Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 8 of 15
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`REMARKS
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`Claims 1—36 were pending in the present application prior to the above amendment. In
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`response to the Office Action, claims 1, 12, and 24 are amended to clarify the invention, and not
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`for reasons of patentability. No claims have been canceled, and no claims have been added.
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`Therefore, claims 1—36 remain pending in the present application and are believed to be in proper
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`condition for allowance. Applicants request reconsideration and allowance of the application in
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`view of the above amendments and the following remarks.
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`Claims 1—36 stand provisionally rejected on the ground of nonstatutory double—patenting
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`over claim 6 of copending Application No. 10162701. Applicants respectfully request that this
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`provisional rejection be held in abeyance until this application is otherwise in condition for
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`allowance, at which point Applicants will consider filing a Terminal Disclaimer.
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`Claims 1—36 stand rejected under 35 U.S.C. § 101 as being related to a process that is not
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`(1) tied to a statutory class, or (2) transforming an underlying subject matter (such as an article or
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`material) to a different state or thing. However, Applicants believe claims 1, 12, and 24 as
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`presented herein fully satisfy the requirements of 35 U.S.C. § 101.
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`Specifically, claims 1, 12, and 24 each recite that “the meta—rights are provided in digital
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`form and are enforceable by a repository.” Claim 1 further recites a “computer—implemented
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`method” in which the determining step is carried out “by a repository.” Applicants believe these
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`amendments to the claims obviate the Examiner’s rejection under 35 U.S.C. § 101, and
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`respectfully request reconsideration and withdrawal of this rejection.
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`Claims 1—36 stand rejected under 35 U.S.C. §103(a) as allegedly being unpatentable over
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`Anand et al. (U.S. Patent No. 6,044,466) in view of “Workshop on Digital Rights Management,
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`Minutes from Architecture/Infrastructure Session” (hereafter, Infrastructure). However,
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`Applicants respectfully submit that neither Anand nor Infrastructure, taken alone or in
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`combination, disclose, suggest, or render obvious the invention recited in claims 1—36.
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`124531701
`
`Petitioner Apple Inc. - EX. 1051, p. l
`
`Petitioner Apple Inc. - Ex. 1051, p. 1
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`

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`Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 9 of 15
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`For example, independent claim 1 (emphasis added), recites:
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`A computer-implemented method for transferring rights adapted
`to be associated with items from a rights supplier to a rights consumer,
`the method comprising:
`the set of
`obtaining a set of rights associated with an item,
`rights including meta-rights specifying derivable rights that can be
`derived from the meta-rights, wherein the meta-rights are provided in
`digital form and are enforceable by a repository;
`determining, by a repository, whether the rights consumer is
`entitled to the derivable rights specified by the meta-rights; and
`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 includes at least one state
`variable based on the set of rights and used for determining a state
`of the derived right.
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`Independent claim 12 (emphasis added), recites:
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`A system for transferring rights adapted to be associated with
`items from a rights supplier to a rights consumer, the system comprising:
`means for 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, wherein the meta-rights are provided
`in digital form and are enforceable by a repository;
`means for determining whether the rights consumer is entitled to
`the derivable rights specified by the meta-rights; and
`means for 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 includes at
`least one state variable based on the set of rights and used for
`determining a state of the derived right.
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`Independent claim 24 (emphasis added), recites:
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`A device for transferring rights adapted to be associated with
`items from a rights supplier to a rights consumer, the device comprising:
`means for 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, wherein the meta-rights are
`provided in digital form and are enforceable by a repository;
`means for determining whether the rights consumer is entitled to
`the derivable rights specified by the meta-rights; and
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`124531701
`
`Petitioner Apple Inc. - EX. 1051, p. 2
`
`Petitioner Apple Inc. - Ex. 1051, p. 2
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`

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`Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 10 of 15
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`means for 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 includes at
`least one state variable based on the set of rights and used for
`determining a state of the derived right.
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`Thus, independent claims 1, 12 and 24 are directed to, in relevant part, the features of
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`obtaining a set of rights associated with an item, the set of rights including meta—rights specifying
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`derivable rights that can be derived from the meta—rights, determining whether the rights
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`consumer is entitled to the derivable rights specified by the meta—rights, and deriving at least one
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`right from the derivable rights, if the rights consumer is entitled to the derivable rights specified
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`by the meta—rights, wherein the derived right includes at least one state variable based on the set
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`of rights and used for determining a state of the derived right.
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`After reviewing the response to arguments section on pages 2—3 of the office action, as
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`well as the rejection set forth on pages 6—10, Applicants respectfully submit that the Examiner
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`may be confused about what is meant by “meta—rights” in the claims. Specifically, when
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`considering whether or not Anand discloses “meta—rights specifying derivable rights”, the
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`Examiner asserts that “the attribute—value pairs of Anand correspond to the meta—rights of
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`Wang.” The Examiner references the following disclosures from Anand
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`0
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`"Multiple principals can delegate a subset of their maximal permissions for the
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`executable content. The mechanism uses policy for combining the delegated permissions
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`into the contents current permissions" (col. 3, lines 27—31).
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`0
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`"electing granted permissions from within an associated maximal set of permissions"
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`(col. 3, lines 59—60).
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`0
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`"As FIG. 2 depicts, the derivation mechanism (100) consists of the following five steps:",
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`(col. 5, lines 1—2).
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`124531701
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`Petitioner Apple Inc. - Ex. 1051, p. 3
`
`Petitioner Apple Inc. - Ex. 1051, p. 3
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`

