Skip to main content

Full text of "USPTO Patents Application 09870801"

See other formats


United States Bvtent and Trademark Office 


UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark Office 
Addrni: COMMISSIONER FOR PATRNTS 
P.O. Box 1450 

Alexandria, Virginia 22313-1450 
www.iupto.gov 


| APPLICATION NO. 

FILING DATE 

FIRST NAMED INVENTOR 

ATTORNEY DOCKET NO. 

CONFIRMATION NO. 

09/870,801 


06/01/2001 

Karl L. Gintcr 

7451.0001-18000 

9392 

22852 7590 

09/26/2003 





LLP 

1300 1 STREET, NW 
WASHINGTON, DC 20005 


EXAMINER 


DARROW, JUSTIN T 


ART UNIT 


PAPER NUMBER 


2132 

DATE MAILED: 09/26/2003 


Please find below and/or attached an Office communication concerning this application or proceeding. 


PTO-90C (Rev. 07-01) 


\ 


Application No. Applicant(s) 

09/870,801 GINTERETAL 

Examiner Art Unit 

Justin T. Darrow 2132 
- The MAILING DATE of this communication appears on the cover sheet with the correspondence address - 
Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). 

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1 .704(b). 

Status 

1 )□ Responsive to communication(s) filed on . 

2a)D This action is FINAL. 2b)03 This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quay/e, 1935 CD. 1 1 , 453 O.G. 213. 
Disposition of Claims 

4) ^3 Claim(s) 91-128 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) ^ Claim(s) 97-728 is/are rejected. 

7) D Claim(s) is/are objected to. 

8) D Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10) ^ The drawing(s) filed on 01 June 2001 is/are: aM accepted or b)D objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a). 

1 1) D The proposed drawing correction filed on is: a)D approved b)D disapproved by the Examiner. 

If approved, corrected drawings are required in reply to this Office action. 

12) Q The oath or declaration is objected to by the Examiner. 
Priority under 35 U.S.C. §§119 and 120 

1 3) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 1 9(a)-(d) or (f). 

a)QAII b)Q Some*c)D None of: 

1 Certified copies of the priority documents have been received. 

2. D Certified copies of the priority documents have been received in Application No. . 

3. Q Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 

14) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application). 

a) □ The translation of the foreign language provisional application has been received. 

15) E] Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121. 
Attachment(s) 

1 ) ^ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) Paper No(s). . 

2) O Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) □ Notice of Informal Patent Application (PTO-152) 

3) ^ Jnformation Disclosure Statement(s) (PTO-1449) Paper No(s) 4. 6) □ Other: 

U.S. Patent and Trademark Office " " " ~ 

PTOL-326 (Rev. 04-01 ) Office Action Summary Part of Paper No. 6 


.|— — * 

Office Action Summary 




Application/Control Number: 09/870,801 
Art Unit: 2132 


Page 2 


DETAILED ACTION 


1. 


Claims 1-128 have been presented for examination. Claims 1-90 have been canceled and 


new claims 91-128 have been added. Claims 91-128 have been examined. 


Priority 


2. Acknowledgment is made that the instant application is a continuation of Application No. 
09/342,899, filed 06/29/1999, which is a continuation of Application No. 08/780,545, filed 
01/08/1997, now U.S. Patent 5,917,912 A, which is a division of Application No. 08/388,107, 
filed 02/13/1995, now abandoned. 


3. The information disclosure statement filed 06/03/2003, Paper No. 5, is not available to 
the examiner. Applicant is requested to re-submit a copy of this information disclosure 
statement, Form 1449. Applicant is advised that the date of the re-submission of any item of 
information contained in this information disclosure statement or the submission of any missing 
element(s) will be the date of the original submission in compliance with 37 CFR 1.97(b)(1). 
See MPEP § 609. 


4. The following is a quotation of the first paragraph of 35 U.S.C. 1 12: 

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. 


Information Disclosure Statement 


Claim Rejections - 35 USC § 112 


Application/Control Number: 09/870,801 Page 3 

Art Unit: 2132 


5. Claims 91-95 and claims 121-127 are rejected under 35 U.S.C. 1 12, first paragraph, as 
failing to comply with the written description requirement. The claims 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 inventors, at the time the application was filed, had possession of the 
claimed invention. - The description of a public portion and a private portion is not supported in 
the specification (see page 34, line 7 - page 35, line 27). 

6. Claims 91-95 and claims 121-127 are rejected under 35 U.S.C. 1 12, first paragraph, as 
failing to comply with the enablement requirement. The claims contains subject matter which 
was not described in the specification in such a way as to enable one skilled in the art to which it 
pertains, or with which it is most nearly connected, to make and/or use the invention. The 
enablement of a public portion and a private portion is not supported in the specification (see 
page 34, line 7 - page 35, line 27). 

