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`”K UNITED STATES DEPARTMENT OF COMMERCE
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`United States Patent and Trademark Office
`a,
`Morass:
`COMMISSIONER OF PATENTS AND TRADEMARKS /
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`Washington. Dc. 20231
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`
`APPLICATION NO.
`FiLING DATE
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`FiRST NAMED INVENTOH
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`ATTORNEY DOCKET ND.
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`NINTH FLEIEiR EAST rowan
`WASHINGTON DI: 200135-3918
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`TIVIL'ifl‘fDE-UE-
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`1 ‘
`EXAMINER
`..W—-
`.T
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`I
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`2177
`DATEHAILED:
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`uaxnsxnl
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`Please find below andfor attached an Office communication concerning this application or
`proceeding.
`
`Commissioner 01' Patents and Trademarks
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`PTOIQOC {Ham true]
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`EMCVMW 1025
`EMCVMW 1025
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`’1 6
`i)? ‘ "
`1- File Copy
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`

`

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`Applicantis)
`
` Application No.
`ooi283.160
`
`
`It
`'I Ii
`Art Unit
`'5
`.:
`2177
`Jean n. Hornere
`||:|I
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`— The MAiLiNG DATE of this communication appears on the cover sheet with the correspondence address —-
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`Office Action Summary
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`Examiner
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`Farber et al.
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`III
`I
`|
`I
`Ii‘ I
`'i
`Iii! IIIII-lt
`ii "'I II .I
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`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE three
`THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of lime may be available under the provisions of 3? CFR 1.136 (a).
`after out (a) MONTHS rtom the mailing date of this communication.
`- If the period for reply specified above is less than thirty (30) days. a reply within the statutory minimum of thirty {30) days will
`be considered timeiy.
`- If NO period for reply is specified above. the msilimurn statutory period will apply and will oiplre SIX (6] MONTHS from the trialling date of this
`commmication.
`- FaiIure to reply within the set or attended period for reply will. by statute. cause the application to become ABANDONED {35 U.S.C.§ 133).
`- Any reply received by the Office later than three months alter the mailing date of this communication. even if timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.70403).
`Status
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`In no event. however. may a reply be timely filed
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`MONTHIS) FROM
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`11K Responsive to communicationisi filed on Apr 18. 2001
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`2a) __ This action is FINAL.
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`2b)E] This action is non-final.
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`3}
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`Since this application is in condition for allowsnca except for formal matters. prosecution as to the merits is
`closed in accordance with the practice under Ex patio Ouafi’BSS CD. 11.‘ 453 0.6. 213.
`Disposition of Claims
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`412 Claimis} 54-106
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`isiare withdrawn from consider:
`43) Of the above. claimls} none
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`5] _ Claim(s)
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`6} E Claimis) 54-106
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`T} _ Ctaimis)
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`3) _ Claims
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`isiare pending in the applica
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`isiare allowed.
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`isiare rejected.
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`isiare objected to.
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`_
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`are subject to restriction andior election requirem;
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`Application Papers
`9}m The specification is objected to by the Examiner,
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`ioifl] The drawingis) filed on
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`Apr 1. 1999
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`isiare objected to by the Examiner.
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`11)C| The proposed drawing correction filed on
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`12H: The oath or declaration is objected to by the Examiner.
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`is: afl
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`approved blljdisapproved.
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`Priority under 35 U.S.C. § 119
`131C] Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 119iai-(d).
`all] All b) D Some“ c] CNone of:
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`' 1. E] Certified copies of the priority documents have been received.
`2. [I Certified copies of the priority documents have been received in Application No.
`3. [3 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau {PCT Rule 17.2{a}).
`'See the attached detailed Office action for a list or the certified copies not received.
`
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`14} :l Acknowledgement is made of a claim for domestic priority under 35 U,S.C. § 119ie}.
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`Attachrnenfls}
`15)
`Notice or noisier-m Cited {Pro-392]
`1e) :1 Interview Summary {Pro-413) Paper Nuts}.
`
`
`16} .Nofim oi Dial'tsoerson‘s PM Dianna Review {PTOQ‘B}
`19]
`Malibu ol’ informal Patent Application {PTO-‘52}
`
`5
`17]
`Inl‘onnetion Disdosure Sister-hectic] {NO-1449} Paper Net's]
`20] __ other:
` LI 5 Patent and Treatment critics
`PTO-326 (Rev. 9-00}
`Office Action Summary
`Part of Paper No. 7
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`
`
`

