Docket No. 111325-235000
`
`Serial No. 10/956,070
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`REMARKS
`
`‘
`
`The following amendments and remarks are submitted to be fully responsive to the
`
`final Official Action of April 17, 2006.
`
`In the present response, claims 7, 10, 19, 22, 25, 31,
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`32, 40-43, 45 and 49-51 are amended, and claims 9, 21, 34, and 46-48 are cancelled without
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`prejudice or disclaimer. No new matter is introduced (see, e. g., Applicants’ published
`
`Specification '[[1[ [0007], [0009], [0093] and [0098]). Thus, claims 2-8, 10, 14—20, 22, 25, 27-
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`33, 35, 40-45, and 49-54 are still pending. Reconsideration and allowance of this application
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`are respectfully requested.
`
`Referring now to the present Office Action, claims 40-43, 45, 7, 19, 25, and 32 were
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`rejected under 35 U.S.C. §112, second paragraph, based on indefiniteness.
`
`In response,
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`claims 7, 19, 25, 32 40, 41, 42, 43 and 45 are amended to correct the noted and discovered
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`informalities. Claims 7, 19, and 32 and 49-53 were rejected under 35 U.S.C. §112, first
`
`paragraph, based on non—described subject matter.
`
`In response, claims 49-51 are amended to
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`correct the noted and discovered inforrnalities. With respect to the third license, a recited in
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`claims 7, 19, and 32, this feature is clearly described in Applicants’ Specification (see, e.g.,
`
`Applicants’ published Specification FIGS. 16 and 18 and the description thereof). With
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`respect to exercise and extract, as recited in claims 52-54, this feature is clearly described in
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`Applicants’ Specification (see, e.g., Applicants’ published Specification 1H] [0007] and
`
`[0009]). Accordingly, all of the claims are in compliance with 35 U.S.C. §1 12 and no further
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`rejection on such basis is anticipated.
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`If, however, the Examiner disagrees, the Examiner is
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`invited to contact the undersigned attorney, who will work with the Examiner in a mutual
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`effort to derive satisfactory claim language.
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`Claims 2-10, 14—22, 25, 27-35, and 40-54 also were rejected under 35 U.S.C. §102(b)
`
`as being anticipated by US. Patent No. 6,226,618 to Downs et al. However, claims 2—10, 14-
`22, 25, 27-35, and 40-54 are patentably distinguishable over Downs et al., because Downs et
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`al. fails to disclose, teach or suggest all of the features recited in the present claims, as
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`amended. For example, independent claim 40 (emphasis added) recites:
`
`A method for sharing rights adapted to be associated with an item,
`the method comprising:
`specifying in a first license at least one usage right a_n_d at least one
`meta-right for the item, wherein the usage right and the meta-right include at
`least one right that is shared among one or more users or devices;
`defining, via the at least one usage right, a manner of use selected
`from a plurality ofpermitted manners ofuse for the item;
`defining, via the at
`least one meta-right, a manner of rights
`derivation selected from a plurality of permitted manners of rights
`
`100433431
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`1 0
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`Petitioner Apple Inc. - Ex. 1057, p. 1
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`Petitioner Apple Inc. - Ex. 1057, p. 1
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`

