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 .
Response to Amendment
This Office action is in response to the amendment filed 4 February 2025. Claims 1-20 are cancelled. Claims 21-40 are pending.
Examiner Notes
Examiner cites particular paragraphs or columns and lines in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by this Examiner.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4 June 2025 is in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, the IDS is being considered by this Examiner.
Claim Objections
Claims 23, 25, 34 and 36 are objected to because of the following informalities:
Per claim 23, line 2, “device” should be replaced by “system” as the identifying step on lines 1-2 of the instant application appears to be referring back to the identifying step on lines 2-3 of claim 21. On each of lines 4, 6 and 8, “device” should be replaced by “system” for similar reasons set forth above.
Per claim 25, on lines 2 and 4, each “device” should be replaced by “system” for similar reasons set forth above for claim 23.
Per claim 34, on each of lines 2, 4, 6 and 8, “device” should be replaced by “system” for similar reasons set forth above for claim 23.
Per claim 36, on lines 2 and 4, each “device” should be replaced by “system” for similar reasons set forth above for claim 23.
All dependent claims are objected to as inheriting the same deficiencies as the claims they depend from. Appropriate correction is required.
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.
Claims 23 and 34 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Per claim 23, line 3, “the data stored on a block storage device” lacks sufficient antecedent basis. It would be more appropriate to replace “the” before “data” with “a”.
Per claim 34, line 3, “the data stored on a block storage device” lacks sufficient antecedent basis. It would be more appropriate to replace “the” before “data” with “a”.
Appropriate correction is required.
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 §§ 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.
Claims 21-40 of the instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent 12,189,975. Although the claims at issue are not identical, they are not patentably distinct from each other because the instants claims of the instant application are anticipated by the said claims of U.S. Patent 12,189,975. The side-by-side comparison below of claim 21 of the instant application and claim 1 of U.S. Patent 12,189,975 shows limitation by limitation matching between the conflicting claims (bold parts are the differences).
Instant Application
U.S. Patent 12,189,975
21. A method comprising:
identifying one or more portions of data stored on a storage system that are associated with an application;
based on the identifying, compiling information describing utilization by the application of the storage system; and
initiating, based on the information, one or more remediation actions that would cause a storage system objective that has not been met to be satisfied for the storage system.
1. A method comprising:
identifying one or more sub-regions of data stored on a storage device of a storage system that are associated
with an application;
based on the identified one or more sub-regions, compiling information describing utilization by the application of the storage system;
determining, based on the information, one or more remediation actions that would cause a storage system
objective to be satisfied, wherein the storage system objective has not been met;
initiating, based on the information describing the utilization of the storage system, the one or more remediation
actions.
Similar claim mappings of the remaining claims (claims 22-40) to respective claims 2-20 of U.S. Patent 12,189,975 would be clear to a person having ordinary skill in the art but have been omitted for the sake of brevity.
Potential Allowable Subject Matter
Claims 21-40 would be allowable if the double patenting rejections and the rejections under 35 U.S.C. 112(b) set forth in this Office action are overcome.
The following is a statement of reasons for the indication of potential allowable subject matter (the crossed-out portions being limitations not taught or rendered obvious by the cited prior art references):
Per independent claim 21, Nicklin et al. [Patent No.: US 10,061,692 B1] (hereinafter “Nicklin”) teaches:
A method comprising:
identifying one or more portions of data stored on a storage system that are associated with an application (see col. 4, lines 15-20, Nicklin’s applications are software programs running on operating systems such as Windows or Linux. When these applications are executed on an operating system, programming data as well as I/O data accessed by the programs must be identified to run the applications);
compiling information describing utilization by the application of the storage system (see col. 4, line 45 to col. 5, line 67, col. 7, lines 7-21, providing a list of storage requirements and attributes for a software application); and
initiating, based on the information, one or more remediation actions that would cause a storage system objective that has not been met to be satisfied for the storage system (see col. 4, line 45 to col. 5, line 67, col. 7, lines 7-21, finding the best match for satisfying the application’s storage requirement).
The claim requires the information compiling step to be based on the step of identifying data portions that are associated with an application (the instant application’s specification teaches in paragraphs [000224]-[00225] that sub-regions of data associated with an application such as partition table and volume management data are read to compile statistics for the sub-regions of the data). However, the claimed one or more portions of data have been mapped to Nicklin’s programming data and/or I/O data related to the execution environment of the software program, and they are not used to compile Nicklin’s list of storage requirements for a software application. As a result, Nicklin fails to teach or render obvious compiling information describing utilization by the application of the storage system based on identifying one or more portions of data stored on a storage system that are associated with an application.
McAlister [Patent No.: US 9,128,899 B1] (hereinafter “McAlister”) also teaches:
A method comprising:
identifying one or more portions of data stored on a storage system (memory storage for application data must be identified in order for the application load to be moved to a secondary data center in the event of failure, see col. 7, lines 43-46 and col. 12, lines 16-22) that are associated with an application (see col. 7, lines 43-46, application load/usage are associated with an application);
compiling information describing utilization by the application of the storage system (see col. 15, lines 26-30, creating a resource allocation scheme by combining the real application loads with calculated shadow load); and
initiating, based on the information, one or more remediation actions that would cause a storage system objective that has not been met to be satisfied for the storage system (see col. 7, lines 43-46, moving application load/usage to a secondary data center in the event of a failure; also see col. 12, lines 16-22 for calculating a shadow load representing application usage/load for migration to other data centers in the event of failure, col. 1, lines 46-47 and col. 6, lines 41-43; see col. 15, lines 26-30, creating a resource allocation scheme by combining real application loads and calculated shadow load, and using the created resource allocation scheme in the event of application failover; note that a failure event may be construed as not satisfying a storage system objective). However, McAlister’s compiling step (McAlister’s step of creating allocation scheme by combining the real application loads with calculated shadow load, see col. 15, lines 26-30) is not performed based on identifying one or more portions of data stored on a storage system that are associated with an application (McAlister’s memory storage for application data that are identified in order for the application load to be moved to a secondary data center in the event of failure).
Per independent claim 32, the claim is the apparatus claim corresponding to the method claim 21. As such it is potentially allowable for the same reasons mutatis mutandis.
Per independent claim 40, the claim is the computer program product claim corresponding to the method claim 21. As such it is potentially allowable for the same reasons mutatis mutandis.
Dependent claims 22-31 and 33-39 are respectively dependent on independent claims 21 and 32, as such they are potentially allowable for at least the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN X GU whose telephone number is (571)272-0703. The examiner can normally be reached on 9am-5pm, Monday through Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tim Vo can be reached on 571-272-3642. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAWN X GU/
Primary Examiner
Art Unit 2138
2 April 2026
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