DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
CONTINUATION
This application is a continuation application of U.S. application no. 18/145,098 filed on December 22, 2022, now U.S. Patent 12,373,852 (“Parent Application”) which is a continuation application of U.S. application no. 15/990,990 filed on May 29, 2018, now U.S. Patent 11,551,238, which is a continuation application of U.S. application 12/697,145 filed on January 29, 2010, 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 Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on April 22, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The term “access control parameter” appears in the independent claims 1, 8 and 15. The specification is silent about a description of the access control parameter.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a distribution module configured to receive user requests for distribution of items of media content according to access control parameters of those items of media content, the distribution module being configured to track accesses of a particular item of media content of a first content provider and a value of the access control parameter associated with those accesses” in claim 1 and “…wherein the distribution module is further configured to capture an user metric associated with each tracked access” in claim 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,551,238.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of the operations of claims 1-21 are anticipated by claims 1-8 of the issued patent. While additional features are claimed in the patented claims instant claims 1-21 merely remove the additional features and instant independent claims 1, 8 and 15 are therefore anticipated by the patented claims such that any infringement on independent claims 1 and 8 of the issued patent would also necessarily infringe on the instant claims. Furthermore the dependent claims of the instant application are also anticipated by the dependent claims of the issued patent. Therefore claims 1-21 are rejected over U.S. Patent 11,551,238.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,373,852.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of the operations of claims 1-21 are anticipated by claims 1-23 of the issued patent. While additional features are claimed in the patented claims instant claims 1-21 merely remove the additional features and instant independent claims 1, 8 and 16 are therefore anticipated by the patented claims such that any infringement on independent claims 1, 8 and 16 of the issued patent would also necessarily infringe on the instant claims. Furthermore the dependent claims of the instant application are also anticipated by the dependent claims of the issued patent. Therefore claims 1-21 are rejected over U.S. Patent 12,373,852.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites a system and therefore meets Step 1 of the Patent Subject Matter Eligibility Analysis (MPEP § 2106.03).
The analysis then proceeds to Step 2A of the Patent Subject Matter Eligibility Analysis. Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception. Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon? In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application? In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B. This concludes the eligibility analysis. If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception (Step 2A: YES), and requires further analysis under Step 2B (where it may still be eligible if it amounts to an ‘‘inventive concept’’). Claim 1 recites storing items of media content belonging to disparate content providers, receiving user requests for distribution of items of media content, tracking accesses of a particular item of media content of a first content provider and a value of the access control parameter associated with those accesses, compiling media content access data and associated access control parameters for items of media content including the particular content item, transmitting the access data from the content distribution platform and providing access to the second item of media content according to the updated access control parameter. The claims can be viewed as being directed towards both a method of organizing human activity involving a commercial interaction as the distribution and accessing of media content falls under the category of a marketing or sales activity (MPEP § 2106.04(a)(2)(II)(B)) and as the claim only requires observation of an access and counting or recording each time the content is accessed can also be viewed as a mental process (MPEP § 2106.04(a)(2)(III)(B)) and even though the claim may require a computer for the distribution of electronic content the computer is simply being used as a tool to perform the mental process (MPEP § 2106.04(a)(2)(III)(C)(3)). Therefore under Prong One of Step 2A claim 1 is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Prong Two of Step 2A. The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h). Claim 1 recites a content database storing items of media content, a distribution module for distribution of media content, accesses of a particular item of media content from a first content provider, a database aggregation database configured to compile data including media content access data and associated access control parameters and a network interface configured to transmit the access data from the content distribution platform, all of which can be viewed as insignificant extra-solution activity (MPEP § 2106.05(g)) because all claims need to gather/receive data, store data, transmit outputs. Another factor in the analysis relates to the claimed operations of storing items of media content belonging to disparate content providers, receiving user requests for distribution of items