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 .
Informalities
The Specification is objected to because of the following informalities:
In [0001], “February 21, 2021" should be “February 24, 2021.”
Appropriate correction is required.
Double Patenting – Non-statutory
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-6 of Patent No. US12222820B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim(s) 1 of US12222820B2 (reference patent) has each element of claim(s) 1 of the examined application. The claim language in the reference patent is narrower than the claim language in the examined application. Therefore the application claim(s) is/are anticipated by the patent claim(s).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 15-20 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the Spec in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim(s) 15 recites "cause the backup storage component to update the copy of the volume using the retained change data based on the metadata." This limitation implies that the metadata is associated with the retained change data, however, the Spec is silent on this subject.
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.
Claim(s) 1-7 is/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 pre-AIA the applicant regards as the invention.
Claim(s) 1 recites the limitation “receive a service request to modify, according to a set of change data, a volume stored in a primary storage component, the backup storage component storing a copy of the volume to the at least one storage medium.” It is not clear the backup storage component’s role with “modify.”
Allowable Subject Matter
There is no prior art rejection for independent claim(s) 1, 8, 15, and would be allowable if rewritten to overcome the objection(s)/rejection(s) under informalities, double patenting rejection, 35 U.S.C. 112(a), 35 U.S.C. 112(b).
The following is an examiner’s statement of reasons:
This is a CON of Patent No. US12222820B2. The elements of independent claim(s) 1, 8, 15 were not found through a search of the prior art, nor were they considered obvious by the examiner. In particular, among the prior art of records, US 20240370459 A1 and US 10795786 B1 do/does not teach or suggest, in combination with the remaining limitations:
As in claim 1, “A backup storage component, comprising: at least one storage medium; and one or more processing units to: receive a service request to modify, according to a set of change data, a volume stored in a primary storage component, the backup storage component storing a copy of the volume to the at least one storage medium; retain the change data associated with the service request; transmit the service request, including the change data, to the primary storage component for applying the modification to the volume; receive replication instructions from the primary storage component, the replication instructions including metadata associated with the modification but not including the change data; and update the copy of the volume using the retained change data and the metadata included in the replication instructions.”
As in claim 8, “receive a service request to modify a volume stored in a primary storage component, the service request indicating change data; cause a backup storage component that stores a copy of the volume to retain the change data associated with the service request; transmit the service request, including the change data, to the primary storage component for applying the modification to the volume; receive replication instructions from the primary storage component, the replication instructions including metadata associated with the modification but not including the change data; and cause the backup storage component to update the copy of the volume using the retained change data and the metadata included in the replication instructions.”
As in claim 15, “receive a service request to modify a volume stored in a primary storage component; cause a backup storage component that stores a copy of the volume to retain change data associated with the service request; transmit the service request, including the change data, to the primary storage component; receive, from the primary storage component, replication instructions including metadata associated with the modification but not including the change data; and cause the backup storage component to update the copy of the volume using the retained change data based on the metadata.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE LIN whose telephone number is (571)431-0706. The examiner can normally be reached Monday-Friday; 8 a.m. - 5 p.m. EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bryce Bonzo can be reached at (571) 272-3655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE LIN/ Primary Examiner, Art Unit 2113