w’l AND1%
`
` If?
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`CONF {MATION NO.
`
`10/ 162,701
`
`06/06/2002
`
`Xin Wang
`
`111325—290100
`
`6475
`
`22204
`
`7590
`
`04/17/2008
`
`NIXON PEABODY, LLP
`401 9TH STREET, NW
`SUITE 900
`WASHINGTON, DC 20004-2128
`
`EXAMINER
`
`AUGUSTIN, EVENS J
`
`ART UNIT
`
`3621
`
`MAIL DATE
`
`04/ 1 7/2008
`
`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)
`
`Petitioner Apple Inc. - EX. 1046, p. 1
`
`Petitioner Apple Inc. - Ex. 1046, p. 1
`
`

`

`
`
`Application No.
`
`10/162,701
`
`Applicant(s)
`
`WANG ET AL.
`
`Office Action Summary
`
`Examiner
`
`EVENS J. AUGUSTIN
`
`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 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 10 January 2008.
`
`2a)IZI This action is FINAL.
`
`2b)I:I This action is non-final.
`
`3)I:I 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)IZI Claim(s) 1-18 28 and 29 is/are pending in the application.
`
`4a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`5)I:I Claim(s) _ is/are allowed.
`
`6)IXI Claim(s) 1-18 28 and 29 is/are rejected.
`
`7)I:I Claim(s) _ is/are objected to.
`
`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`
`10)I:I The drawing(s) filed on
`
`is/are: a)I:I 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: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)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
`
`b)I:I Some * c)I:I None of:
`
`1.I:I 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
`
`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) D 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 02/20/08.
`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./Mai| Date 20080414
`
`Petitioner Apple Inc. - EX. 1046, p. 2
`
`Petitioner Apple Inc. - Ex. 1046, p. 2
`
`

`

`Application/Control Number: 10/ 1 62,701
`
`Art Unit: 3621
`
`Page 2
`
`20080414
`
`DETAILED ACTION
`
`Acknowledgements
`
`1. This is in response to an amendment filed on 01/10/2008. Claims 1, 3, 5-6, 10-11, and 13-14
`
`are amended. Claims 28-29 are added. Claims 1-18 and 28-29 are pending.
`
`Response to Arguments
`
`2. The United States Patent and Trademark Office has fully considered the applicant's
`
`arguments filed on 01/ 10/2008, but has not found those arguments to be persuasive.
`
`Argument 1: Downs et al., fails to disclose, teach or suggest meta-rights, which allow
`
`one or more users or devices to transfer rights or to derive new rights.
`
`Response 1: According to the applicant’s specification, meta-rights are the rights that
`
`one has to manipulate, modify, or otherwise derive other meta-rights or usage rights. Meta-rights
`
`can be thought of as secondary usage rights derived from the primary usage rights (specification,
`
`par 21). Content providers (entity(s) that supplies the content), providing (equivalent to
`
`generating) usage conditions (equivalent to usage rights) also stipulate that the content stores or
`
`distributors also have rights to add or narrow the original usage rights (meta-rights or rights
`
`derived from the initial usage rights) (column 21, lines 30-36).
`
`Additionally, state variables can be the number of copies a user is allowed to make
`
`(column 59, line 50 or rental terms (column 59, lines 55-60). Content providers and distributors
`
`specify the number of plays and local copies allowed for the Content, and whether or not the
`
`Content may be recorded to an external portable device (state variable). Downs et al. keep track
`
`Petitioner Apple Inc. - EX. 1046, p. 3
`
`Petitioner Apple Inc. - Ex. 1046, p. 3
`
`

`

`Application/Control Number: 10/ 1 62,701
`
`Art Unit: 3621
`
`Page 3
`
`20080414
`
`of the contents copy/play usage and update the copy/play status (column 20, lines 43-50, column
`
`12, lines 11-12).
`
`Application stands finally rejected.
`
`Claim Rejections - 35 USC § 1 02
`
`3. 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 122(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.
`
`4. Claims 1-18 and 28-29 are rejected under 35 U.S.C. 102(b) as being anticipated by Downs et
`
`al. (US 6226618) (“Downs”).
`
`5. As per claims 1-18 and 28-29, Downs 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.
`
`Petitioner Apple Inc. - EX. 1046, p. 4
`
`Petitioner Apple Inc. - Ex. 1046, p. 4
`
`