of media content, tracking accesses of a particular item of media content of a first content provider and a value of the access control parameter associated with those accesses, compiling media content access data and associated access control parameters for items of media content including the particular content item, transmitting the access data from the content distribution platform and providing access to the second item of media content according to the updated access control parameter all can be viewed as mere instructions to apply an exception (MPEP § 2106.05(f)) as the operations recite only the idea of a solution or outcome and do not recite any details as to how the operations are performed. In this regard no particular manner of operations i.e. modification of operations are recited for storing items of media content, receiving user requests for distribution of items of media content according to access control parameters, compiling data comprising numbers of accesses and access control parameters or providing access to items and the generality with which these operations are claimed are indicative that no technological problem is being solved and that the claim only requires an unimproved general purpose computer to implement the operations. A final factor in performing the analysis relates to the fact that the content distribution platform comprising a content database, a distribution module, a data aggregation database and a network interface only tie the claim to a particular technological environment (MPEP § 2106.05(h)) as these recitations do nothing more than generally link the abstract idea to a particular technological environment and the only purpose that these elements serve is to limit the operations to the elements recited in the claim as opposed to other types of devices that could conceivably be claimed and therefore impose no meaningful limitation on the claim that would be sufficient to form a practical application of the abstract idea. Therefore under Prong Two of Step 2A claim 1 is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Step 2B where the claim is analyzed in order to determine whether additional elements are present that amount to significantly more than the abstract idea itself (also referred to as an inventive concept). MPEP § 2106.05 (II) describes how Step 2B is to be performed:
This evaluation is made with respect to the considerations that the Supreme Court has identified as relevant to the eligibility analysis, which are introduced generally in Part I.A of this section, and discussed in detail in MPEP § 2106.05(a) through (h). Many of these considerations overlap, and often more than one consideration is relevant to analysis of an additional element. Not all considerations will be relevant to every element, or every claim. Because the evaluation in Step 2B is not a weighing test, it is not important how the elements are characterized or how many considerations apply from this list. It is important to evaluate the significance of the additional elements relative to the invention, and to keep in mind the ultimate question of whether the additional elements encompass an inventive concept.
Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two. Thus, in Step 2B, examiners should:
• Carry over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and
• Evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d).
The conclusions carried over from Step 2A Prong Two include the claimed operations of storing items of media content belonging to disparate content providers, receiving user requests for distribution of items of media content, tracking accesses of a particular item of media content of a first content provider and a value of the access control parameter associated with those accesses, compiling media content access data and associated access control parameters for items of media content including the particular content item, transmitting the access data from the content distribution platform and providing access to the second item of media content according to the updated access control parameter all can be viewed as mere instructions to apply an exception (MPEP § 2106.05(f)) and the elements including the content distribution platform comprising a content database, a distribution module, a data aggregation database and a network interface which only tie the claim to a particular technological environment (MPEP § 2106.05(h)) as these recitations do nothing more than generally link the abstract idea to a particular technological environment. The operations that must be re-evaluated include the content database storing items of media content, the distribution module for distribution of media content, the accesses of a particular item of media content from a first content provider, the database aggregation database configured to compile data including media content access data and associated access control parameters and the network interface configured to transmit the access data from the content distribution platform, all of which were viewed as insignificant extra-solution activity (MPEP § 2106.05(g)) in Prong Two of Step 2A. Re-evaluating these operations under (MPEP § 2106.05(d)) it would be noted that the combination of these elements does not appear to be unconventional or non-routine in nature and as no improvements to any of the elements is described in the written disclosure it would be apparent to those skilled in the art that the elements fall under the categories listed in MPEP § 2106.05(d)(II) as being among the elements that the courts have already recognized as well-understood, routine and conventional and that no further inquiry is required under MPEP § 2106.05(d). Therefore under Step 2B claim 1 is held as being directed towards ineligible subject matter.
