UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`16/371,428
`
`04/01/2019
`
`Yujia Hu
`
`1200.1983USX1
`
`3480
`
`99253
`
`7590
`
`11/23/2020
`
`salesforce.com, inc./Dergosits & Noah
`Nicole Gorney
`Salesforce Tower
`
`415 Mission Street, 3rd Floor
`San Francisco, CA 94105
`
`EXAMINER
`
`CERVETTI, DAVID GARCIA.
`
`2419
`
`11/23/2020
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`IPDocketing @ salesforce.com
`eofficeaction @ appcoll.com
`tnoah @dergnoah.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-27 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CC) Claim(s)
`is/are allowed.
`Claim(s) 1-27 is/are rejected.
`S)
`) O Claim(s)___is/are objected to.
`C) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) 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 of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 4/1/19.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20191211
`
`Application No.
`Applicant(s)
`16/371 ,428
`Hu et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`David Garcia Cervetti
`2436
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended 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 after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 01 April 2019.
`CO) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)(J This action is FINAL. 2b))This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/371 ,428
`Art Unit: 2436
`
`Page 2
`
`DETAILED ACTION
`
`Claims 1-27 are pending and have been examined.
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`1.
`
`2.
`
`inventor to file provisions of the AIA.
`
`Double Patenting
`
`3.
`
`Claims 1-27 are provisionally rejected under the judicially created doctrine of obviousness-type
`
`double patenting as being unpatentable over claims of US Patents 10644890 and 10749689. Although
`
`the conflicting claims are not identical, they are not patentably distinct from each other because
`
`-
`
`-
`
`“A method comprising: receiving, by a server computing system, a request to access a data element from a
`second data store, the data element having been migrated to the second data store from a first data store;
`accessing, by the server computing system, the data element from the second data store and its counterpart
`data element from the first data store; and responding, by the server computing system, to the request by
`providing the counterpart data element from the first data store instead of the data element from the second
`data store when the data element from the second data store is different from the counterpart data element
`
`from thefirst data store” (claim 1, instant application) is analogous to
`
`
`“A keys-tor-
`Hent device inclune: nron-volatihe memoryyeti8a|slgite cert#
`
`thati securel
`ei
`
`gccess & be
`q
`:
`the app server“‘componert within 3 location span: volatile memory: anc one or moreprocessor or
`
`
`clrouits coucled tothe volatile memory and non-valatie memary, and configured to: launch and track the app
`
`
`
`server component: verity that a request for 4 decrypted secret originated from the anp s
`z
`
`
`retrieve, based on the verlying, a decrypted secret fram a KAA server device using the digital c
`bros to the app server c
`aorrent, the decrypied secret in a He package stored in a sec
`system
`
`
`
`
`siding In an O&-protected user space within the volatile memory, the decryoted secret accessibie to the app
`server component using a nerne of the file gackage” (claim 1, copending 10749689).
`This is a provisional obviousness-type double patenting rejection becausethe conflicting claims
`
` +
`
`4.
`
`of the instant application have not in fact been patented.
`
`5.
`
`The claims of the conflicting patents and/or applications contain every elementof claims 1-27 of
`
`the instant application and thus anticipate the claims of the instant application. Claims 1-27 of the instant
`
`application therefore are not patently distinct from the copending application claims and as such are
`
`unpatentable for obvious-type double patenting. A later patent/application claim is not patentably distinct
`
`from an earlier claim if the later claim is anticipated by the earlier claim.
`
`“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is
`6.
`obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQat 651
`(affirming a holding of obviousness-type double patenting becausethe claims at issue were obvious over
`claimsin four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2dat 1233 (Fed. Cir. 1998)
`(affirming a holding of obviousness-type double patenting where a patent application claim to a genusis
`anticipated by a patent claim to a species with that genus). “ELI LILLY AND COMPANY v BARR
`LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR
`REHEARING EN BANC (DECIDED: May30, 2001).
`7.
`“Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent.
`Thus, the generic invention is “anticipated” by the species of the patented invention. Cf., Titanium Metals
`
`

