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 Objections
Claims 1 – 20 are objected to because of the following informalities: Each of the claims independent claims 1, 12 and 17 include the phrase, “wherein the storage device includes a processing element to execute an offload function to accelerator the data operation.” Based on the specification and context, it is believed that the word used should be accelerate. The dependent claims inherit and do not correct this problem. Appropriate correction is required.
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.
Claims 1 – 20 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 specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 12 and 17 each include a limitation describing, “transferring a data, via the interface, from a first memory associated with the host device to a second memory associated with the storage device by executing a data operation on the data in the second memory by an application executing on the host device”. Paragraph [0087] of the originally filed specification states, “the disclosed systems can transfer data, via the interface, between first memory associated with the host device and second memory associated with the storage device by performing a data operation on the second memory by an application executed by the host.” The limitation from the claims does not appear to make sense, since “the data” is being transferred and therefore not on the second memory in order to be operated on. The dependent claims inherit and do not correct this issue. The Examiner suggests amending the claims to align with the invention described in the originally filed specification.
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 1 – 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1, 12 and 17 each include a limitation describing, “transferring a data, via the interface, from a first memory associated with the host device to a second memory associated with the storage device by executing a data operation on the data in the second memory by an application executing on the host device”. It is not clear how data can be transferred from a first memory to a second memory by executing a data operation on the data in the second memory. If the data starts on the first memory it is not present in the second memory to be operated on to facilitate transferring said data. The dependent claims inherit and do not correct this issue. The Examiner suggests amending the claims to align with the invention described in the originally filed specification.
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 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 18 of U.S. Patent No. 12399639. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant claims have a corresponding limitation present in the US Patent. In the interest of compact prosecution the Examiner presumes the claim is to be amended to align with the originally filed specification for the purposes of analyzing double patenting.
Instant Application 19/011582
US Patent 12399639
1. A method to manage memory, the method comprising: establishing a connection, via an interface, between a host device and a storage device;
1. A method to manage memory, the method comprising: establishing a connection, via an interface, between a host device and a storage device;
and transferring a data, via the interface, from a first memory associated with the host device to a second memory associated with the storage device by executing a data operation on the data in the second memory by an application executing on the host device,
and transferring data, via the interface, from first memory associated with the host device to second memory associated with the storage device,
… a processing element that accelerates a data operation by performing at least one offload function on the data operation of an application, wherein the data operation is performed on the data by the storage device, wherein the data is transferred between the first memory and the second memory based at least in part on the at least one offload function, and wherein the at least one offload function is based at least in part on the data operation of the application.
wherein the storage device includes a processing element to execute an offload function to accelerator the data operation.
…a processing element that accelerates a data operation by performing at least one offload function on the data operation of an application…
As described above the main difference between the claims is that the instant claim describes, “executing a data operation on the data in the second memory”. This limitation is believed to be new matter as described in the rejections above. The US Patent claim describes that the data is transferred between the first memory and the second memory based at least in part on the at least one offload function, that is based at least in part on the data operation, that is performed on the data by the storage device. The concepts claimed in the US Patent appear to be what is supported by the originally filed specification.
Claims 2 – 20 of the instant application are similarly obvious in view of claims 1 – 18 of the US Patent.
Prior Art Comment
No prior art has been applied at this time due to the ambiguity outlined above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RALPH A VERDERAMO III whose telephone number is (571)270-1174. The examiner can normally be reached Monday through Friday 8:30 AM - 5:00 PM.
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/RALPH A VERDERAMO III/Examiner, Art Unit 2139
/REGINALD G BRAGDON/Supervisory Patent Examiner, Art Unit 2139
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April 3, 2026