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 .
Acknowledgements
This non-final Office Action is in reply to the Applicant’s response in the Request for Continued Examination received on 7/29/2026 (“Response”).
Claims 22, 27, 30 and 35 have been amended.
Claims 1-21, 23-26, 28-29, 31-34, and 36-53 have/had been canceled.
Claims 54-55 have been newly added.
Claims 22, 27, 30, 35, and 54-55 are pending.
Claim Objections
Per claim 22, the recited “and” between the receiving and determining steps should be removed.
Similarly, the recited “and” between the functions of receive and determine in claim 30 should be removed.
Per claim 35, the recited wherein restricted version of the media asset should be amended to wherein the restricted version of the media asset.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 35 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per claim 35, the claim recites wherein restricted version of the media asset includes at least one additional media asset portion that is not included in the restricted version of the media asset. The scope of the claim is unclear as the claimed recitations contradict one another, i.e., that at least one additional media asset portion is included in the restricted version of the media and that at least one additional media asset portion is not included in the restricted version of the media.
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 22, 27, 30, 35, and 54-55 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
MPEP 2106 provides step(s) in determining eligibility under 35 U.S.C. § 101. Specifically, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any additional elements in the claim must integrate the judicial exception into a practical application. If not, the inquiry continues to see whether any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mathematical concepts, mental processes, and certain methods of organizing human activities.
Under Step 1, claims 22, 27, and 54 are directed to a method (i.e., process) while claims 30, 35, and 55 are directed to a to a system. Thus, the claimed inventions are directed towards one of the four statutory categories under 35 USC § 101. Nevertheless, the claims also fall within the judicial exception of an abstract idea without significantly more.
Step 2A, 1st prong:
Claim 22 recites: A method comprising:
a) receiving, by a remote server over a network, a request from a media device for access to a restricted version of a media asset, wherein the restricted version of the media asset is stored in a physical storage medium accessible by the media device, and wherein the storage medium further comprises an unrestricted version of a media asset, and wherein the restricted version of the media asset corresponds to: an supplemental-content-free version of the media asset, a first unique identifier that is specific to the storage medium, and a first event code specific to the restricted version of the media asset, wherein the unrestricted version of the media asset corresponds to: an supplemental-content-supported version of the media asset, a second unique identifier that is specific to the storage medium, and a second event code specific to the unrestricted version of the media asset; and
b) determining, by the remote server in response to the request, whether a release event or a purchase event relating to the restricted version of the media asset has occurred;
c) based at least in part on determining that the release event or the purchase event has occurred: identifying, using the first event code specific to the restricted version of the media asset, by the remote server, an unlock code derived from the first event code for the restricted version of the media asset; and
d) providing, by the remote server over the network, the unlock code, wherein the unlock code provides the media device with access to play the restricted version of the media asset.
(Emphasis added on the additional element(s))
The claim recites a process that includes four step(s), i.e., a) receiving a request for access to a restricted version of a media asset; b) determining whether a release event or a purchase event relating to the restricted version of the media asset has occurred; c) based at least in part on determining that the release event or the purchase event has occurred: identifying, using a first event code specific to the restricted version of the media asset, an unlock code derived from the first event code for the restricted version; and d) providing the unlock code, wherein the unlock code is intended to provide access to play the restricted version of the media asset.
As such, the claim recites a certain method of organizing human activity, i.e., managing access to a property, in this case commercial content in the case of commercial activity. The examiner further submits that steps b) and c) are mental activities as the steps can be performed in human mind with pen and paper.
Claim 36 is significantly similar to claim 22, hence claim 36 also recites abstract idea.
The examiner further submits that the descriptions of the physical storage medium merely describe that the object of the request, i.e., restricted version of the media asset, is stored and does not affect the step(s) performed by the remote server as recited in the method claim nor do the description affect the system comprising the memory and the processor either structurally or functionally.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e., remote server, network, media device, and system comprising a memory and a processor, amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f). There is no indication that the claim improves upon the remote server and/or the system or the system’s component(s) individually or in combination.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claim(s) as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer component(s).