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`Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 11 of 15
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`0
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`"The current permissions (150), by definition, must always be a subset of the maximal
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`permissions (140)", (col. 5, lines 14—16).
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`0
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`"The 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
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`metadata of a website's URI ("Universal Resource Identifier")", (col. 5, lines 17—21).
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`The above portions of Anand do not disclose “meta—rights specifying derivable rights that
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`can be derived from the meta—rights” as recited in the claims. Instead, these portions of Anand
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`relate to the derivation mechanism of Anand and how it is implemented.
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`For example, with respect to col. 3, lines 27—31, of Anand, there is a fundamental
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`difference between the notion of capability (i.e. capability to derive) and the notion of right (i.e.
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`the right to derive). Though both are related to doing, a capability is whether or not someone is
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`capable of doing something — often stated by “can do”, whereas a right is whether or not
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`someone is allowed or permitted to do something — often stated by “may or may not do” in the
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`situations of “can do”. Hence, having a capability (implemented as a mechanism) to, or can,
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`derive rights/permissions does not entail having a right to do the same. This is similar to the
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`situations that one can speak but may not have the right or freedom of speech and that one
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`machine can execute a program but may not have the right to execute the program.
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`In the present application, a meta—right is considered to be “a right specifying derivable
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`rights” and when a meta—right is exercised, rights can be derived from the derivable rights,
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`resulting in derived rights. In this notion, a meta—right must be a right first, and specify derivable
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`rights second. Therefore, the statement “one can delegate (permissions) ...” does not imply the
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`statement “one has a right to delegate (permissions) ...” or “one has a meta—right to delegate
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`(permission) ...”. In summary, disclosing how to implement a capability to derive
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`rights/permissions does not imply disclosing how to specify or implement a right to regulate or
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`govern the capability.
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`124531701
`
`Petitioner Apple Inc. - Ex. 1051, p. 4
`
`Petitioner Apple Inc. - Ex. 1051, p. 4
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`

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`Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 12 of 15
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`Moreover, as Anand stated in the first line of its Summary of the Invention: “The present
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`invention defines a dynamic derivation mechanism that enables limited permissions to be
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`dynamically and flexibly derived for executables based upon their authenticated description.”
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`(col. 3, lines 15—18). Therefore, Anand is about a derivation mechanism and is not about meta—
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`rights for regulating or governing derivation of rights.
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`In addition, Applicants respectfully submit that Anand fails to disclose or suggest at least
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`the claimed features of “determining whether the rights consumer is entitled to the derivable
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`rights specified by the meta—rights” as recited in the claims.
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`Specifically, the Examiner asserts that Anand regulates who is entitled to derive rights
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`through an access control in Fig. 4 described by stating that “The access control list (325) limits
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`access to the policy graph (320). Principals can be permitted to modify any of the policy graph
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`attributes (321—325)”. (Anand, col. 6, lines 26—29).
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`If the Examiner intended to reference access control list (325) in Fig. 3 of Anand instead
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`of the access control list (325) in Fig. 4, this list only limits which principals may access the
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`policy graph (320) that includes the access control list (325) itself. This, however, would only
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`regulate modification of the attributes of the policy graph, namely, the downloading principal
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`(321), the traversal method (322), the combination method (323), the directed graph (324) and
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`the access control list (325). Modifying these attributes (321—325) is not same as deriving rights
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`or permissions. Moreover, this modification is not part of the five steps of the derivation
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`mechanism depicted in Fig. 2, which means that this modification is not a result of exercising a
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`meta—right to derive (permissions).
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`If the Examiner instead intended to refer to the access control list of Fig. 4, not in Fig.3,
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`the following description of about Fig. 4 does not support the Examiner’s argument: “As shown
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`in FIG. 4, the nodes (400) of a policy graph's (320) directed graph (324) consist of an attribute
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`(410), a value (420), an entry (430), and an access control list (440). The traversal method uses
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`the node attribute (410) and node value (420) to match the node with the contents description
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`124531701
`
`Petitioner Apple Inc. - Ex. 1051, p. 5
`
`Petitioner Apple Inc. - Ex. 1051, p. 5
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`

