`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`10/956, 121
`
`22204
`
`
`
`
` F ING DATE
`
`10/04/2004
`
`7590
`
`12/29/2008
`
`NIXON PEABODY, LLP
`401 9TH STREET, NW
`SUITE 900
`WASHINGTON, DC 20004-2128
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`Xin Wang
`
`111325—291300
`
`8924
`
`EXAMINER
`
`WEST, THOMAS C
`
`ART UNIT
`
`3621
`
`MAIL DATE
`
`12/29/2008
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`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.
`
`PTOL—90A (Rev. 04/07)
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`
`
`Application No.
`
`10/956,121
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`Applicant(s)
`
`WANG ET AL.
`
`Office Action Summary
`
`Examiner
`
`THOMAS WEST
`
`Art Unit
`
`3685 -
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX (6) MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)IXI Responsive to communication(s) filed on 14 July 2008.
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`2a)I:I This action is FINAL.
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`2b)IZI This action is non-final.
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`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZI Claim(s) & is/are pending in the application.
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`4a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`5)I:I Claim(s)
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`is/are allowed.
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`6)IXI Claim(s) & is/are rejected.
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`7)I:I Claim(s) _ is/are objected to.
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`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
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`9)I:I The specification is objected to by the Examiner.
`
`
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`10)I:I The drawing(s) filed on
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`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
`
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`a)I:I All
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`b)I:I Some * c)I:I None of:
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`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No.
`
`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.
`
`Attach ment(s)
`
`1) IZI Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date 7-2-08 10-10-08.
`U.S. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. _
`5) I:I Notice of Informal Patent Application
`6) D Other:
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Ma%&§126)fl31205
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`Application/Control Number: 10/956,121
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`Page 2
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`Art Unit: 3685
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`DETAILED ACTION
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`Status of Claims
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`1.
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`The Final Office Action dated lO-l6-08 is withdrawn. This action is in reply to the
`
`Arguments/Remarks filed 7-14-08.
`
`2.
`
`Claims l-36 are currently pending and have been examined.
`
`Information Disclosure Statement
`
`3.
`
`The Information Disclosure Statements filed on 7-2-08, 10-10-08 have been considered.
`
`Initialed copies of Form 1449 are enclosed herewith.
`
`Response to Arguments
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`5.
`
`Applicant's arguments filed 7-14-08 have been fully considered but they are not
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`persuasive. Applicant’s arguments will be addressed in sequential order as they were set forth in
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`the “Remarks” section on the above date. Applicant argues that Anand does not disclose meta-
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`rights specifying derivable rights. Anand discloses, “Multiple principals can delegate a subset of
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`their maximal permissions for the executable content. The mechanism uses policy for combining
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`the delegated permissions into the content's current permissions” (col. 3, lines 27-31). Anand
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`further discloses, “electing granted permissions from within an associated maximal set of
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`permissions" (col. 3, lines 59-60). “As FIG. 2 depicts, the derivation mechanism (100) consists
`
`of the following five steps:”, (col. 5, lines 1-2). “The current permissions (150), by definition,
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`must always be a subset of the maximal permissions (140)”, (col. 5, lines l4-l6). “The
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`description of executable content (120) is a set of attribute-value pairs. One possible
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`embodiment is RDF ("Resource Description Framework") labels that describe the meta-data of a
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`website's URI ("Universal Resource Identifier")”, (col. 5, lines 17-21). The attribute-value pairs
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`of Anand correspond to the meta-rights of Wang. Anand further discloses, “FIG. 4 illustrates
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`that the nodes of a policy graph's directed graph consist of an attribute, a value, an entry, and an
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`access control list. FIG. 5 illustrates a preferred embodiment of the permissions structure, and
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`shows that permissions include positive and negative rights and transforms. FIG. 7 illustrates
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`how the first step of the dynamic derivation mechanism creates a derivation instance and sets its
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`attributes values” (col. 4, lines 18-31. The state variables of Wang correspond to the derivation
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`instance of Anand, fig. 7. Anand regulates who is entitled to derive rights through an access
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`control described in fig. 4 referenced above. Anand controls who is entitled to derive rights,
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`“The access control list (325) limits access to the policy graph (320). Principals can be permitted
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`to modify any of the policy graph attributes (321-325)”, (col. 6, lines 26-29). Infrastructure
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`further discloses a state machine which consists of state variables, as defined by Curtis. “Within
`
`the state machine, while a state variable does not equal exit 1301, the state machine will go from
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`state to state based upon what the state variable is set to”, (Curtis, 6,397,355, col. 9, lines 53-55) .