Dependent claims 27 and 35 description that the unrestricted version of the media asset to include at least one additional media asset portion that is not included in the restricted version of the media asset further expand on the abstract idea by describing what may not be included in the restricted version of the media asset. The claims do not recite further additional element(s) than the ones identified in the independent claims above. Furthermore, the description of what the unrestricted version of the media asset includes and what the restricted version of the media asset may not include are non-functional descriptive material that does not affect the positively recited steps nor the functions of the system.
Claims 54 and 55 describe the physical storage medium, i.e., that the object of the request is stored on, and the intended use of the unlock code, and therefore expand on the abstract idea of certain methods of organizing human activity, managing of asset usage unique to the storage/commercial activity. Even if the physical storage medium(s) is considered to be additional element, the additional elements amount to no more than use of computer component to perform the abstract idea and/or “apply it”. The claims do not include inventive concept.
Claim Rejections - 35 U.S.C. § 103
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 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.
Claims 22, 27, 30, 35, and 54-55 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2006/0191016 A1 (“Ostergren”), in view of US 8,504,652 B2 (“Rothschild”), and US 2002/0032658 A1 (“Oki”).
As per claims 22 and 30, Ostergren discloses a method comprising:
receiving, by a remote server over a network (i.e., central service), a request from a media device (i.e., multimedia console/computing device) for access to a restricted version of a media asset, wherein the restricted version of the media asset is stored in a physical storage medium accessible by the media device, and wherein the storage medium further comprises an unrestricted version of a media asset (see Figure 2 and its corresponding sections in the specification; Figure 4; [0018], computer read medium such as CD-ROM, DVD, etc.; [0043], providing an unlock code or key for an application, the disk containing a demo (free to use without license) and full version, the full version remains locked until payment is received); and wherein the restricted version of the media asset corresponds to a first unique identifier that is specific to the storage medium (see [0044], application identifier);
, and wherein the restricted version of the media asset corresponds to: a first unique identifier that is specific to the storage medium, and a first event code specific to the restricted version of the media asset, wherein the unrestricted version of the media asset corresponds to: a second unique identifier that is specific to the storage medium, and a second event code specific to the unrestricted version of the media asset; and
determining, by the remote server in response to the request, whether a release event or a purchase event relating to the restricted version of the media asset has occurred (see [0036], the unlock code is based on the originally received submission and the information contained therein; [0043], the content is locked until payment is received; [0044], the system processes the payment and generates a key or an unlock code);
based at least in part on determining that the release event or the purchase event has occurred: identifying, using the first event code specific to the restricted version of the media asset, by the remote server, an unlock code derived from the first event code for the restricted version of the media asset (see [0044], the system generates an unlock code); and
providing, by the remote server over the network, the unlock code, wherein the unlock code provides the media device with access to play the restricted version of the media asset (see [0043]-[0044]).
Ostergren further teaches a system comprising a memory and a processor (see [0060]-[0061].
While Ostergren particularly teaches restricted version of a media asset and non-restricted media asset stored in a storage medium as described above, Ostergren does not particularly teach that the restricted version of the media asset corresponds to supplemental-content-free version of the media asset while the unrestricted version of the media asset corresponds to supplemental-content-supported version of the media asset.
Rothchild, however, teaches the restricted version of the media asset corresponds to supplemental-content-free version of the media asset while the unrestricted version of the media asset corresponds to supplemental-content-supported version of the media asset (Fig. 2; col. 6, lines 41-49; col. 14, lines 58-67, advertising).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the technique of storing of unrestricted set of digital media assets along with encrypted media asset as taught by Rothchild to Ostergren for the purpose of improvement of marketing schemes (Rothchild: col. 9, line 17 – col. 10, line 43).
