DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to the Applicant’s Amendment filed April 8, 2026. Claims 21-30 are pending in this case. Claims 21, 23, 26, and 28 are currently amended.
Response to Arguments
Applicant's arguments filed April 8, 2026, have been fully considered but they are not persuasive.
Applicant argues, regarding the claims, as currently amended, in their current version, that the claims do not recite an abstract idea.
Examiner respectfully disagrees.
Specifically, Applicant argues that claims 21 and 26, as currently amended, do not fall under any of the three specific categories enumerated by MPEP $2106.04(a).
Applicant submits that independent claim 21 does not fall under any of the three specific categories enumerated by MPEP §2106.04(a). Applicant submits independent claims 21 and 26 are directed to using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium. And that, as such, independent claims 21 and 26 do not fall under any of the three specific categories mentioned above, and are not directed to an abstract idea.
Examiner respectfully disagrees.
Applicant then argues Enfish.
Note that, in the instant case, the claims are not in any way similar to Enfish (Enfish LLC v. Microsoft Corp) as the claims do not improve the function of the computer itself by providing “increased flexibility, faster search times, and smaller memory requirements” (Enfish at 1690) but merely serves as using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium, without affecting local playback access.
Applicant then argues McRo.
The claims in the instant case are not in any way similar to McRo as the claims do not make any technological improvement to any algorithm in performing improvement to animation techniques. Clearly this is simply a gratuitous citation to a case that was held as eligible when the facts clearly argue against any kind of McRo improvement. The claims clearly directed to licensing contact, which is an abstract idea. More specifically, using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium, without affecting local playback access, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Applicant then argues DDR holdings.
In the instant case, the claims are not similar to DDR Holdings. In the case of DDR Holdings, the claim addresses the problem of retaining Web site visitors from being diverted from a host’s web site to an advertiser’s Web site, for which “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer network". Here, however, the instant claim is directed to abstract idea of using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium. Unlike the situation in DDR Holdings, Applicant did not identify any problem particular to computer networks and/or the Internet that the claims allegedly overcome.
Applicant then argues Bascom.
Note the claims in this are not similar to BASCOM (BASCOM Global Internet Service inc. v. ATT&T Mobility LLC.). BASCOM is clearly not applicable to the instant claims. In BASCOM, the court determined that there was an ordered combination of conventional components that provided for filtering of internet content based on the location of a filtering component in a network. On the other hand, in this case, the claims recite using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium which is a process that deals with digital rights protection, which is a commercial or legal interaction.
Claim Rejections - 35 USC § 101
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.
Claims 21-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 26-30 are directed to a system. Claims 21- 25 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recites licensing content. Specifically, the claims recite using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium without affecting local playback access, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as a playback device and database, merely use a computer as a tool to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, the database and playback device perform the steps or functions of using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium without affecting local access. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a server, processor and memory to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of receiving information, determining content of the information, and recording information. As discussed above, taking the claim elements separately, the server, processor and memory perform(s) the steps or functions of receiving information, determining content of the information, and recording information. These functions correspond to the actions required to perform the abstract idea. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claims are not patent eligible.
Claims 22-25 and 27-30 are rejected under similar criteria as each merely elaborates on the abstract idea.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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