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 response received on 07/28/2026 (“Amendment”).
Claim Status
Claims 1-21, 23, and 32 had/have been canceled.
Claims 22 and 31 have been amended.
Claims 22, 24-31, and 33-39 are pending.
Continuation
This application is a continuation application of U.S. application no. 14/282,977 filed on May 20, 2014 ("Parent Application"), now abandoned. See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2.
Claim Objection
Per claim 31, the recited “the system including a computer platform having a computer processor configured to execute stored commands to access a memory, a communication interface including a transceiver configured to utilize at least one of a plurality of wireless communication technologies to communicate with the first provider over a communication network” should be amended to “the system including a computer platform having a computer processor configured to execute stored commands to access a memory[[,]] and a communication interface including a transceiver configured to utilize at least one of a plurality of wireless communication technologies to communicate with the first provider over a communication network” to avoid potential indefiniteness rising from the grammar.
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.
Claims 22, 24-31, and 33-39 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 22, the scope of the claim is unclear as the claim recites “the provider” in the wherein the first entitlement was purchased by the consumer from the provider that originally provided the first entitlement … different from the provider from which the first entitlement was purchased”. It is unclear which one of the previously recited providers refer to “the provider”, rendering the claim to be indefinite.
Claim 31 is rejected as the claim also includes the same deficiency.
The dependent claims are rejected as they depend on the claim(s) above.
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, 24-31, and 34-39 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 22 and 24-30 (group I) are directed to a system while claims 31 and 33-39 (group II) are directed to a method (i.e. process). 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 31 recites: A method for use by a system for providing a playback interoperability between a first provider, a second provider and a third provider, the system including a computer platform having a computer processor configured to execute stored commands to access a memory, a communication interface including a transceiver configured to utilize at least one of a plurality of wireless communication technologies to communicate with the first provider over a communication network, the method comprising:
a) storing a database including a plurality of data structures included in domains each associated with a single title owner and one or more business rules, wherein the plurality of data structures include: (i) a first data structure associated with a first title owner, a first provider identification of the first provider, and a second provider identification of the second provider, (ii) a second data structure associated with a second title owner, the first provider identification of the first provider, and a third provider identification of the third provider, and (iii) a third data structure associated with the first title owner, the second provider identification, and the third provider identification, and not associated with the first provider identification, the first data structure and the third data structure being associated with different respective business rules of the first title owner;
b) receiving, over the communication network using the transceiver of the communication interface, from the first provider including a processor and a communication interface configured to utilize the at least one of the plurality of wireless communication technologies to communicate with the computer platform over the communication network, a query for a list of entitlements of a consumer, the query including a consumer identification of the consumer and the first provider identification;
c) searching, in response to receiving the query including the first provider identification and using the computer processor to access the memory, the plurality of data structures stored in the memory to determine data structures associated with the first provider identification by comparing the first provider identification to provider identifications recorded in the plurality of data structures;
d) determining, based on the searching, that the first provider is authorized to obtain information from the first data structure and the second data structure based on determining that the first provider identification is associated with the first data structure and the second data structure, and the first provider is not authorized to obtain the information from the third data structure based on determining that the first provider identification is not associated with the third data structure;
e) identifying, only in the data structures determined to be associated with the first provider identification, including the first data structure and the second data structure, one or more entitlements associated with the consumer identification to generate the list of the entitlements of the consumer; and
f) transmitting, over the communication network using the transceiver of the communication interface, to the first provider, a response in the form of a data packet including the consumer identification, a provider name, and transaction information including the list of the entitlements, the list of the entitlements including a first entitlement for playback by the consumer wherein: the first entitlement is owned by the first title owner and originally provided by the second provider, or the first entitlement is owned by the second title owner and originally provided by the third provider; wherein the first entitlement was purchased by the consumer from the provider that originally provided the first entitlement; and wherein the first provider is configured to provide the first entitlement to the consumer for playback through the first provider, thereby providing the playback interoperability by rendering the first entitlement playable to the consumer through the first provider that is different from the provider from which the first entitlement was purchased.
(Emphasis added on the additional element(s))(underlined represents newly added limitation(s) in the amendment).