`

`Application/Control Number: 10/ 1 62,701
`
`Art Unit: 3621
`
`Page 4
`
`20080414
`
`C. ("obtaining a set of rights associated with an item, said set of rights including a
`
`meta-right, wherein the meta-right is provided in digital form, is enforceable by
`
`a repository-, and specifies derivable right that can be derived from exercising
`
`the meta-right by the rights consumer, a condition that must be satisfied to
`
`exercise the meta-right, and a state variable related to the condition, said
`
`derivable right being another meta-right or a usage right, whereby the meta-
`
`right is distinct from any usage rights specifying how the item can be used and
`
`distributed; determining by a repository whether the rights consumer is entitled
`
`to exercise the meta-right to derive the derivable right specified by the meta-
`
`right;") ---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 - state variables can be the number of copies a user is allowed to
`
`make (column 59, line 50 or rental terms (column 59, lines 55-60). Content providers
`
`and distributors specify the number of plays and local copies allowed for the Content,
`
`and whether or not the Content may be recorded to an external portable device (state
`
`variable). Downs et al. keep track of the content's copy/play usage and update the
`
`copy/play status (column 20, lines 43-50, column 12, lines 11-12)
`
`Petitioner Apple Inc. - Ex. 1046, p. 5
`
`Petitioner Apple Inc. - Ex. 1046, p. 5
`
`

`

`Application/Control Number: 10/ 1 62,701
`
`Art Unit: 3621
`
`Page 5
`
`20080414
`
`D. ("determining whether the rights consumer is entitled to derive the derivable
`
`rights specified by the meta-rights") --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 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) --
`
`E. ("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 ") -- 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).
`
`lnherently, 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).
`
`lnherently the agreement and certificate is for
`
`the content/usage rights request --
`
`Petitioner Apple Inc. - EX. 1046, p. 6
`
`Petitioner Apple Inc. - Ex. 1046, p. 6
`
`

`

`Application/Control Number: 10/ 1 62,701
`
`Art Unit: 3621
`
`Page 6
`
`20080414
`
`F.
`
`("the derived rights are rights disposal rights. "); ("rights include usage rights ")
`
`--Usage conditions include copy authorization and target device types, or timed-
`
`availability restrictions (col. 10, 1115-18, C01. 60, 1115-30) -
`
`G. ("the items are content ") --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) -
`
`H. ("derived rights include meta-rights that the rights consumer may transfer to
`
`another rights consumer in the form of a license ") --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) -
`
`I.
`
`"the consumer is a content retailer, distributor and publisher ") --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, 111-3) - Content stores being licensed
`
`distributors of content (col. 19, 56-5 8) --
`
`Petitioner Apple Inc. - EX. 1046, p. 7
`
`Petitioner Apple Inc. - Ex. 1046, p. 7
`
`

`

`Application/Control Number: 10/ 1 62,701
`
`Art Unit: 3621
`
`Page 7
`
`20080414
`
`Conclusion
`
`3. THIS ACTION IS MADE FINAL. Any new ground(s) of rejection is due to the
`
`applicant’s amendment. Applicant is reminded of the extension of time policy as set forth in
`
`37 CFR1.136(a).
`
`A. A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the event a first reply is filed
`
`Within TWO MONTHS of the mailing date of this final action and the advisory action
`
`is not mailed until after the end of the THREE-MONTH shortened statutory period,
`
`then the shortened statutory period will expire on the date the advisory action is
`
`mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from
`
`the mailing date of the advisory action. In no event, however, will the statutory
`
`period for reply expire later than SIX MONTHS from the mailing date of this final
`
`action.
`
`4. 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.
`
`Petitioner Apple Inc. - Ex. 1046, p. 8
`
`Petitioner Apple Inc. - Ex. 1046, p. 8
`
`

`

`Application/Control Number: 10/ 1 62,701
`
`Art Unit: 3621
`
`Page 8
`
`20080414
`
`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
`April 17, 2008
`Art Unit 3621
`
`/ANDREW J. FISCHEIV
`
`Supervisory Patent Examiner, Art Unit 3621
`
`Petitioner Apple Inc. - EX. 1046, p. 9
`
`Petitioner Apple Inc. - Ex. 1046, p. 9
`
`