`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`10/162,701
`
`06/06/2002
`
`Xin Wang
`
`111325-290100
`
`-
`
`6475
`
`22204
`
`'
`
`7590
`
`08/10/2007
`
`NIXONPEABODY,LLP
`401 9TH STREET, NW
`SUITE 900
`WASHINGTON, DC 20004-2128
`
`_
`
`‘
`
`AUGUSTIN, EVENSJ
`
`3621
`
`MAIL DATE
`
`08/10/2007
`
`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)
`
`Petitioner Apple Inc. - EX. 1045, p. 1
`
`Petitioner Apple Inc. - Ex. 1045, p. 1
`
`
`
`Application No.
`
`Applicant(s)
`
`Office Action Summary
`
`10/162,701
`Examiner
`
`WANG ET AL.
`Art Unit
`
`3621 -
`
`-- 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 g 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 12 Februacy 2007.
`2a)l:] This action is FINAL.
`2mg This action is non-final.
`3)I:l 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 Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims
`
`4). CIaim(s)1-_18is/are pending in the application.
`
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`
`5)[] Claim(s) __ is/are allowed.
`6)IZ Claim(s) fl is/are rejected.
`7)I:] Claim(s) __ is/are objected to.
`8)|:I Claim(s)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)l:l The specification is objected to by the Examiner.
`10)I:I The drawing(s) filed on __ is/are: a)EI accepted or b)I:I 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).
`11)I:| The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)|:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`a)lj All
`b)l:] Some * c)|:] None of:
`
`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.
`
`Attachment(s)
`
`1) IE Notice of References Cited (PTO-892)
`2) C] Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) [I Information Disclosure Statement(s) (PTO/SB/08)
`paper No(s)/Mai| Date
`.
`US Patent and Trademark Office
`
`4) E] Interview Summary (pro-413)
`Paper No(s)/Mali Date.
`.
`5) CI Notice of Informal Patent Application
`6) C] Other:
`.
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20070805
`
`Petitioner Apple Inc. - EX. 1045, p. 2
`
`Petitioner Apple Inc. - Ex. 1045, p. 2
`
`
`
`Application/Control Number: 10/162,701
`
`Art Unit: 3621
`
`Page 2
`
`20070804
`
`DETAILED ACTION
`
`1. Examiner James Reagan was previously handling this application. Evens Augustin is
`
`currently examining this application, and all subsequent correspondence must be addressed to
`
`him. Claims 1-18 are pending. Claims 1-18 have been examined.
`
`Claim Interpretation
`
`2.
`
`In determining patentability of an invention over the prior art, the USPTO has considered all
`
`claimed limitations, and interpreted as broadly as their terms reasonably allow (In re Zletz 13
`
`USPQ2d 1320 (Fed. Cir. 1989)). Additionally, all words in the claims have been considered
`
`in judging the patentability of the claims against the prior art.
`
`3.
`
`It should also be noted that, in the office action that:
`
`A. Items in the rejection that are in quotation marks are claimed language/limitations.
`
`B. Passages in prior art references may be mere rephrasing/rewording of claimed
`
`limitations, but the implicit/explicit meaning of the references vis-a-vis the claimed
`
`limitation remains intact.
`
`C. Functional recitation(s) using the word “for” or other fiinctional terms (6. g. "a
`
`mechanism for providing access to the item in accordance with the set of rights” as
`
`recited in claim 10) have been considered but given less patentable weight1 because
`
`they fail to add any steps and are thereby regarded as intended use language. To be
`
`I See e.g. In re Gulack, 703 F.2d 1381, 217 USPQ 401, 404 (Fed. Cir. l983)(stating that
`although all limitations must be considered, not all limitations are entitled to patentable weight).
`
`Petitioner Apple Inc. - EX. 1045, p. 3
`
`Petitioner Apple Inc. - Ex. 1045, p. 3
`
`
`
`Application/Control Number: 10/162,701
`
`Art Unit: 3621
`
`Page 3
`
`20070804
`
`especially clear, the Examiner has considered all claim limitations. However the A
`
`recitation of the intended use of the claimed invention must result in additional steps.
`
`See Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1375—
`
`76, 58 USPQ2d 1508, 1513 (Fed. Cir. 2001) (Where the language in a method claim
`
`states only a purpose and intended result, the expression does not result in a
`
`manipulative difference in the steps of the claim).
`
`D. Word(s) that are separated by “/” are being examined as being synonymous or
`
`equivalent.
`
`E. Since these terms are not lexicographically defined, they will interpreted as being
`
`equivalent to:
`
`0 Usage Rights = Usage conditions such as copy protection
`
`0 Meta-rights = Sub-rights, or additional usage conditions derived from
`
`the usage rights
`
`0 Consumer = digital content store or distributor
`
`0 License = Digital certificate given to distributor
`
`o Supplier = Content provider
`
`F. The claims are being analyzed as steps for collecting, analyzing business data and
`
`providing decisions based on the data collected and analyzed.
