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 .
Status of Claims
This is a first office action on the merits, in response to the claims filed on May 12, 2026.
Claims 11, 13-18, 20 and 22-30 are pending.
Claims 1-10, 12, 19 and 21 have been canceled.
Claims 11, 13-18, 20 and 22-30 have been examined.
Response to Arguments
With respect to Claim Rejections - 35 USC § 101
Applicant argues: The amended "determining" step does not merely recite the general concept of managing usage rights. Rather, it recites a specific, multi-step technical process: "extracting one or more substring codes from the URC, wherein each of the one or more substring codes includes one of the one or more alphanumeric category codes and at least one action/provision combination associated with the given one of the one or more alphanumeric category codes, and wherein each of the at least one action/provision combinations includes i) at least one of the one or more alphanumeric action attribute codes associated with the given one of the one or more alphanumeric category codes; and ii) at least one of the one or more alphanumeric provision attribute codes associated with the given at least one of the one or more alphanumeric action attribute codes," "generating a temporary URC for the one or more necessary rights," and "comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC." These steps define a particular way of encoding, decomposing, and comparing structured alphanumeric strings, which constitutes a specific, computer-implemented data processing technique rather than an abstract method of organizing human activity. See Applicant’s Arguments pages 9-12.
The Examiner, however, respectfully disagrees. As a preliminary matter, the Examiner follows the 2019 Patent Eligibility Guidance (“2019 PEG”) which is a synthesis of the case law of Alice and its progeny. Additionally, the reasoning for this rejection is the same as was laid out in the Office Action Non-Final Rejection, dated 02/13/2026 (hereinafter, “Office Action”). Furthermore, while Applicant has amended the claim to recite additional subject matter, for example, the amended claim limitations recite: “wherein determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC, wherein each of the one or more substring codes includes one of the one or more alphanumeric category codes and at least one action/provision combination associated with the given one of the one or more alphanumeric category codes, and wherein each of the at least one action/provision combinations includes i) at least one of the one or more alphanumeric action attribute codes associated with the given one of the one or more alphanumeric category codes, and ii) at least one of the one or more alphanumeric provision attribute codes associated with the given at least one of the one or more alphanumeric action attribute codes; generating a temporary URC for the one or more necessary rights; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC”, further describe the abstract idea of managing usage rights because it describes a process/functions, for example, “determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC…; generating a temporary URC for the one or more necessary rights…; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC…” for carrying out a commercial interaction between parties that involves communicating data needed to authorize access to a property/contents. Additionally, a computing device, one or more data processors and non-transitory computer-readable storage medium does not necessarily restrict the claim from reciting an abstract idea. Accordingly, the claims (e.g., the amended claims) recite an abstract idea (See MPEP 2106.04). (Step 2A-Prong 1: YES).
Applicant further argues that, the specification explains that URCs provide "numerous improvements to the operation of a computing system and to the technical field of rights management," including enabling "computing systems to interpret, search for, and otherwise leverage contract terms with much more speed and accuracy than traditional techniques (e.g., use of plain text of contracts)." Specification [0083]...The specification further describes URCs as enabling machine-readable, compact encoding of contract terms and automated comparison operations that were previously performed manually or through cumbersome full-text contract review. Specification [0083]. Claims that are determined to improve computer capabilities or improve technology or a technical field support a finding that the claim integrates the judicial exception into a practical application See Applicant’s Arguments page 10.
The Examiner however, respectfully disagrees, the claims (e.g., the amended claims) also fail to recite a practical application of the abstract ideas. According to the 2019 PEG, the additional claim elements are considered when determining whether the claim recites a practical application, such as a technological improvement, of the abstract idea. However, the claims fail to introduce any such additional elements. Again, “determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC…; generating a temporary URC for the one or more necessary rights…; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC…” are not considered as additional claim elements. Therefore, the claims do not, for example, purport to improve the functioning of a computer. And the claims are directed to an abstract idea. Thus, claims do not integrate the abstract idea into a practical application. Therefore, this analysis is the same as was laid out in the Office Action. (Step 2A-Prong 2: NO).