`

`Application/Control Number: 16/371 ,428
`Art Unit: 2436
`
`Page 3
`
`Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure
`in the prior art defeats any generic claim) 4. This court’s predecessor has held that, without a terminal
`disclaimer, the species claims preclude issuance of the generic claim. In re Van Ornum, 686 F.2d 937,
`944, 214 USPQ 761, 767 (CCPA 1982); Schneller, 397 F.2d at 354. Accordingly, absent a terminal
`disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviousness-type double
`patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
`
`8.
`
`35 U.S.C. 101 reads asfollows:
`
`Claim Rejections - 35 USC § 101
`
`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
`requirementsofthistitle.
`
`9.
`
`Claims 1-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an
`
`abstract idea without significantly more. The claim(s) recite(s) receiving, accessing, and responding, when
`
`making an evaluation in response to the information.
`
`10.
`
`This judicial exception is not integrated into a practical application because they are broad
`
`enough to cover making a determination in the mind, other than the generic computer components. This
`
`receiving, accessing, and responding steps, as crafted, is a process that under its broadest reasonable
`
`interpretation, covers performanceofthe limitation in the mind but for the recitation of generic computer
`
`components.
`
`11.
`
`Thatis, other than reciting “by a server’, nothing in the claim element precludes the step from
`
`practically being performed in the human mind or with paper. For example, but for the “by a server”
`
`language, the claim encompassesa user receiving and accessing resources and granting access to one
`
`or another resource as guards grant/direct accessto visitors and librarians grant/direct access to books.
`
`Regarding Prong One, the determining steps, as drafted, is a process that under its broadest reasonable
`
`interpretation, covers performanceofthe limitation in the mind but for the recitation of generic computer
`
`components.
`
`12.
`
`Regarding Prong Two, there are no additional element(s) or a combination of elements in the
`
`claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the
`
`judicial exception, such thatit is more than a drafting effort designed to monopolize the exception.
`
`13.
`
`The claim(s) does/do not include additional elements that are sufficient to amountto significantly
`
`morethan the judicial exception becausethe claims only use generic computer components. Mere
`
`

`

`Application/Control Number: 16/371 ,428
`Art Unit: 2436
`
`Page 4
`
`instructions to apply an exception using generic components cannot provide an inventive concept.
`
`Additionally, the mere nominal recitation of a generic processor does nottake the claim limitation out of
`
`the mental processes grouping. Thus, the claims recite a mental process and are not patenteligible.
`
`14.
`
`The claims are directed io well-understood, rouline, and conventional activiiy as evidenced by
`
`ine cited references.
`
`Claim Rejections - 35 USC § 102
`
`15.
`
`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 effectivefiling date of the claimed invention.
`
`16.
`
`Claims 1-2, 10-11, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Driesen (20130238577).
`
`Regarding claims 1, 10, and 19, Driesen teaches 1. A method comprising: /10. A system
`
`comprising: one or more processors; and a non-transitory computer readable medium storing a plurality of
`
`instructions, which when executed, cause the one or more processorsof a server computing system to:/
`
`19. Acomputer program product comprising computer-readable program code to be executed by one or
`
`more processors when retrieved from a non-transitory computer-readable medium, the program code
`
`including instructions to (abstract, par.66-68):
`
`receiving, by a server computing system, a request to access a data element from a second data
`
`store, the data element having been migrated to the second datastore fromafirst data store (par.44-47,
`
`request to access table, table migrated/copied from other database);
`
`accessing, by the server computing system, the data element from the second data store andits
`
`counterpart data elementfrom the first data store (par.49-53, access tables); and
`
`responding, by the server computing system, to the request by providing the counterpart data
`
`element from the first data store instead of the data element from the second data store when the data
`
`element from the second datastoreis different from the counterpart data element from the first data store
`
`(par.53-57, determine which table to use based on updated data, write locks, from first version to
`
`second/new version).
`
`

