smart contract-based blockchain and HadoopDistributed File System (HDFS) [12]. However, due to decoupling via an introduced Storage API, it is possible to integrate additional storage systems and automated tiering solutions to Endolith.”).
As to claim 3, Renner teaches wherein the API working in parallel, asynchronously with one or more smart contract system(s) which manages file meta data storage, file protection rules, sharing rules and aspects of storage cost management across one or more blockchain solutions for allowing the system to store data in one or more cloud storage tenancies managed by the system (see page 627, col 2, last paragraph and page 629, last paragraph, “”transaction manager”, where it explain the transaction manager between smart contract and API), and storing the relevant metadata and access rules in the blockchain, and implementing blockchain file immutability in cloud storage solutions (see fig 2, page 629, design of endolith and page 630, LH column: immutability).
As to claim 4, Renner teaches wherein a DApp engages synchronously or asynchronously with the smart contract and the API functions to engage services within one or more cloud or distributed file storage services that include serverless functions performing data processing roles, authentication or caching of storage requests and one or more smart contracts to engage services within one or more blockchain implementations for the storage of file metadata into one or more blockchain services using a smart contract for each chain (see page 631, col. 1, “) The corresponding file tracking contract is loaded based on the as metadata attached smart contract address. 3) Endolith requests the last known hash from the loaded file tracking contract.” And in col 2, “Therefore, after a file tracking contract is successfully deployed on the blockchain, the unique smart contract address is attached to the corresponding file in HDFS as a metadata
attribute. Afterwards, every file modification including its new file hash, modifying user, and time is stored on the blockchain…”).
Allowable Subject Matter
Claims 11-12 allowed.
Claims 5-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. see form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BELIX M ORTIZ DITREN whose telephone number is (571)272-4081. The examiner can normally be reached M-F 9am -5pm.
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BELIX M. ORTIZ DITREN
Primary Examiner
Art Unit 2164
/Belix M Ortiz Ditren/ Primary Examiner, Art Unit 2164
