UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alcxmdril. Virginia 22313-1450
`www.uspm.gov
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`%
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`10/162,701
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`06/06/2002
`
`Xin Wang
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`1] l325-l I3
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`6475
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`NIXON PEABODY, LLP
`401 9TH STREET, NW
`sums 900
`WASHINGTON, DC 20004-2128
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`'
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`'
`
`REAGAN, JAMES A
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`3621
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`DATE MAILED: 05/24/2006
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. 10/03)
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`Petitioner Apple Inc. - EX. 1044, p. 1
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`Petitioner Apple Inc. - Ex. 1044, p. 1
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`
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`Applicant(s)
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`
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`Application No.
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`10/162,701
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`WANG ET AL.
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`Office Action Summary
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`Examiner
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`James A. Reagan
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`Art Unit
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`3621
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`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.
`Enensions 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.
`lf N0 period for replyIs 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).
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`Status
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`HIE Responsive to communication(s) filed on 21 February 2006.
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`2a)lZl This action is FINAL.
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`2b)El 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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`MIX Claim(s) flz is/are pending in the application.
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`4a) Of the above claim(s) _ is/are withdrawn from consideration.
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`5)|:I Claim(s) __ is/are allowed.
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`6)IZ Claim(s) 1-_27 is/are rejected.
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`7)CI Claim(s) _ is/are objected to.
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`8):] Claim(s) __'_ are subject to restriction and/or election requirement.
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`Application Papers
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`9):] The specification is objected to by the Examiner.
`10)L__I The drawing(s) filed on _ is/are: a)l:I accepted or b)|: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).
`11):] The oath or declaration is objected to by the Examiner. Note the attached Office Action orforrn PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)|:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)I:I All
`b)I:I Some * C)D None of:
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`1.l:] Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No. __
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) E] Notice of References Cited (PTO-892)
`2) E] Notice of Draftsperson’5 Patent Drawing Review (PTO-948)
`3) CI Information Disclosure Statement(s) (PTO-1449 or PTO/SB/OB)
`Paper No(s)lMail Date _.
`U.S. Patent and Trademark Office
`
`,
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`4) El Interview Summary (PTO-413)
`Paper No(s)lMail Date. _-
`5) CI Notice of Informal Patent Application (PTO-152)
`6) D Other:
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`PTOL—326 (Rev. 7—05)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20060522
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`Petitioner Apple Inc. - EX. 1044, p. 2
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`Petitioner Apple Inc. - Ex. 1044, p. 2
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`Application/Control Number: 10/162,701
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`Page 2
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`Art Unit: 3621
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`DETAILED ACTION
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`Status of Claims
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`1.
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`2.
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`3.
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`This action is in response to the amendment filed on 21 February 2006.
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`Claim 10 has been amended.
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`Claims 1-27 have been examined.
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`RESPONSE TO ARGUMENTS
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`4.
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`Applicant's arguments received on 21 February 2006 have been fully considered but they are not
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`persuasive. Referring to the previous Office action, Examiner has cited relevant portions of the
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`references as a means to illustrate the systems as taught by the prior art. As a means of
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`providing further clarification as to what is taught by the references used in the first Office action,
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`Examiner has expanded the teachings for comprehensibility while maintaining the same grounds
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`of rejection of the claims, except as noted above in the section labeled “Status of Claims.” This
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`information is intended to assist in illuminating the teachings of the references while providing
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`evidence that establishes further support for the rejections of the claims.
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`With regard to the limitations of claims 1, 10, and 21, Applicant argues, “Ginter fails to
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`teach, disclose, or suggest that rights associated with an item can include meta-rights specifying
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`derivable rights that can be derived from the meta-rights by the rights consumer,
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`that a
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`determination is made regarding whether the rights consumer is entitled to derive the derivable
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`rights specified by the meta-rights, or that, if the rights consumer is entitled to derive the derivable
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`rights specified by the meta-rights, deriving one or more of the derivable rights and generating a
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`license including the derived rights as is recited in claim 1." The Examiner respectfully disagrees
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`and points to Ginter, column 31, line 26 to column 32, line 60 wherein Ginter discloses deriving
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`Petitioner Apple Inc. - EX. 1044, p. 3
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`Petitioner Apple Inc. - Ex. 1044, p. 3
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`Application/Control Number: 10/162,701
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`Page 3
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`Art Unit: 3621
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`content control information by following different branches of controls to modify and evolve the
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`control information for a digital file i.e. meta-rights.
