www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`16/150,919
`
`10/03/2018
`
`Christopher A. Estes
`
`ESTES-5
`
`4811
`
`Taft Stettmlus & Holhster LLP
`
`ONE INDIANA SQUARE, SUITE 3500
`INDIANAPOLIS, IN 46204-2023
`
`MCCOY~ RICHARD ANTHONY
`
`ART UNIT
`
`2431
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/07/2019
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`Taft-IP-Docket@taftlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`16/150,919
`Examiner
`RICHARD A MCCOY
`
`Applicant(s)
`Estes, Christopher A.
`Art Unit
`AIA (FITF) Status
`2431
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS 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.
`|f 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). Responsive to communication(s) filed on 10/3/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] 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 Expa/ie Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—23 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 10/3/2018 is/are: a). accepted or b)E] 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).
`
`Priority under 35 U.S.C. § 119
`12)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:I All
`
`b)D Some**
`
`c)D None of the:
`
`1.[:] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3:] 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.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190523
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Page 2
`
`DETAILED ACTION
`
`The IDS filed 10/3/2018 has been considered and entered.
`
`Information Disclosure Statement
`
`The drawings filed 10/3/2018 are accepted.
`
`The specification filed 10/3/2018 is accepted.
`
`Drawings
`
`Specification
`
`Claim Objections
`
`Claim 3 is objected to because ‘the licensing system’ has no antecedent basis.
`
`Claim 5 is objected to because it is unclear to what the limitation ‘that is implemented by the multimedia hardware
`device’ is referring.
`
`Correction to similar claim language is also required.
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Page 3
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or
`
`as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will
`
`not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection,
`
`would be the same under either status.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth
`
`in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not
`identically disclosed as set forth in section 102, if the differences between the claimed invention and the
`prior art are such that the claimed invention as a whole would have been obvious before the effective
`filing date of the claimed invention to a person having ordinary skill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the manner in which the invention was made.
`
`The factual inquiries set forth in Graham v. John Deere C0., 383 U.S. 1, 148 USPQ 459 (1966), that are
`
`applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`2. Ascertaining the differences between the prior art and the claims at issue.
`3. Resolving the level of ordinary skill in the pertinent art.
`4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
`
`Claim [ 1, 2, 4-7, 9-19, 21, and 23 ] is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith, IV US
`
`2003/0001887 hereinafter Smith in view of in view of NFL: “Online Video Analytics: YouTube Insight-Advanced
`
`Techniques” by Greg Habermann, May 17 , 2000 hereinafter referred as “Habermann” in further View of Tang et al
`
`(US 2013/0047271 hereinafter referred as “Tang”)
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Page 4
`
`As to claim 1, Smith discloses a computer implemented method for configuring a multimedia hardware device to
`generate an authorized reproduction or" a media content item included in a digital media file, comprising:
`
`‘eceiving a request from a user to reproduce the media content item;
`[illlfi'l’l user request for content
`
`eval iating the request
`
`5 enabled for the particular Cl)
`[illlgl’sl the installation script will determine whether the Pt"
`to determine whether the user has acquired a license to reproduce the media content item
`[0033; only the licensed user would be able to consume the content
`
`and oflering the license to reproduce the media content item to the user
`[0033; the user is prompted to purchase a license
`when the user does not have the license to reproduce the media content item;
`[0033; if no paid up license is identitied, the user is prompted to supply billing information
`
`alter the evaluation of the request, extracting user data
`[0033; once enabled, the user will be prompted for information
`that is specific to the user that is attempting to reproduce the media content item
`[0033; billing information
`and [@054] user information may include demographics
`in View of $983] information
`when the user at least one of acquires and declines the license;
`[0033} Once this in formation is provided. ..... the license is fot a specific uset
`
`"x‘5 about he noted that (I refimnce that discloses: steps is obvious: over the claimed Steps norwitirrmndirtg The order of
`the disclosed strips:
`in, view of}
`
`111167; matte Rubin. 1215‘ USPQ AA
`-’) {Bd App. if???) (Prior art reference disclosing :1 process of makiuo a tartar
`ted sheet.