A review of dependent claims 2-7 reveal that no additional elements are introduced and that the operations that are present (capturing a user metric, filtering the access data according to the user metric, describing the user metric as location of an accessor, transmitting the access data upon the occurrence of a trigger condition, describing the basis of the triggering condition and describing the access data as including anonymized historical information regarding activity associated with one or more items of media content) even if analyzed as elements would fall under the categories held to be insufficient to form a practical application or an inventive concept under MPEP § 2106.05(a-h). Therefore claims 1-7 are held as being directed towards ineligible subject matter.
Claims 8-14 recite the method performed on the system of claims 1-7 and claims 8-14 recite that the method is computer-implemented and includes the content database recited in claim 1. The recitation of the computer would not alter the analysis under Step 2A or Step 2B. Therefore claims 8-14 are also held as being directed towards ineligible subject matter.
Claims 15-21, like claims 1-7 recite a computer-implemented system and include a recitation of one or more data processors and one or more computer-readable medium to execute the operations recited in method claims 8-14. Under Prong Two of Step 2A these elements would merely describe a particular technological environment. Under Step 2B the elements that are introduced are among the elements that the courts have already recognized as well-understood, routine and conventional and that no further inquiry is required under MPEP § 2106.05(d). Therefore claims 15-21 are also held as being directed towards ineligible subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 2 have been held as indefinite as having invoked 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112 sixth paragraph and where the written description has been held as being insufficient in providing sufficient structure to support the claims. MPEP § 2181 (IV) recites that “…A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description and may not be sufficiently enabled to support the full scope of the claim. The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and means-plus-function claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection for a means-plus-function limitation and a failure to satisfy the written description and enablement requirements of section 112(a) or pre-AIA section 112, first paragraph.” Therefore claim 1 is held as lacking sufficient support under the written description requirement.
Claims 2-7 are also rejected as being dependent upon claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-21 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 independent claims 1, 8 and 15, the claims recite similar limitations that make the claims indefinite. The limitations recite as follows:
transmit the access data from the content distribution platform, wherein an access control parameter of a second item of media content associated with the second content provider is updated based on the access data;
provide access to the second item of media content according to the updated access control parameter.
The claim limitations recite elements regarding a second item of media content. Regarding the limitations recited previous to the emphasized limitations, which recite a plurality of items of media content, each item of media content and a particular item of media content, the emphasized limitations do not clearly show a reference to a first item of content and a reasonable limitation that connects a particular item of media content to a second item of media content. Specifically, the claims describe providing access based on receiving user requests for distribution of (multiple) items of media content and tracking accesses of a particular item of media content of a first content provider. Thus, it is not clear how or why the claimed invention would provide access to the second item of media content according to the updated access control parameter. Therefore, the independent claims 1, 8 and 15 are rejected for being indefinite, and dependent claims 2-7, 9-14 and 16-21 are also rejected for their dependence to the indefinite claims.
Regarding claims 1 and 2, the claim limitations a distribution module configured to receive user requests for distribution of items, the distribution module being configured to track accesses of a particular item and wherein the distribution module is configured to provide access to the second item in claim 1; and wherein the distribution module is further configured to capture a user metric in claim 2 invoke 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The term “distribution module” does not clearly recite the structure required to perform the functions send or receive or track. In review of the disclosure, the distribution module is merely recited in the Specification as it is recited in the claims which does not provide a description of the structure that could modify the module to perform the functions of sending, receiving and tracking. Paragraph 0103 and 0119 only use functional language to describe the distribution module that only describe what the distribution module does but do not provide any structural description of what the distribution module consists of. Therefore, the claims are rejected for being indefinite.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-21 are rejected under pre-AIA 35 U.S.C. 102 (b) as being anticipated by Ginter et al. (U.S. Patent 5,892,900, hereinafter referred to as Ginter).
