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 final action is in response to the applicant’s communication received on 4/27/2026 (hereinafter “Amendment”).
Claim Status
Claims 1, 3-4, 7-8, 11, and 20 have been amended.
Claims 2, 5-6, 9-10, 12-19, and 21 had/have been canceled.
Claims 1, 3-4, 7-8, 11, and 20 are pending.
Information Disclosure Statement (IDS)
IDS received on 03/10/2026 is being considered by the examiner.
Official Notice Taken in Last Office Action
As official notice was taken in the previous office action, the common knowledge or well-known in the art statement is taken to be admitted prior art because the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate (see MPEP 2144.03 C). The common knowledge or well-known in the art statement(s) in the previous office action taken to be admitted prior art includes: buying and selling of blank mix tape for allowing recording song(s) from an existing tape; and trading rights of one asset for rights for another assets.
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 1, 3-4, 7-8, 11, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an 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 1, 3-4, 7-8, and 11 are directed to a method (i.e. process) while claim 20 is directed to a non-transitory computer-readable storage medium. 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 1 recites: A computer-implemented method executed by a digital content management server, the method comprising:
a) maintaining, in a virtual content rights database, data associating a user of a virtual environment with virtual content rights acquired with respect to music- related digital content;
b) receiving, by the digital content management server, a request from a device of the user for assignment of virtual content rights of the music-related digital content;
c) determining, by the digital content management server using the virtual content rights database, that the requested virtual content rights are eligible for assignment to the user;
d) updating the virtual content rights database to indicate the assignment of the virtual content rights to the user;
e) receiving, by the digital content management server, data from the device of the user identifying songs to create a virtual mix tape;
f) creating, by the digital content management server, the virtual mix tape for the user based on the identified songs; and
g) updating the virtual content rights database to indicate sharing of the virtual mix tape by the user within the virtual environment.
(Emphasis added on the additional element(s))
The claim recites a process of managing content rights related to music-related content, creation of mix tape to include songs, and recording (i.e., ledgering) of sharing of the mix tape. The claim achieves this by a) maintaining in a ledger data associating a user with content rights acquired with respect to music-related content; b) receiving a request from the user for assignment of content rights of the music-related content; c) determining using the ledger that the requested content rights are eligible for assignment to the user; d) updating the ledger to indicate the assignment of the content rights to the user; e) receiving data from the user identifying songs to create a mix tape; f) creating the mix tape for the user based on the identified songs; and g) updating the ledger to indicate sharing of the mix tape the user. As such, the claim recites a certain method of organizing human activity (i.e., commercial or legal interactions and/or social/business activities).
Independent claim 20 is significantly similar to claim 1, representing storage medium storing program for execution by a computer to perform the functions of claim 1. As such, claim 20 also recite abstract idea.
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. computer-implemented, server (digital content management server), database (virtual content rights database), device, digital, virtual, virtual environment, and non-transitory computer-readable storage medium storing instructions, amount to no more than mere instructions to implement the abstract idea as described above in the Step 2A (prong 1), and/or merely uses a computer (i.e., server, database, device, etc.) as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment (i.e., virtual environment)– see MPEP 2106.05(f). These limitation(s) do not represent: Improvements to the functioning of device(s) or the components of the device(s)(i.e., the database, device, and/or the server; and/or the server that executes the computer program stored on the storage medium of claim 20), or to any other technology or technical field - see MPEP 2106.05(a). The server of the claimed invention is general purpose microprocessor(s) based computer (see Fig. 3A; Fig. 3B; ¶0042-¶0046). Furthermore, the virtual environment and virtual merely represents generally linking the use of the judicial exception to a particular environment or field of use.
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 claims 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 on a computer, and/or merely uses a computer as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment (i.e., virtual environment). 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, processor, user device, and/or the database.
For these reasons, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Dependent claims 3-4, 7-8, and 11 further expand on the abstract idea without recitation of further additional elements other than those identified above.
Accordingly, it is determined that claims 1, 3-4, 7-8, 11, and 20 are directed to non-statutory subject matter under 35 U.S.C. § 101 and are ineligible.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 7, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Publication No. 20090313556 (“Hamilton”) in view of US Patent Publication No. 20190318060 (“Brenner”) and US Patent Publication No. 20130317936 (“Hughes”).
