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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
This action is in response to the correspondence filed 11/27/2024.
Claims 1-20 are presented for examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,158,927. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of claims 1, 10 and 19 of the present application are anticipated by each of the limitations of claims 1 and 9 of U.S. Patent No. 12,158,927.
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 1-4 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0065552 to Elazar et al. (hereinafter Elazar) (Applicant’s IDS) in view of US 2014/0351096 to Radziwon et al. (hereinafter Radziwon) (Applicant’s IDS).
As to claims 1 and 10, Elazar teaches method, performed by a content distribution server, for providing a user device access to digital content (FIG. 4 and paragraph 41, content from content provider to the DRM device through the digital appliance), the method comprising: receiving a check-out request from the user device via a user interface (paragraph 61, request in order to check out a copy or copies of items of content, such as books, audio works, videos, computer games or the like, from the library by the users; paragraphs 29 and 42, using digital appliance 13); receiving an open content command from the user device (paragraph 42, request from the digital appliance for access to an item of content); determining from the open content command whether the user device is authorized to view the digital content (paragraph 42, determining whether the requested access is in accordance with the permission granted by the license associated with the accessed content); and providing a license response to the user device based on the user device being authorized to view the digital content (paragraph 42, after determining access is in accordance with the terms of the license, a response is sent, FIG. 5, response at 93), the license response comprising a license for viewing the digital content and the digital content (paragraphs 42 and 61, transfer to an individual by the library of an item of content along with the license to use it).
Elazar does not explicitly teach providing metainfo to the user device; and the open content command comprising an identifier of the digital content and an identifier for a user from the user device.
However, Radziwon teaches providing metainfo to the user device (paragraph 383, providing personalized user information associated with identified user and updated information relating to the user’s personal library and/or other personalized user information); and the open content command comprising an identifier of the digital content and an identifier for a user from the user device (paragraphs 385-393, wherein the request is sent from the user’s device for access to the content and the user ID and Digital Media Product ID are used to determine with the request is authorized).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the teachings of Elazar with the method of facilitating exchange of content as taught by Radziwon in order to verify the identity of the user requesting access to the content preventing access to an unauthorized user, therefore increasing the overall security of the system.
As to claims 2 and 11, Elazar teaches receiving a check-in request from the user device (paragraph 61, “check-in” initiated by the end-user); and revoking the license for viewing the digital content provided to the user device based on receiving the check-in request from the user device (paragraph 61, termination of the license after “check-in”).
As to claims 3 and 12, Elazar teaches making the license for viewing the digital content available to other user devices to gain viewing rights to the digital content (paragraph 61, "loan" a given number of one or more copies, when all copies held by the library are checked out, the library cannot loan the work to another until someone checks a copy back into the library and once one of a limited number of licenses of a particular work terminates, the library is free to re-license a copy of the work to another).
As to claims 4 and 13, Radziwon does not explicitly teach wherein the license comprises an expiration date timestamp, the expiration date timestamp defines a period of time after which the license for viewing the digital content expires and the user device no longer has rights to view the digital content (paragraphs 393, 414 and 415, including limited access rights for a limited time duration and including expiration date/time).
Claims 5, 6, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Elazar in view of Radziwon in further view of US 2016/0292677 A1 to Karlsson.
As to claims 5 and 14, Elazar and Radziwon do not explicitly teach wherein the user interface is a QR code.
However, Karlsson teaches the user interface is a QR code (paragraph 46, check-out code – a QR code).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the teachings of Elazar and Radziwon with the method of using a QR code as taught by Karlsson in order to optimize the speed and accuracy of the digital content process with minimal errors.
As to claims 6 and 15, Karlsson teaches wherein the user interface is an alternative digital access point selected from the group consisting of a URL, an App Clip, a Data Matrix code, or an NFC tag (paragraph 46, check-out code – NFC, RFID or similar contactless digital information).
Claims 7-9 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Elazar in view of Radziwon in further view of US 2013/0124868 to Sorotokin et al. (hereinafter Sorotokin) (Applicant’s IDS).
As to claims 7 and 16, Elazar and Radziwon do not explicitly teach wherein the license comprises encryption keys for decrypting digital content.
However, Sorotokin teaches the license comprising encryption keys for decrypting digital content (FIG. 2, license 200 including decryption key 212 and paragraph 31).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the teachings of Elazar and Radziwon with the license comprising the decryption key as taught by Sorotokin in order to eliminate the need to retrieve the key from a separate or remote location, therefore increasing the speed of gaining access the protected content.