As per claims 1, 8 and 15
Ginter discloses a computer-implemented system for providing access to content, comprising: a content distribution platform by which a plurality of content providers distribute a plurality of items of media content for users of the platform to access (Abstract “The present invention provides systems and methods for electronic commerce including secure transaction management and electronic rights protection. 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. Secure subsystems used with such electronic appliances provide a distributed virtual distribution environment (VDE) that may enforce a secure chain of handling and control, for example, to control and/or meter or otherwise monitor use of electronically stored or disseminated information. Such a virtual distribution environment may be used to protect rights of various participants in electronic commerce and other electronic or electronic-facilitated transactions.”)
Ginter discloses a content database storing items of media content belonging to disparate content providers, each item of media content being associated with a media content characteristic and an access control parameter (2:33-56, “A fundamental problem for electronic content providers is extending their ability to control the use of proprietary information. Content providers often need to limit use to authorized activities and amounts.”, 2:41-47 “These participants need the ability to embody their range of agreements and requirements, including use limitations, into an "extended" agreement comprising an overall electronic business model. This extended agreement is represented by electronic content control information that can automatically enforce agreed upon rights and obligations.”, 7:48-57 “Alternatively, VDE may be used with information that is dispersed by authors and/or publishers to one or more recipients. This information may take many forms including: movies, audio recordings, games, electronic catalog shopping, multimedia, training materials, E-mail and personal documents, object oriented libraries, software programming resources, and reference/record keeping information resources (such as business, medical, legal, scientific, governmental, and consumer databases).”)
Ginter discloses a distribution module configured to receive user requests for distribution of items of media content according to access control parameters of those items of media content, the distribution module being configured to track accesses of a particular item of media content of a first content provider and a value of the access control parameter associated with those accesses (54:37-56 “For example, video production studio 204 might release a half-hour exercise video in the hope that as many viewers as possible will view it. The video production studio 204 wishes to receive $2.00 per viewing. Video production studio 204 may, through information utility 200, make the exercise video available in "protected" form to all consumers 206, 208, 210. Video production studio 204 may also provide "rules and controls" for the video. These "rules and controls" may specify for example: (1) any consumer who has good credit of at least $2.00 based on a credit account with independent financial provider 212 (such as Mastercard or VISA) may watch the video, (2) virtual distribution environment 100 will "meter" each time a consumer watches the video, and report usage to video production studio 204 from time to time, and (3) financial provider 212 may electronically collect payment ($2.00) from the credit account of each consumer who watches the video, and transfer these payments to the video production studio 204.”)
Ginter discloses a data aggregation database configured to compile data from the content database and the distribution module including media content access data and associated access control parameters for items of media content including the particular item, the data aggregation database being configured to compile access data comprising numbers of accesses and access control parameters for a plurality of items of media content, including the particular item of media content, having corresponding media content characteristics (55:44-58 “Information utility 200 may include a "transaction processor" 200b that processes transactions (to transfer electronic funds, for example) based on requests from participants and/or report receiver 200e. It may also include a "usage analyst" 200c that analyzes reported usage information. A "report creator" 200d may create reports based on usage for example, and may provide these reports to outside participants and/or to participants within information utility 200. A "report receiver" 200e may receive reports such as usage reports from content users. A "permissioning agent" 200f may distribute "rules and controls" granting usage or distribution permissions based on a profile of a consumer's credit worthiness, for example. An administrator 200h may provide information that keeps the virtual distribution environment 100 operating properly.”, 317:14-20 “As indicated above, end users 3310 in this example will periodically contact the VDE repository to transmit content usage information (e.g. related to consumption of budget, recording of other usage activities, etc.), replenish their budgets, modify their account profile, access usage analysis information, and perform other administrative and information exchange activities”)
Ginter discloses a network interface configured to transmit the access data from the content distribution platform, wherein an access control parameter of a second item of media content associated with the second content provider is updated based on the access data; wherein the distribution module is configured to provide access to the second item of media content according to the updated access control parameter (336:20-48 "In this example, distributor C may receive VDE content containers from creator B, creator C, and creator D, and associated sets of control information C.sub.B, C.sub.C, and C.sub.D. Distributor C may use the embedding control information and other control information to produce a new container with two or more VDE objects received from creator B, creator C, and creator D. In addition or alternatively, distributor C may create enabling control information for distribution to users and/or user/distributors (or in the case of C.sub.D, for distributors) for such received containers individually. For example, distributor C may create a container including content portions (e.g. embedded containers) from creator B, creator C, and creator D in which each such portion has control information related to its access and use that records, and allows an auditor to gather, sufficient information for each such creator to securely and reliably receive payments from distributor C based on usage activities related to users and/or user/distributors enabled by distributor C. Furthermore, distributor C may negotiate using VDE with some or all of such creators to enable a model in which distributor C provides overall control information for the entire container based on a "uniform" fee (e.g. calculated per month, per access, from a combined model, etc.) charged to users and/or user/distributors, while preserving the models of each such creator with respect to payments due to them by distributor C based on C.sub.B, C.sub.C, and/or C.sub.D, and, for example, resulting from each of their differing models for the collection of content usage information and any related (e.g. advertising) information.”)