`

`Application/Control Number: 16/371 ,428
`Art Unit: 2436
`
`Page 5
`
`Regarding claims 2, 11, and 20, Driesen teaches wherein both the first data store and the
`
`second data store are available to service the request after the data element has been migrated to the
`
`second data store from the first data store (par.53-63).
`
`Claim Rejections - 35 USC § 103
`
`17.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousnessrejections
`
`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 effectivefiling 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.
`
`18.
`
`Claims 3-5, 12-14, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Driesen, and further in view of Burke (20080034008).
`
`Regarding claims 3, 12, and 21, Driesen does not expressly disclose, however Burke teaches
`
`comparing, by the server computing system, the data element from the second data store with the
`
`counterpart data elementfrom the first data store to determine if they are different (par.88-91).
`
`Therefore, one of ordinary skill in the art would have found it obvious before the effectivefiling
`
`date of the claimed invention to modify Driesen to provide access to updated databases as taught by
`
`Burke.
`
`One of ordinary skill in the art would have been motivated to perform such a modification to
`
`provide accessto up to date data (Burke, par.80-94).
`
`Regarding claims 4, 13, and 22, Driesen/Burke teaches generating, by the server computing
`
`system, alerts based on the data elementfrom the second data store being different from the counterpart
`
`data elementfrom the first data store (Burke, par.5-12, 78-95).
`
`Regarding claims 5, 14, and 23, Driesen/Burke teaches wherein the first data store is
`
`associated with a first cryptographic technique and the second data store is associated with a second
`
`cryptographic technique, wherein the counterpart data element from the first data store is decrypted using
`
`the first cryptographic technique to obtain a raw value (Burke, par.36-51).
`
`19.
`
`Claims 6-7, 15-16, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Driesen/Burke,and further in view of Dimitrakos (20170288871).
`
`

`

`Application/Control Number: 16/371 ,428
`Art Unit: 2436
`
`Page 6
`
`Regarding claims 6, 15, and 24, Driesen/Burke doesnot expressly disclose, however,
`
`Dimitrakos teaches wherein the raw value is encrypted using the second cryptographic technique prior to
`
`being stored as the data elementin the second data store (abstract, par.17, 32-37).
`
`Therefore, one of ordinary skill in the art would have found it obvious before the effectivefiling
`
`date of the claimed invention to modify Driesen/Burke to encrypt/reencrypt objects as taught by
`
`Dimitrakos.
`
`One of ordinary skill in the art would have been motivated to perform such a modification to
`
`further provide secure access to objects (Dimitrakos, par.30-42).
`
`Regarding claims 7, 16, and 25, Driesen/Burke/Dimitrakos teaches wherein the raw value is a
`
`secret, and wherein said accessing the data element from the second data store comprises decrypting
`
`the data element using the second cryptographic technique to obtain a secret associated with the data
`
`element, and wherein said accessing the counterpart data elementfrom the first data store comprises
`
`decrypting the counterpart data element using the first cryptographic technique to obtain a secret
`
`associated with the counterpart data element (Dimitrakos, par.41-43).
`
`Allowable Subject Matter
`
`20.
`
`Claims 8-9, 17-18, and 26-27 are objected to as being dependent upon a rejected baseclaim, but
`
`would be allowable if rewritten in independentform including all of the limitations of the base claim and
`
`any intervening claims.
`
`Conclusion
`
`21.
`
`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to David Garcia Cervetti whose telephone number is (571)272-5861. The examiner can
`
`normally be reached on Monday-Friday 8AM-5PM.
`
`22.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-basedcollaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`23.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`HADI ARMOUCHE canbereached on (571)270-3618. The fax phone number for the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/371 ,428
`Art Unit: 2436
`
`Page 7
`
`24.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained from
`
`either Private PAIR or Public PAIR. Status information for unpublished applications is available through
`
`Private PAIR only. For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact
`
`the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information system, call 800-786-
`
`9199 (IN USA OR CANADA)or 571-272-1000.
`
`/David Garcia Cervetti/
`Primary Examiner, Art Unit 2419
`
`