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`Docket No. 111325-235000
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`Serial No. 10/956,070
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`derivation for the item, wherein said at least one meta-right allows said one
`or more users or devices to transfer ri hts or to derive new ri
`ts
`associating at least one state variable with the at least one right in
`
`the first license wherein the at least one state variable is shared among the
`one or more users or devices, and is specified as unspecified or is assigyed
`
`an identification in said first license and said identification references a
`location where a state of rights is tracked;
`generating in a second license one or more rights based on the
`meta-right in the first license, wherein the one or more rights in the second
`license includes at least one right that is shared among one or more users or
`devices; m
`associating at least one state variable with the at least one right that
`is shared in the second license, wherein the at least one state variable that is
`associated with the second license is based on the at least one state variable
`that is associated with the first license.
`
`Independent claim 41 (emphasis added) recites:
`
`A system for sharing rights adapted to be associated with an item,
`the system comprising:
`means for specifying in a first license at least one usage right an_d at
`least one meta—right for the item, wherein the usage right and the meta—right
`include at least one right that is shared among one or more users or devices;
`means for defining, via the at least one usage right, a manner of use
`selected from a plurality of permitted manners of use for the item;
`means for defining, via the at least one meta-right, a manner of
`rights derivation selected from a plurality of permitted manners of rights
`derivation for the item, wherein said at least one meta-right allows said one
`or more users or devices to transfer rights or to derive new rights;
`means for associating at least one state variable with the at least
`
`one right in the first license wherein the at least one state variable is shared
`among the one or more users or devices, and is specified as unspecified or is
`
`assigned an identification in said first
`license
`and said identification
`references a location where a state of rights is tracked;
`means for generating in a second license one or more rights based
`m the meta-right in the first license, wherein the one or more rights in the
`second license includes at least one right that is shared among one or more
`users or devices; 2m
`means for associating at least one state variable with the at least
`one right that is shared in the second license, wherein the at least one state
`variable that is associated with the second license is based on the at least one
`state variable that is associated with the first license.
`
`Independent claim 42 (emphasis added) recites:
`
`A device for sharing rights adapted to be associated with an item,
`the device comprising:
`means for receiving a first license specifying at least one usage
`right am at least one meta-right for the item, wherein the usage right and the
`meta-right include at least one right that is shared among one or more users
`or devices, the least one usage right defines a manner of use selected from a
`plurality of permitted manners of use for the item, the at least one meta-right
`defines a manner of rights derivation selected from a plurality of permitted
`manners of rights derivation for the item, said at least one meta-right allows
`said one or more users or devices to transfer rights or to derive new rights, at
`
`10048348.]
`
`1 1
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`Petitioner Apple Inc. - EX. 1057, p. 2
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`Petitioner Apple Inc. - Ex. 1057, p. 2
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`

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`Docket No. 1 1 1325-23 5000
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`Serial No. 10/956,070
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`least one state variable is associated with the at least one right in the first
`license and is shared among the one or more users or devices and is
`specified as unspecified or is assigned an identification in said first license,
`a_ng said identification references a location where a state of rights is
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`tracked‘ and
`
`means for generating in a second license one or more rights based
`99. the meta-right in the first license, wherein the one or more rights in the
`second license includes at least one right that is shared among one or more
`users or devices, at least one state variable is associated with the at least one
`right that is shared in the second license, and the at least one state variable
`that is associated with the second license is based on the at least one state
`variable that is associated with the first license.
`
`Thus, the present invention recited in independent claims 40, 41 and 42 includes the
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`novel features of specifying in a first license at least one usage right and at least one meta-
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`Iight for an item, the at least one meta-right allows one or more users or devices to transfer
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`rights or to derive new rights, associating at least one state variable with the at least one right
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`in the first license, wherein the at least one state variable is shared among the one or more
`
`users or devices, and is specified as unspecified or is assigned an identification in the first
`
`license, and the identification references a location where a state of rights is tracked,
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`generating in a second license one or more rights based 'on the meta-right in the first license,
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`and associating at least one state variable with at least one right that is shared in the second
`
`license, wherein the at least one state variable that is associated with the second license is
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`based on the at least one state variable that is associated with the first license.
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`By contrast, Downs et al. is directed to a method and apparatus of securely providing
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`data to a user’s system, wherein the data is encrypted so as to only be decryptable by a data
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`decrypting key, the data decrypting key being encrypted using a first public key, and the
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`encrypted data being accessible to the user’s system. The method includes transferring the
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`encrypted data decrypting key to a clearing house that possesses a first private key, which
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`corresponds to the first public key; decrypting the data decrypting key using the first private
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`key; re-encrypting the data decrypting key using a second public key; transferring the re-
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`encrypted data decrypting key to the user's system, the user's system possessing a second
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`private key, which corresponds to the second public key; and decrypting the re—encrypted
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`data decrypting key using the second private key. However, Downs et a1. fails to disclose,
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`teach or suggest at least the noted features recited in independent claims 40, 41 and 42.
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`Accordingly,
`
`the portions of Downs et al. cited in the present Office Action do
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`support a further rejection. For example, in column 21, lines 30-33, Downs et al. states that:
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`10048348.]
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`12
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`Petitioner Apple Inc. - EX. 1057, p. 3
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`Petitioner Apple Inc. - Ex. 1057, p. 3
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`

