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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
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`CONF {MATION NO.
`
`10/956,121
`
`10/04/2004
`
`Xin Wang
`
`111325—291300
`
`8924
`
`22204
`
`7590
`
`08/19/2009
`
`NIXON PEABODY, LLP
`401 9TH STREET, NW
`SUITE 900
`WASHINGTON, DC 20004-2128
`
`EXAMINER
`
`WEST, THOMAS C
`
`ART UNIT
`
`3621
`
`MAIL DATE
`
`08/19/2009
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`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. 1052, p. 1
`
`Petitioner Apple Inc. - Ex. 1052, p. 1
`
`

`

`
`
`Application No.
`
`10/956,121
`
`Applicant(s)
`
`WANG ET AL.
`
`Office Action Summary
`
`Examiner
`
`THOMAS WEST
`
`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 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 28 May 2009.
`
`2a)IZI This action is FINAL.
`
`2b)I:I This action is non-final.
`
`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)IZI Claim(s) & is/are pending in the application.
`
`4a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`5)I:I Claim(s)
`
`is/are allowed.
`
`6)IXI Claim(s) & is/are rejected.
`
`7)I:I Claim(s) _ is/are objected to.
`
`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`
`
`
`10)I:I The drawing(s) filed on
`
`is/are: a)I:I 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:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`a)I:I All
`
`b)I:I Some * c)I:I None of:
`
`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No.
`
`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.
`
`Attach ment(s)
`
`1) IZI Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) |:| Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date
`.
`U.S. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. _
`5) I:I Notice of Informal Patent Application
`6) D Other:
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20090817
`
`Petitioner Apple Inc. - EX. 1052, p. 2
`
`Petitioner Apple Inc. - Ex. 1052, p. 2
`
`

`

`Application/Control Number: 10/956,121
`
`Page 2
`
`Art Unit: 3621
`
`DETAILED ACTION
`
`Status of Claims
`
`1.
`
`The Final Office Action dated 10-16-08 is withdrawn. This action is in reply to the
`
`Arguments/Remarks filed 7-14-08.
`
`2.
`
`Claims 1-36 are currently pending and have been examined.
`
`Double Patenting
`
`3.
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory
`
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`
`are not identical, but at least one examined application claim is not patentably distinct
`
`from the reference claim(s) because the examined application claim is either anticipated
`
`by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140
`
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`
`USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`
`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1 .321(d)
`
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`
`Petitioner Apple Inc. - EX. 1052, p. 3
`
`Petitioner Apple Inc. - Ex. 1052, p. 3
`
`

`

`Application/Control Number: 10/956,121
`
`Page 3
`
`Art Unit: 3621
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement.
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.73(b).
`
`Claims 1-36 are provisionally rejected on the ground of nonstatutory double
`
`patenting over claim 6 of copending Application No. 10162701. This is a provisional
`
`double patenting rejection since the conflicting claims have not yet been patented.
`
`The subject matter claimed in the instant application is fully disclosed in the
`
`referenced copending application and would be covered by any patent granted on that
`
`copending application since the referenced copending application and the instant
`
`application are claiming common subject matter, as follows: meta-rights, derived rights,
`
`rights transfer, generating a license.
`
`Furthermore, there is no apparent reason why applicant would be prevented from
`
`presenting claims corresponding to those of the instant application in the other
`
`copending application. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA
`
`1968). See also MPEP § 804.
`
`Petitioner Apple Inc. - EX. 1052, p. 4
`
`Petitioner Apple Inc. - Ex. 1052, p. 4
`
`

`

`Application/Control Number: 10/956,121
`
`Page 4
`
`Art Unit: 3621
`
`Claim Rejections - 35 USC § 101
`
`4.
`
`Claims 1-36 are rejected under 35 U.S.C. §101 because the claimed invention is
`
`directed to non-statutory subject matter. Based on Supreme Court precedent1 and
`
`recent Federal Circuit decisions, a §101 patent eligible process must (1) be tied to a
`
`particular machine (or apparatus), g (2) transform a particular article to a different state
`
`or thing. See In re Bilski, 545 F.3d 943, 88 USPQZd 1385 (Fed. Cir. 2008)(en banc).
`
`This is the Machine-or-Transformation Test (“M-T Test”).
`
`To meet prong (1), the method step should positively recite machine to which it
`
`is tied. Alternatively or to meet prong (2), the method step should positively recite the
`
`material that is being changed to a different state or positively recite the subject matter
`
`that is being transformed. For example, a method claim that would not qualify as a
`
`patent eligible process because it fails both prongs of the M-T Test would be a claim
`
`that recites purely mental steps.
`
`In this particular case, the process claims fail prong (1) because the methods
`
`steps “obtaining a set of rights”, “deriving at least one right” are not tied to a specific
`
`machine since the methods steps could be performed by a human being, since the
`
`steps do not disclose specifically how they are performed. Finally, the Examiner notes
`
`that the claims fail prong (2) because the method steps do not transform the underlying
`
`subject matter to a different state or thing.
`
`1 See also Diamond v. Diehr, 450 US. 175, 184 (1981); Parker V.F100k, 437 US. 584, 588 n.9
`(1978); Gottschalk v. Benson, 409 US. 63, 70 (1972); Cochrane v. Deener, 94 US. 780, 787-88
`(1876).
`
`Petitioner Apple Inc. - EX. 1052, p. 5
`
`Petitioner Apple Inc. - Ex. 1052, p. 5
`
`