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`It should be noted that the Examiner is not required to map each limitation to a cited
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`passage within the prior art of reference, as is suggested by the Applicant, nor is it the Examiner's
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`responsibility to translate the technology, techniques, and/or methods of the prior art of record,
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`since it is the assumption of the Examiner that the Applicant and the Applicant's representatives
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`are those of at least ordinary skill in the art. Since the Examiner assumes that the Patents used
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`in making the rejections with regard to and in light of the instant claims have complied with the
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`enablement standards at set for the by the United States Patent and Trademark Office, the
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`Examiner correctly deduces that one of common skill would be able to read, understand, and
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`manufacture the innovation as disclosed by the inventors. Subsequently, since the Applicants
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`and their representatives are considered to be at least fundamentally schooled in the arts of the
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`instant
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`invention,
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`it
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`is also correct for the Examiner to infer that the same are capable of
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`comprehending and appreciating the prior art as disclosed by the inventors and accredited by the
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`USPTO. Ergo, the passages cited by the Examiner are a courtesy meant not only to lay a
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`foundation of rejection of the claim limitations, but also to introduce the prior art of record as a
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`benchmark of knowledge currently employed by artisans of the past and present, and also for
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`establishing a pathway for continued prosecution.
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`It is incumbent upon the Applicant and the
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`Applicant’s representative, then, to evaluate the prior art of record, point out misconceptions or
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`other inaccuracies made by the Examiner, assert
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`limitations that have not been properly
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`addressed or that are novel, and, if deemed necessary, amend the claims to overcome the prior
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`art of record, each and all in pursuit of an allowance.
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`Petitioner Apple Inc. - EX. 1044, p. 4
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`Petitioner Apple Inc. - Ex. 1044, p. 4
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`Application/Control Number: 10/162,701
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`Page 4
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`Art Unit: 3621
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`Claim Rejections - 35 USC § 102
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`5.
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`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the basis for
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`the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or
`in public use or on sale in this country, more than one year prior to the date of application for
`patent in the United States.
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`6.
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`Claims 1-27 are rejected under 35 U.S.C. 102(b) as being cleany anticipated by Ginter et al. (US
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`5,892,900 A).
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`Examiner’s Note: The Examiner has pointed out particular references contained in the prior art
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`of record within the body of this action for the convenience of the Applicant. Although the
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`specified citations are representative of the teachings in the art and are applied to the specific
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`limitations within the individual claim, other passages and figures may apply. Applicant,
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`in
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`preparing the response, should consider fully the entire reference as potentially teaching all or
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`part of the claimed invention, as well as the context of the passage as taught by the prior art or
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`disclosed by the Examiner.
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`Claims 1, 10, and 21:
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`Ginter discloses usage rights associated with digital works evolving as publishers and
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`distributors provide the digital content to consumers. See at least column 47, line 56 to column
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`48, line 33; column 4, lines 14-27; column 5, lines 29-41, as well as other relevant and related
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`Figures and text. Ginter therefore discloses the following limitations:
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`Petitioner Apple Inc. - EX. 1044, p. 5
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`Petitioner Apple Inc. - Ex. 1044, p. 5
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`Application/Control Number: 10/162,701
`Art Unit: 3621
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`Page 5
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`obtaining a set of rights associated with an item, said set of rights including meta-
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`rights specifying derivable rights that can be derived from the meta-rights by the
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`rights consumer; and
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`determining whether the rights consumer is entitled to derive the derivable rights
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`specified by the meta-rights, and at least one of deriving the derivable rights, and
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`generating a license including the derived rights if the rights consumer is entitled
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`to derive the derivable rights specified by the meta-rights.
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`.
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`.
