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`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.uspio.g0v
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`APPLICATION NO.
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`FILING DATE
`
`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION N0.
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`10/162,701
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`06/06/2002
`
`Xin Wang
`
`111325-113
`
`6475
`
`NIXON PEABODY, LLP
`401 9TH STREET, NW
`sum 900
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`WASHINGTON, DC 20004-2128
`
`REAGAN, JAMES A
`
`3621
`DATE MAILED: 10/21/2005
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
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`Petitioner Apple Inc. - EX. 1043, p. 1
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`Petitioner Apple Inc. - Ex. 1043, p. 1
`
`

`

`Office Action Summary
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`Application No.
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`10/162,701
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`Applicant(s)
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`WANG ET AL.
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`Examine,
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`JamesA. Reagan
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`A" Unit
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`3621 -
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`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 theprovisions of 37 CFR 1.136(a).
`In no event however, may a reply be timerIfiled
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for replyIs 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 alter 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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`HIE Responsive to communication(s) filed on 06 June 2002.
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`Za)I:] 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 O.G. 213.
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`
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`Disposition of Claims
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`4)IZ Claim(s) 1-_27 is/are pending in the application.
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`43) Of the above Claim(s) _ is/are withdrawn from consideration.
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`5)I:] Claim(s) _ is/are allowed.
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`6)|Z Claim(s)'1-_27 is/are rejected.
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`7)I:I Claim(s) __ is/are objected to.
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`8)|:I 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):] The specification is objected to by the Examiner.
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`10)E] The drawing(s) filed on _ is/are: 3):! accepted or b)[:I 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).
`11)|:I The oath or declaration is objected to by the Examiner. Note the attached Office Action orforrn PTO-152.
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`Priority under 35 u.s.c. § 119
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`12)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)I:] All
`b)EI Some * c)I:] None of:
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`Certified copies of the priority documents have been received.
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`Certified copies of the priority documents have been received in Application No. _
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`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)).
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`* 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) E Notice of References Cited (PTO--892)
`2) [I Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3)PAI Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)/Mail Date
`.
`'ateni and Trademark Office
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`U.S.
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`4) E] Interview Summary (PTO-413)
`Papa! N°(S)/Ma" Date
`5) D Notice Of Informal Paten—tAPPIICBIIOn (PTO-152)
`6) [:1 Other:—
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`PT L-326 (Rev. 7-05)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20050928
`
`its.
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`Petitioner Apple Inc. - EX. 1043, p. 2
`
`Petitioner Apple Inc. - Ex. 1043, p. 2
`
`

`

`Application/Control Number: 10/162,701
`Art Unit: 3621
`
`Page 2
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`DETAILED ACTION
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`Status of Claims
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`1.
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`2.
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`This action is in response to the application filed on 06 June 2002.
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`Claims 1-27 have been examined.
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`Information Disclosure Statement
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`3.
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`The lnforrnation Disclosure Statements have been considered. lnitialed copies of the Form 1449
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`are enclosed herewith.
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`Claim Rejections - 35 USC § 101
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`4.
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`35 U.S.C. 101 reads as follows:
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`invents or discovers any new and useful process, machine, manufacture, or
`Whoever
`composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,
`subject to the conditions and requirements of this title.
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`5.
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`Claims 10-19 and 25 are rejected under 35 U.S.C. 101 because the claimed invention is directed
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`to non-statutory subject matter.
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`In this case, a license is non-statutory because it is not tangibly
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`embodied.
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`Since the application currently before the Examiner is a utility patent, the claims must be
`directed to systems, methods, or articles of manufacture that have a clear utility. See MPEP
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`706.03(a). Over the years, numerous court decisions have analyzed the content of various claim
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`language for meaningful, useful differences in structure or acts performed between the claims
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`and the prior art. Some of these decisions have found that certain language adds little,
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`if
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`Petitioner Apple Inc. - EX. 1043, p. 3
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`Petitioner Apple Inc. - Ex. 1043, p. 3
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`

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`Application/Control Number: 10/162,701
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`Page 3
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`Art Unit: 3621
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`anything, to the claimed structure or acts and therefore do not serve as a limitation on the claims
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`to distinguish over the prior art. Thus, the limitations on the claim can broadly be thought of then
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`as its ability to make a meaningful contribution to the definition of the invention in a claim.
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`In
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`other words,
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`language that is not functionally interrelated with the useful acts, structure, or
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`‘ properties of the claimed invention will not serve as a limitation. See In re Gulack, 217 USPQ
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`401 (CAFC 1983), Ex parte Carver, 227 USPQ 465 (bd Pat App &l nt 1985) and In re Lowry, 32
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`USPQZd 1031 (CAFC 1994), where language provided certain limitations because of specific
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`relationships required by the claims.
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`In the computer arts we frequently examine claims that are
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`directed to systems, methods, and articles (computer program products) that process data.
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`In
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`these specific cases, nonfunctional descriptive material
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`is material
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`that cannot exhibit any
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`functional interrelationship with the way in which computing processes are performed.
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`As a result, when analyzing claim language for its limited effect, the Examiner will
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`perform two basic steps:
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`i) Review the claimed as a whole to see whether or not any descriptive material is being
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`recited; and
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`ii) If a descriptive material is found, determine how this descriptive material is being used
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`in the claim as a whole.
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`In this case, the claim language contains nonfunctional data in the form of derived rules
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`from non-statutory subject matter. This nonfunctional data is not processed by the computer, nor
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`does it alter the process steps.
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`It only means something to the human mind.
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`Petitioner Apple Inc. - EX. 1043, p. 4
`
`Petitioner Apple Inc. - Ex. 1043, p. 4
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`