`

`Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 13 of 15
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`(120). If a match occurs, then the combination method (323) applies the node entry (430) to the
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`current result derived so far from the policy graph traversal (810). In a preferred embodiment,
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`node entries (430) refer to permissions. The access control list (440) controls access to the node.
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`In a preferred embodiment, principals can be permitted to read, write, delete, and create children
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`of the node.” (Col. 6, lines 30—41).
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`Applicants point out that “the node” whose access is controlled by the access control list
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`(440) lacks of reference. A reasonable reference from the context is that it refers the node (440)
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`of a policy graph’s (320) directed graph (324). However, this would only limit access to
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`“children of the node”, namely, the attribute (410), the value (420), the entry (430), and the
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`access control list (440). Modifying these children (410, 420, 430 and 440) is not same as
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`deriving rights or permissions or exercising a meta—right to derive rights.
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`Finally, the site security policy of Anand is only used in deriving permissions, not in
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`determining if one has the right to derive. This can be seen from the disclosure of Anand, Col. 6,
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`lines 28—35: “FIG. 3 shows the site security policy (130). It includes sets of policy graphs (320)
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`used to derive the maximal permissions contributions (150) that any principal can delegate to the
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`content and sets of permissions propositions (300,310) used to compute the current and maximal
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`permissions (140,150) from the maximal permissions contributions (150) and the current
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`permissions contributions delegated by those principals”. Moreover, none of the five steps
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`depicted in Fig. 2 has anything to do with determining or governing the right to derive
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`permissions, that is, the meta—right to derive.
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`Additionally, with respect to the Examiner’s assertion that Anand discloses a “state
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`variable” as recited in the claims, Applicants respectfully submit that the Examiner appears to
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`consider the attributes values of the Derivation Instance of Anand to be the same as the state
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`variables of the invention (i.e. “wherein the derived right includes at least one state variable
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`based on the set of rights and used for determining a state of the derived right”). Applicants
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`124531701
`
`Petitioner Apple Inc. - Ex. 1051, p. 6
`
`Petitioner Apple Inc. - Ex. 1051, p. 6
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`

`

`Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 14 of 15
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`respectfully disagree. The attributes values of the Derivation Instance of Anand are constant for
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`the instance and do not change to maintain the state of rights as described in the application.
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`Finally, with respect to the Examiner’s assertion that Infrastructure and Curtis in
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`combination discloses a state machine which consists of state variables, Applicants point out that
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`Infrastructure merely discloses a single statement, “[a] contract between an author and a
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`publisher is like a dynamic state machine”, and provides no elaboration on what the statement
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`means. It is not clear how a contract as a (static) agreement can be a (dynamic) state machine. In
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`any case, the statement is definitely not directed to any further agreements or promises (e. g.,
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`“derived right”) that can be derived from the contract. Furthermore, a state variable used in a
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`state machine as disclosed by Curtis, Col. 9, lines 53—55: “Within the state machine, while a state
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`variable does not equal eXit 1301, the state machine will go from state to state based upon what
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`the state variable is set to” is created by a software program for carrying out a process flow.
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`Thus, the contract of Infrastructure does not include a “state variable based on the set of rights
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`and used for determining a state of the derived right” as is recited in independent claims 1, 12
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`and 24. Applicants further submit that the notion of a state variable in a process flow, as
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`described in the above cited passage of Curtis, and the notion of a state variable of the
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`application are unrelated ideas.
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`At least for the reasons set forth above, Applicants respectfully submit that neither Anand
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`nor Infrastructure, taken alone or in combination, disclose, suggest, or render obvious the
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`invention recited in independent claims 1, 12, and 24. The dependent claims are allowable at
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`least by virtue of their dependency from one of the independent claims, and also on their own
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`merits .
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`In view of the foregoing, it is submitted that the present application is in condition for
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`allowance and a notice to that effect is respectfully requested. However, if any issue remains
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`after considering this response, the Examiner is invited to call the undersigned to expedite the
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`prosecution and work out any such issue by telephone.
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`124531701
`
`Petitioner Apple Inc. - EX. 1051, p. 7
`
`Petitioner Apple Inc. - Ex. 1051, p. 7
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`

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`Application No. 10/956,121
`Attorney Docket No. 111325—291300
`Page 15 of 15
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`Except for issue fees payable under 37 CPR. § 1.18, the Commissioner is hereby
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`authorized by this paper to charge any additional fees during the entire pendency of this
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`application including fees due under 37 CPR. §§ 1.16 and 1.17 which may be required,
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`including any required extension of time fees, or credit any overpayment to Deposit Account No.
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`19—2380. This paragraph is intended to be a CONSTRUCTIVE PETITION FOR
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`EXTENSION OF TIME in accordance with 37 CPR. § 1.136(a)(3).
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`Respectfully submitted,
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`NIXON PEABODY LLP
`
`/Stephen M. Hertzler, Reg. No. 58,247/
`Stephen M. Hertzler
`Reg. No. 58,247
`
`Date: May 28, 2009
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`NIXON PEABODY LLP
`
`401 9th Street, N.W., Suite 900
`
`Washington, DC. 20004—2128
`(202) 585—8000
`
`(202) 585—8080 (Fax)
`Customer No. 22204
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`124531701
`
`Petitioner Apple Inc. - EX. 1051, p. 8
`
`Petitioner Apple Inc. - Ex. 1051, p. 8
`
`