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 .
DETAILED ACTION
Claims 1-20 are pending in this office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 30, 2025, September 19. 2025, and February 23, 2026, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Step 1: Statutory Category
Claims 1–7 are directed to a computer-implemented method (a process).
Claims 8–14 are directed to a computer program product comprising computer-readable storage media (a manufacture).
Claims 15–20 are directed to a computer system comprising a processor set and storage media (a machine).
All claims meet the threshold requirement of Step 1 by falling within statutory categories.
Step 2A, Prong 1: Recitation of a Judicial Exception
Independent claims 1, 8, and 15 recite operations for:
Receiving an event that triggers review of a file;
Identifying a classification of the file;
Using the classification to identify a data review ruleset; and
Performing a process selected from repatriation or removal of data in the file based on the event and the ruleset.
These steps fall within the Certain Methods of Organizing Human Activity group of abstract ideas (specifically, business methods, managing data compliance, and rule-based decision-making). The steps describe generic conditional logic—collecting data, applying rules to classify data, and executing a predetermined decision based on the rules—which constitute basic mental or logical concepts.
Step 2A, Prong 2: Lack of Integration into a Practical Application
The abstract idea is not integrated into a practical application because the claims fail to improve the functioning of a computer or other technology:
Generic Computing Environment: The claims perform the abstract steps using general-purpose computing infrastructure (e.g., "processor set," "computer-readable storage media," "edge device") acting in a conventional manner.
High-Level Functional Claiming: The claims recite broad functional results ("receiving," "identifying," "using," "performing") without specifying the particular technological mechanism by which these operations are achieved.
Specification vs. Claim Scope: While the specification describes specific technical implementations—such as edge-topology sovereignty mapping, natural language processing pipelines, or two-person integrity confirmations—these technical restrictions are not recited in independent claims 1, 8, and 15. Patent eligibility is governed by the limitations in the claims, not the specification.
Accordingly, the claims fail Step 2A, Prong 2.
Step 2B: Search for an Inventive Concept ("Significantly More")
Independent Claims (1, 8, 15): The claimed generic computer components performing standard data management steps represent well-understood, routine, and conventional activities in the art of software engineering and data management. Merely executing abstract business or compliance rules on generic hardware does not supply an inventive concept.
Dependent Claims (2–7, 9–14, 16–20):
Ingesting third-party classification information (Claims 2, 9, 16) is conventional data gathering. Discovering backup copies or applying storage policies (Claims 3, 10, 17) represents routine data auditing. Copying data back to an original location or attempting deletion and cataloging failures (Claims 4–5, 11–12, 18–19) recites conventional file-system file transfer and error logging. Generating a compliance report (Claims 6, 13, 20) is conventional output generation. Receiving a security event based on real-time monitoring (Claims 7, 14) is well-understood event-driven triggering. None of the dependent claim limitations, considered individually or as an ordered combination, add "significantly more" to the abstract idea. Claims 1–20 are rejected under 35 U.S.C. 101 as directed to non-statutory subject matter.
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 1-20 of U.S. Patent No. 12,682,094. Although the claims at issue are not identical, they are not patentably distinct from each other because both patent and application claim a computer-implemented method, comprising: receiving an event that triggers review of a file (determining if the data is to be moved and/or replicated), using classification of the file to identify a data review ruleset (using a determined classification of a predetermined file to determine a data compliance ruleset that applies to data of the predetermined file), performing a process consisting of repatriation and removal of the data (in response to a determination that the scheduled movement and/or replication of the data of the predetermined file violates at least one rule of the determined data compliance ruleset, instructing a controller of the source node to prevent the scheduled movement and/or replication of the data of the predetermined file from occurring). The patent further claims using natural language processing. It would have been obvious to use NLP to expediate the process.
Claim Rejections - 35 USC § 102
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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Collins et al. (U.S. Patent Pub. No. 2020/0279139).
Regarding claims 1, 8, and 15, Collins et al. teaches a computer-implemented method comprising operations for: receiving an event that triggers review of a file (paragraph 0096); identifying a classification of the file (paragraph 0050); using the classification of the file to identify a data review ruleset (paragraph 0124); and performing a process selected from a group consisting of repatriation of data in the file and removal of the data in the file based on the event and the data review ruleset (paragraph 0044 and 0079).
Regarding claims 2, 9, and 16, Collins et al. teaches wherein the operations further comprise: ingesting third party discovery and classification information (paragraph 0128).
Regarding claims 3, 10, and 17, Collins et al. teaches wherein the operations further comprise: discovering backup copies and archive copies in storage systems and storage system policies, wherein the repatriation of the data and the removal of the data applies to the backup copies and the archive copies and complies with the storage system policies (paragraph 0076 and 0079).
Regarding claims 4, 11, and 18, Collins et al. teaches wherein the operations for the repatriation of the data further comprise: copying the data from a current location at an edge device to an original location at an on-premises storage system (paragraph 0125).
Regarding claims 5, 12, and 19, Collins et al. teaches wherein the operations for the removal of the data further comprise: attempting to delete the data from a current location; and in response to determining that the data was not deleted, cataloging the data that was not deleted (paragraph 0079).
Regarding claims 6, 13, and 20, Collins et al. teaches wherein the operations further comprise: generating a compliance report that indicates the data that was repatriated, the data that was removed, and orphaned data that was not deleted (paragraph 0062).
Regarding claims 7 and 14, Collins et al. teaches wherein the event comprises a security event that is generated based on monitoring real-world situations in real time (paragraph 0041).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON HOFFMAN whose telephone number is (571)272-3863. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Pwu can be reached at (571)272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON HOFFMAN/Primary Examiner, Art Unit 2433
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