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 .
This Office Action is responsive to the application filed 30 July 2025.
Claims 1-20 are pending and have been presented for examination.
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, 3-8, 10-15 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
With respect to claim 1:
Eligibility step 1: Yes, the claim as a whole falls within one or more statutory categories.
Eligibility step 2A (prong one): Yes, the claim recites a judicial exception. An abstract idea is set forth or described in the claim. The limitations of “… generating a prediction of a proportion of live data compared to garbage collection-eligible data for one or more data objects at a future time…” and “… selecting, by the storage system, based at least on the prediction, one or more storage classes from among a plurality of storage classes for storing the one or more data objects” are considered mental processes. The limitations are directed to an observation and a judgement and can be reasonably performed in the human mind. A mental process is an abstract idea.
Eligibility step 2A (prong two): No, the claim does not recite additional elements that integrate the judicial exception into a practical application. The limitations of a storage device and storage classes are recited at a high level of granularity and generally link the abstract idea to a field of use. The linking to a field of use does not add significantly more to the claim.
Eligibility step 2B: The limitations of a storage device and storage classes are recited at a high level of granularity and generally link the abstract idea to a field of use. The linking to a field of use does not add significantly more to the claim. These elements individually, and in combination, do not add significantly more to the claim. The claim as a whole does not amount to significantly more than the exception itself and therefore lacks subject matter eligibility.
With respect to claim 3: the limitation “… the one or more storage classes are associated with a cloud- based data storage service…” provides additional details of the additional element of a storage class. The limitation “… selecting the one or more storage classes is further based upon determining that a data horizon for the one or more data objects exceeds a threshold value…” provides additional detail regarding the abstract idea of selecting a storage class. These limitations fail to add significantly more that would integrate the judicial exception into a practical application.
With respect to claim 4: the limitation “… the data horizon is an estimate for a proportion of live data at a future point in time based upon a model that predicts proportions of live data to garbage collection eligible data for one or more data objects across multiple periods of time…” provides additional detail regarding the abstract idea of selecting a storage class. This limitation fails to add significantly more that would integrate the judicial exception into a practical application.
With respect to claim 5 and 6: the limitation “… wherein the one or more storage classes are provided by one or more storage services of a cloud-based storage system…” and “… wherein the one or more storage classes are provided by one or more storage services associated with a cloud services provider data object store…” provides additional details of the additional element of a storage class. These limitations fail to add significantly more that would integrate the judicial exception into a practical application.
With respect to claim 7: the limitation “… wherein the one or more characteristics of the storage data includes information describing an amount of time that the storage data is expected to remain valid…” provides additional details about the basis for generating a predication. This is part of the mental process of predicting a proportion of live data. This limitation fails to add significantly more that would integrate the judicial exception into a practical application.
With respect to claim 8:
Eligibility step 1: Yes, the claim as a whole falls within one or more statutory categories.
Eligibility step 2A (prong one): Yes, the claim recites a judicial exception. An abstract idea is set forth or described in the claim. The limitations of “… generating a prediction of a proportion of live data compared to garbage collection-eligible data for one or more data objects at a future time…” and “… selecting, by the storage system, based at least on the prediction, one or more storage classes from among a plurality of storage classes for storing the one or more data objects” are considered mental processes. The limitations are directed to an observation and a judgement and can be reasonably performed in the human mind. A mental process is an abstract idea.
Eligibility step 2A (prong two): No, the claim does not recite additional elements that integrate the judicial exception into a practical application. The limitations of a computer readable medium comprising instructions, a storage device and storage classes are recited at a high level of granularity and generally link the abstract idea to a field of use. The linking to a field of use does not add significantly more to the claim.
Eligibility step 2B: The limitations of a computer readable medium comprising instructions, a storage device and storage classes are recited at a high level of granularity and generally link the abstract idea to a field of use. The linking to a field of use does not add significantly more to the claim. These elements individually, and in combination, do not add significantly more to the claim. The claim as a whole does not amount to significantly more than the exception itself and therefore lacks subject matter eligibility.
Regarding claims 10-14: the limitations of these claims are commensurate with claims 3-7 and are rejected for the same reasons set forth above.
With respect to claim 15:
Eligibility step 1: Yes, the claim as a whole falls within one or more statutory categories.
Eligibility step 2A (prong one): Yes, the claim recites a judicial exception. An abstract idea is set forth or described in the claim. The limitations of “… generating a prediction of a proportion of live data compared to garbage collection-eligible data for one or more data objects at a future time…” and “… selecting, by the storage system, based at least on the prediction, one or more storage classes from among a plurality of storage classes for storing the one or more data objects” are considered mental processes. The limitations are directed to an observation and a judgement and can be reasonably performed in the human mind. A mental process is an abstract idea.
Eligibility step 2A (prong two): No, the claim does not recite additional elements that integrate the judicial exception into a practical application. The limitations of a storage device and storage classes are recited at a high level of granularity and generally link the abstract idea to a field of use. The linking to a field of use does not add significantly more to the claim.
Eligibility step 2B: The limitations of a storage device and storage classes are recited at a high level of granularity and generally link the abstract idea to a field of use. The linking to a field of use does not add significantly more to the claim. These elements individually, and in combination, do not add significantly more to the claim. The claim as a whole does not amount to significantly more than the exception itself and therefore lacks subject matter eligibility.
