`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United Status Patent and Trademark Office
`Am COMMISSIONER FOR PATENTS
`P.0. Box I450
`Alexandria. Virginia 22313-1450
`wwnsptogov
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`10/956,070
`
`10/04/2004
`
`Mai Nguyen
`
`11 1325-235000
`
`8299
`
`NIXON PEABODY, LLP
`40| 9TH STREET, NW
`sum; 900
`WASHINGTON, DC 20004-2128
`
`AUGUSTIN, EVENSJ
`
`3621
`DATE MAILED: 10/24/2005
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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. l0/03)
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`Petitioner Apple Inc. - EX. 1054, p. 1
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`Petitioner Apple Inc. - Ex. 1054, p. 1
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`

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`Application No.
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`Applicant(s)
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`10/956,070
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`NGUYEN ET AL.
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`Office Action Summary
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`Examine,
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`Art Unit
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`._--
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`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -7
`Period for Reply
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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.
`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).
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`Status
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`DE Responsive to communication(s) filed on 04 October 2004.
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`2a)|:] This action is FINAL.
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`2b)IZ This action is non-final.
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`3):} 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 0.6. 213.
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`
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`Disposition of Claims
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`MEI Claim(s) & is/are pending in the application.
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`4a) Of theabove Claim(s) _ is/are withdrawn from consideration.
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`5):] Claim(s) __ is/are allowed.
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`6)Xl Claim(s) & is/are rejected.
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`7)[:I‘ 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.
`0)IXI The drawing(s) filed on 04 October 2004 is/are: a)IXI accepted or b)Ej objected to by the Examiner.
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`'
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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)I:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)L__I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`,
`b)I:] Some * 0):] None of:
`a)I:I All
`1.L__I Certified copies of the priority documents have been received.
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`2.|:I Certified copies of the priority documents have been received in Application No. _
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`3.l___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.
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`Attachment(s)
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`1) [Z] Notice of References Cited (PTO-892)
`2) El Notice of Draflsperson's Patent Drawing Review (PTO-948)
`3) [2| Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)/Mai| Date 8/02/2005.
`US. Patent and Trademark Office
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`4) [:1 Interview Summary (PTO-413)
`Paper No(s)/Mail Date. _
`5) D Notice of Informal Patent Application (PTO-152)
`6) C] Other:
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`PTOL-326 (Rev. 7-05)
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`‘
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`Office Action Summary
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`Part of Paper No./Mai| Date 20051015
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`Petitioner Apple Inc. - EX. 1054, p. 2%
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`Petitioner Apple Inc. - Ex. 1054, p. 2
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`

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`Application/Control Number: 10/956,070
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`,
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`Page 2
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`Art Unit: 3621
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`1. Claims 1-39 have been examined.
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`Status of Claims
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`Claim Rejections - 35 USC § 102
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`2. The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the
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`basis for 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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`3. Claims 1-45 are rejected under 35 USC. 102(b) as being anticipated by Downs et a1 (U .8
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`6226618)
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`As per claims 1-39, Downs et a1. disclose an invention thatbroadly relates to the field of
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`electronic commerce and more particularly to a system and related tools for the secure delivery
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`and rights management of digital assets, such as print media, films, games, and music over
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`global communications networks such as the Internet and the World Wide Web. The invention
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`includes the means and devices to (hardware and software combination) (columns 53, lines 65-
`67, column 54, lines 1-3) - Claims 25, 38, 39. The invention comprising of the following:
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`o Generating usage rights and derivation of those rights (meta rights). For example, a
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`usage right is the ability to distribute the content or making'copies, or the ability to
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`compress the content, or type purchase that can be made. Meta rights include the number
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`of copies that can be made or different compression speed or the owning versus renting
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`the content (columns 59-60) and — Claims 1, I3, 26
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`Petitioner Apple Inc. - EX. 1054, p. 3
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`Petitioner Apple Inc. - Ex. 1054, p. 3
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`

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`Application/Control Number: 10/956,070
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`Art Unit: 3621
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`Page 3
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`o The actual number of copies, compression speed or owning versus rental are state
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`variable as they define the rights (column 59, lines 15-30) - Claims 2-4, 14-16, 27-29
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`0 Content Usage Control Layer'keeps track of the content's copy/play usage and update the
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`copy/play status (column 19, lines 48-50) — Claims 5, I 7, 30
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`0
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`State variables represent a collection of states derived from the usage rights (column- 59,
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`lines 15-30) - Claims 6-8, 18-20, 31-33
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`0
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`State variable such as whether to own or rent the content does not material until during
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`the transaction or transfer process. System does not specify to the user what decision to
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`make — Claims 9-10, 21-22, 34-35
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`0 Generating licensing with rights (column 7, lines 1-10) — Claims 11, 23, 36
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`o Generating a plurality of rights (column 59, lines 37-67) — Claims 12, 24, 37
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`Conclusion
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`4. Examiner has pointed out particular references contained in the prior arts ofrecord in the
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`body ofthis actionfor the convenience ofthe applicant. Although the specified citations are
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`representative ofthe teachings in the art and are applied to the specific limitations within the
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`individual claim, other passages andfigures may apply as well. It is respectfully requested
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`that ifthe applicant is preparing to respond, to considerfully the entire references as
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`potentially teaching all or part ofthe claimed invention, as well as the context ofthe passage
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`as taught by the prior arts or disclosed by the examiner.
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`Petitioner Apple Inc. - EX. 1054, p. 4
`
`Petitioner Apple Inc. - Ex. 1054, p. 4
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`

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`Application/Control Number: 10/956,070
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`Page 4
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`Art Unit: 3621
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`5. The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`0 Hsu et al. (US 6947910) — This invention relates to downloading of media files
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`through a communications network.
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`0 Stefik et al. (US 5629980) - The present invention relates to the field of distribution
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`and usage rights enforcement for digitally encoded works.
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`Any inquiry concerning this communication or earlier communications from the
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`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.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jim Trammel can be reached on 571-272—6712.
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`Any response to this aCtion should be mailed to:
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`Commissioner for Patents
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`PO. Box 1450
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`Alexandria, VA 22313-1450
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`elati
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`3_ to the status of this application should be
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` Any inquiry of a gen ral nature 0
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`Evens J. Augustin
`October 17, 2005
`Art Unit 3621
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`Petitioner Apple Inc. - Ex. 1054, p. 5
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`Petitioner Apple Inc. - Ex. 1054, p. 5
`
`