`

`Application/Control Number: 10/162,701
`Art Unit: 3621 '
`
`Page 4
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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 U.S.C. 102 that form the basis for
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`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 1-27 are rejected under 35 U.S.C. 102(b) as being clearly anticipated by Ginter et al. (US
`
`5,892,900 A).
`
`Claims 1, 10, and 21:
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`Ginter discloses usage rights associated with digital works evolving as publishers and
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`distributors provide the digital content to consumers. See at least column 47, line 56 to column
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`48,
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`line 33; column 4, lines 14-27; column 5, lines 29-41, as well as other relevant and related
`
`Figures and text. Gintertherefore discloses the following limitations:
`
`0
`
`.
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`obtaining a set of rights associated With an item, said set of rights including meta-
`rights specifying derivable rights that can be derived from the meta-rights by the
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`rights consumer; and
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`determining whether the rights consumer is entitled to derive the derivable rights
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`specified by the meta-rights, and at least one of deriving the derivable rights, and
`
`generating a license including the derived rights if the rights consumer is entitled
`
`to derive the derivable rights specified by the meta-rights.
`
`Petitioner Apple Inc. - EX. 1043, p. 5
`
`Petitioner Apple Inc. - Ex. 1043, p. 5
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`

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`Application/Control Number: 10/162,701
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`Page 5
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`Art Unit: 3621
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`Claim 2:
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`With regard to the limitation of transmitting the set of rights, in the form of a license to the
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`item, from the rights supplier to the rights consumer, see at least column 4, lines 14-27; column 5,
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`lines 29-41, as well as other relevant and related Figures and text.
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`Claims 3, 11, and 22:
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`With regard to the limitation of the derived rights are rights disposal rights, see at least
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`column 4, lines 14-27, as well as other relevant and related Figures and text.
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`Claims 4, 12, and 23:
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`With regard to the limitation of the items are content, see at least column 5, lines 29-41,
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`as well as other relevant and related Figures and text.
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`Claims 5, 13, and 24:
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`With regard to the limitation of the derived rights include usage rights, see at least column
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`9, lines 19-32, as well as other relevant and related Figures and text.
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`Claims 6 and 14:
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`With regard to the limitation of the derived rights include meta- rights that the rights
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`consumer may transfer to another rights consumer in the form of a license, see at least column
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`47, line 56 to column 48, line 33, as well as other relevant and related Figures and text.
`
`Petitioner Apple Inc. - EX. 1043, p. 6
`
`Petitioner Apple Inc. - Ex. 1043, p. 6
`
`

`

`Application/Control Number: 10/162,701
`Art Unit: 3621
`'
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`Claims 7-9 and 15-17:
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`With regard to the limitations of:
`
`.
`
`.
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`.
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`the consumer is a content distributor;
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`the consumer is a content retailer;
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`the consumer is a content publisher;
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`Page 6
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`See at least column 5, iines 29-41, as well as other relevant and related Figures and text.
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`Claims 25-27:
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`With regard to the limitations of:
`
`o
`
`0
`
`.
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`said derivable rights comprise at least one condition that is associated with at
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`least one state variable.
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`generating said license including the derived rights with the rights consumer
`designated as a principal.
`V
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`generating said license including the derived rights with a party other than the
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`rights consumer designated as a principal.
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`See at least column 5, lines 29-41, as well as other relevant and related Figures and text.
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`PetitiOner Apple Inc. - EX. 1043, p. 7
`
`Petitioner Apple Inc. - Ex. 1043, p. 7
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`

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`Application/Control Number: 10/162,701
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`Page 7
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`Art Unit: 3621
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`Any inquiry of a general nature or relating to the status of this application or concerning
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`this communication or earlier communications from the Examiner should be directed to James A.
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`Reagan whose telephone number is 571.272.6710. The Examiner can normally be reached on
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`Monday-Friday, 9:30am-5:00pm.
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`If attempts to reach the examiner by telephone are
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`unsuccessful, the Examiner's supervisor, James Trammell can be reached at 571.272.6712.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR system,
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`see http://pgrtal.usptogov/extemaI/portaI/pair . Should you have questions on access to the
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`Private PAIR system, contact the Electronic Business Center (£80) at 866.217.9197 (toll-free).
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`- Any response to this action should be mailed to:
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`Commissioner of Patents and Trademarks
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`Washington, D.C. 20231
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`or faxed to:
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`571-273-8300 [Official communications, After Final communications labeled "Box AF"]
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`571-273-8300 [Informal/Draft communications, labeled “PROPOSED" or “DRAFT"]
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`Hand. delivered responses should be brought
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`to the United States Patent and
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`Trademark Office Customer Service Window:
`
`Randolph Building
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`401 Dulany Street
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`Alexandria, VA 22314.
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`JAR
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`28 September 2005
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`Petitioner Apple Inc. - EX. 1043, p. 8
`
`Petitioner Apple Inc. - Ex. 1043, p. 8
`
`