Regarding claims 16-20: the limitations of these claims are commensurate with claims 3-7 and are rejected for the same reasons set forth above.
With respect to claims 2, 9 and 16: the limitations “… determining, for the one or more data objects, an estimated quantity of data eligible for garbage collection; and initiating garbage collection on the one or more data objects, after determining that resources required for continued storage exceed resources required to perform the garbage collection, and that expected cost savings from the garbage collection exceed access costs associated with performing one or more cloud-based operations to carry out the garbage collection” add significantly more to the judicial exception. These limitations improve the functioning of the storage device and therefore integrate the judicial exception into a practical application (see specification [0272]-[0275]).
Claims 8-14 are 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.
As per claims 8-14, the specification does not provide a definition for the claimed “Computer Readable Medium.” A broadest reasonable interpretation for the term “Computer Readable Medium” would include both statutory embodiments and non-statutory embodiments such as signals. The words "storage" and/or "recording" are insufficient for convey only statutory embodiments to one of ordinary skill in the art absent an explicit and deliberate limiting definition or clear differentiation between storage media and transitory media in the disclosure. As such, the claim(s) is/are drawn to a form of energy. Energy is not one of the four categories of invention and therefore this /these claim(s) is/are non-statutory. Energy is not a series of steps or acts and this is not a process. Energy is not a physical article or object and as such is not a machine or manufacture. Energy is not a combination of substances and therefore not a composition of matter. The specification references a computer readable storage medium and transitory signals (see [0307]), but not a computer readable medium.
The Examiner suggests amending the claim(s) to read as a “non-transitory Computer Readable Medium.”
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 1-6, 8-13 and 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,386,505. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘505 patent anticipate the claims of the instant application as shown below.
12,386,505
19/285,396
1. A method comprising:
(A) receiving one or more data objects for storage;
(C) selecting, based at least upon one or more characteristics of storage data including a
(B) prediction of a proportion of live data compared to garbage collection-eligible data from the one or more data objects at a future time,
(C) one or more storage classes from among a plurality of storage classes of one or more data storage services;
and storing the one or more data objects to the selected one or more storage classes of the one or more data storage services.
1. A method comprising:
(A) based at least upon one or more characteristics of storage data managed by a storage system,
(B) generating a prediction of a proportion of live data compared to garbage collection-eligible data for one or more data objects at a future time;
(C) and selecting, by the storage system, based at least on the prediction, one or more storage classes from among a plurality of storage classes for storing the one or more data objects.
Claims 2/3/4/5/6
Claims 2/3/4/5/6
7. A non-transitory computer readable storage medium including instructions which, when executed, cause a processor to:
(A) receive one or more data objects for storage;
(C) select, based at least upon one or more characteristics of storage data including a
(B) prediction of a proportion of live data compared to garbage collection-eligible data from the one or more data objects at a future time,
(C) one or more storage classes from among a plurality of storage classes of one or more data storage services; and store the one or more data objects to the selected one or more storage classes of the one or more data storage services.
8. A computer program product disposed upon a computer readable medium, the computer program product comprising computer program instructions that, when executed, cause a computer to carry out the steps of:
(A) based at least upon one or more characteristics of storage data managed by a storage system,
(B) generating a prediction of a proportion of live data compared to garbage collection-eligible data for one or more data objects at a future time;
(C) and selecting, by the storage system, based at least on the prediction, one or more storage classes from among a plurality of storage classes for storing the one or more data objects.
Claims 8/9/10/11/12
Claims 9/10/11/12/13
1. A method comprising:
(A) receiving one or more data objects for storage;
(C) selecting, based at least upon one or more characteristics of storage data including a
(B) prediction of a proportion of live data compared to garbage collection-eligible data from the one or more data objects at a future time,
(C) one or more storage classes from among a plurality of storage classes of one or more data storage services; and storing the one or more data objects to the selected one or more storage classes of the one or more data storage services.
15. A method comprising:
(A) based at least upon one or more characteristics of storage data managed by a storage system,
(B) generating a prediction of a proportion of live data compared to garbage collection-eligible data for one or more data objects at a future time;
(C) and selecting, by the storage system, based at least on the prediction, one or more storage classes from among a plurality of storage classes for storing the one or more data objects.
Claims 2/3/4/5
Claims 16/17/18/19
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KADOWAKI [2018/0041580] discloses selecting a storage class for data based upon characteristics of the data, storage services that include cloud storage. [0042]-[0070]
BELOUSSOV [2020/0076632] discloses identifying data eligible for garbage collection and initiating garbage collection based on availability of resources and cost savings. [0031]-[0042]
COLGROVE [2017/0060444] discloses determining an expected longevity of data. [0032]-[0033]
DANILOV [2019/0384525] discloses receiving information about the time data objects are expected to remain valid. [0015]-[0017]
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J DUDEK JR whose telephone number is (571)270-1030. The examiner can normally be reached Monday - Friday, 8:00A-4:00P.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hosain T Alam can be reached at 571-272-3978. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD J DUDEK JR/Primary Examiner, Art Unit 2132
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