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`Serial Number: 09:283, 160
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`Art Unit: 2177
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`Page 2
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`DETAILED ACTION
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`Information Disclosure Statement
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`1.
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`The information disclosure statement (IDS) filed on 041181'01 complies with the
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`provisions of MPEP § 609. The information referred to therein has been considered as to the
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`merits. (see attached PTO-1449).
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`Drawings
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`2.
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`This application has been filed with informal drawings which are acceptable for
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`examination purposes only.
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`3.
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`The drawings are objected to under 37 CFR l.83(a). The drawings must show every
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`feature of the invention specified in the claims. Therefore, the plurality of servers, including a
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`source server,
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`that allows a client to request and retrieve a cached data item through a hashed
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`identifier must be shown or the feature(s) canceled from the claim(s). No new matter should be
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`entered.
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`4.
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`The drawings are objected to under 37 CFR 1.83Cb) because they are incomplete. In
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`particular, a flowchart was not provided to illustrate the claimed method steps. 37 CFR l.83(b)
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`reads as follows:
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`When the invention consists of an improvement on on old machine the drawing must when possible exhibit, in
`one or more views, the improved portion itself, disconnected from the old structure, and also in another view. so
`much onlyr of the old structure as will suffice to Show the connection ofthe invention therewith.
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`Correction is required.
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`

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`Serial Number: 09981160
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`Art Unit: 2177
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`Page 3
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`Specyicatr'on
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`5.
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`The title of the invention has not been substantially amended to be descriptive. A new title
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`is required that is clearly indicative of the invention to which the claims are directed.
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`6.
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`The abstract of the disclosure is objected to because it fails to be narrative of the claimed
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`invention. Correction is required. See MPEP § 608.01{b}.
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`7.
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`Applicant is reminded of the proper content of an abstract of the disclosure.
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`A patent abstract is a concise statement of the technical disclosure of the patent and
`should include that which is new in the art to which the invention pertains. If the patent is of a
`basic nature, the entire technical disclosure may be new in the art, and the abstract should be
`directed to the entire disclosure. If the patent is in the nature of an improvement in an old
`apparatus, process, product, or composition, the abstract should include the technical disclosure
`of the improvement.
`In certain patents, particularly those for compounds and compositions,
`wherein the process for making and/or the use thereof are not obvious, the abstract should set
`forth a process for making andfor use thereof. If the new technical disclosure involves
`modifications or alternatives, the abstract should mention by way of example the preferred
`modification or alternative.
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`The abstract should not refer to purported merits or speculative applications of the
`invention and should not compare the invention with the prior art.
`
`Where applicable, the abstract should include the following:
`(1) if a machine or apparatus, its organization and operation;
`(2) if an article, its method of making;
`(3) if a chemical compound, its identity and use;
`(4) if a mixture, its ingredients;
`(5) if a process, the steps.
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`Extensive mechanical and design details of apparatus should not be given.
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`8.
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`Applicant is reminded of the proper language and format for an abstract of the disclosure.
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`

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`Serial Number: 09!283,l60
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`Art Unit: 217?
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`Page 4
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`The abstract should be in narrative form and generally limited to a single paragraph on a
`separate sheet within the range of 50 to 250 words.
`It is important that the abstract not exceed
`250 words in length since the space provided for the abstract on the computer tape used by the
`printer is limited. The form and legal phraseology often used in patent claims, such as "means"
`and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist
`readers in deciding whether there is a need for consulting the full patent text for details.
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`The language should be clear and concise and should not repeat information given in the
`title. It should avoid using phrases which can be implied, such as, "The disclosure concerns,"
`"The disclosure defined by this invention," "The disclosure describes," etc.
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`Claim Objections
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`9.
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`Claims 72-76 and 91 are objected to because of the following infonnalities: the cited
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`method claims improperly depend on the system of claim 54 . Appmpriate correction is required.
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`Claim Rejections - 35 USC § 112
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`10.
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`The following is a quotation ofthe first paragraph of35 U.S.C. 112:
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`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.
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`1 1.
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`Claims 54-106 are rejected under 35 U.S.C. 112, first paragraph, as containing subject
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`matter which was not described in the specification in such a way as to enable one skilled in the
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`art to which it pertains, or with which it is most nearly connected, to make andfor use the
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`invention. The specification does not seem to have described the operation of the claimed plurality
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`of servers, including a source server, that allows a client to request and retrieve cached a data
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`

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`Serial Number: 09i283,160
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`Art Unit: 217?
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`Page 5
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`item through the use of a hashed identifier. Applicant is respectfully requested to indicate where
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`support has been provided for these limitations.
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`In the event that the original specification does provide support for the instant claims, the
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`examiner submits that these claims are rejected under double patenting as follows:
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`Double Parenting
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`The nonstatutory double patenting rejection is based on ajudicially created doctrine
`12.
`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. See In re Goodman, l 1 F.3d 1046, 29 USPQ2d 2010 (Fed.
`Cir. 1993); In re Longi, 759 F.2d 83?, 225 USPQ 645 (Fed. Cir. l985];1n re Van Omani, 686
`F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA
`1970];and, In re Thoringron, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR.1.321© may be used to
`overcome an actual or provisional rejection based on a nonstatutory double patenting ground
`provided the conflicting application or patent is shown to be commonly owned with this
`application. See 37 CFR 1.130(b).
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 3? CFR 3.7303}.
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`13.
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`Claims 54-106 are rejected under thejudicially created doctrine of double patenting over
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`claims 1-48 of U. S. Patent No. 5,978,791 since the claims, if allowed, would improperly extend
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`the "right to exclude" already granted in the patent.
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`The subject matter claimed in the instant application is fully disclosed in the patent and is
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`covered by the patent since the patent and the application are claiming common subject matter.
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`Furthermore, there is no apparent reason why applicant was prevented from presenting
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`claims corresponding to those of the instant application during prosecution of the application
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`