`
`
`
`
`
`
`wherein a be.
`‘iieet is tits
`1 with 3 install
`"hr: and thereafter impregnated with a therir setting material was held
`to render pritira acie obvious t urns directed to a process of inciting a "minaret! sheet by re vern 7 the order of the tmior
`
`
`
`
`
`art process steps). See also in re lttrhans, 15413.11 6‘90, 69 USFQ 0
`TPA l
`,
`_
`ectiou L
`any order of perfor:
`'31:;
`
`pro ‘
`'
`prima facie obvious in t“ ‘
`sence of new or unexpe ‘
`.1 results)
`n re Gibson, 39 FZd 975, 5 USPQ 23-3
`
`
`
`
`(CCP A. 1930) (Selection or" any order of r
`, .ing ingredients is prime la. ., olwioust).
`
`aggregatng the extracted user data into a statistics record,
`wherein the statistics record summarizes. the user data associated with the request;
`Fig 9, Fig ill. and Fig 1'2
`including location and age data which corresponds to the example in applicant‘s speci
`found in [llllélill
`
` 'cation
`
`storing in a license database {(13883} central location
`the statistics record
`
`{@983} billing or other information, once provided by the user, may he retained
`
`so that the user data is accessible l[to a copyright owner of the media content item; :
`{@965} provides a marlteting tool to the content supplier
`
`a copyright owner
`li'lg ti, Fig ’2' NSync (ie. the band stnci
`in, view of’Fig 7 CZtll)l,l’Ol"0l)YSSlil‘r‘ ’l‘OlIR and idea the Band"
`
`Smith does not disclose
`
`analyzing a plurality ot" statistics records aggregated from requests for the media content item
`to provide the copyright (oi/net the aggregated user data,
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Habermann teaches
`
`Page 5
`
`analyzing a plurality of statistics records aggregated from requests for the ni°dia content item
`to provide [tthe copyright ownert] the aggregated user data.
`
`On page 3, Habermann teaches an data analytics report having a plurality of records wherein each
`record represents a particular online video and certain meta data associated with the video
`including the number of views
`which corresponds to analyzing a plurality of statistics records segregated from requests
`for the media content item to provide [[the copyright owner]: the aggregated user data.
`
`Neither Smith or Habermann teaches
`
`analyzing a plurality of statistics records aggregated from requests for the media content item
`to provide the copyright owner the aggregated user data.
`
`so that the user data is accessible to a copyright owner of the media content item
`
`Tang teaches in [0002]
`"original works of authorship” (i.e. created by authors) are protected by copyright (i.e. copyright owner).
`
`Further in [0074], Tang teaches that authors could require as part of their contracts with distributors and
`publishers access to data derived from the sale and interaction with consumer devices
`corresponding to provide the copyright owner the aggregated user data.
`
`therefore Smith combined with Habermann teach
`analyzing a plurality of statistics records aggregated from requests for the irtedia content item
`to provide the copyright: owner the aggregated user data.
`
`so that the user data is accessible to a copyright owner of the rtiedia content item
`
`because
`
`Tang teaches in [0074] and [0002] data derived from the sale and interaction should be available to authors
`and authors are copyright owners whereas Habermann provides an embodiment of Tang’s data as shown
`on Habermann page 3 as a data table of having meta data representing the analytics of content viewership
`which corresponds to the claimed ‘plurality of statistics records aggregated from requests for the media
`content’. These reference therefore combine to arrive at the claim limitation.
`
`At the time of the invention, it would have been obvious to a person having ordinary skill in the art to combine the
`
`combined teachings of Smith and Habermann as suggested by Smith in [0065] ‘marketing tool for content supplier’
`
`because Habermann teaches a comprehensive system implemented by one of the world’s leading media companies
`
`(i.e. Google via YouTube) for providing data analytics covering the use of their works of authorship. Smith
`
`therefore is improved by incorporating the teachings of Habermann page 3 to embody the marketing tool of Smith
`
`[0065].
