`
`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.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`10/162,701
`
`06/06/2002
`
`Xin Wang
`
`111325-290100
`
`-
`
`6475
`
`22204
`
`'
`
`7590
`
`08/10/2007
`
`NIXONPEABODY,LLP
`401 9TH STREET, NW
`SUITE 900
`WASHINGTON, DC 20004-2128
`
`_
`
`‘
`
`AUGUSTIN, EVENSJ
`
`3621
`
`MAIL DATE
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`08/10/2007
`
`PAPER NUMBER
`
`DELIVERY MODE
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`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Petitioner Apple Inc. - EX. 1045, p. 1
`
`Petitioner Apple Inc. - Ex. 1045, p. 1
`
`

`

`Application No.
`
`Applicant(s)
`
`Office Action Summary
`
`10/162,701
`Examiner
`
`WANG ET AL.
`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 g 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).
`
`Status
`
`1)IXI Responsive to communication(s) filed on 12 Februacy 2007.
`2a)l:] This action is FINAL.
`2mg This action is non-final.
`3)I:l 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). CIaim(s)1-_18is/are pending in the application.
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`4a) Of the above claim(s) __ is/are withdrawn from consideration.
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`5)[] Claim(s) __ is/are allowed.
`6)IZ Claim(s) fl is/are rejected.
`7)I:] Claim(s) __ is/are objected to.
`8)|:I Claim(s)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)l:l The specification is objected to by the Examiner.
`10)I:I The drawing(s) filed on __ is/are: a)EI accepted or b)I:I objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`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)|:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`a)lj All
`b)l:] Some * c)|:] None of:
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`Certified copies of the priority documents have been received.
`
`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
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`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.
`
`Attachment(s)
`
`1) IE Notice of References Cited (PTO-892)
`2) C] Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) [I Information Disclosure Statement(s) (PTO/SB/08)
`paper No(s)/Mai| Date
`.
`US Patent and Trademark Office
`
`4) E] Interview Summary (pro-413)
`Paper No(s)/Mali Date.
`.
`5) CI Notice of Informal Patent Application
`6) C] Other:
`.
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20070805
`
`Petitioner Apple Inc. - EX. 1045, p. 2
`
`Petitioner Apple Inc. - Ex. 1045, p. 2
`
`

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`Application/Control Number: 10/162,701
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`Art Unit: 3621
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`Page 2
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`20070804
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`DETAILED ACTION
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`1. Examiner James Reagan was previously handling this application. Evens Augustin is
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`currently examining this application, and all subsequent correspondence must be addressed to
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`him. Claims 1-18 are pending. Claims 1-18 have been examined.
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`Claim Interpretation
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`2.
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`In determining patentability of an invention over the prior art, the USPTO has considered all
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`claimed limitations, and interpreted as broadly as their terms reasonably allow (In re Zletz 13
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`USPQ2d 1320 (Fed. Cir. 1989)). Additionally, all words in the claims have been considered
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`in judging the patentability of the claims against the prior art.
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`3.
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`It should also be noted that, in the office action that:
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`A. Items in the rejection that are in quotation marks are claimed language/limitations.
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`B. Passages in prior art references may be mere rephrasing/rewording of claimed
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`limitations, but the implicit/explicit meaning of the references vis-a-vis the claimed
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`limitation remains intact.
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`C. Functional recitation(s) using the word “for” or other fiinctional terms (6. g. "a
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`mechanism for providing access to the item in accordance with the set of rights” as
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`recited in claim 10) have been considered but given less patentable weight1 because
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`they fail to add any steps and are thereby regarded as intended use language. To be
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`I See e.g. In re Gulack, 703 F.2d 1381, 217 USPQ 401, 404 (Fed. Cir. l983)(stating that
`although all limitations must be considered, not all limitations are entitled to patentable weight).
`
`Petitioner Apple Inc. - EX. 1045, p. 3
`
`Petitioner Apple Inc. - Ex. 1045, p. 3
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`

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`Application/Control Number: 10/162,701
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`Art Unit: 3621
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`Page 3
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`especially clear, the Examiner has considered all claim limitations. However the A
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`recitation of the intended use of the claimed invention must result in additional steps.
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`See Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1375—
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`76, 58 USPQ2d 1508, 1513 (Fed. Cir. 2001) (Where the language in a method claim
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`states only a purpose and intended result, the expression does not result in a
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`manipulative difference in the steps of the claim).
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`D. Word(s) that are separated by “/” are being examined as being synonymous or
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`equivalent.
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`E. Since these terms are not lexicographically defined, they will interpreted as being
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`equivalent to:
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`0 Usage Rights = Usage conditions such as copy protection
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`0 Meta-rights = Sub-rights, or additional usage conditions derived from
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`the usage rights
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`0 Consumer = digital content store or distributor
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`0 License = Digital certificate given to distributor
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`o Supplier = Content provider
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`F. The claims are being analyzed as steps for collecting, analyzing business data and
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`providing decisions based on the data collected and analyzed.
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`G. The USPTO interprets claim limitations that contain statement(s) such as “if may,
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`might, can, could, when, potentially, possibly”, as optional language (this list of
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`examples is not intended to be exhaustive). As matter of linguistic precision, optional
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`claim elements do not narrow claim limitations, since they can always be omitted (In
`
`Petitioner Apple Inc. - Ex. 1045, p. 4
`
`Petitioner Apple Inc. - Ex. 1045, p. 4
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`