`
`Double Patenting
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`4.
`
`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
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`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection
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`is appropriate where the conflicting claims are not identical, but at least one examined
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`application claim is not patentably distinct from the reference claim(s) because the examined
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`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); and 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 a nonstatutory double patenting
`
`ground provided the conflicting application or patent either is shown to be commonly owned
`
`with this application, or claims an invention made as a result of activities undertaken within the
`
`scope of a joint research agreement.
`
`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 37 CFR
`
`3.73(b).
`
`Claims 1-36 are provisionally rejected on the ground of nonstatutory double patenting
`
`over claim 6 of copending Application No. 10162701. This is a provisional double patenting
`
`rejection since the conflicting claims have not yet been patented.
`
`The subject matter claimed in the instant application is fillly disclosed in the referenced
`
`copending application and would be covered by any patent granted on that copending application
`
`since the referenced copending application and the instant application are claiming common
`
`subject matter, as follows: meta-rights, derived rights, rights transfer, generating a license.
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`Furthermore, there is no apparent reason why applicant would be prevented from
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`presenting claims corresponding to those of the instant application in the other copending
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`application. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP
`
`§ 804.
`
`Claim Rejections - 35 USC §1 01
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`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.
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`6.
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`Claims 1-36 are rejected under 35 U.S.C. §101 because the claimed invention is directed
`
`to non-statutory subject matter.
`
`Based on Supreme Court precedent and recent Federal Circuit decisions, § 101 process must
`
`(1) be tied to another statutory class (such as a particular apparatus) or (2) transform
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`underlying subject matter (such as an article or materials) to a different state or thing.
`
`If
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`neither of these requirements is met by the claim(s), the method is not a patent eligible
`
`process under 35 U.S.C. § 101.
`
`In this particular case, claims 1, 12, 24 and their dependent claims 2-11, 13-23, 25-36
`
`lack sufficient technology.
`
`(Diamond v. Diehr, 450 U.S. 175, 184 (1981); Parker v. Flook,
`
`437 U.S. 584, 588 n.9 (1978); Gottschalk v. Benson, 409 U.S. 63, 70 (1972); Cochrane v.
`
`Deener, 94 U.S. 780, 787-88 (1876)).
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`Claims 2-11, 13-23, 25-36 are also rejected as each depends from either claim 1, 12, 24.
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`Claim Rejections - 35 USC § 1 03
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`7.
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`The following is a quotation of 35 USC. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 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.
`
`8.
`
`Claims l-36 are rejected under U.S.C. 103(a) as being unpatentable over Anand, US
`
`Patent No. 6,044,466 (Anand), in view of Workshop on Digital Rights Management, Minutes
`
`from Architecture/Infrastructure Session (Infrastructure).
`
`Claims 1, 12, 24:
`
`Anand, as shown, discloses the following limitations:
`
`obtaining a set of rights associated with an item, the set of rights
`
`including meta-rights specifying derivable rights that can be derived
`
`from the meta-rights (see column 3, line 15-31, column 5, lines 17-23,
`
`column 5, lines 1-16)
`
`determining whether the rights consumer (user) is entitled to the derivable rights
`
`specified by the meta-rights (see col. 3, lines 27-31, column 5, line 14-21, col. 3,
`
`lines 32-35)
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`deriving at least one right from the derivable rights, if the rights consumer is entitled
`
`to the derivable rights specified by the meta-rights, wherein the derived right
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`includes at least one state variable based on the set of rights and used for
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`determining a state of the derived right (see column 5, line 1-16, col. 3, lines 32-35,
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`col. 5, lines 17-21)
`
`Anand discloses the limitations as shown above. Anand does not directly disclose
`
`a state variable (state machine), but Infrastructure does (page 8, paragraph 3)
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to modify Anand to include the state machine of Infrastructure since this
`
`provides a dynamic structure that can express dynamic rights relationships.
