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 .
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.
Claim 1 recites a step of “determining, from the snapshot, that a flag has been set for a first program of the one or more programs, the flag indicating that there was an update to the first program during a previous usage of the device”. The step of determining a flag has been set from a snapshot is not supported by the specification as originally claimed. Para. 0055 of the specification teaches that a determination whether a flag has been set is performed by simply checking to see if it has been set [para. 0055: “On the next reboot, snapshot 304 may be loaded from disk storage 320 into memory 306, and FBS 302 may check to see if any flags 324 have been set.”]. The specification does not indicate that the snapshot is a part of this determination. Fig. 3 supports this view, showing that the flag 324 is stored separately from the snapshot 304.
Claim 1 is also rejected because it recites a step of “updating the first program based on the flag”. The previous step recites that the flag is an indication that there was an update to the first program during a previous usage. The claim may therefore be interpreted as reciting an update to a first program that results in the flag being set, followed by another update to the first program because the flag is set. The specification fails to disclose this sequence of events. Para. 0052-0057 provide the relevant teachings for setting the flag and making updates. From these paragraphs, it is clear that a flag is set based on (1) changes made to the program currently loaded into memory, or 2) an updated version of the program being made available (e.g., for downloading). It is also clear from para. 0052-0057 that after a change to a program currently loaded into memory (or after applying an updated version that has been downloaded to a program currently loaded into a memory), the snapshot may be updated to reflect the change. Para. 0052-0057 fail to support, however, an update to the first program that sets a flag and a second update to the first program triggered by the flag being set.
Claims 9 and 17 are rejected on the same basis.
For the purposes of prior art search, the determining step will be interpreted as “determining that a flag has been set... the flag indicating that there was an update made available to the first program” (as disclosed in para. 0055).
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, 9, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Robbins et al., U.S. Patent Application Publication No. 2023/0112219, in view of Lay et al., U.S. Patent No. 6,098,158. Lay was previously cited during the prosecution of parent Application No. 18/743,371.
Regarding claim 1, Robbins discloses a method [Fig. 3] comprising:
determining that a flag has been set for a first program of the one or more programs [para. 0026: “At operation 320, client services 302 may poll registry 304 to determine if an update flag has been set for one or more of applications.”], the flag indicating that there was an update to the first program during a previous usage of the device [para. 0024: “At operation 214, if application 202 receives an update packet, the application may update registry 208 to indicate that an update is available for the application.”]; and
updating the first program based on the flag, wherein the updating comprises one of: deleting the first program from the memory, or installing an updated version of the first program [para. 0023: “In an example, the registration may include any suitable information associated with application 202 including... a location of an update installer...”; para. 0031: “In response to the idle time being detected, an update request is provided to a trusted device at block 410... In response to the update request confirmation being received, the updates for all applications requiring an update are performed at block 416 and the flow ends at block 418.”].
Robbins does not disclose a snapshot for use during a startup of a device.
Lay discloses a method comprising:
determining, by at least one computer processor on a startup of a device, that a snapshot exists [Fig. 6, step 74: are there multiple images] on a disk storage of the device [col. 2, lines 36-37: “Further, storage of the boot image is not restricted to any particular location in disk storage.”]1, wherein the snapshot includes one or more programs previously loaded into a memory of the device;
retrieving the snapshot from the disk storage [step 76: retrieve];
loading the snapshot into the memory in lieu of individually loading each of the one or more programs into the memory [step 80: restore physical memory; col. 5, lines 53-54: “At step 80, the physical memory contents of the boot image are restored to physical memory.”].
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 Robbins and Lay by modifying Robbins to employ the use of a snapshot as taught by Lay. Robbins and Lay both disclose computer systems that perform booting operations. Lay teaches that a computer system may perform a boot more quickly when a snapshot is used to shorten the boot time, thereby enabling it to more quickly recover from failures [col. 1, lines 39-50]. The combination is therefore suggested based on Lay’s teaching of improved recovery and faster boot times.
Claims 9 and 17 are rejected on the same basis as claim 1.
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 1-3, 5-11, and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-11, and 13-19 of U.S. Patent No. 12,373,221. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are anticipated by, or obvious in view of, the patent claims.
Application claim 1 represent a broadened version of patent claim 1. Although the patent claim recites additional limitations not found in the application claim, the patent claim recites the steps of 1) determining a snapshot, 2) determining a flag, 3) retrieving the snapshot, 4) loading the snapshot, and 5) updating the first program based on the flag as recited in the application claim. The patent claim includes additional limitations for steps 2 and 5 not recited in the application claim. However, the breadth of the application claim is such that it is anticipated by steps 2 and 5 of the patent claim. Similar reasoning may be applied to the dependent claims. Independent claims 9 and 17 are rejected on the same basis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references were cited during the prosecution of parent Application No. 17/898,838 and parent Application No. 18/743,371:
Mysore Shantamurthy et al., U.S. Patent Application Publication No. 2022/0066766,
Li, U.S. Patent Application Publication No. 2019/0227710,
Wolf et al., U.S. Patent Application Publication No. 2018/0349133,
Kondik et al., U.S. Patent Application Publication No. 2016/0162278,
Currid et al., U.S. Patent No. 9,003,000,
Du Toit et al., U.S. Patent Application Publication No. 2014/0201728,
Nightengale et al., U.S. Patent Application Publication No. 2014/0068240,
Baik et al., U.S. Patent Application Publication No. 2013/0042097,
Kim et al., U.S. Patent Application Publication No. 2012/0096256,
Thom et al., U.S. Patent Application Publication No. 2011/0087896,
O’Connell, U.S. Patent No. 7,313,684.
Diamond et al., U.S. Patent No. 12,056,496, issued from parent Application No. 17/898,838.
Narasimhan et al., U.S. Patent Application Publication No. 2020/0356357, discloses a system that checks a memory flag for determine if a firmware update is available [para. 0065].
Bacon et al., U.S. Patent No. 6,564,324, discloses a system that sets a flag to indicate that a software update is available [col. 15, lines 20-27].
Averbuch et al., U.S. Patent No. 5,896,566, discloses a system that sets a flag when a software update for a wireless device is available [col. 5, lines 1-18].
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 “Not restricted...” implies that the boot image may reside on any location on the disk, rather than a fixed location.
Prosecution Insights