`

`Docket No. 111325-235000
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`Serial No. 10/956,070
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`the Content Provider sets the allowable Usage Conditions and
`transmits them to the Electronic Digital Content Store in a SC. The
`Electronic Digital Content Store can add’to or narrow the Usage Conditions
`as long as it doesn’t invalidate the original conditions set by the Content
`Provider.
`
`According to the above passage, however, what is transferred to the content store is a
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`set of allowable usage conditions that the store can modify before sending out to an end-user
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`device. Examples of usage conditions include “Song is recordable,” “Song can be played 11
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`number of times,” etc. Usage conditions are merely conditions for the end user and do not
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`include rights given to the content store. Thus, the content store merely can modify and
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`transfer the allowable usage conditions, but otherwise does not have any rights to transfer
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`rights or to derive new rights, as recited in independent claims 40, 41 and 42.
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`This is further evidenced in column 26, lines 61-67, wherein Downs et al. describes
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`the concept of using a template to indicate which information can be modified, as follows:
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`An Offer SC(s) 641 template in the Metadata SC(s) 620 indicates
`which information can be overridden by the Electronic Digital Content
`Store(s) 103 in the Offer SC(s) 641 and what, if any, additional information
`is required by the Electronic Digital Content Store(s) 103 and what parts are
`retained in the embedded Metadata SC(s) 620.
`
`Accordingly, in Downs et al., both the right to transfer usage conditions and the right
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`to modify rights stop at the content store. On a user device, a user may bepermitted to make
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`copies of content. But, since the user does not have the right to issue new rights, a content
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`copy inherits the exact same usage rights as the original copy, with the copy count updated to
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`reflect the number of copies made, as noted in column 21, lines 58-60 of Downs et al.:
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`The End-User Device(s) 109 also appropriately updates the
`copy/play code in the original copy of the Content 113 and on any new
`secondary copy.
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`The disadvantage of the copy conditions described by Downs et al. is that they are
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`copied but not transferred. Specifically, DRM systems, such as that of Downs et al., employ
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`a key that can be used to decrypt protected content in a license having a copy condition,
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`wherein the key is bound to a specific device in such a way that only the specific device can
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`use the key to decrypt the content. Accordingly, a copy of a license does not allow a second
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`device to use the content. Therefore, the copy condition described by Downs et al. does not
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`disclose, teach, or suggest the transfer of rights nor meta—rights.
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`10048348. I
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`1 3
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`Petitioner Apple Inc. - EX. 1057, p. 4
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`Petitioner Apple Inc. - Ex. 1057, p. 4
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`

