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 .
Claim Status
Claims 1-20 are under examination.
Priority
Applicant’s claim to priority to the following provisional application has been acknowledged by the examiner: 63/587,891 (10/4/2023).
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.
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Claims 1, 2, 6-8, 11, and 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18/905,272. Although the claims at issue are not identical, they are not patentably distinct from each other because as the mapping below indicates, all the limitations of the instant application are anticipated by the co-pending application. Claims 8, 11, and 16-17 have limitations substantially similar to claim 1 and 7 and thus have equivalent mapping. Claim 15 has a limitation substantially similar to claim 6 and thus has equivalent mapping.
Instant Application
Co-Pending Application 18/905,272
Claim 1: generating, via an application server, first media associated with first sensitive information, wherein the first media is substantially transparent and the first sensitive information is associated with a first content element
Claim 20: generating, via the browser module, media based on the content element and the tagged HTML, wherein the media is at least one of substantially transparent,
Claim 1: modifying, via the application server, the first media such that the first media includes at least one DRM technology to generate first DRM-protected media
Claim 7: generating, via the application server, a second DRM-protected content element, wherein the second DRM-protected content element includes the second DRM-protected media
encrypting, via the browser module, the media and the content element to generate the DRM-protected content element
Claim 1: causing to output, via a graphical user interface (“GUI”), the first DRM-protected content element such that the first DRM-protected media is displayed
causing to output, via a graphical user interface (“GUI”), the DRM-protected content element such that the DRM-protected media is overlaid on the content element
Claim 2: wherein the first media is a single frame-looped video.
wherein the media is at least one of substantially transparent, 1 pixel by 1 pixel, or a single frame-looped video;
Claim 6: upon detecting an indication of digital extraction, modifying the first DRM-protected content element such that the first DRM-protected media is modified to be substantially opaque; and causing to output, via the GUI, the modified first DRM-protected content element such that the modified first DRM-protected media is displayed.
based on the indication of impairment, obfuscating, via the browser module, the DRM-protected content element by modifying the tagged HTML via JavaScript® such that the content element is obfuscated from view when caused to be output via the GUI; and causing to output, via the GUI, the obfuscated DRM-protected content element.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-10 are 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.
Regarding claim 1, line 11-12 recites “the first DRM-protected content element”. There is insufficient antecedent basis for this limitation in the claim. Claim 1 also recites the limitation of “generating, via… a first content element” twice in lines 3-5 and 9-10. This creates a vague and indefinite double antecedent basis from the two “first media”, two “first content element” and two “application server”. For examination purposes, examiner interprets the limitation as being duplicate.
Regarding claims 2-10, they are rejected similarly from the double antecedent and lack of antecedent basis issues created from claim 1 lines 3-5 and 9-10 as well as dependency on the rejected claim 1.
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.
As per claims 1-20, as best understood with the 112 (b) issues above, the claimed invention is directed to an abstract idea without significantly more because Claim 1 recites:
generating, via an application server, first media associated with first sensitive information, wherein the first media is substantially transparent and the first sensitive information is associated with a first content element;
modifying, via the application server, the first media such that the first media includes at least one DRM technology to generate first DRM-protected media;
generating, via the application server, a first DRM-protected content element, wherein the first DRM-protected content element includes the first DRM-protected media;
causing to output, via a graphical user interface (“GUI”), the first DRM-protected content element such that the first DRM-protected media is displayed.
Under Step 1 of the Section 101 analysis, the claims are directed to a method and a system, which are statutory categories of invention.
Under Step 2A Prong One of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claimed invention as drafted includes language (bolded language above) that recites an abstract idea of displaying generated and modified DRM-protected media. Claims 11 and 20 similarly recite this abstract idea. That is, other than reciting “application server” “memory”, “processor”, and “GUI”, nothing in the claim precludes the language from being considered as data manipulation performed by a person.
Under Step 2A Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance, the additional claim elements, considered individually, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The additional claim elements merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. For example, the additional elements of "application server", "GUI", "memory", “processor”, merely use a generic computer device and/or generic computer components as a tool to perform an abstract idea.
Under Step 2A Prong Two, the additional claim element(s), considered in combination, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The instant claim lacks a practical use to the functioning of a computer or to any other technology or technical field as it is unclear how the outputted DRM-protected media is practically integrated in regards to the sensitive information.
Under Step 2B, the additional claim element(s), considered individually and in combination, do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself for similar reasons outlined under Step 2A Prong Two.