`

`Application/Control Number: 10/956,121
`
`Page 5
`
`Art Unit: 3621
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`6.
`
`Claims 1-36 are rejected under U.S.C. 103(a) as being unpatentable over Anand,
`
`US Patent No. 6,044,466 (Anand), in view of Workshop on Digital Rights Management,
`
`Minutes from Architecture/lnfrastructure Session (Infrastructure).
`
`Claims 1, 12, 24:
`
`Anand, as shown, discloses the following limitations:
`
`obtaining a set of rights associated with an item, the set of rights including meta-
`
`rights specifying derivable rights that can be derived from the meta-rights, wherein
`
`the meta-rights are provided in digital form and are enforceable by a repository (see
`
`column 3, line 15-31, column 5, lines 17-23, column 5, lines 1-16)
`
`determining, by a repository, whether the rights consumer (user) is entitled to the
`
`derivable rights specified by the meta-rights (see col. 3, lines 27-31, column 5, line
`
`14-21, col. 3, lines 32-35)
`
`deriving at least one right from the derivable rights, if the rights consumer is entitled
`
`to the derivable rights specified by the meta-rights, wherein the derived right
`
`includes at least one state variable based on the set of rights and used for
`
`Petitioner Apple Inc. - EX. 1052, p. 6
`
`Petitioner Apple Inc. - Ex. 1052, p. 6
`
`

`

`Application/Control Number: 10/956,121
`
`Page 6
`
`Art Unit: 3621
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`determining a state of the derived right (see column 5, line 1-16, col. 3, lines 32-35,
`
`col. 5, lines 17-21)
`
`Anand discloses the limitations as shown above. Anand does not directly
`
`disclose a state variable (state machine), but Infrastructure does (page 8,
`
`paragraph 3)
`
`It would have been obvious to one of ordinary skill in the art at the time of
`
`the invention to modify Anand to include the state machine of Infrastructure since
`
`this provides a dynamic structure that can express dynamic rights relationships.
`
`Claims 2, 13, 25:
`
`Anand, as shown, discloses the following limitations:
`
`the state variable inherits a state thereof for content usage or rights transfer from the
`
`set of rights (see column 5, line 1-16)
`
`Claims 3, 4, 14, 15, 26, 27:
`
`Anand/Infrastructure discloses the limitations shown above. Anand further discloses:
`
`the state variable shares a state thereof for content usage or rights transfer with the
`
`set of rights (see column 8, line 7-14)
`
`the state variable inherits a remaining state for content usage or rights transfer from
`
`the set of rights (see column 5, line 14-16)
`
`Claims 5, 16, 28:
`
`Petitioner Apple Inc. - EX. 1052, p. 7
`
`Petitioner Apple Inc. - Ex. 1052, p. 7
`
`

`

`Application/Control Number: 10/956,121
`
`Page 7
`
`Art Unit: 3621
`
`Anand, as shown, discloses the following limitations:
`
`the state variable is updated upon exercise of a right associated with the state
`
`variable (see column 7, line 5-14)
`
`Claims 6, 17, 29:
`
`Anand, as shown, discloses the following limitations:
`
`deriving a plurality of rights from the derivable rights, wherein the state variable is
`
`shared by the derived rights (see column 7, line 1-7)
`
`Claims 7, 8, 18, 19, 30, 31:
`
`Anand discloses the limitations as shown above. Anand does not directly
`
`disclose a state variable (state machine), but Infrastructure does:
`
`the state variable represents a collection of states (see page 8, paragraph 3)
`
`a plurality of state variables that determine the state of the derived right (see page 8,
`
`paragraph 3)
`
`It would have been obvious to one of ordinary skill in the art at the time of
`
`the invention to modify Anand to include the state machine of Infrastructure since
`
`this provides a dynamic structure that can express dynamic rights relationships.
`
`Petitioner Apple Inc. - EX. 1052, p. 8
`
`Petitioner Apple Inc. - Ex. 1052, p. 8
`
`

`

`Application/Control Number: 10/956,121
`
`Page 8
`
`Art Unit: 3621
`
`Claims 9, 20, 32:
`
`Anand, as shown, discloses the following limitations:
`
`at least one state variable is unspecified in the derived right, is created during 3
`
`rights transfer, and is assigned to the derived right (see column 7, line 1-14)
`
`Claims 10, 21, 33:
`
`Anand, as shown, discloses the following limitations:
`
`the state variable is transferred from the derivable rights to the derived right (see
`
`column 7, line 15-23)
`
`Claims 11,22, 34, 36:
`
`Anand, as shown, discloses the following limitations:
`
`generating a license including the derived right, if the rights consumer is entitled to
`
`the derivable rights specified by the meta-rights (see column 7, line 24-29)
`
`one or more of the means for obtaining, the means for determining, and the means
`
`for deriving are specified in a license (see column 7, line 24-29)
`
`Claim 35:
`
`Anand, as shown, discloses the following limitations:
`
`Petitioner Apple Inc. - EX. 1052, p. 9
`
`Petitioner Apple Inc. - Ex. 1052, p. 9
`
`

