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 non-final action is in response to the applicant’s response received on 4/8/2026.
Claim Status
Claims 1-21 had been canceled.
Claims 22-24 and 31-33 have been amended.
Claims 22-39 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/8/2026 has been entered.
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 § 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 22-39 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 22-30 (group I) are directed to a system while claims 31-39 (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;
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.
(Emphasis added on the additional element(s))
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.
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 further expand and recite the abstract idea without further additional element(s).
Accordingly, it is determined that claims 22-39 are directed to non-statutory subject matter under 35 U.S.C. § 101 and are ineligible.
Response to Argument(s)
Objection
The amendment necessitates new objection on claim 31.
101
The applicant asserts that transmitting action recited by currently amended independent claim 31, particularly 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, takes the claim out of realm of abstract idea since generating and transmitting a structured response data packet of this kind is an inherently machine-to-machine operation. The applicant further points to additional elements that have been identified in the claim in above analysis and asserts that claim does not recite an abstract idea (see pages 11-12)
In response, the applicant attempts to conflate Step 2A, 2nd prong test with the Step 2A 1st test. As described above, transmitting information, i.e., particularly of consumer identification field, a provider name field, and a transaction information field, to a recipient is an abstract idea. For example, a person with a pen and paper may write on a paper consumer identification, a provider name, and a transaction information (i.e., list of the entitlements) The additional element of a data packet, a communication network, a remote provider having its own processor and communication interface amount, computer processor, memory, transceiver, and communication network 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.
The applicant asserts that the currently amendment independent claim 31 solves a specific technical problem in digital content interoperability, i.e., enabling cross-provider entitlement interoperability while enforcing provider-specific access boundaries on entitlement data. The applicant attempts to tie in the particular way that the information is stored in achieving this digital content interoperability, i.e., enforcing that the contents of the third data structure remain inaccessible to the first provider. See page 14 of the Amendment.
In response, the examiner would like to point out that cross-provider entitlement interoperability while enforcing provider-specific access boundaries on entitlement data are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, the examiner would like to point out that the claim merely provides three information to the first provider, wherein the information comprises 1) the consumer identification, 2) a provider name, and 3) the list of the entitlements. There is no indication of interoperability being achieved by the step(s) that is performed by the computer platform/processor other than storing the plurality of data structures and one or more business riles, receiving a query for a list of entitlement of a consumer from a first provider, searching/determining/identifying the requested information from the plurality of data structures and transmitting the requested information to the first provider. The only recitation of interoperability is found in the preamble in that the system is “system for providing a playback interoperability between a first provider, a second provider, and a third provider” which is a recitation indication the purpose or intended use of the claimed invention. This recitation of intended use does not provide any distinct definition of any of the claimed invention’s limitations, hence of no significance to claim construction. See MPEP 2111.02.
The applicant further asserts that claim 31 does not merely use a computer as a tool by point to Enfish in arguing that the Federal Circuit found claims to be a specific table structure patent eligible because the claims were directed to an improvement in the way the computer operated (see page 15-16 and page 17 of the Amendment). The examiner agrees with the applicant’s statement on the rational of the Federal Circuit in Enfish. The examiner, however, does not agree with the applicant’s suggestion that the current claim’s specific data structure provides an improvement in the way the computer operate as the specification in the current application is absent of improvement on the database (or storage) for faster searching/identification of entitlement(s) of a consumer. While the claim clearly recites a specific type of data structure, there is no indication that such arrangement improves upon the computer or the database in the identification of the entitlement(s) of the consumer.
The applicant asserts on page 16 that the transmitted response packet constitutes a concrete and useful technical result. In response, the applicant is reminded that concrete and useful technical result is not basis of the 101 analysis. Even if the concrete and useful technical result is a basis of 101 analysis, in arguendo, the examiner respectfully disagrees in that the description of data packet, i.e., what it comprises, is non-functional descriptive material as the description merely describes stored information (i.e., data packet) that is transmitted to another entity.
The applicant asserts that this ordered combination achieves cross-provider entitlement interoperability with provider-key access control enforced at the data-structure level and communicated as a structured multi-field response data packet and that the action has not identified any prior art or evidence demonstrating that the specific combination of elements recited by currently amended independent claim 31 is well-understood, routine, or conventional.
In response, the examiner submits that well-understood, routine, or conventional was not the basis of the rejection. Furthermore, the claim does not achieve cross-provider entitlement interoperability rather the claim stores particular dataset, receives query request from a requestor, search/determine/identify requested information from the dataset using rules, and provides the requested information to the requestor. 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 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.
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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