DETAILED ACTION
The instant application having Application No. 19/100162 filed on January 31, 2025 is presented for examination by the examiner.
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 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.
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 .
Internet Communications
Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, found at http:/www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax, which can be found in the Conclusion section of this Office action; (2) regular postal mail; (3) EFS WEB; or (4) the service window on the Alexandria campus. EFS web is the recommended way to submit the form since this allows the form to be entered into the file wrapper within the same day (system dependent). Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
Applicant is also encouraged to contact the Examiner for an Interview, should the Applicant determine that clarifying and further illustrating the distinguishing features of the instant application may further the prosecution.
Oath/Declaration
The applicant’s oath/declaration has been reviewed by the examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Information Disclosure Statement
As required by M.P.E.P. 609(C), the applicant’s submission of the Information Disclosure Statement is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P. 609(C), a copy of the PTOL-1449 initialed and dated by the examiner is attached to the instant office action.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 19/100171. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite the same overall steps for performing data sanitization. The Instant Application 19/100162 appears to be a broader version of copending Application 19/100171.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-17 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 pre-AIA the applicant regards as the invention.
As per claims 1-17, the claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. The examiner will cite a few particular examples of 35 U.S.C. 112 rejections below. It is respectfully requested that, in preparing responses, the applicant check the claims for further 35 U.S.C. 112 rejections in the event that it was inadvertently missed by the examiner to advance prosecution.
Claims 1-17 recite many instances of “storage medium or storage media”. This also leads to many instances of “is/are” in the claims. However, it is unclear if the invention is intended to operate on a single medium or a plurality of media. The Examiner suggests amending to recite “one or more storage media” or similar language.
Claims 1-17 recite many instances of “computer or data processing system” ; however, it is unclear if the invention is being performed by a computer or by a data processing system.
Claims 1-17 recite many instances of “and/or”; however, it is unclear if these features are required or optional.
Claims 1-17 recite “the data sanitization”, “the sanitization process”, and “the data sanitization method”. It is unclear if all of these are referring to the same or different sanitization process.
Claims 1, 8, and 15 steps E2-E3 that recite “if … is the type of storage medium …”. This appears to recite a question and does not specifically recite a step to be performed. Therefore, it is unclear if these are intended to be determining steps or something else.
Claims 1, 8, and 15 step B recites “the type”, step D that recites “the number of bytes”, “the steps”, “the initiation steps”, step H recites “the results”, step I1 recites “the application”, and step P recites “the sanitization process”; however, there is insufficient antecedent basis for these limitations in the claim.
Claims 1, 8, and 15 step E3 recites “if the query of step E2”; however, step E2 does not specifically recite a separate query. Similarly, step F recites “if the query of … steps E1, E2, or E3”; however, steps E2 and E3 do not specifically recite a separate query.
Claims 1, 8, and 15 step G recites “attempting”; however, it is unclear if this step is actually performed or not.
Claims 1, 8, and 15 step I1 recites “it”; however, it is unclear what “it” is referring to.
Claims 1, 8, and 15 steps K and M recite “step W, failing storage medium or media”; however, it is unclear what this is intended to mean. The Examiner suggests removing the “failing storage medium or media”.
Claims 1, 8, and 15 step N recites “reviewing for”; however, it is unclear what is being reviewed.
Claims 1, 8, and 15 step O recites “comma-separated values log file (.csv file)”; however, it is unclear if this is intended to device the log file as being a .csv file.
Claims 1, 8, and 15, recite a series of steps to perform data sanitization; however, it is unclear how the process ends. For example, step V always loops back to step R and step W is only performed if the sanitization fails so how would the process end if the sanitization is performed successfully.
Claims 2-7, 9-14, and 16-17 are rejected for the same reasons as cited above and for being dependent on a previously rejected base claim.
Claims 3 and 12 recite “the steps I3, I4, I(n)” and “the immediately preceding selection step”; however, there is insufficient antecedent basis for these limitations in the claim.
Claims 4, 13, and 16 step A’ recites “the process”; however, it is unclear which process this is referring to.
Claims 4, 13, and 16 step C’ recites “overwriting the cache”; however, it is unclear if this is overwriting the first cache or a different cache.
Claims 4, 13, and 16 step E’ recites “the elapsed time” and “the predetermined byte size”, step F’ recites “the cache size” and “the number of bytes per cache”, step H’ recites “the second set”, step I’ recites “the second cache”, step J’ recites “the time per second” and “the second set of predetermined bytes”, step K’ recites “the iterative process”, step L’ recites “the maximum overwriting speed”, step M’ recites “the optimum block or cache size” and “the optimum parameters”; however, there is insufficient antecedent basis for these limitations in the claim.
Claims 4, 13, and 16 step I’ recites “upon completion of the overwrite of the second cache”; however, the second cache is never overwritten in the claims. Therefore, this limitation is unclear.
The Examiner has noted significant issues supra as to the pending claims under 35 U.S.C. 112. Presently, the pending claims do not adequately reflect what the disclosed invention is. The following prior art rejections are based upon the examiner’s best interpretation of the claims. In light of the precedence set forth in In re Steele, 305 F.2d 859, 862 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970), the Examiner applies cited art in accordance with a position as best understood in the context of the claims and the invention as a whole to expedite compact prosecution. Such interpretations of the claims versus the cited art cannot be used as a basis for overcoming the objections or rejections set forth supra. Any claim not objected or rejected in view of art does not ascribe allowable subject matter, but remains pending and rejected under their respective titles supra.