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`Serial Number: 091981160
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`Art Unit: 2177
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`Page 6
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`which matured into a patent. See In re Schneller, 39'}' F.2d 350, 158 USPQ 210 (CCF‘A 1968).
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`See also MPEP § 804.
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`Claim Rejections - 35 USC § I03
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`14.
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`The following is a quotation of 35 U.S.C. 103(3) which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section [02 of this title, if the differences between the subject matter sought to be patented and the prior art are
`Such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
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`This application currently names joint inventors. In considering patentability of the claims
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`under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was
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`commonly owned at the time any inventions covered therein were made absent any evidence to
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`the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor
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`- and invention dates of each claim that was not commonly owned at the time a later invention was
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`made in order for the examiner to consider the applicability of 35 U.S.C. 103© and potential 35
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`U.S.C. 102(0 or (g) prior art under 35 U.S.C. 103(3).
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`15.
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`Claims 54-106 are rejected under 35 U.S.C. 103(a) as being unpatentable over Nelson et
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`al. (Nelson), US. Patent No. 5,452,447,
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`in view of Hamilton e! a1. (Hamilton), US Patent No.
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`5,640,564.
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`

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`Serial Number: 09.9283,160
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`Art Unit: 2177
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`Page 'r'
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`As to claims 54-56, Nelson substantially discloses the invention including a data
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`processing system for caching a file server to thereby allow client users to request and retrieve
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`files in a distributed computer system (abstract, lines 1-8 et seq). In particular, Nelson discloses a
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`plurality of network servers (fig. 3, items 56, 58, 60, 68) including at least some cached data
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`items from a source server (see fig. 1, items 28, 30; abstract, lines 8-15, et seq). Nelson fin‘ther
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`discloses the use of a hash function on a data file to thereby quickly retrieve the data file from the
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`cache upon user’s request (col. 17, lines 18-41 et seq).
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`Nelson does not particularly detail the use of the hashing function on the data file to create
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`an identifier, which can be utilized to retrieve the data file upon user’s request. HoWever,
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`Hamilton discioses an analogous system wherein a hashing function is applied to a data item to
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`thereby create an identifier, which a user can utilize to request and retrieve a corresponding data
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`item (col. 6, lines 28-39 et seq).
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`It would have been obvious to one of ordinary skill in the art of
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`data processing to combine the teachings of the cited references because Hamilton‘s teaching
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`would allow the users ofNelson’s system to expeditiously and dynamically retrieve a file as it is
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`updated.
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`As to claim 5?, Hamilton discloses the correspondence between a data identifier and a
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`data item on a server, wherein a data identifier uniquely identifies a corresponding data item (col.
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`6, lines 20-21 et seq).
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`

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`Serial Number: 091081160
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`Art Unit: 2177
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`Page 8
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`As to claim 58, Nelson discloses the retrieval of a data item from another server, if it is not
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`located on a given server (col. 15, lines 50-60 et seq).
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`As to claim 59, Nelson discloses the retrieval of a local copy of the data item from another
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`server, if it is not located on a given server (col. 15, lines 23-26 et seq).
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`As to claim 60, Nelson discloses some data items distributed across the network as cached
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`version of another server (col. 7, lines 29-35 et seq).
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`As to claim 61, Nelson discloses the rosolution of a request for a particular data item
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`based on the availability ofthe servers (col. 10, lines 8-24 et seq).
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`16.
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`The limitations of claims 62-106 have already been discussed in the in the rejection of
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`claims 54-61 above . They are therefore rejected on similar grounds.
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`Conclusion
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`17'.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. Please see attached PTO-892.
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`

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`'Serial Number: 09981160
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`Art Unit: 2177
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`Page 9
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to Jean R. Homere whose telephone number is (703)-308-6647.
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`The examiner can
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`normally be reached on Monday-Friday from 08:30 a.m.-5:00 pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner‘s supervisor, John
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`Breene, can be reached on Monday-Friday from 8:00 am. to 3:30 pm. at (703)-305-9790.
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`Any response to this action should be mailed to: Commissioner of Patents and Trademarks
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`Washington, D.C. 20231, or faxed to: (703) 308—905 1, (for formal communications intended for
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`entry), 01': (703) 305-9731 (for informal or draft communications, please label "PROPOSED"
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`or "DRAFT"). Hand-delivered responses should be brought to Crystal Park II. 2121 Crystal Drive, Arlington. VA.
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`Sixth Fioor {Receptionist}. The facsimile phone number for this group is (3’03) 308-5357.
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`Any inquiry of a general nature or relating to the status of this application should be directed to
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`the Group receptionist whose telephone number is (703) 305-9600.
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`.
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`Jean é- mm“;
`Jean R. Homere
`Primary Examiner. AU. 21??
`June 01, 2001
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`