The claims also fail to recite significantly more than the abstract idea. According to the 2019 PEG, the additional elements, when considered individually and as a combination, are analyzed to determine whether the claims recite significantly more than the abstract idea. However, the claims (e.g., the amended claims) fail to recite any new additional elements. As noted in the Office Action, the additional elements serve to implement the abstract idea in a computing environment.
Furthermore, the claims (e.g., the amended claims) recite, “determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC…; generating a temporary URC for the one or more necessary rights…; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC…”, would result in any improvement to the recited technology. Therefore, the claims limitations do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the claim is not patent eligible. (Step 2B: NO). See detail rejection below.
Accordingly, this ground of rejection is maintained.
With respect to Claim Rejections - 35 USC § 103
The Applicant’s arguments with respect to 35 USC 103 rejection are persuasive. Additionally, Applicant’s amendments to the claims have overcome this ground of rejection. Accordingly, this ground of rejection is withdrawn.
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 11, 13-18, 20 and 22-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 11 and 13-18 are directed to a method, claims 20, and 22-30 are directed to a non-transitory computer-readable storage medium, and claims 28 are directed to a system comprising one or more data processors and a non-transitory computer-readable storage medium containing instructions, in light of the specification paragraph [0012]. Therefore, these claims fall within the four statutory categories of invention. (Step 1: YES).
The claims recite an abstract idea of managing usage rights. Specifically, the claims recite “receiving, […], a request to access a property, the request to access the property involving one or more necessary rights; receiving a usage rights code (URC) associated with the request to access the property, the URC being an alphanumeric code indicative of one or more usage right terms, the one or more usage rights terms represented by a combination of one or more alphanumeric category codes, one or more alphanumeric action attribute codes, and one or more alphanumeric provision attribute codes; determining that the one or more necessary rights are satisfied by the one or more usage rights terms based at least in part on the combination of the one or more alphanumeric category codes, the one or more alphanumeric action attribute codes, and the one or more alphanumeric provision attribute codes, wherein determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC, wherein each of the one or more substring codes includes one of the one or more alphanumeric category codes and at least one action/provision combination associated with the given one of the one or more alphanumeric category codes, and wherein each of the at least one action/provision combinations includes i) at least one of the one or more alphanumeric action attribute codes associated with the given one of the one or more alphanumeric category codes, and ii) at least one of the one or more alphanumeric provision attribute codes associated with the given at least one of the one or more alphanumeric action attribute codes; generating a temporary URC for the one or more necessary rights; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC; and authorizing access to the property in response to determining that the one or more necessary rights are satisfied”, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106.04(a)) because it describes a process for carrying out a commercial interaction between parties that involves communicating data needed to authorize access to a property/contents. Additionally, the computing device, one or more data processors and non-transitory computer-readable storage medium do not necessarily restrict the claim from reciting an abstract idea. Accordingly, the claims recite an abstract idea (See MPEP 2106.04). (Step 2A-Prong 1: YES).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(a or d)), the additional element(s) of the claim(s) such as computing device, one or more data processors and non-transitory computer-readable storage medium merely use(s) a computer as a tool to perform an abstract idea. Specifically, the computing device, one or more data processors and non-transitory computer-readable storage medium perform(s) the steps or functions of “receiving, by a computing device, a request to access a property, the request to access the property involving one or more necessary rights; receiving a usage rights code (URC) associated with the request to access the property, the URC being an alphanumeric code indicative of one or more usage right terms, the one or more usage rights terms represented by a combination of one or more alphanumeric category codes, one or more alphanumeric action attribute codes, and one or more alphanumeric provision attribute codes; determining that the one or more necessary rights are satisfied by the one or more usage rights terms based at least in part on the combination of the one or more alphanumeric category codes, the one or more alphanumeric action attribute codes, and the one or more alphanumeric provision attribute codes, wherein determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC, wherein