`
`At the time of the invention, it would have been obvious to a person having ordinary skill in the art to combine the
`
`teachings of Smith combined with Habermann with those of Tang with the motivation of adding the protections
`
`taught by Tang for the copyright holder in [0002] in view of the motivation taught by Tang in [0004] wherein a
`
`content supplier as disclosed by Smith [0065] may go out of business leaving legitimate license holders without
`
`access to the media. However, by adding the capability taught by Tang in [0074], the author (copyright owner) may
`
`query the database subsequent to a license purchase to acquire the data derived from the sale so that if the seller goes
`
`out of business the author may restore access to the media as taught by Tang in [0008] and [0009] wherein the data
`
`could be used to validate the proof of purchase.
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Page 6
`
`As to claim 2, Smith discloses
`receiving a license to reproduce the media content from a licensing system (Fig 1, server 30 in View of
`
`[£3069] server) when the request is. granted by the licensing system;
`[0083; user prompted to purchase a license....which is stored on the PID (ie. portable
`identification device)
`
`and preventing reproduction of the ni°dia content item when the request is declined by the licensing
`system
`
`[0084] only licensed users can play the entire content
`
`As to claim 4, Smith discloses
`storing [0033; information provided by the user may be retained.
`in the license database [£30.83] central location
`the user data that is associated with the user that is attempting to reproduce the media content item
`[0033; the user will be prompted for iirtht’tnation. .
`t billing information
`that is accessible
`
`_ ,to allow the user to confirm billings for future n‘ansactions
`[0033i iniorrnation retained t
`in View of Fig lit Credit Card
`to a third party online media retailer that has been selected by a copyright owner
`Big in — Fig 11 Kidscoin hosted by Music‘v’isionfeotitriiig the hand NSYNC
`in View of [0065] content supplier
`
`to distribute the media content item,
`
`[0084] content is streamed
`in view of [0012] music available to a user through streaming
`in view of [0083] license covering one or more songs
`
`Claim 5 is rejected on the basis previously presented in the rejection of claim 4 in view of [0065] CD supplier which
`
`corresponds to the claimed hardware device manufacture and [0064] music CD which corresponds to the claimed
`
`hardware / hardware device.
`
`As to claim 6, Smith discloses
`wherein the user data includes a geographic location of the user who is accessing the media content item
`[0058] geographic location of the user
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Page 7
`
`Claim 7 is rejected on the basis previously presented in the rejection of claim 1 wherein the claimed request is
`mapped to [0357] user request for content
`
`Smith additionally discloses:
`digital media information [0084] personal identity or digital signature
`associated with the media content item [0057] user request for content in View oj‘ififigéé] content
`
`included
`
`[0084] invention seeks to limit such activity by including a personal identity or
`signature in the content
`in in a digital media file
`[0064] music file
`in View tif’lfiifi84] content
`
`Smith does not disclose ‘the request includes digital media information’
`
`Smith teaches ‘the request includes digital media information’
`because in [0076] Smith discloses the steps may comprise separate steps lumped together in a
`single communications which means that Smith’s separately disclosed steps of requesting content
`in [0057] and determining if the requesting user has a license [0084] may be combined to arrive at
`the claim limitation of ‘the request includes digital media information’. The lumped together steps
`yielding the [0057] request for content including information about a [0084 ]signatare or other
`personal identity wherein the server may compare the information in the request to second
`information previously inserted into the content as per [0084] when the license was issued.