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`Application/Control Number: 10/162,701
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`Art Unit: 3621
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`Page 4
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`20070804
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`re Johnston, 77 USPQ2d 1788 (Fed. Circ. 2006)). They will be given less patentable
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`weight, because language that suggests or makes optional but does not require steps
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`to be performed or does not limit a claim to a particular structure does not limit the
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`scope of a claim or claim limitation.
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`H.
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`Independent claims are examined together, since they are not patentable distinct. If
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`applicant expressly states on the record that two or more independent and distinct
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`inventions are claimed in a single application, the Examiner may require the applicant
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`to elect an invention to which the claims will be restricted.
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`1. Any official notices taken by the USPTO that are not adequately traversed by
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`applicant will be taken to be admitted prior art.
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`J. The USPTO interprets common computer related words that are not lexicographically
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`defined the word in accordance to Computer Dictionary, 3rd Edition, Microsoft Press,
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`Redmond, WA, 19972. The USPTO also uses published patent applications and
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`issued patents for meanings of common computer related words that are not
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`lexicographically defined.
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`K. Since the word “disposal” is not lexicographically defined the USPTO will interpret
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`the word in accordance to Merriam Webster’s dictionary. According disposal is
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`2 Based upon Applicants’ disclosure, the art of record, and the knowledge of one of ordinary skill
`in this art as determined by the factors discussed in MPEP §2141.03 (where practical), the
`Examiner finds that the Microsoft Press Computer Dictionary is an appropriate technical
`dictionary known to be used by one of ordinary skill in this art. See e. g. Altiris Inc. v. Symantec
`Corp, 318 F.3d 1363, 1373, 65 USPQ2d 1865, 1872 (Fed. Cir. 2003) where the Federal Circuit
`used the Microsoft Press Computer Dictionary (3d ed.) as “a technical dictionary” to define the
`term “flag.” See also In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971)(noting that its
`appropriate to use technical dictionaries in order to ascertain the meaning of a term of art) and
`MPEP §2173.05(a) titled ‘New Terrninology.’
`
`Petitioner Apple Inc. - EX. 1045, p. 5
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`Petitioner Apple Inc. - Ex. 1045, p. 5
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`Application/Control Number: 10/ 162,701
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`Art Unit: 3621
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`Page 5
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`defined as: 1: the power or authority to dispose or make use of as one chooses <the
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`car was at my disposal> 2: the act or process of disposing: as a: orderly placement or
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`distribution b: regulation, administration c: the act or action of presenting or
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`bestowing something <disposal of favors> d: systematic destruction; especially :
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`destruction or transformation of garbage 3[garbage disposal unit] : a device used to
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`reduce waste matter (as by grinding). Therefore, Usage conditions which include
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`copy authorization and target device types, or timed-availability restrictions (col. 10,
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`11.15-18) is classified as regulation, administration.
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`Claim Rejections - 35 USC § 102
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`4. 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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`A person shall be entitled to a patent unless -—
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`(a) the invention was known or used by others in this country, or patented or described in a printed publication in this
`or a foreign country, before the invention thereof by the applicant for a patent.
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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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`(e) the invention was described in (1) an application for patent, published under section l22(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
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`Petitioner Apple Inc. - EX. 1045, p. 6
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`Petitioner Apple Inc. - Ex. 1045, p. 6
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`