The claim recites a process of e) identification of one or more entitlements associated with a consumer identification to generate the list of the entitlements (i.e., list of creative media works or projects, such as movies, games, apps, digital books, and music) of the consumer from information lists and f) transmitting to a first provider consumer identification, a provider name, and the list of the entitlements including a first entitlement that is owned by a first title owner and originally provided by a second provider or a first entitlement that is owned by a second title owner and originally provided by a third provider. The claim achieves this by a) storing a plurality of data structures included in domains each associated with a single title owner and one or more business rules; b) receiving from the first provider a query for the list of entitlement of the consumer, the query including the consumer identification and the first provider identification; c) in response to receiving the query, searching the plurality of data structures to determine data structures associated with the first provider identification by comparing the first provider identification to provider identifications recorded in the plurality of data structures; d) determining, based on the searching, that the first provider is authorized to obtain information from a first data structure and the second data structure based on determining that the first provider identification is associated with the first data structure and the second data structure and the first provider is not authorized to obtain the information from the third data structure based on determining that first provider identification is not associated with the third data structure; e) identifying, only in the data structures determined to be associated with the first provider identification including the first data structure and the second data structure, one or more entitlements associated with the consumer identification to generate the list of the entitlements of the consumer. This generated list of the entitlements is then transmitted to the first provider.
The claim further recites the how the information is stored, i.e., wherein the plurality of data structures include: (i) a first data structure associated with a first title owner, a first provider identification of the first provider, and a second provider identification of the second provider, (ii) a second data structure associated with a second title owner, the first provider identification of the first provider, and a third provider identification of the third provider, and (iii) a third data structure associated with the first title owner, the second provider identification, and the third provider identification, and not associated with the first provider identification.
Under the broadest reasonable interpretation, the claim recites a mental process, i.e., process that can be performed in human mind with pen and paper. The examiner submits that the analysis is consistent with the description in the Specification (p. 14 l. 10 – p. 15 l. 21) and Figure 2. A ledger that records the particular set of data is searched to identify providers using the received provider identification and the identified providers are then used to identify the entitlements (i.e., movie titles) from the records of John Doe’s (i.e., customer’s identification) entitlement purchases.
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The examiner also finds that the storage of information in a particular manner is analogous to storing information in files in a filing cabinet, i.e., the database itself equivalent to a filing cabinet while the domains representing files/folders themselves. As such, storing of information in files in a cabinet and retrieving requested information from the cabinet is a certain method of organizing human activity, i.e., following rules or instructions.
The examiner also submits that receiving request for information and providing (i.e., transmitting) the requested information based on rights determination also falls within a certain method of organizing human activities, i.e., following rules or instructions or business relations.
The other independent claim, i.e., claim 22 is significantly similar to claim 31. As such, claim 22 also recites abstract idea.
The claim has been amended to recite that a) the first data structure and the third data structure being associated with different respective business rules of the first title owner and b) wherein the first entitlement was purchased by the consumer from the provider that originally provided the first entitlement; and wherein the first provider is configured to provide the first entitlement to the consumer for playback through the first provider, thereby providing the playback interoperability by rendering the first entitlement playable to the consumer through the first provider that is different from the provider from which the first entitlement was purchased.
Under the claim interpretation, the examiner submits that the description of the first data structure and the third data structure, particularly that both are associated with different respective business rules of the first title owner does not affect the steps of storing, receiving, searching, determining, identifying to generate the list of entitlements of the consumer, and transmitting to the first provider a response nor affect the system comprising a computer platform and the function(s) of the computer processor of the computer platform. In other words, the description does not affect the scope of the claim. Even if the description is limiting the scope of the claim, in arguendo, the description is analogous to description of the file/folders association, i.e., what the file/folders may be associated with, hence further expanding the abstract idea.
Similarly, the claimed expression of “wherein the first entitlement was purchased by the consumer from the provider that originally provided the first entitlement” merely describes that the first entitlement that is included in the list of entitlements, however, does not affect the positively recited step(s) in the method claim nor the system claim structurally or functionally. Furthermore, the description further expands on the abstract idea by describing what the content of the list includes in that the first entitlement, i.e., movie, that was purchased by the consumer from the provider that originally provided the first entitlement is included in the list.
In reference to wherein the first provider is configured to provide the first entitlement to the consumer for playback through the first provider, thereby providing the playback interoperability by rendering the first entitlement playable to the consumer through the first provider that is different from the provider from which the first entitlement was purchased, the claimed expression merely describes what the first provider is intending to do, i.e., provide the first entitlement to the consumer for playback through the first provider, which does not affect the positively recited step(s) in the method claim nor the system and its functions in the system claim. Even if the claimed expression further limits the scope of the claim(s), the provider using the list of the entitlements, i.e., movie, books, etc., that the consumer has purchased and providing the entitlement from the list is an abstract idea, i.e., certain method of organizing human activity (commercial interactions).