Per claims 1 and 20, Hamilton discloses computer-implemented method executed by a digital content management server (Fig. 2, server array 14; [0018], intellectual property rights in the digital content that are created and exchanged in the virtual universe), the method comprising:
maintaining, in a virtual content rights database (Fig. 4, Possessions database and Intellectual Property Restrictions Database), data associating a user of a virtual environment with virtual content rights acquired with respect to digital content ([0021], digital content);
receiving, by the digital content management server, a request from a device of the user for assignment of virtual content rights of the digital content (see Fig. 4-Fig. 6, Avatar Properties & Possessions Database 64 and Intellectual Property Restrictions Database 67; ¶0022, a license to use it under a specified conditions; ¶0023; ¶0034; ¶0038; ¶0048, transferring of the item from the inventory; ¶0050, use of IP restriction database to specify restrictions, monitor usage for conformance with these restrictions and enforce if these restrictions are not followed; ¶0051-0052, use of IP restriction database for ledgering and enforcing licensing)(by disclosing the license that allows a user to use under restriction, the rights are associated with the user);
determining, by the digital content management server using the virtual content rights database, that the requested virtual content rights are eligible for assignment to the user (see Fig. 4-Fig. 6, Avatar Properties & Possessions Database 64 and Intellectual Property Restrictions Database 67; ¶0022, a license to use it under a specified conditions; ¶0023; ¶0034; ¶0038; ¶0042, search the avatar properties and possessions database for matches with the requested item by using a variety of searching techniques; ¶0048, transferring of the item from the inventory; ¶0050, use of IP restriction database to specify restrictions, monitor usage for conformance with these restrictions and enforce if these restrictions are not followed; ¶0051-0052, use of IP restriction database for ledgering and enforcing licensing);
updating the virtual content rights database to indicate the assignment of the virtual content rights to the user (see Fig. 4-Fig. 6, Avatar Properties & Possessions Database 64 and Intellectual Property Restrictions Database 67; ¶0022, a license to use it under a specified conditions; ¶0023; ¶0032, database contains an inventory listing properties and possessions that each avatar; ¶0034, intellectual property restrictions database contains a plurality of IP restrictions that have been specified for the items created and exchanged within the virtual universe such as owner, term of usage, fee payment, type of usage, etc.; ¶0038; ¶0048, transferring of the item from the inventory; ¶0050, use of IP restriction database to specify restrictions, monitor usage for conformance with these restrictions and enforce if these restrictions are not followed; ¶0051-0052, use of IP restriction database for ledgering and enforcing licensing);
receiving, by the digital content management server, data from the device of the user identifying virtual item (see ¶0021, items that can be created through the virtual universe client);
creating, by the digital content management server, the virtual item for the user (see ¶0021, items that can be created through the virtual universe client); and
updating the virtual content rights database to indicate sharing of the virtual item by the user within the virtual environment (see Title: redistribution of license items in a virtual universe; abstract: transfer; ¶0018, licensing and intellectual property rights associated with the exchanged item; ¶0022, use of the items according to licensing agreement; ¶0020, residents of the universe that are represented by avatars; ¶0022, a license for a gesture or hairpiece may allow a resident to install and use it on several avatars; ¶0025, avatars are personas or representations of the users; ¶0038, exchange; ¶0050, the intellectual property restriction database used to enforce restrictions … license information from the database; ¶0051).
Hamilton further teaches a processor and a non-transitory computer-readable storage medium storing computer program (see Fig. 9).
While Hamilton teaches that the digital content includes items such as apparel, animations, jewelry, hairpiece, software, script, building components, recreation/equipment, automobile, etc. (see ¶0021), Hamilton does not specifically teach the digital content to include music-related, particularly identifying songs to create a virtual mix, and creating the virtual mix for the user based on the identified songs.
Brenner, however, teaches identifying songs and creating a virtual mix for the user based on the identified songs (see Fig. 6; Fig. 7; ¶0019, mixing, modifying, and compiling snippets of other music created by other artists … create own music and video; ¶0022, graphics, audio, and/or video; ¶0025, rights holders and content creators can manage their mix and remix catalogs … registry that contains the digital assets, such as the licensing rights, along with associated metadata … enable individual rights holder to access data and establish rules; ¶0032, To track all newly issued ISRCs for song segments within mixes may be needed to ensure proper attribution of streaming data and royalties; ¶0033, the mixes and remixes may be submitted into the media content database; ¶0034, mix or remix can be submitted to the media processing system; ¶0036; ¶0094) and the client device and the server communicating through wireless communication (see Fig. 1).
It would have been obvious to one of ordinary skill in the art prior to the effective filing of instant claimed invention to combine the teaching of Brenner to the virtual universe of the Hamilton as the combination expands the user experience by providing specific real-world experience of providing digital assets in Brenner to the virtual universe of the Hamilton.
While Brenner teaches playlist and mix (see Fig. 6), Hamilton/Brenner does not specifically teach the playlist and mix to be a virtual mix tape.
Hughes, however, teaches virtual mix tape (see Fig. 8; Fig. 9; ¶0008, digital media that may include audio songs, video, movies, images, etc. in personalizing album such as a digital mixed tape; ¶0050, uniquely packaged album; ¶0052, personalized album may include album title, cover art for the personalized album, song title, etc.; ¶0063-¶0069).
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 creating a virtual album and to personalize the virtual album as taught by Hughes to the combination of Hamilton and Brenner as the combination enhances usability by providing ability for a user to personalization of mix tape in the digital age (see ¶0005).