The applicant is reminded that the description of the restricted media asset and unrestricted media asset, particularly what the assets correspond to is non-functional descriptive material that does not move to distinguish over prior art as the descriptions do not affect the positively recited steps in the method claim nor the functions of the processor in the system claim. Furthermore, it would have been obvious to one of ordinary skill in the art to utilize any known versions of the media assets as restricted media asset and any known versions of the media assets as unrestricted media asset in Ostergren for the purpose of achieving a predicable result of purchasing of the restricted media asset on the storage medium.
Ostergren/Rothchild does not particularly teach that the restricted version of the media asset corresponds to a first unique identifier that is an identifier specific to a storage medium and a first event code specific to the first restricted version of the media asset and that the restricted set of digital media assets is associated with a second unique identifier that is the identifier specific to the storage medium of the set digital media assets in combination with a second event code specific to the second restricted set of digital media assets.
Oki, however, teaches a technique of assigning of unique name by adding CD number (an identifier specific to a storage medium of the set of digital media assets) and content number (event code specific to digital media assets)(see ¶0110).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to substitute one known technique of identification of content as shown in Oki to the identification of the content in Ostergren/Rothchild. Since each individual element and its functions are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself - that is in the substitution of the identification of content as disclosed in Oki as identification of content which is used for identifying of the content in Ostergren/Rothchild. Thus, the simple substitution of one known technique for another producing a predictable result renders the claim obvious.
The applicant is reminded that descriptions of the physical storage medium, i.e., its contents, do not move to distinguish over the prior art as the descriptions do not affect the positively recited steps in the method claim nor the system and the functions of the processor in the system claim.
Similarly, the description of what each of the versions of the media asset correspond to is non-functional descriptive material that do not move to distinguish over prior art.
Furthermore, the applicant is reminded that the description of how the unlock code was derive does not move to distinguish over the prior art as the description does not affect the positively recited step(s) of receiving, determining, identifying and providing the unlock code for the first restricted set of digital media assets when determining determines that the release event or the purchase event has occurred or restricting access to the first restricted set of digital media assets by the entertainment system in the method claim or the functions of the process (i.e., similar to the positively recited steps in the method claim) in the system claim.
As per claims 27 and 35, Ostergren/Rothchild/Oki teaches the method of claim 22, wherein the unrestricted set of digital media assets includes at least one additional media asset portion that is not included in the first restricted set of digital media asset (Rothschild: col. 4, lines 8–52). Furthermore, the description of the unrestricted set of digital content, i.e., does not move to distinguish over prior art as the description does not affect the positively recited step(s) of receiving of the request, obtaining the respective unlock code and providing of the obtained respective unlock code in the method claim nor the function(s), i.e., receiving of the request, obtaining the respective unlock code and providing of the obtained respective unlock code, of the processor.
As per claims 54 and 55, by Ostergren/Rothchild/Oki teaching generating an unlock code specific for content based on the originally received submission and the information contained therein (see Ostergren: [0036]), Ostergren/Rothchild/Oki teaches wherein the physical storage medium is a first physical storage medium, and wherein the unlock code is configured to unlock the restricted version of the media asset on the first physical storage medium, and wherein the unlock code is not configured to unlock the restricted version of the media asset on a second physical storage medium.
Furthermore, the description of the unlock code, i.e., its intended use, on the different storage medium does not further limit the scope of the claim.