`
`Claim 9 is rejected on the basis previously presented in the rejection of claim 7
`in view of [0056] and [0078 ]thumb scan and [0047] fingerprints
`which is an embodiment of [0084] personal identity
`
`Claim 10 is rejected on the basis previously presented in the rejection of claim 4
`
`Claim 11 is rejected on the basis previously presented in the rejection of claim 5
`
`As to claim 12, Smith discloses
`the user data includes additional media content items that the user has previously accessed
`[0021] number of times content is listened to or viewed
`
`Claim 13 is rejected on the basis previously presented in the rejection of claim 1
`
`Claim 14 is rejected on the basis previously presented in the rejection of claim 2
`
`Claim 15 is rejected on the basis previously presented in the rejection of claim 3
`
`Claim 16 is rejected on the basis previously presented in the rejection of claim 4
`
`Claim 17 is rejected on the basis previously presented in the rejection of claim 5
`
`Claim 18 is rejected on the basis previously presented in the rejection of claim 12
`in further view of [0046] content preferences which corresponds to additional media content item
`
`Claim 19 is rejected on the basis previously presented in the rejection of claim 1 and 7
`
`Claim 21 is rejected on the basis previously presented in the rejection of claim 4
`
`Claim 23 is rejected on the basis previously presented in the rejection of claim 6
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Page 8
`
`Claims [ 3, 8, 20 and 22 ] is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of
`Habermann in further view of Tang in further view of Nikitin et al US 2010/029622 hereinafter Nikitin
`
`As to claim 3, Smith, Habermann, and Tang teaches all the subject matter pointed out in the above 103 rejection of
`parent claim 1.
`
`As to claim 3, Smith discloses
`em @0057] user request for content
`reproducing the media content
`based on a plurality of reproduction parameters
`[0033i confirmation, E0083] one or more songs or albums, [0083] rules
`[[irti] the license [0033; a license
`that is received [0032333 stored in the 911)
`from the licensing system Fig 1. server 10 in view offiltfiifii server
`
`Neither Smith, liabernnann. er Tang teaches
`a plurality of reproduction parameters in the license
`
`Nikitin teaches
`
`a plurality of reproduction parameters in the license
`Fig 3 in view of [0038]
`
`At the time of the invention, it would have been obvious to a person having ordinary skill in the art to combine the
`
`teachings of Smith, Habermann , and Tang with those of Nikitin as suggested by Smith in [0083] and [0084]
`
`wherein Smith discloses rules governing what devices are enabled to play the content , a signature identifying the
`
`user that is authorized to play the content, a number of times the content may be played, and a preview time. In
`
`other words, Smith discloses several parameters associated with governing and enforcing the playing of content
`
`according the [0083] paid up license. However, Smith does not provide explicit detail about where these
`
`parameters are stored and how, for example, the user signature is associated with the [0083] license to enforce
`
`valid playback. Nikitin cures the deficiencies of Smith in Fig 3, 300 illustrating several attributes that may be
`
`contained in a license. With respect to Smith [0084], wherein a ‘personal identity’ is stored in the content to
`
`enforce licensed playback, Nikitin provides Fig 3 320 User Id embedded in the license which could be compared to
`
`Smith’s [0084] identity embedded in the content to determine a licensed user and therefore arrive at the claimed
`
`invention.
`
`Claim 8 is rejected on the combined basis previously presented in the rejections of claims 1 and 3 wherein Nikitin
`
`teaches the claimed ‘license record’ in Fig 3, 300 and Habermann teaches demographic report on page 3 showing
`
`several records in a database table. Nikitin and Habermann combined with Smith and Tang teach the claimed
`
`‘statistics record’ in view ofHabermann page 3.
`
`Claim 20 is rejected on the basis previously presented in the rejection of claim 8.
`
`Claim 22 is rejected on the basis previously presented in the rejection of claim 5
`
`

`

`Application/Control Number: 16/150,919
`Art Unit: 2431
`
`Page 9
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner should be
`
`directed to RICHARD A MCCOY whose telephone number is (313)446-6520. The examiner can normally be
`
`reached on M - F 10 - 6.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO
`
`supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO
`
`Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynn Feild can
`
`be reached on 571 272 2092. 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. For more
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`information about the PAIR system, see http://pair-direct.uspto. gov. Should you have questions on access to the
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`
`/R.A.M/
`
`Examiner, Art Unit 2431
`
`/LYNN D FEILD/
`
`Supervisory Patent Examiner, Art Unit 2431
`
`