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 Interpretation
Claim 1 recites a step of “performing… a set of determinations… from a group comprising…” (lines 6-17). The claim language is unspecific regarding the number of operations selected from the group. The broadest reasonable interpretation (BRI) of the claim may therefore include processes where any individual one of the group is performed. Similar reasoning may be applied to lines 20-28 (maintaining and dynamically adjusting).
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.
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 1-20 are rejected for lacking adequate support in the specification because they combine embodiments not explicitly disclosed in the specification as originally filed as being usable together in the same embodiment. Claim 1 recites a step of scheduling a set of determinations selected from the group comprising:
a first functionality level of at least one non-essential application associated with the at least one server designated to be monitored,
a first functionality level of at least one essential application associated with the at least one server designated to be monitored,
a first activity level associated with the at least one server designated to be monitored,
a second functionality level of the at least one non-essential application,
a second functionality level of the at least one essential application, and
a second activity level of associated with the at least one server designated to be monitored.
The specification discloses steps 1, 2, 4, and 5 as belonging to a first embodiment (embodiment A), and steps 3 and 6 as belonging to a second embodiment (embodiment B). The specification discloses the steps as belonging to separate processes, and does not disclose that the steps of the processes may be combined in the manner claimed. Additionally, lines 18-19 recite a step of comparing the set of determinations in steps 1-6 with at least one threshold value. The comparison with a threshold is only disclosed as part of embodiment B [Fig. 4, step 406 vs Fig. 3 which lacks any threshold comparison], and the written description consistently discloses the threshold value as a percentage [para. 0044 to 0047]. A threshold percentage creates an incoherent comparison if the functionality level (embodiment A, disclosed as a binary positive or negative value) is compared with a threshold percentage.
The following additional evidence is presented in support of the separate embodiments:
Fig. 3 illustrates a process directed to embodiment A while Fig. 4 illustrates a process directed to embodiment B. Neither process includes steps of the other.
Restriction requirements in parent Application Nos. 15/855,580 (U.S. Patent No. 11,048,320) and 18/317,280 (U.S. Patent No. 12,153,483) outlined separate species consistent with embodiments A and B1. Both requirements resulted in elections without traverse.
During the prosecution of parent Application Nos. 15/855,580, 17/328,675, and 18/317,280, rejections were made based on 35 U.S.C. 112(a) for reasons similar to the present application – I.E., because the claims combined features from separate embodiments not disclosed as being usable together2. At various points during prosecution, the claims of all three parent applications attempted to combine steps from embodiments A and B in the same embodiment. In all three cases, the claims were amended to be consistent with the demarcation between embodiments A and B.
The prosecution history of the parent applications clearly show that both Applicant and Examiner have consistently held embodiments A and B as separate embodiments not taught as being usable together in the same process. This evidence coupled with the specification as originally filed demonstrate that the claims of the present application unjustifiably combine steps of the two separate embodiments. On this basis, claims 1-20 are rejected under 35 U.S.C. 112(a).
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.
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.
Claim 1 recites the limitation “the power level” in lines 23, 25, and 27. There is insufficient antecedent basis for this limitation in the claim. There is no prior original recitation of a “power level”. Claim 1 provides an original recitation of a current power level in line 21. The claim should be amended to employ consistent terminology. Claims 5, 6, 8, 12-14, 18, and 19 are rejected on the same basis.
Claim 1 recites a medium storing instructions that cause one or more processors “to facilitate” a plurality of operations (line 3). This language is indefinite because it is unclear whether the operations are actually carried out. “Facilitate” is defined by Webster’s dictionary3 in the following manner:
to make (something) easier, such as
to help bring (something) about
to help (something) run more smoothly and effectively
Under this definition of “facilitate”, the instructions stored in the medium merely serve to make the claimed operations easier, help bring them about, or help them to run more smoothly of effectively. Making the operations easier, helping to bring them about, or helping them to run more smoothly or effectively are indefinite because neither the claims nor specification provide any frame of reference for understanding how such judgments would be determined. Alternatively, they may be viewed as subjective determinations. On this basis, “facilitate” is therefore indefinite. Claim 14 is rejected on the same basis.
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, 4, 7, 8, 11, 14, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Uchida, U.S. Patent Application Publication No. 2013/0246001, in view of Beyh, U.S. Patent Application Publication No. 2018/0159735.
The rejection based on prior art is predicated on an interpretation of the claims that is directed to only one of the disclosed embodiments. This interpretation is consistent with the BRI of the claims as currently presented, and also the specification. The cited prior art is not applicable to certain claims because they recite features which are incompatible or not disclosed as usable with the embodiment under consideration. Should the claims be amended to be directed to the alternate embodiment, additional search and consideration of the prior may be required in order to address features that were previously limited to the alternate embodiment not under consideration in the present rejection.
Regarding claim 1, Uchida discloses one or more non-transitory media having computer readable instructions that, when executed by one or more hardware processors, cause the one or more hardware processors to perform operations comprising:
accessing the at least one server [Fig. 1: servers 2A.. 2N] to be monitored on a predetermined schedule [Fig. 8, 11, 12, 17: monitoring frequency];
performing a set of determinations comprising a first activity level associated with the at least one server designated to be monitored4 [Fig. 3: CPU utilization is 30%].
Uchida does not disclose comparing the set of determinations to a threshold value, maintaining a current power level, or dynamically adjusting a power level.
