Docket No. 1 1 1325-23 5000
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`Serial No. 10/956,070
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`REMARKS
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`The following amendments and remarks are submitted to be fillly responsive to the
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`non-final Official Action of October 24, 2005.
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`In the present response, claims 2—10, 14—22,
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`25, and 27-35 are amended, claims 1, 11-13, 23-24, 26, and 36-39 are cancelled, and claims
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`40—54 are added. No new matter is introduced. Thus, claims 2-10, 14-22, 25, 27-35, and 40-
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`54 are now pending. Reconsideration and allowance of this application are respectfully
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`requested.
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`Referring now to the present Office Action, claims 1—39 were rejected under 35
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`U.S.C. §102(b) as being anticipated by US. Patent No. 6,226,618 to Downs et al. However,
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`claims 2-10, 14-22, 25, 27-35, and 40-54 are patentably distinguishable over Downs et al.,
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`because Downs et al. fails to disclose, teach or suggest all of the features recited in the
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`present claims. For example, new independent claim 40 (emphasis added) recites:
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`A method for sharing rights adapted to be associated with an item,
`the method comprising:
`specifying in a first license at least one usage right and/or at
`least one meta-right for the item,
`wherein the usage right and the meta-right include at least one
`right that is shared among one or more users or devices;
`defining, via the at least one usage right, a manner of use selected
`from a plurality of permitted manners of use for the item;
`defining, via the at
`least one meta-right, a manner of rights
`derivation selected fiom a plurality of permitted manners of rights
`derivation for the item;
`associating at least one state variable with the at least one right
`in the first license and that is shared among the one or more users or
`devices,
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`wherein the at least one state variable is used to determine how
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`the shared right is further generated in a second license;
`generating in the second license one or more rights from the
`usage right and/or the meta-right in the first license,
`wherein the one or more rights in the second license includes at
`least one right that is shared among one or more users or devices;
`associating at least one state variable with the at least one right that
`is shared in the second license,
`wherein the at least one state variable that is associated with
`the second license is based on the at least one state variable that is
`associated with the first license.
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`new independent claim 41 (emphasis added) recites:
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`A system for sharing rights adapted to be associated with an item,
`the system comprising:
`means for specifying in a first license at least one usage right
`and/or at least one meta-right for the item,
`wherein the usage right and the meta-right include at least one
`right that is shared among one or more users or devices;
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`Petitioner Apple Inc. - Ex. 1055, p. 1
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`Docket No. 111325—235000
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`Serial No. 10/956,070
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`means for defining, via the at least one usage right, a manner of use
`selected from a plurality of permitted manners of use for the item;
`means for defining, via the at least one meta-right, a manner of
`rights derivation selected fi‘om a plurality of permitted manners of rights
`derivation for the item;
`means for associating at least one state variable with the at least
`one right in the first license and that is shared among the one or more
`users or devices,
`wherein the at least one state variable is used to determine how
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`the shared right is further generated in a second license;
`means for generating in the second license one or more rights
`from the usage right and/or the meta—right in the first license,
`wherein the one or more rights in the second license includes at
`least one right that is shared among one or more users or devices;
`means for associating at least one state variable with the at least
`one right that is shared in the second license,
`wherein the at least one state variable that is associated with
`the second license is based on the at least one state variable that is
`associated with the first license; and
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`new independent claim 42 (emphasis added) recites:
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`A device for sharing rights adapted to be associated with an item,
`the device comprising:
`means for receiving a first license specifying at least one usage
`right and/or at least one meta-right for the item,
`wherein the usage right and the meta-right include at least one
`right that is shared among one or more users or devices,
`the least one usage right defines a manner of use selected from a
`plurality of permitted manners of use for the item,
`the at least one meta-right defines a manner of rights derivation
`selected from a plurality of permitted manners of rights derivation for the
`item,
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`at least one state variable is associated with the at least one
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`right in the first license and is shared among the one or more users or
`devices,
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`the at least one state variable is used to determine how the
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`shared right is further generated in a second license; and
`means for generating in the second license one or more rights
`from the usage right and/or the meta-right in the first license,
`wherein the one or more rights in the second license includes at
`least one right that is shared among one or more users or devices,
`at least one state variable is associated with the at least one right
`that is shared in the second license, and
`the at least one state variable that is associated with the second
`license is based on the at least one state variable that is associated with
`the first license.
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`By contrast, Downs et al. is directed to a method and apparatus of securely providing
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`data to a user’s system, wherein the data is encrypted so as to only be decryptable by a data
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`decrypting key, the data decrypting key being encrypted using a first public key, and the
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`encrypted data being accessible to the user’s system. The method includes transferring the
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`encrypted data decrypting key to a clearing house that possesses a first private key, which
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`Petitioner Apple Inc. - Ex. 1055, p. 2
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`Docket No. 11 1325-235000
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`Serial No. 10/956,070
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`corresponds to the first public key; decrypting the data decrypting key using the first private
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`key; re—encrypting the data decrypting key using a second public key; transferring the re-
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`encrypted data decrypting key to the user's system, the user's system possessing a second
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`private key, which corresponds to the second public key; and decrypting the re—encrypted
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`data decrypting key using the second private key. However, Downs et al. fails to disclose,
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`teach or suggest the noted features recited in independent claims 40, 41 and 42.
