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 2231371450
`www.uspto.gov
`
`16/158,246
`
`10/11/2018
`
`Jonathan M. Zweig
`
`122202-6204 (P4491USC1)
`
`3085
`
`Morgan, Lew1s & Boeklus LLP (Apple)
`600 Anton Boulevard
`Suite 1800
`Costa Mesa CA 92626
`
`HUANG” JAY
`
`3685
`
`PAPERNUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/27/2020
`
`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):
`
`OCIPDoeketing @ morg anlewis . com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`16/158,246
`Examiner
`JAY HUANG
`
`Applicant(s)
`Zweig et al.
`Art Unit
`3685
`
`AIA (FITF) Status
`N0
`
`- 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 g 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 m.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
`
`26—45 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`8)
`Claim(s 2_6—45 Is/are rejected
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* 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)|:l The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] objected to by the Examiner.
`11)[:] The drawing(s) filed on
`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)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:] Some**
`
`c)l:i None of the:
`
`1C] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D 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)
`
`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] 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 20200422
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 2
`
`DETAILED ACTION
`
`Acknowledgements
`
`1.
`
`2.
`
`This Office Action is in response to Applicant’s response filed on 2/4/19.
`
`The Examiner notes that citations to United States Patent Application Publication
`
`paragraphs are formatted as [####], #### representing the paragraph number.
`
`3.
`
`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.
`
`Status of Claims
`
`4.
`
`5.
`
`Claims 26-45 are currently pending.
`
`Claims 26-45 are rejected as set forth below.
`
`Notice of Pre-AIA or AIA Status
`
`6.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Claim Amendments
`
`7.
`
`Applicant should specifically indicate where in the Specification is there support
`
`for amendments to claims should Applicant amend in order to practice compact
`
`prosecution and reduce potential issues such as 35 U.S.C. §112, 1st paragraph
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 3
`
`rejections that may arise when claims are amended without support in the Specification.
`
`See MPEP § 714.02 (“Applicant should also specifically point out the support for any
`
`amendments made to the disclosure”).
`
`Claim Interpretation
`
`8.
`
`A claim should be carefully crafted such that claim limitations are positively
`
`recited in view of the claim’s statutory class in order for the entire claim to be given
`
`patentable weight. See EX parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Int. 1990); (“A
`
`method or process, as indicated above, is an act or a series of acts and from the
`
`standpoint of patentability must distinguish over the prior art in terms of steps, whereas
`
`a claim drawn to apparatus must distinguish in terms of structure. This is so elemental
`
`as not to require citation of authorities”).
`
`9.
`
`Use of the word “means” (or “step for”) in a claim with functional language
`
`creates a rebuttable presumption that the claim element is to be treated in accordance
`
`with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that
`
`§ 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is
`
`recited with sufficient structure, material, or acts within the claim itself to entirely perform
`
`the recited function.
`
`Absence of the word “means” (or “step for”) in a claim creates a rebuttable
`
`presumption that the claim element is not to be treated in accordance with 35 U.S.C. §
`
`112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA
`
`§ 112, sixth paragraph) is not invoked is rebutted when the claim element recites
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 4
`
`function but fails to recite sufficiently definite structure, material or acts to perform that
`
`function.
`
`Claim elements in this application that use the word “means” (or “step for”) are
`
`presumed to invoke § 112(f) except as otherwise indicated in an Office action.
`
`Similarly, claim elements that do not use the word “means” (or “step for”) are presumed
`
`not to invoke § 112(f) except as otherwise indicated in an Office action.
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 5
`
`Claim Rejections - 35 USC § 101
`
`10.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`11.
`
`Claims 26-45 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`12.
`
`As per claims 26, 34, 40, the claimed invention is directed to non-statutory
`
`subject matter because:
`
`0
`
`Under Step 1 of the Section 101 Analysis, the claim(s) is/are directed to
`
`an apparatus, method, and non-transitory machine readable medium, which are
`
`statutory categories of invention.