A similar analysis can be applied to dependent claims 2-10 and 12-19 which further recite the abstract idea of responding to a request, determining the indication of a digital extraction, modifying content element, storing data, manipulating data, outputting media. That is, other than reciting the additional elements, nothing in the claim precludes the language from being considered as performed by a person.
A similar analysis can be applied to dependent claims 5-10, 14-19, which include additional claim elements that merely add the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. For example, "application server",
"browser module", "GUI", and “storage system”.
Therefore, claims 1-20 are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 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 1-2, 6-8, 11, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Publication 2015/0020210) in view of Chudy et al. (US Publication 2010/0162410), hereinafter Chudy.
Regarding claim 1, Brown discloses a method for reducing compute in digital rights management (“DRM) protection (Brown ¶2 Summary of the Disclosure: method for computing content protection), the method comprising:
generating, via an application server, first media associated with first sensitive information, wherein the first media is substantially transparent and the first sensitive information is associated with a first content element (Brown ¶22: “the display compositor module 209 may mask the protected content 233 of the first digital data 231 to produce a second digital data.”);
modifying, via the application server, the first media such that the first media includes at least one DRM technology to generate first DRM-protected media (Brown ¶22: “Further, the display compositor module 209 may mask the protected content 233 by replacing the protected content 233 with an opaque or translucent shape such as an opaque black rectangle; selectively blanking portions of the protected content 233; replacing the protected content 233 with a pattern or color; selectively removing frames of the protected content 233; blurring the protected content 233; scrambling the protected content 233; masking a virtual surface of the protected content 233; reducing the quality of the protected content 233; making the protected content 233 partially or fully unrecognizable; encrypting the protected content 233; watermarking the protected content 233; decimating the image quality of the protected content 233; obscuring the protected content 233; the like; or any combination thereof”).;
generating, via an application server, first media associated with first sensitive information, wherein the first media is substantially transparent and the first sensitive information is associated with a first content element (Brown ¶22: “the display compositor module 209 may mask the protected content 233 of the first digital data 231 to produce a second digital data.”);
causing to output, via a graphical user interface (“GUI”), the first DRM-protected content element such that the first DRM-protected media is displayed (Brown ¶25: “The display controller module 211 may output via the display interface 217, for display at the unsecured rendering target 223, the third digital data 235”).
Brown fails to explicitly teach the first media being substantially transparent. However, Chudy teaches the first media being substantially transparent (Chudy ¶20: “create a transparent overlay window 275 over the target window 270, intercept in the transparent overlay window 275 a user interface event for the DRM protected content”). A person having ordinary skill in the art would be motivated to modify the first media disclosed by Brown as it would enable content to be protectively shared while still being viewable/accessible. (Chudy ¶4: “…digital content owners usually welcome the widespread distribution of digital content…”) It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Brown based on the teachings of Chudy for the purposes of allowing protected content to be distributed to legitimate users so that is not initially obscured.
Regarding claim 7, all the claim limitations, except the claim limitation below, are substantially similar to claim 1 and are rejected under the same rationale.
generating, via the application server, a second DRM-protected content element, wherein the second DRM-protected content element includes the second DRM-protected media (Brown ¶23: “The display compositor module 209 may overlay unprotected content 239 on the masked protected content 237 to produce a third digital data 235”);
Claims 8, 11, 16, and 17 are substantially similar to the rejected claims 1 and 7 and are therefore rejected based on the same rationale.
Regarding claim 2, Brown fails to explicitly teach the first media is a single frame-looped video. However, Chudy teaches the first media is a single frame-looped video (Chudy ¶10: “The system also can include a transparent overlay window overlapping a target window for the content viewer.”). This is taught by Chudy because under broadest reasonable interpretation, an image is considered a single frame-looped video and the “transparent overlay window” taught by Chudy falls under the definition of an image. A person having ordinary skill in the art would be motivated to modify the first media disclosed by Brown to be a single frame-looped video, a window overlay image in this case, as it can be modified to be either transparent or opaque (Chudy ¶9: “…the method can further include creating within the transparent overlay window an opaque section blocking a visual portion of the markup…”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Brown based on the teachings of Chudy to allow content to be shared with a media that is modifiable to allow content to be shared with legitimate users and not illegitimate users. (Chudy ¶4: “Although digital content owners usually welcome the widespread distribution of digital content, owners in some cases may wish to enforce limited control over the distribution and access to high-value digital content.”).