each of the one or more substring codes includes one of the one or more alphanumeric category codes and at least one action/provision combination associated with the given one of the one or more alphanumeric category codes, and wherein each of the at least one action/provision combinations includes i) at least one of the one or more alphanumeric action attribute codes associated with the given one of the one or more alphanumeric category codes, and ii) at least one of the one or more alphanumeric provision attribute codes associated with the given at least one of the one or more alphanumeric action attribute codes; generating a temporary URC for the one or more necessary rights; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC; and; authorizing access to the property in response to determining that the one or more necessary rights are satisfied.” The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (See MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (See MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (See MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea. Thus, claims 11, 20 and 28 does not integrate the abstract idea into a practical application. (Step 2A-Prong 2: NO).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of using a computing device, one or more data processors and non-transitory computer-readable storage medium to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of managing usage rights. As discussed above, taking the claim elements separately, the computing device, one or more data processors and non-transitory computer-readable storage medium perform(s) the steps or functions of “receiving, by a computing device, a request to access a property, the request to access the property involving one or more necessary rights; receiving a usage rights code (URC) associated with the request to access the property, the URC being an alphanumeric code indicative of one or more usage right terms, the one or more usage rights terms represented by a combination of one or more alphanumeric category codes, one or more alphanumeric action attribute codes, and one or more alphanumeric provision attribute codes; determining that the one or more necessary rights are satisfied by the one or more usage rights terms based at least in part on the combination of the one or more alphanumeric category codes, the one or more alphanumeric action attribute codes, and the one or more alphanumeric provision attribute codes, wherein determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC, wherein each of the one or more substring codes includes one of the one or more alphanumeric category codes and at least one action/provision combination associated with the given one of the one or more alphanumeric category codes, and wherein each of the at least one action/provision combinations includes i) at least one of the one or more alphanumeric action attribute codes associated with the given one of the one or more alphanumeric category codes, and ii) at least one of the one or more alphanumeric provision attribute codes associated with the given at least one of the one or more alphanumeric action attribute codes; generating a temporary URC for the one or more necessary rights; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC; and; authorizing access to the property in response to determining that the one or more necessary rights are satisfied.” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of managing usage rights. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible. (Step 2B: NO).
Regarding dependent claims
Claims 13 and 22 recite: identifying a supplier associated with the one or more usage right terms associated with the URC; and transmitting a notification to the supplier in response to authorizing access to the property.
Claims 14 and 23 recite: accessing metadata associated with the property, wherein receiving the URC includes extracting the URC from the metadata associated with the property.
Claims 15 and 24 recite: wherein the request to access the property includes a request to present the property via a presentation …, wherein the one or more necessary rights includes a necessary right associated with presenting the property via the presentation ….
Claims 16, 25 and 29 recite: initially determining that the one or more necessary rights are not satisfied by the determined one or more usage rights terms; identifying at least one unsatisfied necessary right from the one or more necessary rights; facilitating a transaction to acquire the one or more additional usage right terms; and updating the determined one or more usage rights terms with the one or more additional usage rights terms, such that the determined one or more usage rights terms now satisfy all of the one or more necessary rights.
Claims 17, 26 and 30 recite: determining that the one or more usage right terms includes one or more superfluous usage right terms unnecessary to satisfy the one or more necessary rights; facilitating a transaction to remove the one or more superfluous usage right terms; and updating the URC to remove the one or more superfluous usage rights terms.
Claims 18 and 27 recite: identifying a set of usage right terms associated with the request to access the property; generating the URC based at least in part on the identified set of usage right terms; and automatically procuring the set of usage right terms based at least in part on the generated URC.
