`
`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.uspw.gov
`
`APPLICATION NO.
`
`FILTNG DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
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`l0/956,070
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`10/04/2004
`
`Mai Nguyen
`
`1 I 1325-235000
`
`8299
`
`NIXON PEABODY, LLP
`401 9TH STREET, NW
`SUITE 900
`
`WASHINGTON, DC 20004-2128
`
`AUGUSTIN, EVENS J
`
`3621
`
`DATE MAILED: 04/17/2006
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Petitioner Apple Inc. - EX. 1056, p. 1
`
`Petitioner Apple Inc. - Ex. 1056, p. 1
`
`

`

`Office Action Summary
`
`Application No.
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`Applicant(s)
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`10/956,070
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`NGUYEN ET AL.
`
`Examine,
`
`EvensAugustin
`
`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 timelyifled
`after SIX (6) MONTHS from the mailing date of this communication.
`If N0 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
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`DIX Responsive to communication(s)II” led on 24 January 2006.
`2am This action is FINAL.
`2b)I:I This action is non-final.
`3)l:] Since this application is in condition for allowance except for formal matters, prosecution as to the meritsIS
`closedIn accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 0.6. 213.
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`Disposition of Claims
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`ME Claim(s) 2-10 14-22 25 27-35 and 40-54 is/are pending in the application.
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`4a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`5)E] Claim(s)
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`is/are allowed.
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`SHE Claim(s) 2-10 14-22 25 27-35 and 40-54 is/are rejected.
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`7):] Claim(s)
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`is/are objected to.
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`8):] Claim(s)
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`are subject to restriction and/or election requirement.
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`Application Papers
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`9)I:I The specification is objected to by the Examiner.
`10):] The drawing(s) filed on __ is/are: a)|:| accepted or b)EI objected to by the Examiner.
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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).
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`1)I: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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`12H] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)l:l All
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`b)E] Some * c)D None of:
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`1.I:l Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No. _
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`3D Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received. Attachment(s)
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`1) E] Notice of References Cited (PTO-892)
`2) D Notice of Drattsperson's Patent Drawing Review (PTO-948)
`3) E] Information Disclosure Statement(s) (PTO-1449 or PTO/SB/OB)
`Paper No(s)/Mai| Date
`.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 7-05)
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`4) E] Interview Summary (PTO—413)
`Paper No(s)/Mai| Date. __
`5) D Notice of Informal Patent Application (PTO-152)
`6) D Other:
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`Office Action Summary
`
`Part of Paper No.lMai| Date 041106
`
`Petitioner Apple Inc. - EX. 1056, p. 2
`
`Petitioner Apple Inc. - Ex. 1056, p. 2
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`

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`Application/Control Number: 10/956,070
`
`Art Unit: 3621
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`Page 2
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`Response to Amendment
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`This is in response to an amendment file on 1/24/2006 for letter for patent filed on
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`10/04/2004. In the amendment, claims 1, 12, 16 and 25 have been amended. Claims 1, 11-13,
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`23-24, 26, and 36-39 have been cancelled. Claims 40-54 have been added. Claims 2-10, 14- '
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`22, 25, 27-35, and 40-54 are pending in the letter.
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`Response to Arguments
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`1.
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`The United States Patent and Trademark Office hasfully considered the applicant's
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`arguments on 1/24/2006, but has not found those arguments to be persuasive.
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`The claims, as interpreted in light of the specification, are regarding content distribution
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`system, in which the content owners specify the rights of distributors/end-users Vis-a-vis the
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`content. The present invention categorizes the rights associated with the content into usage
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`rights and meta-rights. Usage rights are defined as a manner of use for the items, and meta-
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`rights are defined as a manner of rights transfer for the items (page 4, par. 10). According to the '
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`applicant’s specification, meta-rights can include rights to offer, grant, obtain, transfer, delegate,
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`track, surrender, exchange, and revoke usage rights to/from others (page 9, par. 41). A usage
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`right can be the right to print content three times. Each time the usage right is exercised, the
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`value of the state variable "number of prints" is incremented. In this example, when the value of _
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`the state variable is three, the condition is no longer satisfied and content cannot be printed
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`(page 9, par. 43). The content owner initially grants the distributor a license/rights to
`
`Petitioner Apple Inc. - Ex. 1056, p. 3
`
`Petitioner Apple Inc. - Ex. 1056, 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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`distribute/sell the content, and the distributor can modify the initial licensing/rights from the
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`owner to offer a more customized version of the rights to the end users (pages 24-25, par. 79-80).
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`Argument 1: Prior Art does not teach the aspects Meta-rights
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`Response 1: Owners setting initial usage rights/licensing (first license) for content to the
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`distributors (column 21, lines 30-33). Those usage rights can be modified by the digital store
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`(column 21, lines 33-39) to create secondary licensing or customized licensing (column 10, lines
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`15-18) to the end user
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`The system also defines the manner in which the content can be used (meta-rights) such
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`as onto what kinds of media the content can be transferred to (column 59, lines 52-54)
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`Application stands finally rejected.
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`2.
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`Claims 2—10, 14-22, 25, 27—35, and 40-54 have been examined.
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`Status of Claims
`
`Petitioner Apple Inc. - EX. 1056, p. 4
`
`Petitioner Apple Inc. - Ex. 1056, p. 4
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`

