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 .
Status of Application
Claims 1-20 are pending in the present application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/24/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (see paragraphs [0079], [00119], [00156], and [00172]. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The use of the terms WINDOWS, UNIX, LINUX, Z/OS, DROPBOX, AMAZON S3, GOOGLE, MICROSOFT, ONEDRIVE, NETAPP, DELL, and EMC, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities at paragraph [0087]: "Generally, however it's invoked, the PFS/VFS subcomponent 242 of mainframe storage client 110 maps the set of logical filesystem calls to the [roughly similar - VINCE - PLEASE EXPLAIN] FUSE equivalents." Appropriate correction is required. The examiner reminds applicant that no amendment shall introduce new matter into the disclosure of the invention [35 U.S.C. 132(a)].
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 4 and 14 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 4 recites the limitation "determining whether the data received from the identified data source requires filtering." Applicant's Specification fails to disclose filtering and how to make said determination. The examiner has performed a text search of the Specification for "filter,” “determine,” and variants thereof, however no relevant results were returned. As such, claim 4 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 14 is rejected under the same rationale as claim 4.
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.
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 4, 6, 7, 14, 16, and 17 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 4 recites the limitation “determining whether the data received from the identified data source requires filtering.” Applicant’s Specification fails to disclose “filtering” and how to make the said determination. As such, the metes and bounds of the claim are not clear. The claim is rejected for failing to clearly and distinctly disclose what “filtering” entails and how to make the “determination.” The examiner respectfully requests clarification on exactly what filtering entails and how the determination is made to perform filtering.
Claim 14 is rejected under the same rationale as claim 4.
Claim 6 contains the trademark/trade name Z/OS. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. MPEP 2173.05(u) states: If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). See also Eli Lilly & Co. v. Apotex, Inc., 837 Fed. Appx. 780, 784-85, 2020 USPQ2d 11531 (Fed. Cir. 2020). In the present claims, Z/OS is used as a limitation to identify or describe a particular material or product, e.g. server. The examiner recommends replacing the trademark/trade name “z/OS server” with a generic term such as “an operating system for mainframes.”
Claim 16 is rejected under the same rationale as claim 6.
Claim 7 contains the trademark/trade name MICROSOFT. Claim 7 contains the trademark/trade name WINDOWS. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). In the present claims, the trademark/trade name is used to identify/describe a particular product (“operating system”) and, accordingly, the identification/description is indefinite. The examiner recommends replacing the trademark/trade name with a generic term such as “graphical operating system” and “open-source operating system,” respectively.
Claim 7 contains the trademark/trade name LINUX. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). In the present claims, the trademark/trade name is used to identify/describe a particular product (“operating system”) and, accordingly, the identification/description is indefinite. The examiner recommends replacing the trademark/trade name with a generic term such as “open-source operating system.”
Claim 17 is rejected under the same rationale as claim 7.
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.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the broadest reasonable interpretation of the “computer-readable storage medium” encompasses signals per se. The Specification states “computer readable storage medium may be, for example, but not limited to, an electronic, magnetic, optical, electromagnetic, or semiconductor system, apparatus, or device, or any suitable combination of the foregoing” [paragraph 0015]. A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. See MPEP 2106.03(II). It is suggested that claim 20 be amended to recite a “non-transitory computer-readable storage” medium to overcome this rejection.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 11, and 20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 8, and 16, respectively, of prior U.S. Patent No. 12,282,666 B2. This is a statutory double patenting rejection.
Claims 2-3, 5, 8-10, 12-13, and 15-18 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2-7 and 9-15, respectively, of prior U.S. Patent No. 12,282,666 B2. This is a statutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Tatara, US 20130073826 A1, discloses a virtual volume to which real storage areas are allocated depending on data amount to be stored therein and which stores a plurality of mainframe data managed in units of tracks [Abstract].
Jennas et al, US 8683151 B2, discloses preserving a set of data on a source storage device at a point in time, and includes identifying as a function of prior update usage, such as input/output usage, of the data to be preserved, a portion of the data which is more likely to be the subject of updates during at least a portion of the data preservation operation as compared to the remaining portion of the data to be preserved, and copies the identified portion of the data to be preserved to a target storage device.
Hamner, US 20190056982 A1, discloses the driver includes a converter from instrument settings to instrument specs, such that the instrument specification corresponding to a given configuration may be returned by the module upon request [Abstract].
Massa et al, US 9122789 B1, discloses providing a filter engine…wherein the transformation engine, upon receiving messages, automatically select a conversion protocol from a plurality of conversion protocols stored in the memory for converting the message according to the message format of the messages, wherein the conversion protocol comprises executable programming instructions; wherein the message is converted from binary to extensible-markup-language [claim 12].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARLEY J ABAD whose telephone number is (571)270-3425. The examiner can normally be reached Mon-Fri 8:30 AM - 7 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Idriss Alrobaye can be reached at (571) 270-1023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Farley Abad/ Primary Examiner, Art Unit 2181
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