Regarding claim 6, Brown fails to teach upon detecting an indication of digital extraction, modifying the first DRM-protected content element such that the first DRM-protected media is modified to be substantially opaque; and causing to output, via the GUI, the modified first DRM-protected content element such that the modified first DRM-protected media is displayed. However, Chudy teaches upon detecting an indication of digital extraction, modifying the first DRM-protected content element such that the first DRM-protected media is modified to be substantially opaque; and causing to output, via the GUI, the modified first DRM-protected content element such that the modified first DRM-protected media is displayed. (Chudy ¶18: “As such, based on DRM permissions 130 forbidding access to a user, the user can be visually blocked from accessing DRM protected content 110 through the strategic placement of the transparent overlay window 150. Optionally, in one aspect of the embodiment, based on DRM permissions 130, specified sections in the transparent overlay window 150 can be designated as opaque areas 180 or sheer areas 170 visually blocking access to the DRM protected content 110.”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Brown based on the teachings of Chudy for the purposes of allowing protected content to be distributed for legitimate users that is not initially obscured but can be obscured when users attempt to illegitimacy access the media. (Chudy ¶4: “Although digital content owners usually welcome the widespread distribution of digital content, owners in some cases may wish to enforce limited control over the distribution and access to high value digital content”).
Claim 15 is substantially similar to the rejected claim 6 and is therefore rejected based on the same rationale.
Claims 9, 10, 18 and 19, are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Publication 2015/0020210) in view of Chudy (US Publication 2010/0162410), and further in view of Lin et al. (US 2013/0219512), hereinafter Lin.
Regarding claim 9, Brown and Chudy teach the method of claim 7 and causing to output, via the GUI, the at least one of the first DRM-protected media or the second DRM-protected media (Brown ¶22: “In FIG.2, in response to determining that the unsecured rendering target 223 is the output destination of the first digital data 231, the display compositor module 209 may mask the protected content 233 of the first digital data 231 to produce a second digital data”) but fail to teach caching, via a storage system, the first DRM-protected media and the second DRM-protected media; upon receiving a request to load at least one of the first content element or the second content element, retrieving at least one of the first DRM-protected media or the second DRM-protected media. However, Lin teaches caching, via a storage system, the first DRM-protected media and the second DRM-protected media; upon receiving a request to load at least one of the first content element or the second content element, retrieving at least one of the first DRM-protected media or the second DRM-protected media. (Lin ¶28: “In contrast, the overwritten ReadRawData method will use the DRM agent to retrieve data from the DRM agent protected electronic file and store the data in a designated address in memory so that the data cannot be accessed by any unauthorized party. The data so stored can still be accessed by its corresponding player as the address in the memory will be given to the corresponding player by the overwritten method.”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Brown’s storage module to cache the generated media and output that stored media upon request to improve system efficiency (Lin ¶20: “Therefore, system performance and processing efficiency may be improved since the DRM-protected content may be accessed directly in the web browser10.”).
Claim 18 is substantially similar to the rejected claim 9 and is therefore rejected under the same rationale.
Regarding claim 10, Brown and Chudy fail to teach receiving a request to load the first content element via a browser module; and upon receiving the request, generating the first media associated with the first sensitive information. However, Lin teaches receiving a request to load the first content element via a browser module; and upon receiving the request, generating the first media associated with the first sensitive information (Lin ¶7: “The module is configured to determine whether the electronic file is DRM protected upon receiving a request for the electronic file and determines a specific DRM scheme of the DRM schemes which is used to protect the electronic file. After determining that the electronic file is DRM protected by the specific DRM scheme, the module activates the processing of the DRM-protected content”). A person having ordinary skill in the art would be motivated to modify the invention disclosed by Brown to allow a request to begin the DRM media generation to reduce the burden on the user device. (Lin ¶4: “However, the conventional implementation has a huge drawback as it requires the source code of the software applications for the DRM agent to be installed therein, or worse, it requires the source code of the Operating System (OS) and the configurations of the hardware resources for the DRM agent to be installed in the kernel of the OS.”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Brown and Chudy in further view of Lin to avoid the conventional issues of DRM agents having to be installed on the requesting device, which helps reduce complexity and processing on the user device (Lin ¶4: “It is very likely that the company developing the software applications or OS will not be willing to authorize the use of its source code to a third party. Also, the cost for authorization may be high, and the complexity of installing the DRM agent may be great.”).
Claim 19 is substantially similar to the rejected claim 10 and is therefore rejected on the same rationale.