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`Application/Control Number: 10/956,070
`
`Art Unit: 3621
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`Page 4
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`Claim Rejections - 35 USC § 112
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`3.
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`Regarding claims 40-43, 45, 7, 19, 25, and 32, the phrase "and/or" renders the claims
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`indefinite because there are uncertainties or ambiguities with respect to the question of scope or
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`clarity of the claims. The claims are rejected under 35 U.S.C. 112, second paragraph (See MPEP
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`§ 2173.05(h)).
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`4.
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`Claims 7, l9 and 32 are rejected under 35 U.S.C. 112, first paragraph, as failing to
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`comply with the written description requirement. The claims contain subject matter which was
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`not described in the specification in such a way as to reasonably convey to one skilled in the
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`relevant art that the inventor(s), at the time the application was filed, had possession of the
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`claimed invention. The claims refer to a third license being generating from a second license.
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`The specification is silent with regard to the generation of third license and the rights associated
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`with that third license.
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`5.
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`Claims 49—53 are rejected under 35 U.S.C. 112, first paragraph, as failing 'to comply with '
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`the written description requirement. The claims contain subject matter which was not described
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`in the specification in such a way as to reasonably convey to one skilled in the relevant art that
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`the inventor(s), at the time the application was filed, had possession of the claimed invention.
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`The claims refer to a third license being generating from a second license. According to the
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`applicant’s specification, meta-rights can include rights to offer, grant, obtain, transfer, delegate,
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`track, surrender, exchange, and revoke usage rights to/from others (page 9, par. 41). The
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`specification is silent with regard to rights such as restore, back up, exercise and extract.
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`Petitioner Apple Inc. - Ex. 1056, p. 5
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`Petitioner Apple Inc. - Ex. 1056, p. 5
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`

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`Application/Control Number: 10/956,070
`
`Art Unit: 3621
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`Page 5
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`Claim Rejections - 35 USC § 102
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`6.
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`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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`7.
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`Claims 2-10, 14-22, 25, 27-35, and 40-54 are rejected under 35 USC. 102(b) as being
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`anticipated by Downs et al (U.8 6226618).
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`As per claims 2-10, 14-22, 25, 27-35, and 40-54, Downs et al. disclose an invention that
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`broadly relates to the field of electronic commerce and more particularly to a system and related
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`tools for the secure delivery and rights management of digital assets, such as print media, films,
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`games, and music over global communications networks such as the Internet and the World
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`Wide Web. The invention includes the means and devices to (hardware and software
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`combination) (columns 53, lines 65-67, column 54, lines 1-3) - Claims 25, 38; 39,41-45, 48, 51,
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`, 54. The invention comprising of the following:
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`0 Owners setting initial usage rights/licensing (first license) for content to the distributors
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`(column 21, lines 30-33) — Claims 40-42
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`0 Example of usage rights include (column 59, lines 38-69 -— Claims 40, 49-54:
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`
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`
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`Petitioner Apple Inc. - EX. 1056, p. 6
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`Petitioner Apple Inc. - Ex. 1056, p. 6
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`

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`Application/Control Number: 10/956,070
`Art Unit: 3621
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`Page 6
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`Transfer on What Media
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`Mini Disc or Computer
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`0 Owners setting initial usage rights/licensing (first license) for content to the distributors
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`(column 21, lines 30-33). Those usage rights can belmodified by the digital store
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`(column 21, lines 33-39) to create secondary licensing or customized licensing (column
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`10, lines 15-18) to the end user — Claims 40-42, 10, 22, 35
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`o The system also defines the manner in which the content can be used (meta-rights) such
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`as onto what kinds of media the content can be transferred to (column 59, lines 52-54) —
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`Claims 40-42, 46-48
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`0
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`State variable such the number of copies a user is allowed to make (column 59, line 50 or .
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`rental terms (column 59, lines 55-60) - Claims 40-42
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`0 The secondary licensing such as restrictions on rental time period can not violate the
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`initial time period set by the initial licensing (column 21, line 35) - Claims 40-42
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`0 The state variable is derived from the usage rights (column 59, line 50) or rental terms
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`(column 59, lines 55-60) - Claims 2-4, 14-16, 2 7-29
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`0 The system keeps track of the content's copy/play usage and updates the copy/play status
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`(column 20, lines 49-50) — Claims 5, 17, 30
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`o A state variable can represent various other states, for example an item that rented can I
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`affect the number of copies that can be made or whether or not copies can be made —
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`Claims 6, 8, 18, 20, 31,33
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`0 The system embeds a code on every copy the content, as it is transferred form user device
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`to the next. When the Digital Content is accessed in a compliant End-User Devices, the
`
`Petitioner Apple Inc. - EX. 1056, p. 7
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`Petitioner Apple Inc. - Ex. 1056, p. 7
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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 7
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`End-User Player Application reads the watermark to check the use restrictions and
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`updates the watermark as required. If the requested use of the content does not comply
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`with the usage conditions, e.g., the number of copies has been exhausted, the End-User
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`Device(s) will not perform the request (column 7, lines 40-55) — Claims 7, 19, 32
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`o The content does not specify how the initial set of rights and variable are to modified, as
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`long as it does not violate the initial licensing (column 21, line 35) - Claims 9, 21, 34
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`Conclusion
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`8.
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`THIS ACTION IS MADE FINAL. Any new grounds of rejection is due to the
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`applicant’s amendment. Applicant is reminded of the extension of time policy as set forth in 37 '
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`CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after '
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
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`date of this final action.
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`Petitioner Apple Inc. - EX. 1056, p. 8
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`Petitioner Apple Inc. - Ex. 1056, p. 8
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`

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`Application/Control Number: 10/956,070
`Art Unit: 3621
`
`Page 8
`'
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`9.
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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
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`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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`Any inquiry of a general nature or relating to the status of this application should be
`directed to the Group receptionist whose telephone number is 571-272-65 84.
`
`Evens J. Augustin
`April 11, 2006
`Art Unit 3621
`
`SALVATORE CANGIALOSl
`PRIMARY EXAMINER
`
`ART UNII 222
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`Petitioner Apple Inc. - Ex. 1056, p. 9
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`Petitioner Apple Inc. - Ex. 1056, p. 9
`
`