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`For example, Downs et al. fails to disclose, teach or suggest meta-rights in the manner
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`claimed and which are rights about rights, such as the right for distributors to issue certain
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`rights to a consumer. By contrast, usage rights are rights for content, such as the right to play
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`or to copy content. The invention recited in independent claims 40, 41 and 42 is not directed
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`to generating rights to use content, including making copies, etc., but rather is directed to
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`rights to derive rights for content. For example, with invention recited in independent claims
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`40, 41 and 42, a user can be permitted to play content on a PC, to make a copy for a PDA,
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`and to issue rights to play the copy on the PDA. When the user transfers the copy to her
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`PDA, the user also issues to the PDA rights to play the copy and to transfer the issued rights
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`along with the copy. Without the issued rights, the user cannot play the content on the PDA.
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`By contrast, Downs et al. discloses specifying allowed states (e.g., number of copies,
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`compression speed) in Usage Conditions and it is up to the Content Usage Control Layer to
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`keep track of the content’s copy/play usage and update the copy/play status. For example, if
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`a Usage Condition specifies a max count of 3 plays, the Content Usage Control Layer may
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`update the number of times the content has been played to ensure that only 3 plays are
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`allowed. This concept, however, does not teach or suggest the noted features recited in
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`independent claims 40, 41 and 42.
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`In addition, a state variable is not equivalent to a max count or a compression rate.
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`For example, a max count is a constant number, which can be 3 or 5, etc., and a compression
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`rate is another constant number, which can be 384 Kbps or 56 Kbps, etc. By contrast, a state
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`variable can be represented by an identifier and whose values can vary over time. A state
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`variable in the specification of a condition can be used for rights sharing, and which is also
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`feature that differentiates invention recited in independent claims 40, 41 and 42 over Downs
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`et al. For example, a content provider can decide how a content is shared among a group of
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`consumers using alstate variable and Downs et al. is also deficient in this respect.
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`The inventions recited in independent claims 40, 41 and 42 and claims dependent
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`therefrom recognize and solve the following problems:
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`Petitioner Apple Inc. - Ex. 1055, p. 3
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`Docket No. 11 1325—235000
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`Serial No. 10/956,070
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`[0009] However, there are limitations associated with the above-mentioned
`paradigms wherein only usage rights and conditions associated with content
`are specified by content owners or other grantors of rights. Once purchased
`by an end user, a consumer, or a distributor, of content along with its
`associated usage rights and conditions has no means to be legally passed on
`to a next recipient in a distribution chain. Further the associated usage rights
`have no provision for specifying rights to derive other rights, i.e. Rights to
`modify, transfer, offer, grant, obtain, delegate, track, surrender, exchange,
`transport, exercise, revoke, or the like. Common content distribution models
`ofien include a multi—tier distribution and usage chain. Known DRM
`systems do not facilitate the ability to prescribe rights and conditions for all
`participants along a content distribution and usage chain. Therefore,
`it is
`difficult for a content owner to commercially exploit content unless the
`owner has a relationship with each party in the distribution chain.
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`The inventions recited in independent claims 40, 41 and 42 and claims dependent
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`therefrom provide the following advantages:
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`[0090] There are multiple ways to specify the scope of state variables, each
`of which can affect whether the derivative state variables can be shared, how
`the derivative state variables can be shared, and the like. For example, a
`state variable can be local, and solely confined to a recipient or can be
`global, and shared by a predetermined group of recipients. A global state
`variable can be shared by a group of recipients not determined when derived
`rights are issued, but to be specified later, perhaps based on certain rules
`defined in the license or based on other means. A global state variable can
`be shared between one or more rights suppliers, predetermined recipients,
`un-specified recipients, and the like. Advantageously, depending on the
`sharing employed with a given a business model and the rights granted in
`the meta-rights, state variables can be created at different stages of the value
`chain.
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`By contrast, Downs et al. fails disclose, teach or suggest the noted features, fails to
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`recognize or solve the noted problems, and fails to provide the advantages of the inventions
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`recited in independent claims 40, 41 and 42.
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`The dependent claims are allowable on their on merits and for at least the reasons as
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`argued above with respect to independent claims 40, 41 and 42.
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`The references that have been cited, but not applied by the Examiner, have been taken
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`into consideration during formulation of this response. However, since such references were
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`not considered by the Examiner to be of sufficient relevance to apply against any of the
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`claims, no detailed comments thereon are believed to be warranted at this time.
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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 the Examiner
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`deems that any issue remains afier considering this response, the Examiner is invited to
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`Petitioner Apple Inc. - Ex. 1055, p. 4
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`contact the undersigned attorney to expedite the prosecution and engage in a joint effort to
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`work out a mutually satisfactory solution.
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`Docket No. 111325-235000
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`Serial No. 10/956,070
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`Respectfillly submitted,
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`NIXON PEABODY, LLP
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`/Carlos R. Villamar, Reg. # 43,224/
`Carlos R. Villamar
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`Reg. No. 43,224
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`NIXON PEABODY LLP
`CUSTOMER NO.: 22204
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`401 9th Street, N.W., Suite 900
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`Washington, DC 20004
`Tel: 202-585-8000
`Fax: 202-585-8080
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`Petitioner Apple Inc. - Ex. 1055, p. 5
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