DETAILED ACTION
-Claims 1, 4, 9, 12, 15 and 18 are amended.
-Claims 7-8, 13-14 and 19-20 are cancelled.
-Objection to the drawings is withdrawn based on the filed replacement figures.
-The 112(a) rejection is withdrawn based on the claim amendments.
-The 101 rejections are withdrawn based on the claim amendments.
-Claims 1-6, 9-12 and 15-18 are pending.
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 .
Response to Arguments
Applicant’s Remarks filed on 8/6/2026 have been fully considered.
The 101 and 112 rejections are withdrawn based on the claim amendments.
The double patenting rejection is maintained until the final scope of the claims has been determined.
The argument regarding the newly added features is moot in view of the new ground of rejections necessitated by the claim amendments.
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 1-6, 9-12 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,277,097 in view of Chen et al (US Pub.No.2021/0049283) because the current claims are obvious over the claims of the issued patent in view of Chen. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify the issued patent with Chen because a need arises for techniques to provide host side encryption while maintaining compression and deduplication benefits while providing communication between the host and the storage system that does not leak information about the data compressibility/ deduplication properties [Chen, para.0005].
Claims 1-6, 9-12 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,917,072 in view of Chen because the current claims are obvious over the claims of the issued patent in view of Chen. The same motivation to modify with Chen as above applies.
Claims 1-6, 9-12 and 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,601,257 in view of Chen because the current claims are obvious over the claims of the issued patent in view of Chen. The same motivation to modify with Chen as above applies.
Claim Rejections - 35 USC § 103
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 1-6, 9-12 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US Pub.No.2021/0049283) in view of Gopal et al (US Pub.No.2016/0380772).
Re Claim 1. Chen discloses a computer-implemented method of data encryption, comprising: [reading] an input data block; determining a compressibility of the input data block; compressing the input data block to generate an encrypted data block when the compressibility exceeds a predetermined threshold;
Chen does not explicitly disclose whereas Gopal does: selecting an encryption mode from a plurality of encryption modes (i.e. select one of multiple support cryptographic hash algorithms to be used) [Gopal, para.0041];
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify Chen with Gopal because it may also help to accelerate the implementation of keyed-hash MAC algorithms [Gopal, para.0024]. This motivation applies to the rest of the claim.
Chen further discloses: encrypting the compressed data block (i.e. may compress a data sector if it is sufficiently compressible ………………Host side write process 200 may begin at 202, in which a sector (or block or chunk) of data to be stored 108 may be compressed. Let x be the size of the sector after compression. ……. At 206, if the sector 108 has been compressed at 204 by k or more bytes, then a prefix (or suffix, the present techniques may be applied to either or both) may be created, the prefix having a size equal to the original sector size minus the size of the sector after compression (SECTOR_SIZE-x). The prefix may include metadata (for example, an encoding of the compressed length) plus a compressible sequence of, for example, zeros. At 208, the prefix of size (SECTOR_SIZE-x) 210 may be concatenated with the x bytes of the compressed sector that has been encrypted using the DEK 212) [Chen, para.0024, 0029, Fig.2] based on a keyed hash to generate an encrypted data block (i.e. the result of a sector encryption may depend on the data, on the encryption key, and on an initialization vector (IV)……………….. embodiments may derive the IV from a keyed-hash (the key being, for example, the DEK) of the plaintext data) [Chen, para.0038-0039],
Gopal further discloses: wherein a subset of the keyed hash is used for encrypting the compressed data block based on the selected encryption mode (i.e. the encryption of the key information is to include an encryption of at least one evaluation of a portion of the keyed-hash MAC algorithm that is to involve a cryptographic key) [Gopal, para.0165, 0041];
Chen further discloses: and providing the encrypted data block and associated metadata in parallel to a storage controller (i.e. A data sector may be compressed and encrypted using the DEK. The encrypted compressed sector data may then be concatenated with compressible padding to form a sector of the original length. Some metadata may also be added as part of the padding. The new padded block may then be encrypted with the DRK and sent to the storage) [Chen, para.0028], (i.e. the prefix of size (SECTOR_SIZE-x) 210 may be concatenated with the x bytes of the compressed sector that has been encrypted using the DEK 212. At 214, the concatenated data may be encrypted using the Data Reduction Key (DRK) 126 and the encrypted compressed sector data may be sent to storage system 104 for storage) [Chen, para.0029], the associated metadata comprising an indication of the compressibility and the keyed hash (i.e. if the sector 108 has been compressed at 204 by k or more bytes, then a prefix (or suffix, the present techniques may be applied to either or both) may be created, the prefix having a size equal to the original sector size minus the size of the sector after compression (SECTOR_SIZE-x). The prefix may include metadata (for example, an encoding of the compressed length) plus a compressible sequence of, for example, zeros. ……………..this IV may be added to the encrypted sector in order to allow decryption) [Chen, para. 0029, 0039, see also 0048. Note: the IV as, described in 0039 may be the keyed-hash].