`
`G. The USPTO interprets claim limitations that contain statement(s) such as “if may,
`
`might, can, could, when, potentially, possibly”, as optional language (this list of
`
`examples is not intended to be exhaustive). As matter of linguistic precision, optional
`
`claim elements do not narrow claim limitations, since they can always be omitted (In
`
`Petitioner Apple Inc. - Ex. 1045, p. 4
`
`Petitioner Apple Inc. - Ex. 1045, p. 4
`
`
`
`Application/Control Number: 10/162,701
`
`Art Unit: 3621
`
`Page 4
`
`20070804
`
`re Johnston, 77 USPQ2d 1788 (Fed. Circ. 2006)). They will be given less patentable
`
`weight, because language that suggests or makes optional but does not require steps
`
`to be performed or does not limit a claim to a particular structure does not limit the
`
`scope of a claim or claim limitation.
`
`H.
`
`Independent claims are examined together, since they are not patentable distinct. If
`
`applicant expressly states on the record that two or more independent and distinct
`
`inventions are claimed in a single application, the Examiner may require the applicant
`
`to elect an invention to which the claims will be restricted.
`
`1. Any official notices taken by the USPTO that are not adequately traversed by
`
`applicant will be taken to be admitted prior art.
`
`J. The USPTO interprets common computer related words that are not lexicographically
`
`defined the word in accordance to Computer Dictionary, 3rd Edition, Microsoft Press,
`
`Redmond, WA, 19972. The USPTO also uses published patent applications and
`
`issued patents for meanings of common computer related words that are not
`
`lexicographically defined.
`
`K. Since the word “disposal” is not lexicographically defined the USPTO will interpret
`
`the word in accordance to Merriam Webster’s dictionary. According disposal is
`
`2 Based upon Applicants’ disclosure, the art of record, and the knowledge of one of ordinary skill
`in this art as determined by the factors discussed in MPEP §2141.03 (where practical), the
`Examiner finds that the Microsoft Press Computer Dictionary is an appropriate technical
`dictionary known to be used by one of ordinary skill in this art. See e. g. Altiris Inc. v. Symantec
`Corp, 318 F.3d 1363, 1373, 65 USPQ2d 1865, 1872 (Fed. Cir. 2003) where the Federal Circuit
`used the Microsoft Press Computer Dictionary (3d ed.) as “a technical dictionary” to define the
`term “flag.” See also In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971)(noting that its
`appropriate to use technical dictionaries in order to ascertain the meaning of a term of art) and
`MPEP §2173.05(a) titled ‘New Terrninology.’
`
`Petitioner Apple Inc. - EX. 1045, p. 5
`
`Petitioner Apple Inc. - Ex. 1045, p. 5
`
`
`
`Application/Control Number: 10/ 162,701
`
`Art Unit: 3621
`
`Page 5
`
`20070804
`
`defined as: 1: the power or authority to dispose or make use of as one chooses <the
`
`car was at my disposal> 2: the act or process of disposing: as a: orderly placement or
`
`distribution b: regulation, administration c: the act or action of presenting or
`
`bestowing something <disposal of favors> d: systematic destruction; especially :
`
`destruction or transformation of garbage 3[garbage disposal unit] : a device used to
`
`reduce waste matter (as by grinding). Therefore, Usage conditions which include
`
`copy authorization and target device types, or timed-availability restrictions (col. 10,
`
`11.15-18) is classified as regulation, administration.
`
`Claim Rejections - 35 USC § 102
`
`4. The following is a quotation of the appropriate paragraphs of 35 USC. 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 person shall be entitled to a patent unless -—
`
`(a) the invention was known or used by others in this country, or patented or described in a printed publication in this
`or a foreign country, before the invention thereof by the applicant for a patent.
`
`(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. .
`.
`.
`
`(e) the invention was described in (1) an application for patent, published under section l22(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`Petitioner Apple Inc. - EX. 1045, p. 6
`
`Petitioner Apple Inc. - Ex. 1045, p. 6
`
`
`
`Application/Control Number: 10/ 162,701
`Art Unit: 3621
`
`Page 6
`.
`20070804
`
`5. Claims 1-18 are rejected under 35 U.S.C. 102(b) as being anticipated by Downs et al. (U.S
`
`6226618).
`
`6. As per claims 1-18, Downs et at. discloses an invention comprising of the following:
`
`A. Content stores or distributors can add or narrow the original usage rights (sub-rights)
`
`(column 21 , lines 30-36)
`
`B. Content providers set and transmit (equivalent to presenting) the usage conditions to
`
`the content stores (column 21, 30-32), which are the first customers or distributors of
`
`the content providers.