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`Claim 2:
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`With regard to the limitation of transmitting the set of rights, in the form of a license to the
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`item, from the rights supplier to the rights consumer, see at least column 4, lines 14-27; column 5,
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`lines 29-41, as well as other relevant and related Figures and text.
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`Claims 3, 11, and 22:
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`With regard to the limitation of the derived rights are rights disposal rights, see at least
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`column 4, lines 14-27, as well as other relevant and related Figures and text.
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`Claims 4, 12, and 23:
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`With regard to the limitation of the items are content, see at least column 5, lines 29-41,
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`as well as other relevant and related Figures and text.
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`Claims 5, 13, and 24:
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`With regard to the limitation of the derived rights include usage rights, see at least column
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`9, lines 19-32, as well as other relevant and related Figures and text.
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`Petitioner Apple Inc. - EX. 1044, p. 6
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`Petitioner Apple Inc. - Ex. 1044, p. 6
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`Application/Control Number: 10/162,701
`Art Unit: 3621
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`Claims 6 and 14:
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`Page 6
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`With regard to the limitation of the derived rights include meta- rights that the rights
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`consumer may transfer to another rights consumer in the form of a license, see at least column
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`47, line 56 to column 48, line 33, as well as other relevant and related Figures and text.
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`Claims 7-9 and 15-17:
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`With regard to the limitations of:
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`.
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`.
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`.
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`the consumer is a content distributor;
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`the consumer is a content retailer;
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`the consumer is a content publisher;
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`See at least column 5, lines 29-41, as well as other relevant and related Figures and text.
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`Claims 25-27:
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`With regard to the limitations of:
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`.
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`.
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`.
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`said derivable rights comprise at least one condition that is associated with at
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`least one state variable.
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`generating said license including the derived rights with the rights consumer
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`designated as a principal.
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`generating said license including the derived rights with a party other than the
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`rights consumer designated as a principal.
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`See at least column 5, lines 29-41, as well as other relevant and related Figures and text.
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`Petitioner Apple Inc. - EX. 1044, p. 7
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`Petitioner Apple Inc. - Ex. 1044, p. 7
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`

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`Application/Control Number: 10/162,701
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`Page 7
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`Art Unit: 3621
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`Conclusion
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`7.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is
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`reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`8.
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHS of the
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`mailing date of this final action and the advisory action is not mailed until after the end of the
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`THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the
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`date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(3) will be
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`calculated from the mailing date of the advisory action.
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`In no event, however, will the statutory
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`period for reply expire later than SIX MONTHS from the date of this final action.
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`Petitioner Apple Inc. - EX. 1044, p. 8
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`Petitioner Apple Inc. - Ex. 1044, p. 8
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`

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`Application/Control Number: 10/162,701
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`Page 8
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`Art Unit: 3621
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`Any inquiry of a general nature or relating to the status of this application or concerning
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`this communication or earlier communications from the Examiner should be directed to James A.
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`Reagan whose telephone number is 571.272.6710. The Examiner can normally be reached on
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`Monday-Friday, 9:30am-5:00pm.
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`If attempts to reach the examiner by telephone are
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`unsuccessful, the Examiner's supervisor, James Trammell can be reached at 571.272.6712.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Pn‘vate PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR system,
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`see http://gortal.uspto.gov/external/mrtaI/gair . Should you have questions on access to the
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`Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
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`Any response to this action should be mailed to:
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`Commissioner of Patents and Trademarks
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`Washington, D.C. 20231
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`or faxed to:
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`571 -273-8300
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`[Official communications, After Final communications labeled "Box AF"]
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`571-273-8300
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`[lnfonnaI/Draft communications, labeled “PROPOSED" or “DRAFT"]
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`Hand delivered responses should be brought
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`to the United States Patent and
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`Trademark Office Customer Service Window:
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`Randolph Building
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`401 Dulany Street
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`Alexandria, VA 22314.
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`JAMES A. REAGAN
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`Primary Examiner
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`Art Unit 3621
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`22 May 2006
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`QM
`
`JAMES A. REAGAN
`PRIMARY EXAMINER
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`Petitioner Apple Inc. - EX. 1044, p. 9
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`Petitioner Apple Inc. - Ex. 1044, p. 9
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`