Dependent claims 12-18 and 21-30 further describe the abstract idea of managing usage rights. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Statement Regarding Prior Art for claims [11, 13-18, 20 and 22-30]
Regarding independent clams 11, 20 and 28: Gilliam et al. (US 20040039704 A1, “Gilliam”) discloses:
receiving, by a computing device, a request to access a property, the request to access the property involving one or more necessary rights (Gilliam [0055]: In an exemplary embodiment, a user can browse a Web site running on Web server 150a of a vendor 150, using a browser installed in the client environment 120, and request an item corresponding to the item ticket 134; [0167]: the repository 800 processes the item 812 or the repository 800 receives a request 814 for the item 812);
receiving a usage rights code (URC) associated with the request to access the property, the URC being an alphanumeric code indicative of one or more usage right terms, the one or more usage rights terms represented by a combination of one or more alphanumeric category codes, one or more alphanumeric action attribute codes, and one or more alphanumeric provision attribute codes (Gilliam [0264]: at step 902 a potential recipient of an item specifies a rights expression indicating a first manner of use of the item proposed by the recipient and a provider of the item specifies a second rights expression indicating a second manner of use of the item proposed by the provider; [0154]: the central control repository 706 or one or more of the other repositories 710-720 can be configured to examine and analyze other attributes about the item 704, such as meta data, the type of file, the size of the file, the presence or absence of an appropriate digital ticket, watermark or security indicator, the absence of tampering or any other suitable characteristics. One or more of such characteristics can be used as part of the process to determine which of the repositories 706 and 710-720 can process the item 704. For example, if a determined characteristic of the item 704, such as a music file, movie file, and the like, is that the item 704 is over one megabyte in size, the determination may be to not e-mail the item 704, notwithstanding that e-mailing was requested by a user. [0051]: Thus, advantageously, usage rights and conditions can be associated with any suitable item including, objects, classes, categories, and services, for which use, access, distribution or execution is to be controlled, restricted, recorded, metered, charged or monitored in some fashion. The item ticket 134 and the license 142 thus can be used to define a property right), (see paragraphs [0051]-[0053], [0154], [0040], [0146], );
determining that the one or more necessary rights are satisfied by the one or more usage rights terms based at least in part on the combination of the one or more alphanumeric category codes, the one or more alphanumeric action attribute codes, and the one or more alphanumeric provision attribute codes (Gilliam [0264]: at step 908, a rule is applied to the determined correspondence to determine if the recipient should be granted use of the item; [0154]: the central control repository 706 or one or more of the other repositories 710-720 can be configured to examine and analyze other attributes about the item 704, such as meta data, the type of file, the size of the file, the presence or absence of an appropriate digital ticket, watermark or security indicator, the absence of tampering or any other suitable characteristics. One or more of such characteristics can be used as part of the process to determine which of the repositories 706 and 710-720 can process the item 704. For example, if a determined characteristic of the item 704, such as a music file, movie file, and the like, is that the item 704 is over one megabyte in size, the determination may be to not e-mail the item 704, notwithstanding that e-mailing was requested by a user); and
authorizing access to the property in response to determining that the one or more necessary rights are satisfied (Gilliam [0264]: If use of the item can be granted, as verified at step 910, then, at step 912, the recipient can be granted use of the item)
However, prior art does not disclose, neither singly nor in combination all of the specific combination of claims limitations which includes: wherein determining that the one or more necessary rights are satisfied includes: extracting one or more substring codes from the URC, wherein each of the one or more substring codes includes one of the one or more alphanumeric category codes and at least one action/provision combination associated with the given one of the one or more alphanumeric category codes, and wherein each of the at least one action/provision combinations includes i) at least one of the one or more alphanumeric action attribute codes associated with the given one of the one or more alphanumeric category codes, and ii) at least one of the one or more alphanumeric provision attribute codes associated with the given at least one of the one or more alphanumeric action attribute codes; generating a temporary URC for the one or more necessary rights; and comparing the temporary URC to the URC to determine whether there are sufficient matching portions such that the URC is deemed to satisfy the temporary URC.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
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/JAHED ALI/Examiner, Art Unit 3699
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