Finally, in regards to thereby providing the playback interoperability by rendering the first entitlement playable to the consumer through the first provider that is different from the provider from which the first entitlement was purchased, the claimed expression does not further limit the positively recited step(s) nor the system and its functions in the system claim. Furthermore, even if the claimed expression limits the scope of the claim, the examiner finds that the concept of another provider providing entitlement that was purchased from a different provider is a business relationship which falls withing a certain method of organizing human activity, therefore an 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. system including computer platform having a computer processor configured to execute stored commands to access a memory and a communication interface including a transceiver configured to utilize at least one of a plurality of wireless technologies for communication, communication network, database, first provider including a processor and a communication interface configured to utilize at least one of the plurality of wireless communication technologies, the transceiver(s), one or more wireless communication technologies, and data packets are no more than mere instructions to implement the abstract idea, and/or merely uses a computer (i.e., system including a processor and a memory and wireless communication technologies) as a tool to perform an abstract idea – see MPEP 2106.05(f) (see Fig. 1 and its corresponding specification that shows generic computing device). These limitation, e.g. abstract idea as described above, do not represent: Improvements to the functioning of the computing system or the components of the computing system, the processor, memory, or to any other technology or technical field - see MPEP 2106.05(a).
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 or computer components, 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 system or its components individually or in combination.
For these reasons, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Dependent claims 24 and 33 further expand on the abstract idea as the claims describe what is included in the list of entitlements and without recitation of further additional elements other than those additional elements identified in the independent claims above.
Dependent claims 25-28 and 34-37 recite what the first data structure and the second data structure are associated with and hence do not affect the steps of storing, receiving, searching, determining, identifying to generate the list of entitlements of the consumer, and transmitting to the first provider a response nor affect the system comprising a computer platform and the function(s) of the computer processor of the computer platform. In other words, the description does not affect the scope of the claim. Even if the description is limiting the scope of the claim, in arguendo, the description is analogous to description of the file/folders association, i.e., what the file/folders may be associated with, hence further expanding the abstract idea. The claims do not recite further additional elements other than those additional elements identified in the independent claims above.
Claims 29-30 and 38-39 recitations that describe the consumer identification and its intended use by the first provider, the second provider, and/or the third provider. The descriptions do further limit the scope of the claim as the descriptions do not affect the steps of storing, receiving, searching, determining, identifying to generate the list of entitlements of the consumer, and transmitting to the first provider a response nor affect the system comprising a computer platform and the function(s) of the computer processor of the computer platform. Even if the description is limiting the scope of the claim, in arguendo, the descriptions merely describe identifier to identify the consumer by the provider which falls within the abstract idea, i.e., mental process. The claims do not recite further additional elements other than those additional elements identified in the independent claims above.
Accordingly, it is determined that claims 22, 24-31, and 34-39 are directed to non-statutory subject matter under 35 U.S.C. § 101 and are ineligible.
Response to Argument(s)
Objection
The objection is withdrawn in light of the claim amendment.
101
The applicant asserts that current amended independent claim 31 does not recite a mental process as the claim now requires that “the first provider is configured to provide the first entitlement to the consumer for playback through the first provider, thereby providing the playback interoperability by rendering the first entitlement playable to the consumer through the first provider that is different from the provider from which the first entitlement was purchased (see pages 11-12 of Amendment). First, the examiner would like to point out that the claimed expressions in question do not further limit the scope of the claim as the expressions do not affect the steps of storing, receiving, searching, determining, identifying to generate the list of entitlements of the consumer, and transmitting to the first provider a response nor affect the system comprising a computer platform and the function(s) of the computer processor of the computer platform. Furthermore, the claim, indeed, recites mental process, i.e., identification and generation of a list of entitlements for a customer from a ledger that records the particular set of data is searched to identify providers using the received provider identification and the identified providers are then used to identify the entitlements (i.e., movie titles) from the records of John Doe’s (i.e., customer’s identification) entitlement purchases as recited in the claim and described above in the 101 analysis.
Furthermore, the claimed expression of the first provider is configured to provide the first entitlement to the consumer for playback through the first provider, thereby providing the playback interoperability by rendering the first entitlement playable to the consumer through the first provider that is different from the provider from which the first entitlement was purchased is an abstract idea as the concept of another providing entitlement that was purchased from a different provider is a business relationship and commercial activities that falls within a certain method of organizing human activities.
The applicant also attempts to conflate the Step 2A, 2nd prong test, with the Step 2A, 1st prong test, by arguing that the use of computer components, i.e., computer processor to access the memory and over the communication network using the transceiver of the communication interface do not recite a mental process (see page 12 of the Amendment).
The applicant asserts that the currently amended independent claim 31 does not recite a certain method of organizing human activity as the recited steps are performed by a computer processor upon data structures stored in a memory, and carried out with a remote first provider that itself includes “a processor and a communication interface configured to utilize the at least one of the plurality of wireless communication technology to communicate with the computer platform over the communication network” (see page 13 of the Amendment). In response, the applicant attempts to conflate the Step 2A, 2nd prong test, with the Step 2A, 1st prong test. As explained above in the 101 section, storing of information in files in a cabinet and retrieving requested information from the cabinet is a certain method of organizing human activity, i.e., following rules or instructions. In response to the applicant’s argument regarding authorization, i.e., authorization this follows from whether a provider identification is recorded in a given data structure, and not from any rule being applied or evaluated when the query is received follows the abstract idea of mental process and/or certain method of organizing human activity in identification of information from stored information in generating the requested information and providing of the request information to a requestor.