With regard to claim 15 Ginter discloses one or more data processors and one or more computer-readable medium (21:1-21 “Designing VDE capabilities into one or more standard microprocessor, microcontroller and/or other digital processing components may materially reduce VDE related hardware costs by employing the same hardware resources for both the transaction management uses contemplated by the present invention and for other, host electronic appliance functions. This means that a VDE SPU can employ (share) circuitry elements of a "standard" CPU. For example, if a "standard" processor can operate in protected mode and can execute VDE related instructions as a protected activity, then such an embodiment may provide sufficient hardware security for a variety of applications and the expense of a special purpose processor might be avoided. Under one preferred embodiment of the present invention, certain memory (e.g., RAM, ROM, NVRAM) is maintained during VDE related instruction processing in a protected mode (for example, as supported by protected mode microprocessors). This memory is located in the same package as the processing logic (e.g. processor). Desirably, the packaging and memory of such a processor would be designed using security techniques that enhance its resistance to tampering.”)
As per claims 2, 9 and 16
Ginter discloses wherein the distribution module is further configured to capture an user metric associated with each tracked access (166:42-46 “The user might be offered a discount on time and/or quantity billing if he is willing to allow certain details concerning his retrieval of content to be provided to third parties (e.g., for demographic purposes).”)
As per claims 3, 10 and 17
Ginter discloses wherein the transmitted access data is filtered according to the user metric (303:15-19, “The originating user may wish to permit distribution only to specific users, defined groups of users, defined geographic areas, users authorized to act in specific organizational roles, or a combination of any or all such attributes.”, 303:25-32 “The organization and/or originating users may wish to know to what uses or geographic locations a document has been distributed. The organization may wish to know where documents with certain protection attributes have been distributed, for example, based on geographic information stored in site configuration records and/or name services records.”)
As per claims 4, 11 and 18
Ginter discloses wherein the user metric is a location of an accessor (303:15-19, “The originating user may wish to permit distribution only to specific users, defined groups of users, defined geographic areas, users authorized to act in specific organizational roles, or a combination of any or all such attributes.”, 303:25-32 “The organization and/or originating users may wish to know to what uses or geographic locations a document has been distributed. The organization may wish to know where documents with certain protection attributes have been distributed, for example, based on geographic information stored in site configuration records and/or name services records.”)
