DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
The drawings have been considered and accepted by the examiner.
Specification
The title, abstract, and specification have been considered and accepted by the examiner.
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 26, 35, and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,768,609. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application are a combination of limitations of the claims of the ‘609 patent and would therefore be obvious over the claims of the ’609 patent.
Claim 26 corresponds to independent claim 1 of the ‘609 patent. Claim 26 of the present application is directed to a first virtual machine attached to and accessing a primary copy of a block-level storage volume and, responsive to unavailability of the first virtual machine, attaching the primary copy of the block-level storage volume to a second virtual machine for access. Claim 1 of the ‘609 patent is directed to executing a first program copy of a program to attach and access a data storage volume on a storage system and when the first program copy is unavailable, the data storage volume is attached to a second program copy for access. Claim 5 of the ‘609 patent recites that the first and second program copies are virtual machine images. Therefore, claim 26 of the present application would be obvious over the claims of the ‘609 patent since the claimed program copies attaching to the storage volume can be virtual machines.
Claim 35 of the present application is directed to the method performed by the system of claim 26 and would thus be obvious over the claims of the ‘609 patent for the same reasons above as well as corresponding to method claim 13 of the ‘609 patent.
Claim 41 of the present application is directed to a computer readable storage medium causing a processor to perform the method of claim 35 and would thus be obvious over the claims of ‘609 for the same reasons above.
Allowable Subject Matter
Claims 27-34, 36-40, and 42-45 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.
Claims 26, 35, and 41 would be allowable if the double patenting rejection were overcome for the same reasons presented in the parent applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL D TSUI whose telephone number is (571)270-3253. The examiner can normally be reached Monday-Friday 8am-4pm.
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/DANIEL D TSUI/Primary Examiner, Art Unit 2132