`

`Application/Control Number: 10/956,121
`
`Page 9
`
`Art Unit: 3621
`
`obtaining, the means for determining, and the means for deriving comprise at least
`
`one of computer-executable instructions, and devices of a computer system (see
`
`column 4, line 51-67)
`
`Response to Arguments
`
`7.
`
`Applicant's arguments filed 7-14-08 have been fully considered but they are not
`
`persuasive. Applicant’s arguments will be addressed in sequential order as they were
`
`set forth in the “Remarks” section on the above date. The 101 rejection is maintained
`
`for the reasons described herein under that title. The Double Patenting rejection will be
`
`maintained since it may be missed later on. Applicant argues that Anand does not
`
`disclose meta-rights specifying derivable rights. Specifically, Anand column 3, lines 15-
`
`31 disclose dynamic derivation (can do), superset of rights and delegation of a subset of
`
`maximal permissions (derivable rights specified by the meta-rights). Anand discloses,
`
`“Multiple principals can delegate a subset of their maximal permissions for the
`
`executable content. The mechanism uses policy for combining the delegated
`
`permissions into the contents current permissions” (col. 3, lines 27-31). Anand further
`
`discloses, “electing granted permissions from within an associated maximal set of
`
`permissions" (col. 3, lines 59-60). “As FIG. 2 depicts, the derivation mechanism (100)
`
`consists of the following five steps:”, (col. 5, lines 1-2). “The current permissions (150),
`
`by definition, must always be a subset of the maximal permissions (140)”, (col. 5, lines
`
`14-16). “The description of executable content (120) is a set of attribute-value pairs.
`
`One possible embodiment is RDF ("Resource Description Framework") labels that
`
`describe the meta-data of a website's URI ("Universal Resource ldentifier")”, (col. 5,
`
`Petitioner Apple Inc. - EX. 1052, p. 10
`
`Petitioner Apple Inc. - Ex. 1052, p. 10
`
`

`

`Application/Control Number: 10/956,121
`
`Page 10
`
`Art Unit: 3621
`
`lines 17-21). The attribute-value pairs of Anand correspond to the meta-rights of Wang.
`
`The Examiner has referenced the proper figures of Anand that where intended,
`
`specifically the ones as shown here. Anand further discloses, “FIG. 4 illustrates that the
`
`nodes of a policy graph's directed graph consist of an attribute, a value, an entry, and
`
`an access control list. FIG. 5 illustrates a preferred embodiment of the permissions
`
`structure, and shows that permissions include positive and negative rights and
`
`transforms. FIG. 7 illustrates how the first step of the dynamic derivation mechanism
`
`creates a derivation instance and sets its attributes values” (col. 4, lines 18-31. The
`
`state variables of Wang correspond to the derivation instance of Anand, fig. 7. Anand
`
`regulates who is entitled to derive rights through an access control described in fig. 4
`
`referenced above. Anand controls who is entitled to derive rights, “The access control
`
`list (325) limits access to the policy graph (320). Principals can be permitted to modify
`
`any of the policy graph attributes (321-325)”, (col. 6, lines 26-29).
`
`Infrastructure further
`
`discloses a state machine which consists of state variables, as defined by Curtis.
`
`“Within the state machine, while a state variable does not equal exit 1301, the state
`
`machine will go from state to state based upon what the state variable is set to”, (Curtis,
`
`6,397,355, col. 9, lines 53-55). A s tate variable (state machine) is shown by
`
`Infrastructure does (page 8, paragraph 3). The applicant has not provided an
`
`explanation for the assertion that the derivation instance of Anand is constant and does
`
`not change.
`
`Petitioner Apple Inc. - EX. 1052, p. 11
`
`Petitioner Apple Inc. - Ex. 1052, p. 11
`
`

`

`Application/Control Number: 10/956,121
`
`Page 11
`
`Art Unit: 3621
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Thomas West whose telephone number is 571 -270-
`
`1236. The examiner can normally be reached on Tuesday and Wednesday 7:30am -
`
`5pm EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Andrew Fischer can be reached on 571-272-6779. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`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 applications is available through Private PAIR only.
`
`Petitioner Apple Inc. - EX. 1052, p. 12
`
`Petitioner Apple Inc. - Ex. 1052, p. 12
`
`

`

`Application/Control Number: 10/956,121
`
`Page 12
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`Art Unit: 3621
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`Thomas West
`
`Patent Examiner
`
`Art Unit 3621
`
`/ANDREW J. FISCHER/
`
`Supervisory Patent Examiner, Art Unit 3621
`
`Petitioner Apple Inc. - EX. 1052, p. 13
`
`Petitioner Apple Inc. - Ex. 1052, p. 13
`
`