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 .
Divisional
The current application is a divisional application of Appl. No. 17/138074 (filed on Dec. 30, 2020 – now US Patent No. 12,225,010). The prosecution history and cited prior arts of the above application have been fully considered
The restriction requirement issued in Appl. No. 17/138074 (“parent application”) was withdrawn according to pp. 2-3 of the Notice of Allowance dated Oct. 1, 2024. MPEP 804.01 states:
(E) The requirement for restriction was withdrawn, in its entirety or in pertinent part, by the examiner before the patent issues. With the withdrawal of the restriction requirement, the non-elected claims that are no longer withdrawn from consideration become subject to examination. "The restriction requirement disappears; it is as though it had not been made. With the disappearance of the restriction requirement, the need for a divisional application and the need for the [double patenting] prohibition also disappear. "In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 132 (CCPA 1971). Note that a restriction requirement in an earlier-filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application. Reliance on a patent issued from such a continuation application to reject claims in a later-filed divisional application is not prohibited under 35 U.S.C. 121. Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004).
Furthermore, according to MPEP 201.06: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” However, the current application does not appear to be a proper divisional application under 35 U.S.C. 121, and thus, not prohibited from non-statutory double patenting rejections as the requirement for restriction in the parent application was withdrawn in its entirety.
Claim Objections
Claims 21 and 27 objected to because of the following informalities:
Claim 21 should be corrected as “a dedicated database system configured to store the user-generated content”.
Claim 27 should be corrected as “from the multitenant software service” to maintain consistent terminology.
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 § 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 21-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21-27 of U.S. Patent No. 12,225,010. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the claims of the conflicting patent.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is: “the access control system configured to” in claim 21.
Because this claim limitation(s) is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. See [0056]-[0061], [0087], and [0089]-[0091] of the originally filed specifications.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 36 and 37 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.
Claim 36 recites querying for a set of access restrictions and applying the access restrictions to the content to determine if it corresponds to one of the restrictions before the first API call is made. These features are not fully supported in the originally filed specifications. At best, [0034] of the originally filed specifications merely states that “a person of skill in the art…can opt to define any number of suitable user, role, or group-specific access restrictions to user-generated content…” The scope of access restrictions, rules, or the like are not explicitly described in similar context of claim 36. None of these restrictions are explicitly utilized prior to any API calls in the specifications. Furthermore, if content meets an access restriction, it is unclear why the first API call would be generated. This feature is fully explained in detail in the originally filed specifications. When something is restricted, it stands to reason that it should be denied - i.e., not continue to proceed with generating the first API call to store the user-generated content. Claim 37 is dependent on claim 36 and is similarly rejected.
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 21-27 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 21 recites “to store the surrogate key in the database”. However, it is unclear if “the database” is referring to the “dedicated database system” or another distinct database. If the later, then the phrase lacks proper antecedent basis. Claims 22-27 are dependent on claim 21 and are similarly rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 30 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 30 is dependent on itself. For examination purposes, it is assumed that claim 30 is dependent on independent claim 28. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 35-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are directed to software per se. Claim 35 recites a “system” comprising solely of “a gateway service”. The specifications disclose examples of a “gateway service” that include a software instance [0058]. Thus, the claim can be interpreted as a software system under broadest reasonable interpretation in view of the specifications. Dependent claims 36-40 do not resolve the issues of claim 35 and are similarly rejected.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21, 23, 25, 27-28, 30, and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/00893411 to Skaria et al. (hereinafter, “Skaria”).
As per claim 21: Skaria discloses: An access control system for a database management system, the access control system configured to (a distributed storage management system in a collaboration environment [Skaria, ¶0025]): receive a first application programming interface (API) request from a client application to store user-generated content for a multitenant software service (receiving a save request, by a front-end web application, for storing data [Skaria, ¶0044-0045]; APIs are employed to interact with storage providers that include storing the data in internal/external data stores [Skaria, ¶0038]; data includes any form of textual data, files, video, audio, and images [Skaria, ¶0015]); routing the first API request to a dedicated database system configured to the user-generated content (determining whether the data to be stored is a blob that can be stored in an external data store and passing the request by an external storage provider interface to an external storage provider wherein the blob is received for storage [Skaria, ¶0045-0046]); receiving, from the dedicated database system, a surrogate key (the external storage provider returns a blob ID [Skaria, ¶0047]); and returning a second API request to the multitenant software service, the second API request configured to cause the multitenant software service to store the surrogate key in the database (the blob ID is stored by a collaboration server in a structured database [Skaria, ¶0018, 0049]).
As per claim 23: Skaria discloses all limitations of claim 21. Furthermore, Skaria discloses: wherein the first API request and the second API request conform to an API defined by the multitenant software service (employing APIs 428 for collaboration service 422 to interact with storage providers for storing data and retrieving data [Skaria, ¶0038; Fig. 4]).
As per claim 25: Skaria discloses all limitations of claim 21. Furthermore, Skaria discloses: wherein the user-generated content comprise multimedia content (data includes any form of textual data, files, video, audio, and images [Skaria, ¶0015]).
As per claim 27: Skaria discloses all limitations of claim 21. Furthermore, Skaria discloses: wherein the dedicated database system is configured to store the user-generated content in a manner entirely isolated from the software service (storing the data in an external data store (external storage provider) [Skaria, ¶0045]-[0046]; external to the collaboration server [Skaria, ¶0034]).
As per claim 28: Claim 28 is different in overall scope from claim 21, but recites substantially similar subject matter. Specifically, claim 28 is directed to a method performed by the access control system of claim 21. Embodiments in Skaria also include computer processes (methods) [Skaria, ¶0014]. Thus, the responses provided herein and in claim 21 are equally applicable to claim 28.