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`Docket No. 11 1325-235000
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`Serial No. 10/956,070
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`Accordingly, the invention recited in independent claims 40, 41 and 42 includes the
`
`recognition that (see, e.g., Applicants’ published Specification 11 [0009]):
`
`.
`
`there are limitations associated with the above-mentioned
`
`paradigms wherein only usage rights and conditions associated with content
`are specified by content owners or other grantors of rights. Once purchased
`by an end user, a consumer, or a distributor, of content along with its
`associated usage rights and conditions has no means to be legally passed on
`to a next recipient in a distribution chain.
`
`Advantageously, the invention recited in independent claims 40, 41 and 42 solves
`
`such problems by employing usage rights and meta-rights for an item in the manner claimed.
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`For example, FIG. 18 of Applicants’ published Specification teaches that a first license 1801
`
`from a content provider allows any affiliated club to transfer a right to play an e-book to one
`
`of its members. The license 1801 specifies a meta-right (e.g., issue) and a usage right (e.g., ‘
`
`play). When Acme joins the affiliation program, Acme gets a second license 1802 permitting
`
`it to transfer the right to read the e-book to one of its members. Alice is an Acme club
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`member and requests to access the e—book and receives a third license 1804 granting her the
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`right to read the e-book.
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`In this example, Alice’s license is different than Acme’s license,
`
`and is different than the merely assigning usage conditions to a copy of content, as disclosed
`
`by Downs et al.
`
`As noted above, a main difference between Downs et al. regarding meta-rights is that
`the invention recited in independent claims 40, 41 and 42 enables meta-rights to be passed
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`down to multiple value chain participants, while the usage conditions in Downs et al. are
`
`limited. Accordingly, Downs et al. does not disclose,
`
`teach or suggest passing usage
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`conditions beyond the content store (i.e., copy right is not a meta right) nor addresses a need
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`to modify rights outside the content store.
`
`With respect to state variables, Downs et al. does not disclose, teach or suggest
`
`employing a state variable in the manner recited in independent claims 40, 41 and 42, for
`
`example, to control sharing of content or to represent various other states.
`
`In this respect, the
`
`present Office Action cites column 59, line 50, of Downs et al., which is directed to “the
`
`number of playable copies the End-User(s) is allowed to make.” However, the cited portion
`
`does not disclose, teach or suggest at least one state variable that is associated with a second
`
`license is based on at least one state variable that is associated with a first license, as recited
`
`in independent claims 40, 41 and 42. For example, as described with respect to FIG. 16 of
`
`Applicants’ published Specification, a content provider specifies in a first license 1601 that
`10048348.]
`
`14
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`Petitioner Apple Inc. - EX. 1057, p. 5
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`Petitioner Apple Inc. - Ex. 1057, p. 5
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`

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`Docket No. l 1 1325-23 5000
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`Serial No. 10/956,070
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`up to 5 club members can play an e-book at the same time. Attached to such right is an
`
`unspecified state variable 1607, which represents a modifiable field. Before such right is
`
`transferred to the Acme club, the unspecified state variable 1607 is changed to reference
`“um:acme:club.” Alice, a club member, requests and receives a third license 1604 allowing
`
`her to play the e-book. Bob, another club member also requests and receives a fourth license
`
`1605 to play the e-book. When each of Alice and Bob plays the e-book, the same state
`
`variable 1608, which has been created in the rights enforcing device,
`
`is updated. As
`
`described with respect to FIG. 18 of Applicants’ published Specification, a state variable
`
`1808 also can remain unspecified in a transferred license 1802 and can be modified by a
`
`consumer thereof.
`
`Downs et al. is similarly deficient at column 59, lines 55—60, which merely discloses a
`
`“period of time during which the purchase/rental transaction is allowed to occur,” which is
`
`simply a validity interval condition that specifies an exact time interval, and is no different
`
`than the count condition described in column 59, line 50 of Downs et al.
`
`In addition,
`
`although the present Office Action states that a count of 5 is a state variable, with the
`
`invention recited in independent claims 40, 41 and 42 a state variable identification can be
`
`attached to a counter, wherein the state variable identification is the identification of a state
`
`variable which keeps track of, for example, a count of 5.
`
`The remaining portions of Downs et al. are similarly deficient. Accordingly, Downs
`
`et al. fails to disclose, teach or suggest the novel features of specifying in a first license at
`
`least one usage right and at least one meta—right for an item, the at least one meta-right allows
`
`one or more users or devices to transfer rights or to derive new rights, associating at least one
`
`state variable with the at least one right in the first license, wherein the at least one state
`
`variable is shared among the one or more users or devices, and is specified as unspecified or
`
`is assigned an identification in the first license, and the identification references a location
`
`where a state of rights is tracked, generating in a second license one or more rights based on
`
`the meta-right in the first license, and associating at least one state variable with at least one
`
`right that is shared in the second license, wherein the at least one state variable that is
`
`associated with the second license is based on the at least one state variable that is associated
`
`with the first license, as recited in independent claims 40, 41 and 42.
`
`As noted above, the invention recited in independent claims 40, 41 and 42 and claims
`
`dependent therefrom recognizes and solves the following problems:
`
`10048348.]
`
`15
`
`Petitioner Apple Inc. - EX. 1057, p. 6
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`Petitioner Apple Inc. - Ex. 1057, p. 6
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`