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.
Claims 2-3 and 11-12 are 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. Claims 2-3 and 11-12 recite performing additional verification steps if steps K or M fail; however, these claims no longer perform step W of independent claims 1 or 8. 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
Claims 15-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. As per claim 15, this issue is raised as the disclosure of the invention does not limit nor exclude signals from the broadest reasonable interpretation of a computer-readable medium.
Applicant claims a computer-readable medium having instructions stored thereon which, when executed by a computer, causes the computer to perform method steps. The claimed computer-readable medium can be broadly and reasonably interpreted as a signal.
It has been noted that the ordinary and customary meaning of "computer-readable medium" to a person of ordinary skill in the art is broad enough to encompass both non-transitory and transitory media. See Ex Parte Mewherter (Appeal 2012-007692) (Precedential). Transitory, propagating signals such as carrier waves are not within any of the four statutory categories (process, machine, manufacture or composition of matter). Therefore, a claim directed to computer instructions embodied in a signal is not statutory under 35 U.S.C. 101. In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).
The subject matter of claims permitted within 35 U.S.C. 101 must be a machine, a manufacture, a process, or a composition of matter. "[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009). The Examiner suggests amending the “computer-readable medium” to be a “non-transitory computer-readable medium” as is current USPTO practice.
Allowable Subject Matter
Claim 1, 8, and 15 are objected to as being allowable, but would be allowable if the 35 USC 112 Rejections are overcome. The following is an examiner’s statement of reasons for allowance: The primary reason for the allowance of the claims is the inclusion of the limitation, inter alia, “A method for performing data sanitization of information and data residing on a storage medium or storage media operatively connected to a computer or data processing system in compliance with published industry standards, the storage medium or storage media having a Dynamic Configuration Overlay (DCO), embedded software in open source situations and/or a Host Protected Area (HPA), and information and data stored in data blocks or caches of a predetermined byte size, the computer or data processing system including a bus structure, the method comprising the steps of: preparing the computer or data processing system and storage medium or media for sanitization of information and data residing thereon, the preparation steps including the steps of; A. operatively connecting the storage medium or media to the computer or data processing system so that files stored thereon may be recognized and used by the computer or data processing system for data storage and retrieval; B. querying the type of storage medium or media that is/are undergoing sanitization; C. identifying the bus structure of the computer or data processing system; and D. identifying the number of bytes in each data block or cache; initiating the sanitization process, the initiation steps including the steps of; E1. verifying the type of storage medium or media that is/are undergoing sanitization by querying if the storage medium or media is/are hard disk drive (s); E2. if the query of Step E1 is negative, is the type of storage medium or media that is/are undergoing sanitization solid state drive(s); E3. if the query of Step E2 is negative, is the type of storage medium or media that is/are undergoing sanitization Non-Volatile Memory Express drive(s): F. if the query of any one of Steps E1, E2 or E3 is positive, then identifying the Dynamic Configuration Overlay (DCO) and detecting either the embedded software in open source situations and/or the Host Protected Area (HPA); G. attempting to reset either the embedded software in open source situations and/or the HPA and accessing the embedded software in open source situations and/or the HPA to sanitize information and data residing thereon; H. documenting the results of the attempt to reset; I1. selecting and applying a first information and data sanitization method to the storage medium or media undergoing sanitization and evaluating it for useability in the application; J. documenting and executing the first information and data sanitization method selected in step 11; J1 executing a data and information overwriting speed optimization process; K. evaluating successful completion of the sanitization and routing process flow to step W, failing storage medium or media, if the evaluation indicates unsuccessful sanitization or proceeding to step L if the evaluation indicates successful completion of the sanitization; L. verifying successful sanitization if the evaluation step, step K, indicates successful sanitization; M. routing process flow to step W, failing storage medium or media, if the verification step, step L, indicates unsuccessful sanitization or proceeding to step N if the verification step, step L, indicates successful verification; N. generating process output documents and reviewing for Document Standards Compliance if the verification step, step L, indicates unsuccessful sanitization; O. generating a comma-separated values log file (.csv file); P. generating a final report and a certificate certifying successful completion of the sanitization process; Q. querying an end user of the storage medium or storage media to either select or decline enablement of a boot signature, routing the process flow to step S if the end user selects enablement of a boot signature, or proceeding to step R if the end user declines enablement of a boot signature; R. terminating the sanitization method selected at step 11; S. adding record data of the sanitization process; T. creating a boot code; U. compiling the boot code into raw machine code; V. writing the raw machine code onto a first boot sector of the storage medium or media and routing the process flow to step R; and W. failing the storage medium or media if the evaluation step, step K, or the verification step, step L, indicates unsuccessful sanitization". The closest prior art of record includes:
Friedman (US 6212600) – teaches sanitizing storage devices.
Subramanian (US 11436367) – teaches sanitizing storage devices.
Nagpal (US 2013/0282771) – teaches data sanitization.
However, the combination of limitations as currently claimed cannot be found in the cited prior art of record.
Claims 2-7, 9-14, and 16-17 are objected to for the same reasons as cited above and for being dependent on a previously objected to base claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B KING whose telephone number is (571)270-7310. The examiner can normally be reached on Monday-Friday 10AM-6PM EST.
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, Yin-Chen Shaw can be reached on 5712728878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John B King/
Primary Examiner, Art Unit 2498
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