`
`0
`
`Under Step 2A Prong One, the claim(s) recite(s) an abstract idea of
`
`authorizing a right to a content for a user via watermarking, which falls within the
`
`following grouping of an abstract idea enumerated in the 2019 Patent Eligibility
`
`Guidance: a certain method of organizing human activity (i.e. commercial or legal
`
`interactions including agreements in the form of contracts, sales activities, and
`
`business relations. Specifically, the following limitations when viewed as a whole
`
`recite the aforementioned abstract idea:
`
`i.
`
`ii.
`
`receiving a request to provide a right in a content to a user;
`
`authorize the right in the content to the user;
`
`iii.
`
`place a watermark in the content, the watermark indicating that the
`
`right has been authorized to the user;
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 6
`
`.
`
`Furthermore, the concept of authorizing a right to a content for a user via
`
`watermarking has existed in the real world before the introduction of
`
`modern computer technology. For example, official government
`
`documents would be modified with a watermark that identifies a right for
`
`an authorized personnel to read the document.
`
`.
`
`Under Step 2A Prong Two, the additional claim element(s), considered
`
`individually, do not apply, rely on, or use the judicial exception in a manner that
`
`imposes a meaningful limit on the judicial exception and in a manner that
`
`integrates the exception into a practical application of the exception, such that
`
`the claim is more than a drafting effort designed to monopolize the exception.
`
`Specifically, the following limitations merely add the words “apply it” (or an
`
`equivalent) with the judicial exception, or mere instructions to implement an
`
`abstract idea on a computer, or merely uses a computer as a tool to perform an
`
`abstract idea:
`
`iv.
`
`a memory and at least one processor;
`
`0
`
`Furthermore, the following limitations generally link the use of the judicial
`
`exception to the particular technological environment or field of use of digital
`
`content / watermarking:
`
`v.
`
`placing a digital watermark in the digital content that indicates that
`
`the right as been authorized to the user;
`
`.
`
`Under Step 2A Prong Two, the additional claim element(s), considered in
`
`combination, do not apply, rely on, or use the judicial exception in a manner that
`
`imposes a meaningful limit on the judicial exception and in a manner that
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 7
`
`integrates the exception into a practical application of the exception, such that
`
`the claim is more than a drafting effort designed to monopolize the exception.
`
`Unlike the eligible claims in Diehrand Bascom, in which the elements limiting the
`
`exception taken together provided an inventive concept because they improved a
`
`technical field, the claim here does not invoke any of the considerations that
`
`courts have identified as providing significantly more than an exception. The
`
`combination of elements is no more than the sum of their parts. The claim
`
`amount(s) to no more than an instruction to apply the abstract idea onto a
`
`generic computer provides nothing more than mere automation of the abstract
`
`idea.
`
`.
`
`Under Step 28, the additional claim element(s), considered individually
`
`and in combination, do not provide meaningful limitation(s) to transform the
`
`abstract idea into a patent eligible application of the abstract idea such that the
`
`claim(s) amounts to significantly more than the abstract idea itself for similar
`
`reasons outlined under Step 2A Prong Two.
`
`0
`
`Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed
`
`to non-statutory subject matter.
`
`0
`
`Dependent claims 27-33, 35-39, 41 -45, when analyzed as a whole, are
`
`held to be patent ineligible under 35 U.S.C. 101 because the additional recited
`
`limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract
`
`idea, for the same reasoning as set forth with respect to claims 26, 34, 40.
`
`Specifically, claims 27-33, 35-39, 41 -45 include additional claim elements that
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 8
`
`generally link the use of the judicial exception to a particular technological
`
`environment or field of use of digital content / watermarking.
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 9
`
`Claim Rejections - 35 USC § 103
`
`13.
`
`The following is a quotation of pre-AIA 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, 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.
`
`14.
`
`Claims 26-45 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`United States Patent Application Publication No. 2002/0112171 to Ginter.
`
`15.
`
`As per claims 26, 34, 40, a first embodiment of Ginter teaches:
`
`.