The applicant asserts that page 1, lines 12-19 of the present application identifies the technical problem in the art, particularly of “a fundamental lack of interoperability between digital retail stores”, and that claim 31 recites a technical solution to that technical problem as claim 31 is the specific arrangement of the recited data structures, together with the manner in which that arrangement governs what a querying provider obtains (see pages 14-16 of the Amendment). In response, the examiner finds that the claim 31 does not address the interoperability, i.e., DRM being different from one provider to another provider. Rather, the claim merely receives a request for list of entitlement for a consumer, searches the data arrangement, and identifying to generate the list entitlement for the consumer. This list is then provided to the requestor. The claim does not achieve the differences of interoperability of the DRM as alleged by the applicant.
In reference to the applicant’s assertion that the entitlement purchased by a consumer from one provider is accordingly rendered playable to that consumer through a different provider, without that consumer purchasing the entitlement a second time is a technical solution (see page 16 of the Amendment), the examiner respectfully disagrees as the concept is a certain method of organizing human activity, i.e., business relationship and arrangement.
The applicant asserts that claim 31 does not merely use a computer as a tool. The applicant relies mere assertion in mentioning the use of computer components that these are not incidental recitation of a generic computer (page 17 of the Amendment). The examiner respectfully disagrees in that the specification clearly discloses generic computer and its components in pages 5 and 11.
The applicant further asserts that the claim provides improvement capability as the data structures associated with a single title owner are “associated with different respective business rules of the first title owner” and record different sets of provider identifier, a given provider identification would either be associated with the entitlements of a title owner or not be associated with the entitlements of that title owner and that the recited database is therefore not a generic container for data. The examiner respectfully disagrees in the arrangement of data as recited in the claim do not provide improvement capability rather description of arrangement data in a generic database.
The applicant asserts that the recited provision of the first entitlement for playback is functional (see pages 19-20 of the Amendment). The applicant is reminded that the claim is directed to a system comprising a computer platform and its components functions in the system claim and the step(s) resulting in identifying one or more entitlement associated with the consumer identification to generate the list of the entitlements of the consumer and transmitting to the first provider the consumer identification, a provider name, and the list of the entitlements. The description of the first provider, i.e., what the first provider intends to do, does not move to further limit the scope of the claim. The examiner also reminds the applicant that a provider providing the first entitlement (i.e., entitlement purchased by the consumer) to the consumer for consumer’s use through the provider is an abstract idea, i.e., commercial activity.
The applicant asserts that the ordered combination recited by currently amended independent claim 31 amounts to significantly more because that combination produces a result that no recited element produces in isolation (see pages 20-21 of the Amendment). The examiner is not aware of Step 2B analysis that involves whether the combination produces a result that no recited element produces in isolation. If the applicant’s argument is based on prior art novelty, the applicant is reminded that the Courts have held that a claim can be novel under 102 and non-obvious under 103, yet still fail to recite patent-eligible subject matter under 101 (see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016)).
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 or computer components, 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 system or its components individually or in combination.
For these reasons, the examiner maintains the 101 rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent No. 5,892,900 discloses a system and method of content distribution and control. Electronic appliances such as computers employed in accordance with the present invention help to ensure that information is accessed and used only in authorized ways, and maintain the integrity, availability, and/or confidentiality of the information;
US Patent No. 10,776,477 discloses a system and method for coordinating asset entitlements. An asset entitlement database is searchable by a server, wherein an entry of the asset entitlement database links a domain transcendent user identification (ID) of a user and at least one asset entitlement acquired by the user from any of the domains. The server is configured to receive an asset entitlement inquiry from one of the domains, search the asset entitlement database for asset entitlements acquired by the user from any of the domains, generate a search result identifying the asset entitlements acquired by the user from the domains, and send data corresponding to the search result to the domain from which the asset entitlement inquiry was received;
US Patent No. 7,266,704 discloses a system and method of rights management of digital assets;
US Patent Publication No. 2015/0100406 discloses use of rules based on geographic location and time;
US Patent Publication No. 2011/0265150 discloses a one-stop-shop, online portal designed to conveniently deliver, using house-file video standards, all assets a licensee may need to make purchase decisions, promote, market, and distribute a media content owner's product.
The cited references, however, alone or in combination do not teach the particular step(s) in storing and generating of the list of the entitlement.
`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 STEVEN S KIM whose telephone number is (571)270-5287. The examiner can normally be reached Monday -Friday: 7:00 - 3:30.
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, Patrick McAtee can be reached on 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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