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`Application/Control Number: 10/ 162,701
`Art Unit: 3621
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`Page 6
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`20070804
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`5. Claims 1-18 are rejected under 35 U.S.C. 102(b) as being anticipated by Downs et al. (U.S
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`6226618).
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`6. As per claims 1-18, Downs et at. discloses an invention comprising of the following:
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`A. Content stores or distributors can add or narrow the original usage rights (sub-rights)
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`(column 21 , lines 30-36)
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`B. Content providers set and transmit (equivalent to presenting) the usage conditions to
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`the content stores (column 21, 30-32), which are the first customers or distributors of
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`the content providers.
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`C. Distributors (first customer) making a request to digital content owners to sale digital
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`content (column 42, lines 65-67, column 43, lines 1-2). The two parties then come to
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`an agreement (column 43, lines 4-5). Inherently, the content provider receives the
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`request - Content providers (entity that supplies the content), providing (equivalent to
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`generating) usage conditions (equivalent to usage rights) - The content providers also
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`stipulate that the content stores or distributors can add or narrow the original usage
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`rights - ("obtaining a set of rights associated with an item, said set of rights
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`including meta-rights specifying derivable rights that can be derived from the
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`meta-rights by the rights consumer ")
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`D. The Content Provider(s) 101 sets the allowable Usage Conditions 517 and transmits
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`them to the Electronic Digital Content Store(s) 103 in a SC (see the License Control
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`Layer 501 section). The Electronic Digital Content Store(s) 103 can add to or narrow
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`the Usage Conditions 517 as long as it doesn't invalidate the original conditions set by
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`the Content Provider(s) (Col. 21, 1130-36). Each Content Provider(s) 101 specifies
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`Petitioner Apple Inc. - EX. 1045, p. 7
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`Petitioner Apple Inc. - Ex. 1045, p. 7
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`

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`Application/Control Number: 10/ 162,701
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`Art Unit: 3621
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`Page 7
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`the Usage Conditions 517 for each of its Content 113 items. Electronic Digital
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`Content Store(s) 103 interpret the Usage Conditions 517 in Metadata SC(s) 620 and
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`use the information to provide different options or Store Usage Conditions 519 to the
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`End-User(s) for purchase of Content 113 (col. 26, 11. 10—16) —-
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`("determining
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`whether the rights consumer is entitled to derive the derivable rights specified by
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`the meta-rights")
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`E. Distributors (first customer) making a request to digital content owners to sale digital
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`content (column 42, lines 65-67, column 43, lines 1-2). The two parties then come to
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`an agreement (column 43, lines 4-5). Inherently, the content provider receives the
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`request - After the agreement between the content provider and the distributor (first
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`customer), a digital certificate is created and sent to the distributor (column 43, lines
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`14-18). Inherently the agreement and certificate is for the content/usage rights
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`request -—("if the rights consumer is entitled to derive the derivable rights
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`specified by the mete-rights, at least one of deriving one or more of the derivable
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`rights and generating a license including the derived rights ") - ("transmitting
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`the set of rights, in the form of a license to the item, from the rights supplier to
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`the rights consumer ")
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`F. Usage conditions include copy authorization and target device types, or timed-
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`availability restrictions (col. 10, 11.15-18, Col. 60, 11.15-30) - ("the derived rights are
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`rights disposal rights. "); ("rights include usage rights ")
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`Petitioner Apple Inc. - EX. 1045, p. 8
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`Petitioner Apple Inc. - Ex. 1045, p. 8
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`

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`Application/Control Number: 10/162,701
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`Art Unit: 3621
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`Page 8
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`20070804
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`G. Content, refers to information and data stored in a digital format including: pictures,
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`movies, videos, music, programs, multimedia and games (col. 6, 11. 45-48) --("the
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`items are content ")
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`H. Content store distributes to the end user information relative to the Content 113 and
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`its use (col. 43, 11. 62—67) - The Electronic Digital Content Store(s) 103 also attaches
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`its own Usage Conditions called Store Usage Conditions 519 or purchase options to
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`the Offer SC(s) 641 (Col. 74, 1137-40) - ("derived rights include meta-rights that
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`the rights consumer may transfer to another rights consumer in the form of a
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`license ")
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`1. Electronic Digital Content Store(s) 103 are the entities who market the Content 113
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`through a wide variety of services or applications, such as Content 113 theme
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`programming or electronic merchandising of Content 113. Electronic Digital Content
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`Store(s) 103 manage the design, development, business operations, settlements,
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`merchandising, marketing, and sales of their services. Example online Electronic
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`Digital Content Store(s) 103 are Web sites that provide electronic downloads of
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`software (retailer and publisher) --(col. 9, 11. 61-67, col. 10, 11.1-3) - Content stores
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`being licensed distributors of content (col. 19, 56—58) -- ("the consumer is a content
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`retailer, distributor and publisher ")
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`Conclusion
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`7. Examiner has pointed out particular references contained in the prior arts ofrecord in the
`
`body ofthis action for the convenience ofthe applicant. Although the specified citations are
`
`Petitioner Apple Inc. - EX. 1045, p. 9
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`Petitioner Apple Inc. - Ex. 1045, p. 9
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`

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`Application/Control Number: 10/162,701
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`Art Unit: 3621
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`Page 9
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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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`8. Any inquiry concerning this communication or earlier communications from the examiner
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`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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`9.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Andrew Fischer can be reached on 571-272-6779.
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`/Evens J. Augustin/
`Evens J. Augustin
`August 5, 2007
`Art Unit 3621
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`Petitioner Apple Inc. - Ex. 1045, p. 10
`
`Petitioner Apple Inc. - Ex. 1045, p. 10
`
`