`
`.
`
`a memory and at least one processor configured to: ([0471] — [0472])
`
`receive a request to provide a first right in a digital content unit to a first
`
`user; authorize the first right in the digital content unit to the first user, and
`
`provide the first right in the digital content unit; (Fig. 80, [2217], [2223] — [2225])
`
`16.
`
`The first embodiment of Ginferdoes not explicitly teach, but the second
`
`embodiment of Ginter teaches:
`
`0
`
`place a first digital watermark in the digital content unit, the first digital
`
`watermark indicating that the information about the first user; ([0218])
`
`17.
`
`One of ordinary skill in the art would have recognized that applying the known
`
`technique of the second embodiment of Ginter to the known invention of the first
`
`embodiment of Ginferwould have yielded predictable results and resulted in an
`
`improved invention. It would have been recognized that the application of the technique
`
`would have yielded predictable results because the level of ordinary skill in the art
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 10
`
`demonstrated by the references applied shows the ability to incorporate such
`
`watermarking features into a similar invention. Further, it would have been recognized
`
`by those of ordinary skill in the art that modifying the invention to place a digital
`
`watermark in the digital content unit, the digital watermark representing information
`
`about the first user, e.g. information indicating that the first right has been authorized to
`
`the first user, results in an improved invention because applying said technique allows
`
`DRM information to be embedded in an obscure and generally concealed manner,
`
`deterring potential copyright violators from unauthorized extraction or copying.
`
`18.
`
`As per claims 27, 35, 41, Ginterteaches:
`
`0
`
`wherein the at least one processor is further configured to: receive a
`
`request to provide a second right in a copy of the digital content unit to a second
`
`user, the copy of the digital content unit including the first digital watermark;
`
`authorize the second right in the copy of the digital content unit to the second
`
`user; and add a second digital watermark in the copy of the digital content unit,
`
`the second watermark indicating that the second right has been authorized to the
`
`second user. (Fig. 80, [2226] — [2228]; [0218])
`
`19.
`
`As per claims 28, Ginterteaches:
`
`0
`
`wherein the copy of the digital content unit is obtained by the second user
`
`from the first user. ([2226])
`
`20.
`
`As per claims 29, 36, 42, Ginterteaches:
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 11
`
`0
`
`wherein the first digital watermark is included in a header of the digital
`
`content unit. ([1491])
`
`21.
`
`As per claim 30, Ginferteaches:
`
`0
`
`wherein the second digital watermark is included in data of the copy of the
`
`digital content unit. ([1481])
`
`22.
`
`As per claims 31, 37, 43, Ginfer teaches:
`
`0
`
`wherein the first digital watermark comprises first information that
`
`identifies the first user and the second digital watermark comprises second
`
`information that identifies the second user. ([2223] — [2228])
`
`23.
`
`As per claims 32, 38, 44, Ginfer teaches:
`
`.
`
`wherein the at least one processor is further configured to: receive a
`
`request to provide a second right in a copy of the digital content unit to a second
`
`user, the copy of the digital content unit including the first digital watermark;
`
`authorize the second right in the copy of the digital content unit to the second
`
`user; and modify the first digital watermark in the copy of the digital content unit
`
`to create a modified watermark, the modified watermark corresponding to the
`
`operation of authorizing the second right. ([2228])
`
`24.
`
`As per claims 33, 39, 45, Ginfer teaches:
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 12
`
`0
`
`wherein the first digital watermark indicates a chain in ownership of the
`
`digital content unit from the first user to the second user. ([2223] — [2228])
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 13
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JAY HUANG whose telephone number is (408)918-
`
`9799. The examiner can normally be reached on 9:00a - 5:30p PST.
`
`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, Neha Patel can be reached on 5712701492. 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.
`
`

`

`Application/Control Number: 16/158,246
`Art Unit: 3685
`
`Page 14
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivatePair. 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.
`
`/JAY HUANG/
`
`Primary Examiner, Art Unit 3685
`
`