`
`Claims 2, 13, 25:
`
`Anand, as shown, discloses the following limitations:
`
`the state variable inherits a state thereof for content usage or rights transfer from the
`
`set of rights (see column 5, line 1-16)
`
`Claims 3, 4, 14, 15, 26, 27:
`
`Anand/Infrastructure discloses the limitations shown above. Anand further discloses:
`
`the state variable shares a state thereof for content usage or rights transfer with the
`
`set of rights (see column 8, line 7-14)
`
`the state variable inherits a remaining state for content usage or rights transfer from
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`the set of rights (see column 5, line 14-16)
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`Claims 5, 16, 28:
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`Anand, as shown, discloses the following limitations:
`
`the state variable is updated upon exercise of a right associated with the state
`
`variable (see column 7, line 5-14)
`
`Claims 6, 17, 29:
`
`Anand, as shown, discloses the following limitations:
`
`deriving a plurality of rights from the derivable rights, wherein the state variable is
`
`shared by the derived rights (see column 7, line 1-7)
`
`Claims 7, 8, 18, 19, 30, 31:
`
`Anand discloses the limitations as shown above. Anand does not directly disclose
`
`a state variable (state machine), but Infrastructure does:
`
`the state variable represents a collection of states (see page 8, paragraph 3)
`
`a plurality of state variables that determine the state of the derived right (see page 8,
`
`paragraph 3)
`
`It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to modify Anand to include the state machine of Infrastructure since this
`
`provides a dynamic structure that can express dynamic rights relationships.
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`Claims 9, 20, 32:
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`Anand, as shown, discloses the following limitations:
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`at least one state variable is unspecified in the derived right, is created during a
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`rights transfer, and is assigned to the derived right (see column 7, line 1-14)
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`Claims 10, 21, 33:
`
`Anand, as shown, discloses the following limitations:
`
`the state variable is transferred from the derivable rights to the derived right (see
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`column 7, line 15-23)
`
`Claims 11, 22, 34, 36:
`
`Anand, as shown, discloses the following limitations:
`
`generating a license including the derived right, if the rights consumer is entitled to
`
`the derivable rights specified by the meta-rights (see column 7, line 24-29)
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`one or more of the means for obtaining, the means for determining, and the means
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`for deriving are specified in a license (see column 7, line 24-29)
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`Claim 35:
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`Anand, as shown, discloses the following limitations:
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`obtaining, the means for determining, and the means for deriving comprise at least
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`one of computer-executable instructions, and devices of a computer system (see
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`column 4, line 51-67)
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`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Thomas West whose telephone number is 571-270-1236. The
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`examiner can normally be reached on M-R 7:30am - 5pm EST, ALT Fridays off.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Calvin L. Hewitt, can be reached on (571) 272-6709. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
`
`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 http://pair-direct.uspto. gov. 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.
`
`Thomas West
`
`Patent Examiner
`
`Art Unit 3685
`
`December 15, 2008
`
`/ANDREW J. FISCHER/
`
`Supervisory Patent Examiner, Art Unit 3621
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`Notice of References Cited Examiner
`
`Application/Control No.
`
`10/956321
`
`THOMAS WEST
`U.S. PATENT DOCUMENTS
`
`Applicant(s)/Patent Under
`Reexamination
`WANG ET AL.
`Art Unit
`
`3685
`
`Page 1 Of 1
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM-YYYY
`
`Classification
`
`C
`
`S—6,044,466 A
`
`03-2000
`
`Anand et al.
`
`726/1
`
`c (p
`
`- U I
`
`—
`I—
`I—
`
`*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademark Office
`
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20081205
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`‘P‘P‘P‘P‘P‘P‘P‘P‘P‘P‘P
`ccccccccccc
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`
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`Document Number
`Country Code-Number-Kind Code
`
`Um,_..(D
`MM-YYYY
`
`Country
`
`FOREIGN PATENT DOCUMENTS
`
`Classification
`
`NON-PATENT DOCUMENTS
`
`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
`
`Workshop on Digital Rights Management for the Web, World Wide Web Consortium, Minutes from the
`Architecture/lnfrastructure Session, January 2001
`
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