`
`C. Distributors (first customer) making a request to digital content owners to sale digital
`
`content (column 42, lines 65-67, column 43, lines 1-2). The two parties then come to
`
`an agreement (column 43, lines 4-5). Inherently, the content provider receives the
`
`request - Content providers (entity that supplies the content), providing (equivalent to
`
`generating) usage conditions (equivalent to usage rights) - The content providers also
`
`stipulate that the content stores or distributors can add or narrow the original usage
`
`rights - ("obtaining a set of rights associated with an item, said set of rights
`
`including meta-rights specifying derivable rights that can be derived from the
`
`meta-rights by the rights consumer ")
`
`D. The Content Provider(s) 101 sets the allowable Usage Conditions 517 and transmits
`
`them to the Electronic Digital Content Store(s) 103 in a SC (see the License Control
`
`Layer 501 section). The Electronic Digital Content Store(s) 103 can add to or narrow
`
`the Usage Conditions 517 as long as it doesn't invalidate the original conditions set by
`
`the Content Provider(s) (Col. 21, 1130-36). Each Content Provider(s) 101 specifies
`
`Petitioner Apple Inc. - EX. 1045, p. 7
`
`Petitioner Apple Inc. - Ex. 1045, p. 7
`
`
`
`Application/Control Number: 10/ 162,701
`
`Art Unit: 3621
`
`Page 7
`
`20070804
`
`the Usage Conditions 517 for each of its Content 113 items. Electronic Digital
`
`Content Store(s) 103 interpret the Usage Conditions 517 in Metadata SC(s) 620 and
`
`use the information to provide different options or Store Usage Conditions 519 to the
`
`End-User(s) for purchase of Content 113 (col. 26, 11. 10—16) —-
`
`("determining
`
`whether the rights consumer is entitled to derive the derivable rights specified by
`
`the meta-rights")
`
`E. Distributors (first customer) making a request to digital content owners to sale digital
`
`content (column 42, lines 65-67, column 43, lines 1-2). The two parties then come to
`
`an agreement (column 43, lines 4-5). Inherently, the content provider receives the
`
`request - After the agreement between the content provider and the distributor (first
`
`customer), a digital certificate is created and sent to the distributor (column 43, lines
`
`14-18). Inherently the agreement and certificate is for the content/usage rights
`
`request -—("if the rights consumer is entitled to derive the derivable rights
`
`specified by the mete-rights, at least one of deriving one or more of the derivable
`
`rights and generating a license including the derived rights ") - ("transmitting
`
`the set of rights, in the form of a license to the item, from the rights supplier to
`
`the rights consumer ")
`
`F. Usage conditions include copy authorization and target device types, or timed-
`
`availability restrictions (col. 10, 11.15-18, Col. 60, 11.15-30) - ("the derived rights are
`
`rights disposal rights. "); ("rights include usage rights ")
`
`Petitioner Apple Inc. - EX. 1045, p. 8
`
`Petitioner Apple Inc. - Ex. 1045, p. 8
`
`
`
`Application/Control Number: 10/162,701
`
`Art Unit: 3621
`
`Page 8
`
`20070804
`
`G. Content, refers to information and data stored in a digital format including: pictures,
`
`movies, videos, music, programs, multimedia and games (col. 6, 11. 45-48) --("the
`
`items are content ")
`
`H. Content store distributes to the end user information relative to the Content 113 and
`
`its use (col. 43, 11. 62—67) - The Electronic Digital Content Store(s) 103 also attaches
`
`its own Usage Conditions called Store Usage Conditions 519 or purchase options to
`
`the Offer SC(s) 641 (Col. 74, 1137-40) - ("derived rights include meta-rights that
`
`the rights consumer may transfer to another rights consumer in the form of a
`
`license ")
`
`1. Electronic Digital Content Store(s) 103 are the entities who market the Content 113
`
`through a wide variety of services or applications, such as Content 113 theme
`
`programming or electronic merchandising of Content 113. Electronic Digital Content
`
`Store(s) 103 manage the design, development, business operations, settlements,
`
`merchandising, marketing, and sales of their services. Example online Electronic
`
`Digital Content Store(s) 103 are Web sites that provide electronic downloads of
`
`software (retailer and publisher) --(col. 9, 11. 61-67, col. 10, 11.1-3) - Content stores
`
`being licensed distributors of content (col. 19, 56—58) -- ("the consumer is a content
`
`retailer, distributor and publisher ")
`
`Conclusion
`
`7. Examiner has pointed out particular references contained in the prior arts ofrecord in the
`
`body ofthis action for the convenience ofthe applicant. Although the specified citations are
`
`Petitioner Apple Inc. - EX. 1045, p. 9
`
`Petitioner Apple Inc. - Ex. 1045, p. 9
`
`
`
`Application/Control Number: 10/162,701
`
`Art Unit: 3621
`
`Page 9
`
`20070804
`
`representative ofthe teachings in the art and are applied to the specific limitations within the
`
`individual claim, other passages andfigures may apply as well. It is respectfully requested
`
`that ifthe applicant is preparing to respond, to considerfully the entire references as ‘
`
`potentially teaching all or part ofthe claimed invention, as well as the context ofthe passage
`
`as taught by the prior arts or disclosed by the examiner.
`
`8. Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Evens Augustin whose telephone number is 571-272-6860. The
`
`examiner can normally be reached on Monday thru Friday 8 to 5 pm.
`
`9.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Andrew Fischer can be reached on 571-272-6779.
`
`/Evens J. Augustin/
`Evens J. Augustin
`August 5, 2007
`Art Unit 3621
`
`Petitioner Apple Inc. - Ex. 1045, p. 10
`
`Petitioner Apple Inc. - Ex. 1045, p. 10
`
`