Double Patenting
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 22, 27, 30, 35, and 54-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10-12 of U.S. Patent No. US 10,783,505 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Per claim 22 and 30, ‘505 discloses a method comprising:
receiving, by a remote server over a network, a request from a media device for access to a restricted version of a media asset, wherein the restricted version of the media asset is stored in a physical storage medium accessible by the media device, and wherein the storage medium further comprises an unrestricted version of a media asset, and wherein the restricted version of the media asset corresponds to: an supplemental-content-free version of the media asset, a first unique identifier that is specific to the storage medium, and a first event code specific to the restricted version of the media asset, wherein the unrestricted version of the media asset corresponds to: an supplemental-content -supported version of the media asset, a second unique identifier that is specific to the storage medium, and a second event code specific to the unrestricted version of the media asset (claim 1, the physical media comprising: a first set of digital media assets, wherein the first set of digital media assets are accessible upon receiving and inserting the physical media into the offline media player; a second set of digital media assets, wherein the second set of digital media assets are accessible upon receiving a first unlock code at the offline media player; a third set of digital media assets and a unique event code associated with the third set of digital media assets, wherein the third set of digital media assets are accessible upon receiving a second unlock code at the offline media player; and a unique identifier identifying the physical media, wherein the offline media player is a first device associated with a user …. transmitting, over a network and from a user device to a web service, the unique event code associated with the third set of digital media assets and the unique identifier identifying the physical media; receiving, over the network and at the web server from the user device, the unique event code associated with the third set of digital media assets and the unique identifier identifying the physical media)(claim 10: wherein the one or more restricted digital media assets comprise a feature film)(claim 11: wherein the one or more unrestricted digital media assets comprise a trailer of the feature film)(claim 12: wherein the one or more unrestricted digital media assets comprise a poster of the feature film); and
determining, by the remote server in response to the request, whether a release event or a purchase event relating to the restricted version of the media asset has occurred (claim 1: upon detection, at the web server, of an occurrence of a release date associated with the second set of digital media assets, deriving the second unlock code from the unique event code associated with the third set of digital media assets and the unique identifier identifying the physical media);
based at least in part on determining that the release event or the purchase event has occurred: identifying, using the first event code specific to the restricted version of the media asset, by the remote server, an unlock code derived from the first event code for the restricted version of the media asset (claim 1: upon detection, at the web server, of an occurrence of a release date associated with the second set of digital media assets, deriving the second unlock code from the unique event code associated with the third set of digital media assets and the unique identifier identifying the physical media); and
providing, by the remote server over the network, the unlock code, wherein the unlock code provides the media device with access to play the restricted version of the media asset (claim 1: transmitting, over the network and by the web server to the user device, the second unlock code; receiving, over the network, the second unlock code at the user device from the web service; receiving, at the offline media player, user entry of the second unlock code; unlocking, at the offline media player, the third set of digital media assets; and enabling to play the third set of digital media assets or the first set of digital media assets, without enabling to play the second set of digital media assets).
As per claims 27 and 35, ‘505 further teaches wherein the unrestricted version of the media asset includes at least one additional media asset portion that is not included in the restricted version of the media asset (claim 10: wherein the one or more restricted digital media assets comprise a feature film)(claim 11: wherein the one or more unrestricted digital media assets comprise a trailer of the feature film)(claim 12: wherein the one or more unrestricted digital media assets comprise a poster of the feature film).
As per claims 54 and 55, ‘505 further teaches wherein the physical storage medium is a first physical storage medium, and wherein the unlock code is configured to unlock the restricted version of the media asset on the first physical storage medium, and wherein the unlock code is not configured to unlock the restricted version of the media asset on a second physical storage medium (claim 1: deriving the second unlock code from the unique event code associated with the third set of digital media assets and the unique identifier identifying the physical media; receiving, at the offline media player, user entry of the second unlock code; unlocking, at the offline media player, the third set of digital media assets).
Response to the Argument
Prior Art
The Applicant’s does not provide argument. The statement of rejection has been changed necessitated by the amendment.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Publication No. 20020184259 discloses a data reproducing/recording method and apparatus including multiple contents, each being encrypted with different key and each with IDs; US 20060253910 A1 discloses a technique of providing permission based on combination of medium ID and sub content ID; US 6028936A discloses calculating unlock code from information provided with the recorded media.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN S KIM whose telephone number is (571)270-5287. The examiner can normally be reached Monday -Friday: 7:00 - 3:30.
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/STEVEN S KIM/Primary Examiner, Art Unit 3698