Claims 3-5, 12-14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US Publication 2015/0020210) in view of Chudy (US Publication 2010/0162410), and further in view of Koivisto et al. (US Publication 2007/0124700), hereinafter Koivisto.
Regarding claim 3, Brown and Chudy teach the method of claim 1 but fail to teach determining a first set of dimensions associated with the first content element; and generating the first media based on the first set of dimensions. However, Koivisto teaches determining a first set of dimensions associated with the first content element; and generating the first media based on the first set of dimensions. (Koivisto ¶29: “Thus, the icon generation module 200 may be configured to select an available content item portion if it is large enough. For instance, the analysing module 202 may be configured to determine the size of an available content item portion.”). Brown, Chudy and Koivisto are all within the same field of endeavor of displaying browser content and are combinable. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Brown in view of Chudy further in view of Koivisto to have greater accuracy of generating media with respect to the sensitive content element within the requested media for better protection. (Koivisto ¶36: “This embodiment further enables to pre- pare the icon such that the visually meaningful areas in the selected portion of the content item can be better identified.”)
Claim 12 is substantially similar to the rejected claim 3 and is therefore rejected on the same rationale.
Regarding claim 4, Brown and Chudy fail to teach determining a second set of dimensions associated with the first media; and comparing the first set of dimensions and second set of dimensions to determine a third set of dimensions to be associated with the first DRM-protected media. However, Koivisto teaches determining a second set of dimensions associated with the first media; and comparing the first set of dimensions and second set of dimensions to determine a third set of dimensions to be associated with the first DRM-protected media. (Koivisto ¶29: “For instance, the analysing module 202 may be configured to determine the size of an available content item portion. In an embodiment, the icon generation module 200, in the embodiment of FIG. 2 the selection module 204, is configured to compare the size of an available content item portion to a predetermined minimum size required for the icon. The icon generation module 200 is configured to select the content item portion for icon generation if the size of the content item portion exceeds the predetermined minimum size and hence covers a predetermined portion of the available icon area. It is to be noted that one or more applicable icon sizes may be determined in the icon generation module”). Brown, Chudy and Koivisto are all within the same field of endeavor of displaying browser content and are combinable. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Brown in view of Chudy further in view of Koivisto to have greater accuracy of generating media with respect to the sensitive content element within the requested media for better protection. (Koivisto ¶36: “This embodiment further enables to pre-pare the icon such that the visually meaningful areas in the selected portion of the content item can be better identified.”)
Claim 13 is substantially similar to the rejected claim 4 and is therefore rejected on the same rationale.
Regarding claim 5, Brown and Chudy fail to teach determining whether the second set of dimensions exceeds the first set of dimensions; and upon determining the second set of dimensions exceeds the first set of dimensions, generating the first DRM-protected content element based on at least the third set of dimensions via the application server. However, Koivisto teaches determining whether the second set of dimensions exceeds the first set of dimensions; and upon determining the second set of dimensions exceeds the first set of dimensions, generating the first DRM-protected content element based on at least the third set of dimensions via the application server. (Koivisto ¶29: “For instance, the analysing module 202 may be configured to determine the size of an available content item portion. In an embodiment, the icon generation module 200, in the embodiment of FIG. 2 the selection module 204, is configured to compare the size of an available content item portion to a predetermined minimum size required for the icon. The icon generation module 200 is configured to select the content item portion for icon generation if the size of the content item portion exceeds the predetermined minimum size and hence covers a predetermined portion of the available icon area. It is to be noted that one or more applicable icon sizes may be determined in the icon generation module”). Brown, Chudy and Koivisto are all within the same field of endeavor of displaying browser content and are combinable. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Brown in view of Chudy further in view of Koivisto to have greater accuracy of generating media with respect to the sensitive content element within the requested media for better protection. (Koivisto ¶36: “This embodiment further enables to pre- pare the icon such that the visually meaningful areas in the selected portion of the content item can be better identified.”)
Claim 14 is substantially similar to the rejected claim 5 and is therefore rejected on the same rationale.
Claim 20 is substantially similar to features in the rejected claims 1-5 and 7, and is therefore rejected on the same rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nikolas et al., US 2023/0185884, System and Method for Blocking Screenshots and Screen Recordings of Premium User-Generated Content
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEC ANKRUM whose telephone number is (571)272-9209. The examiner can normally be reached M-F 7:30am-3:30pm.
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/A.C.A./Examiner, Art Unit 2434
/NOURA ZOUBAIR/Primary Examiner, Art Unit 2434