As per claim 30: Skaria discloses all limitations of claim 28. Furthermore, Skaria discloses: wherein: the user-generated content is a first portion of an electronic document (data includes textual data (e.g., a document) [Skaria, ¶0015]); the request to store the user-generated content is a request to store the electronic document; and a second portion of the electronic document is stored at a database of the collaborative service separate from the secure database system (a portion of the data from the same file or document is stored in an external data store managed by an external storage provider, identifiers may be used to indicate where the data is stored in the internal database such that the whole file or document can be retrieved when a request for access is received [Skaria, ¶0024]).
As per claim 35: Claim 35 is different in overall scope from claim 21, but recites substantially similar subject matter. Specifically, claim 35 is directed to a database management system corresponding to the access control system of claim 21. Skaria includes collaboration servers hosting collaboration services to enable users/clients to store and retrieve data [Skaria, ¶0033-0034]. Thus, the responses provided herein and in claim 21 are equally applicable to claim 35.
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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Skaria in view of US 2020/0004787 to Chao et al. (hereinafter, “Chao”).
As per claim 24: Skaria discloses all limitations of claim 21. Skaria does not explicitly disclose, but Alexander discloses: wherein the user-generated content is created in an environment defined by the multitenant software service (an access module 410 operates in a collaborative content management system and can store collaborative content items in a database [Chao, ¶0057-0058; Fig. 4]; content items are created by a collaborative interface provided by the collaborative content management system [Chao, ¶0024]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include all types of data in Skaria, including data created within the collaboration service. It was well-known in the art, as shown in Chao, to produce content (data) in a collaborative manner and would have been obvious to try with reasonable success to also include storage of collaborative content in accordance with Skaria.
Claims 26 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Skaria in view of US 2020/01336612 to Alexander (hereinafter, “Alexander”).
As per claim 26: Skaria discloses all limitations of claim 21. Skaria does not explicitly disclose, but Alexander discloses: wherein the multitenant software service is one of: an issue tracking service; a project management service; a code repository service; or a documentation service (an issue tracking tool that allows bug tracking and agile project management, including the ability to capture technical and functional documentation from a content collaboration tool [Alexander, ¶0014]; a source code repository system is also included to enable developers to commit source code [Alexander, ¶0016]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the collaborative system of Skaria into any known environment, such as the automated software development life cycle audit documentation in Alexander. A person having ordinary skill in the art would have tried any workflow that required team-based cooperation with reasonable and predictable success.
As per claim 38: Claim 38 incorporates all limitations of claim 35. Claim 38 is directed to a database management system corresponding to the access control system of claim 26. Therefore, the responses provided in claims 26 and 35 are equally applicable to claim 38.
Claims 29 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Skaria in view of US 2009/0144416 to Chatley et al. (hereinafter, “Chatley”).
As per claim 29: Skaria discloses all limitations of claim 28. Skaria does not explicitly disclose, but Chatley discloses: wherein: the request to store the user-generated content indicates a physical location; and the first API call includes an identifier the secure database system based on the physical location (a geocode value is determined from a data file request (i.e., a save (store) request from Skaria) received via network, wherein the geocode value is indicative of a geographic location used for selecting a storage node to serve the file request [Chatley, ¶0024]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective date of the claimed invention to utilize a physical location of a client’s storage request, such as geocode values in Chatley, to determine which external storage providers are selected for storing the data in Skaria. This would have the advantage of improved latencies and retrieval times when the data is subsequently retrieved by the client.
As per claim 40: Claim 40 incorporates all limitations of claim 35. Claim 40 is directed to a database management system corresponding to the access control system of claim 29. Therefore, the responses provided in claims 29 and 35 are equally applicable to claim 40.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Skaria in view of US 2021/01824133 to Agarwal (hereinafter, “Agarwal”).
As per claim 34: Skaria discloses all limitations of claim 28. Skaria does not explicitly disclose, but Agarwal discloses: comprising: prior to generating the first API call, determining a type of the user-generated content; and generating the first API call is based in part on a determination that the type of the user-generated content corresponds to a predefined access control (different security rules are implemented based on the type of information permitted to be stored in a database; for a particular database, the rules may include identifying types of data that are permitted to be stored [Agarwal, ¶0002]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement access control rules in Skaria for storing data. For example, prior to calling an API request to store data in an external storage provider, sensitive data may require encryption before it can be provided for storage. This would have ensured that sensitive data is protected before it can be externally stored [Agarwal, ¶0002].
Allowable Subject Matter
Claims 22, 36-37, and 39 are not currently rejected under any prior arts.
Claims 31-33 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2018/0097877: Requests to store collaboration content are associated with new content item identifiers, wherein the identifiers are sent to a collaboration content item management system. See ¶0047.
US 2014/0330869: A security gateway receives client requests and extracts a tenant ID to verify the request. The security gateway controls the privileges assigned to a request processor for the purpose of servicing the request. See ¶0032.
US 2014/0019497: Pointers to files are stored in cloud storage services instead of the real files. See ¶0292.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT B LEUNG whose telephone number is (571)270-1453. The examiner can normally be reached Mon - Thurs: 10am-7pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JUNG KIM can be reached at 571-272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT B LEUNG/Primary Examiner, Art Unit 2494
1 Cited in the IDS filed 2/10/2025.
2 Cited in the IDS filed 2/10/2025.
3 Cited in the IDS filed 2/10/2025.
Prosecution Insights