`

`Docket No. 111325-235000
`
`Serial No. 10/956,070
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`[0009] However, there are limitations associated with the above-mentioned
`paradigms wherein only usage rights and conditions associated with content
`are specified by content owners or other grantors of rights. Once purchased
`by an end user, a consumer, or a distributor, of content along with its
`associated usage rights and conditions has no means to be legally passed on
`to a next recipient in a distribution chain. Further the associated usage rights
`have no provision for specifying rights to derive other rights, i.e. Rights to
`modify, transfer, offer, grant, obtain, delegate, track, surrender, exchange,
`transport, exercise, revoke, or the like. Common content distribution models
`often include a multi-tier distribution and usage chain. Known DRM
`systems do not facilitate the ability to prescribe rights and conditions for all
`participants along a content distribution and usage chain. Therefore, it is
`difficult for a content owner to commercially exploit content unless the
`owner has a relationship with each party in the distribution chain.
`
`The invention recited in independent claims 40, 41 and 42 and claims dependent
`
`therefrom provides the following advantages:
`
`[0090] There are multiple ways to specify the scope of state variables, each
`of which can affect whether the derivative state variables can be shared, how
`the derivative state variables can be shared, and the like. For example, a
`state variable can be local, and solely confined to a recipient or can be
`global, and shared by a predetermined group of recipients. A global state
`variable can be shared by a group of recipients not determined when derived
`rights are issued, but to be specified later, perhaps based on certain rules
`defined in the license or based on other means. A global state variable can
`be shared between one or more rights suppliers, predetermined recipients,
`un—specified recipients, and the like. Advantageously, depending on the
`sharing employed with a given a business model and the rights granted in
`the meta-rights, state variables can be created at different stages of the value
`chain.
`
`By contrast, Downs et al. fails disclose, teach or suggest the noted features, fails to
`
`recognize or solve the noted problems, and fails to provide the advantages of the invention
`
`recited in independent claims 40, 41 and 42. The dependent claims are allowable on their
`
`own merits and for at least the reasons as argued above with respect to independent claims
`
`40, 41 and 42.
`
`The present amendment is submitted in accordance with the provisions of 37 C.F.R.
`
`§1.116, which afier Final Rejection permits entry of amendments placing the claims in better
`
`form for consideration on appeal. As the present amendment is believed to overcome
`
`outstanding rejections under 35 U.S.C. §102, the present amendment places the application in
`
`better form for consideration on.
`
`It is therefore respectfirlly requested that 37 C.F.R. §1.116
`
`be liberally construed, and that the present amendment be entered.
`
`[0048348.]
`
`16
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`Petitioner Apple Inc. - EX. 1057, p. 7
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`Petitioner Apple Inc. - Ex. 1057, p. 7
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`

`

`Docket No. 1 1 1325—23 5000
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`Serial No. 10/956,070
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`In View of the foregoing, it is submitted that the present application is in condition for
`
`allowance and a notice to that effect is respectfiilly requested. However, if the Examiner
`
`deems that any issue remains afier considering this response, the Examiner is invited to
`
`contact the undersigned attorney to expedite the prosecution and engage in a joint effort to
`
`work out a mutually satisfactory solution.
`
`Respectfiilly submitted,
`
`NIXON PEABODY, LLP
`
`/Carlos R. Villamar, Reg. # 43,224/
`Carlos R. Villamar
`
`Reg. No. 43,224
`
`NIXON PEABODY LLP
`CUSTOMER NO.: 22204
`
`401 9th Street, N.W., Suite 900
`
`Washington, DC 20004
`Tel: 202-585-8000
`Fax: 202-585-8080
`
`10048348.]
`
`17
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`Petitioner Apple Inc. - Ex. 1057, p. 8
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`Petitioner Apple Inc. - Ex. 1057, p. 8
`
`