As to claims 8 and 17, Sorotokin teaches wherein the digital content was encrypted using a base 64 encode Secure Hash Algorithm 1 (SHA1) hash and the encryption keys from the license allow the user device to decrypt the base 64 SHA1 hash (paragraphs 30 and 42, wherein the hash of the user identifier, using SHA-1, is used as a key for a symmetric decryption function with the result being the decryption key).
As to claims 9 and 18, Sorotokin teaches wherein the digital content is an electronic book (e-book) in an ePUB standard stored in an encrypted state in Web Crypto (paragraphs 114, including eBooks; paragraph 369 digital media files are encrypted with DRM protection).
As to claim 19, Elazar teaches a method, performed by a user device, for gaining access to digital content (FIG. 4 and paragraph 41, content from content provider to the DRM device through the digital appliance), the method comprising: sending a check-out request from the user device to a content distribution server via a user interface (paragraph 61, request in order to check out a copy or copies of items of content, such as books, audio works, videos, computer games or the like, from the library by the users; paragraphs 29 and 42, using digital appliance 13); sending an open content command (paragraph 42, request from the digital appliance for access to an item of content); receiving a license response from the content distribution server (paragraph 42, after determining access is in accordance with the terms of the license, a response is sent, FIG. 5, response at 93), the license response comprising a license and the digital content (paragraphs 42 and 61, transfer to an individual by the library of an item of content along with the license to use it); and consuming the digital content using the license (FIGS. 4 and 5, paragraph 42, content allowed to pass to rendering operation to output to the digital appliance).
Elazar does not explicitly teach receiving metainfo from the content distribution server; and the open content command comprising an identifier of the digital content and an identifier for the user device.
However, Radziwon teaches receiving metainfo from the content distribution server (paragraph 383, providing personalized user information associated with identified user and updated information relating to the user’s personal library and/or other personalized user information); and the open content command comprising an identifier of the digital content and an identifier for the user device (paragraphs 385-393, wherein the request is sent from the user’s device for access to the content and the user ID and Digital Media Product ID are used to determine with the request is authorized).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the teachings of Elazar with the method of facilitating exchange of content as taught by Radziwon in order to verify the identity of the user requesting access to the content preventing access to an unauthorized user, therefore increasing the overall security of the system.
Elazar and Radziwon do not explicitly teach the consuming comprises: comparing a date and time defined by an expiration date timestamp of the license to a current system time of the user device, and based on the current system time being within the date and time defined by the expiration date timestamp, decrypting the digital content using a decryption key of the license.
However, Sorotokin teaches the consuming comprises: comparing a date and time defined by an expiration date timestamp of the license to a current system time of the user device (paragraphs 33 and 47, permissions specify a period of time for which the license is valid or a period of time for which specific permissions are valid, wherein access is prohibited to the unencrypted content outside of such period of time, therefore the specified time period must be compared to the current time), and based on the current system time being within the date and time defined by the expiration date timestamp (paragraphs 33 and 47, permissions specify a period of time for which the license is valid or a period of time for which specific permissions are valid, wherein access is prohibited to the unencrypted content outside of such period of time, therefore access is allowed if the current time is within the time specified by the permissions), decrypting the digital content using a decryption key of the license (paragraphs 49-51 wherein access to the content is allowed in accordance with the permissions of the license, wherein access includes decrypting the encrypted content or content portions with corresponding decryption key(s) of the license).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the teachings of Elazar and Radziwon with the license comprising the decryption key as taught by Sorotokin in order to eliminate the need to retrieve the key from a separate or remote location, therefore increasing the speed of gaining access the protected content.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Elazar in view of Radziwon in view of Sorotokin in further view of Karlsson.
As to claim 20, Elazar, Radziwon and Sorotokin do not explicitly teach wherein the user interface is a QR code or an alternative digital access point selected from the group consisting of a URL, an App Clip, a Data Matrix code, or an NFC tag.
However, Karlsson teaches wherein the user interface is a QR code (paragraph 46, check-out code – a QR code) or an alternative digital access point selected from the group consisting of a URL, an App Clip, a Data Matrix code, or an NFC tag (paragraph 46, check-out code – NFC, RFID or similar contactless digital information).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify the teachings of Elazar, Radziwon and Sorotokin with the method of using a QR code or alternative digital access point as taught by Karlsson in order to optimize the speed and accuracy of the digital content process with minimal errors.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALCOLM CRIBBS whose telephone number is (571)270-1566. The examiner can normally be reached Monday-Friday 930a-330p; 430p-630p.
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MALCOLM . CRIBBS
Examiner
Art Unit 2497
/MALCOLM CRIBBS/ Primary Examiner, Art Unit 2497
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