As per claim 3, Hamilton/Brenner/Hughes further discloses wherein the sharing comprises enabling another to access the virtual mix tape (i.e., virtual item in Hamilton) within the virtual environment (see Hamilton: 0018, specifying intellectual property rights restrictions for conformance with any specified restrictions; 0022; may allow a resident to install and use it on several avatars)( Brenner: Fig. 6; Fig. 7; ¶0032, cleared mixes and remixes may be issued ISRCs to make them available for distribution and commercial use).
As per claim 7, Hamilton/Brenner/Hughes teaches wherein at least one song included in the virtual mix tape is owned by another user (see Brenner: ¶0019, mixing, modifying, and compiling snippets of other music created by other artists … create own music and video; ¶0032, rights holders may accept or decline to allow their catalogs to be used in mixes and remixes distributed).
Furthermore, description of what is included in the virtual mix tape is non-functional descriptive material. As Hamilton/Brenner/Hughes discloses virtual mix tape with songs, it would have been obvious to one of ordinary skill in the art to include any known type of songs, including those owned by another user, in order to provide vast arrays of options in creating of the virtual mix tape.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over “Hamilton”, “Brenner”, and “Hughes” as applied to claim 1 above, and further in view of Admitted Prior Art (“APA”).
Per claim 4, while Hamilton discloses buying and selling of items in the virtual world as described above, Hamilton/Brenner/Hughes does not specifically teach receiving, by the digital content management server, a request to acquire a blank virtual mix tape.
APA, however, teaches a buying and selling of blank mix tape for allowing recording song(s) from an existing tape in the art of recording (see US 3,744,803: col. 10, lines 14-30, buy the blank cartridge and duplicate the master … fill orders).
Hence, as the combination of Hamilton/Brenner/Hughes teaches receiving a request for purchase of virtual item (see Hamilton: ¶0018; ¶0026), requesting usage right of songs for mixing/remixing of songs to create a virtual mix tape (see Brenner: ¶0025; ¶0034; ¶0036), it would have been obvious to one of ordinary skill in the art prior to the effective filing of instant claimed invention to combine the known concept/technique of buying and selling of blank tape for allowing recording of at least one song on an existing tape to the virtual world that includes marketplace and usage rights management of Hamilton/Brenner /Hughes in order to produce real-world experiences in a virtual world as in the case of Second Life (see Hamilton: ¶0002).
Claim(s) 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Hamilton”, “Brenner”, and “Hughes” as applied to claim 1 above, and further in view of US Patent Publication No. 20060195376 (“Jung”).
Per claim 8, while Hamilton/Brenner/Hughes discloses that the media processing system may also manage the payment of royalties to underlying rights holders (see Brenner: ¶0037) and licensing concept (see Hamilton: ¶0018, licensing; ¶0038, pay fees), the Hamilton/Brenner/Hughes does not specifically teach debiting an account associated with the user in accordance with rights associated with the at least one song owned by the other user.
Jung, however, teaches debiting an account associated with the user in accordance with rights associated with the at least one song owned by the other user (see ¶0012, database record identifies a real-world person or real-world entity responsible for compliance with terms and payment provisions of the credit account; ¶0035-¶0036, simulated purchases for items of value using a virtual account; ¶0062; ¶0070; ¶0088; ¶0106; ¶0114).
It would have been obvious to one of ordinary skill in the art prior to the effective filing of instant claimed invention to include the technique of as taught by Jung as described above to the combination of Hamilton/Brenner/Hughes for the purpose of enabling a user to have simulated credit transaction and to provide an option of engaging in real-world financial transactions related to the virtual credit arrangement (see Jung: ¶0034).
As per claim 11, the Hamilton/Brenner//Hughes/Jung teaches crediting an account associated with the user when another user is granted access to the virtual mix tape (i.e., simulated use) (see Jung: ¶0012, database record identifies a real-world person or real-world entity responsible for compliance with terms and payment provisions of the credit account; ¶0035-¶0036, simulated purchases for items of value using a virtual account; ¶0062; ¶0070; ¶0088; ¶0106; ¶0114).
Response to Argument(s)
Objection to the claim(s) and the 112 rejections are moot in view of the claim amendments.
The claims as amended are rejected under 101 and 103 as described above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Publication No. 20180310152 discloses sharing and transferring music files including sharing a music playlist;
US 3,744,803 discloses purchasing of blank tapes for recording;
Grindley, P. (2018). Cross-Licensing. In: Augier, M., Teece, D.J. (eds) The Palgrave Encyclopedia of Strategic Management. Palgrave Macmillan, London. https://doi.org/10.1057/978-1-137-00772-8_771: describing cross-licensing;
US Patent Publication No. 20060143236 discloses interactive music playlist sharing system and methods and concept of mix tapes;
US Patent No. 6,119,229 discloses a virtual property system in which virtual property system created in a virtual world is tracked for ownership. The system allows the participants to buy and sell the virtual property.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at 571-272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN S KIM/Primary Examiner, Art Unit 3698
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