Chen does not explicitly disclose reading the input data block; however, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to modify Chen to include “reading” because it is expected to obtain an input via a read operation.
Chen further discloses: and performing deduplication of the encrypted data block against a plurality of additional encrypted data blocks where the deduplication is performed by the storage controller (i.e. The key-compressible algorithm described allows a storage with deduplication capabilities to identify sequences of identical sectors among the compressible sectors……………. Once these hashes are decrypted on the storage system, the storage system may utilize the information regarding the hashes of both compressible and uncompressible sectors to perform deduplication on all the encrypted data) [Chen, para.0049].
Re Claim 2. Chen in view of Gopal discloses the method of Claim 1, wherein reading the input data block comprises reading a data stream and extracting the input data block therefrom (i.e. embodiments of processes may be carried out at the host for each data block, sector, or chunk) [Chen, para.0028, Note: since the process is repeated for each data block, this teaches a plurality of blocks and therefore it implies reading a data stream].
Re Claim 3. Chen in view of Gopal discloses the method of Claim 1, wherein determining the compressibility of the input data block comprises compressing the input data and comparing a compressed length thereof to an uncompressed length thereof (i.e. if the sector 108 has been compressed at 204 by k or more bytes, then a prefix (or suffix, the present techniques may be applied to either or both) may be created, the prefix having a size equal to the original sector size minus the size of the sector after compression (SECTOR_SIZE-x). The prefix may include metadata (for example, an encoding of the compressed length) plus a compressible sequence of, for example, zeros. ……………..this IV may be added to the encrypted sector in order to allow decryption) [Chen, para. 0029].
Re Claim 4. Chen in view of Gopal discloses the method of Claim 1, wherein said encrypting comprises applying a convergent encryption scheme (i.e. derive the IV from a keyed-hash (the key being, for example, the DEK) of the plaintext data) [Chen, para.0039].
Re Claim 5. Chen in view of Gopal discloses the method of Claim 1, wherein the keyed hash is computed from the data block (i.e. derive the IV from a keyed-hash (the key being, for example, the DEK) of the plaintext data………. the prefix of compressed sectors may contain the hash of the data (the initialization vector)) [Chen, para.0039, 0048].
Re Claim 6. Chen in view of Gopal discloses the method of Claim 1, wherein the indication of the compressibility is a binary flag (i.e. When determining whether the sector sent by the host side was originally compressible, the storage system may attempt to decrypt just the beginning of the sector using the DRK. If the beginning of the sector does not contain the compressible data pattern (for example, a sequence of zeros), then the storage needs not decrypt the rest of the sector, and may store it without further modifications) [Chen, para.0010, 0040].
Re Claims 9-12. These claims recite features similar to 1-4, respectively, therefore they are rejected in a similar manner.
Re Claims 15-18. These claims recite features similar to 1-4 and 7-8, respectively, therefore they are rejected in a similar manner.
Conclusion
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.
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/NOURA ZOUBAIR/Primary Examiner, Art Unit 2434
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