As per claims 5, 12 and 19
Ginter discloses wherein the access data is transmitted upon occurrence of a trigger condition. (40:48-61 “As another example, a distributor that failed to make payments and/or report usage information to a content provider might find that their budget for creating permissions records to distribute the content provider's content to users, and/or a security budget limiting one or more other aspect of their use of the provider's content, are not being refreshed by the content provider, once exhausted or timed-out (for example, at a predetermined date). In these and other cases, the offended party might decide not to refresh time ageing keys that had "aged out." Such a use of time aged keys has a similar impact as failing to refresh budgets or time-aged authorizations.”, 332:63-333:13 “The set of control information D.sub.A (C.sub.B) may include one or more meter methods that record the number of bytes of content from creator B's container decrypted by user A (in order to allow correct calculation of amounts owed by distributor A to creator B for user A's usage of creator B's content in accordance with the control information of C.sub.B that requires payment of $0.50 per kilobyte of decrypted information), and a further meter method associated with recording usage such that distributor A may gather sufficient information to securely generate billings associated with user A's usage of creator B's content and based on a "rental" model (e.g. distributor A may, for example, have included a meter method that records each calendar month that user A makes use of creator B's content, and relates to further control information that charges user A $10 per month for each such month during which user A makes use of such content.) User/distributor A may receive control information C.sub.B directly from creator B.”, 333:66-334:5 “C.sub.C may further include, for example: (a) a requirement that distributors ensure that creator C receive $1 per article accessed by users and/or user/distributors, which payment allows a user to access such an article for a period of no more than six months (e.g. using a map-type meter method that is aged once per month, time aged decryption keys, expiration dates associated with relevant permissions records, etc.)”)
As per claims 6, 13 and 20
Ginter discloses wherein the trigger is based on a request received at the platform or a passage of time. 40:48-61 “As another example, a distributor that failed to make payments and/or report usage information to a content provider might find that their budget for creating permissions records to distribute the content provider's content to users, and/or a security budget limiting one or more other aspect of their use of the provider's content, are not being refreshed by the content provider, once exhausted or timed-out (for example, at a predetermined date). In these and other cases, the offended party might decide not to refresh time ageing keys that had "aged out." Such a use of time aged keys has a similar impact as failing to refresh budgets or time-aged authorizations.”, 332:63-333:13 “The set of control information D.sub.A (C.sub.B) may include one or more meter methods that record the number of bytes of content from creator B's container decrypted by user A (in order to allow correct calculation of amounts owed by distributor A to creator B for user A's usage of creator B's content in accordance with the control information of C.sub.B that requires payment of $0.50 per kilobyte of decrypted information), and a further meter method associated with recording usage such that distributor A may gather sufficient information to securely generate billings associated with user A's usage of creator B's content and based on a "rental" model (e.g. distributor A may, for example, have included a meter method that records each calendar month that user A makes use of creator B's content, and relates to further control information that charges user A $10 per month for each such month during which user A makes use of such content.) User/distributor A may receive control information C.sub.B directly from creator B.”, 333:66-334:5 “C.sub.C may further include, for example: (a) a requirement that distributors ensure that creator C receive $1 per article accessed by users and/or user/distributors, which payment allows a user to access such an article for a period of no more than six months (e.g. using a map-type meter method that is aged once per month, time aged decryption keys, expiration dates associated with relevant permissions records, etc.)”)
As per claims 7, 14 and 21
Ginter discloses wherein the access data includes anonymized historical information regarding activity associated with one or more items of media content that share a common value media content characteristic and are associated with multiple content providers (57:45-55 “Rules and controls" can be used to protect the content user's privacy by limiting the information that is reported to other VDE participants. As one example, "rules and controls" can cause content usage information to be reported anonymously without revealing content user identity, or it can reveal only certain information to certain participants (for example, information derived from usage) with appropriate permission, if required. This ability to securely control what information is revealed and what VDE participant(s) it is revealed to allows the privacy rights of all VDE participants to be protected.”)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DRM Specification Candidate Version 2.0 – 16 July 2004, Open Mobile Alliance, OMA-DRM-DRM-V2_0-20040716-C, July 16, 2004, 142 pages discloses Open Mobile Alliance (OMA) specifications are the result of continuous work to define industry-wide interoperable mechanisms for developing applications and services that are deployed over wireless communication networks. The standard covers the protocol, encryption methods and rights expressions used for governing the use of content in wireless devices.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699