Beyh teaches:
comparing the set of determinations and at least one threshold value [para. 0018: “For example, a hardware manager may establish a utilization threshold for compute servers, where a new hardware request will be issued in response to memory utilization or CPU utilization reaching 80% utilization over a certain period of time.”];
based on the comparing, maintain a current power level5 of the at least one server designated to be monitored based at least on the comparing indicating that a value associated with the at least one server attribute does not warrant immediately adjusting the power level associated with the at least one server designated to be monitored [para. 0010, new hardware request indicates that existing hardware operations should be maintained and new hardware is enabled to meet the demand: “In some implementations, the hardware manager may monitor currently deployed resources and provide available resources for deployment in response to certain conditions, e.g., deploying an additional storage device in response to current system storage capacity reaching a threshold utilization.”; para. 0018: “In a situation where that threshold level of utilization is met, a hardware request may be issued for a new hardware device for performing compute server functionality.”].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Uchida and Beyh by modifying Uchida to maintain power from at least one server in response to comparisons of an activity level of the server to a predetermined threshold percentage, as taught Beyh, Uchida and Beyh are both directed to systems that monitor servers and detect a utilization level of the server’s processor. Beyh teaches that hardware resources may be enabled to meet demand [para. 0010, 0018] or disabled to place resources back into a pool of available resources, and to save on maintenance and overheard [para. 0031: “Deactivating a hardware resource may cause the deactivated resource to become an available resource in its corresponding hardware resource pool. Using storage resources as an example, in a situation where more storage devices are deployed than are being used, a storage resource may be deactivated, e.g., to save on maintenance and overhead.”]. Therefore, it would have been obvious to apply the teachings of Beyh to Uchida based on Beyh’s suggestion that enabling or disabling hardware resources provides the ability to meet demand or preserve the hardware.
Regarding claim 4, Uchida teaches that the predetermined schedule comprises accessing the at least one server within a predetermined amount of time after the at least one server is turned on [Fig. 12, monitoring implies a server has been activated (disabled servers are not monitored) and the schedule indicates a predetermined time].
Regarding claim 7, Uchida teaches the predetermined schedule indicates accessing the at least one server designated to be monitored at a first time on a first day and accessing the at least one server designated to be monitored at a second time on a second day [Fig. 19: CPU utilization may monitored on a daily basis], and wherein accessing the at least one server designated to be monitored at the first time and accessing the at least one server designated to be monitored at the second time are based on the at least one server designated to be monitored being tagged for monitoring at the first time and at the second time [Fig. 3, 6, 8, 12, 17, and 19 name a specific server to be monitored], respectively.
Claims 8, 11, 14, 17, and 20 are rejected on the same basis as claims 1, 4, and 7.
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, 4, 8, 11, 14, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 11 of U.S. Patent No. 11,669,150. Claims 1, 4, 7, 8, 11, 14, 17, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 7, 8, 11, 12, 14, 15, and 17-19 of U.S. Patent No. 12,710,804. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are anticipated by the reference claims.
The application claims represent broadened versions of the reference patent claims. The breadth is compounded by the application claim language which only requires a subset of the recited actions to be performed6. Because they are broadened versions, each of the steps of the application claims is anticipated by a corresponding step in the reference claims, even while the reference claims recite additional steps. The application claims correspond to the reference claims in the following manner.
Application claims
‘150 patent claims
1
1, 11
4
7
8
1, 11
11
7
14
1, 11
17
7
Application claims
‘804 patent claims
1
1, 8, 15
4
7, 14
7
4, 5, 11, 12, 17-19
8
1, 8, 15
11
7, 14
14
1, 8, 15
17
7, 14
20
4, 5, 11, 12, 17-19
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references are relevant because they are patents that issued from parent application nos. 17/328,675, and 18/922,094:
U.S. Patent No. 11,048,320,
U.S. Patent No. 12,153,483.
The following references are cited as relevant because they were previously cited during the prosecution of parent application nos. 15/855,580, 17/328,675, 18/317,280, and 18/922,094:
U.S. Patent Application Publication No. 2017/0075411,
U.S. Patent Application Publication No. 2016/0364467,
U.S. Patent Application Publication No. 2016/0048418,
U.S. Patent Application Publication No. 2015/0302147,
U.S. Patent No. 9,026,531,
U.S. Patent Application Publication No. 2015/0056955,
U.S. Patent Application Publication No. 2014/0195672,
U.S. Patent No. 8,775,624,
U.S. Patent Application Publication No. 2012/0030670,
U.S. Patent Application Publication No. 2011/0246815,
U.S. Patent No. 7,984,126,
U.S. Patent Application Publication No. 2010/0306779,
U.S. Patent Application Publication No. 2009/0089470,
U.S. Patent No. 7,441,046,
U.S. Patent Application Publication No. 2007/0260912,
U.S. Patent Application Publication No. 2007/0073709,
U.S. Patent Application Publication No. 2006/0184287,
U.S. Patent No. 6,665,647,
U.S. Patent Application Publication No. 2003/0009705,
U.S. Patent No. 6,349,335.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JI H BAE whose telephone number is (571)272-7181. The examiner can normally be reached Tuesday to Friday and every other Monday, 9 am to 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jaweed Abbaszadeh can be reached at 571-270-1640. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JI H BAE/Primary Examiner, Art Unit 2176 U.S. Patent and Trademark Office
Phone: 571-272-7181
Fax: 571-273-7181
ji.bae@uspto.gov
1 See First Action Interview Office Action mailed on 2/27/2020 in the ‘530 application, and Restriction Requirement mailed on 5/23/2024 in the ‘280 application.
2 See Non-Final Office Action mailed on 10/28/2020 in the ‘530 application, Non-Final Office Action mailed on 3/31/2022 in the ‘675 application, and the Non-Final Office Action mailed on 7/5/2024 in the ‘280 application.
3 Retrieved from https://www.merriam-webster.com/dictionary/facilitate.
4 The BRI of the claim language only requires any one of the determinations to be performed.
5 The BRI of the claim language requires only one of “maintaining” and “dynamically adjusting” to be performed.
6 See footnotes 4 and 5.
Prosecution Insights