7. Claims 103 and 104 are rejected under 35 U.S.C. 112, first paragraph, as failing to 
comply with the written description requirement. The claims 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 inventors, at the time the application was filed, had possession of the claimed 
invention. The description of a public tag and a private tag are not supported in the specification 
(see page 34, line 7 - page 35, line 27). 

8. Claims 103 and 104 are rejected under 35 U.S.C. 112, first paragraph, as failing to 
comply with the enablement requirement. The claims contains subject matter which was not 
described in the specification in such a way as to enable one skilled in the art to which it pertains, 


Application/Control Number: 09/870,80 1 Page 4 

Art Unit: 2132 

or with which it is most nearly connected, to make and/or use the invention. The enablement of a 
public tag and a private tag are not supported in the specification (see page 34, line 7 - page 35, 
line 27). 


9. The following is a quotation of the second paragraph of35U.S.C. 112: 

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. 

10. Claim 93 is rejected under 35 U.S.C. 1 12, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

Claim 93 recites the limitation "the type of computer" in line 2. There is insufficient 
antecedent basis for this limitation in the claim. This rejection can be overcome by deleting 
"computer" in claim 93, line 2 and replacing with —hardware—. 

1 1 . Claim 97 is rejected under 35 U.S.C. 1 12, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

Claim 97 contains the trademark/trade name "Microsoft Windows®". Where a trademark 
or trade name is used in a claim as a limitation to identify or describe a particular material or 
product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. 
See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the 
trademark or trade name cannot be used properly to identify any particular material or product. 
A trademark or trade name is used to identify a source of goods, and not the goods themselves. 
Thus, a trademark or trade name does not identify or describe the goods associated with the 


Application/Control Number: 09/870,801 Page 5 

Art Unit: 2132 

trademark or trade name. In the present case, the trademark/trade name is used to 
identify/describe the operating system and, accordingly, the identification/description is 
indefinite. 

12. Claim 103 is rejected under 35 U.S.C. 1 12, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

Claim 103 recites the limitation "the public tag" in line 3. There is insufficient 
antecedent basis for this limitation in the claim. This rejection can be overcome by deleting the 
first "the" in claim 1033, line 3 and replacing with —a--. 

13. Claim 123 is rejected under 35 U.S.C. 1 12, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

Claim 123 recites the limitation "the type of computer" in line 2. There is insufficient 
antecedent basis for this limitation in the claim. This rejection can be overcome by deleting 
"computer" in claim 123, line 2 and replacing with —hardware--. 

14. Claim 128 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for 
failing to particularly point out and distinctly claim the subject matter which applicant regards as 
the invention. 

Claim 128 is rejected under 35 U.S.C. 1 12, second paragraph, as being incomplete for 
omitting essential elements, such omission amounting to a gap between the elements. See MPEP 
§ 2172.01. The omitted elements are: distinct hardware elements of which a computer 
processing system is comprised. 




Application/Control Number: 09/870,801 
Art Unit: 2132 


Page 6 


Claim Rejections - 35 USC § 101 


15. 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 91-95 are rejected under 35 U.S.C. 101 because the claimed invention is directed 
to non- statutory subject matter. Claims 91-95 are drawn to a load module comprising a load 
module header, a load module body including executable programming and a reference to data. 
These elements are disembodied data structures involving no more than functional and 
nonfunctional descriptive material and therefore, are nonstatutory under 35 U.S.C. 101. See In re 
Warmerdam, 33 F.3d 1354; 31 USPQ2d 1754. See MPEP § 2106 IV. B. 1 (a)-(b). See 
http://www.uspto.gov/web/menu/pbmethod/ (35 U.S.C. 101 Training Materials). 

Claims 96-120 are rejected under 35 U.S.C. 101 because the claimed invention is directed 
to non-statutory subject matter. Claims 91-95 are drawn to an operating system comprising 
validation programming and communications programming. These elements are disembodied 
data structures involving no more than functional descriptive material and therefore, are 
nonstatutory under 35 U.S.C. 101. See In re Warmerdam, 33 F.3d 1354; 31 USPQ2d 1754. See 
MPEP § 2106 IV. B. 1 (a). See http://www.uspto.gov/web/menu/pbmethod/ (35 U.S.C. 101 
Training Materials). 

Claims 121-125; 126; and 127 are rejected under 35 U.S.C. 101 because the claimed 
inventions are directed to non-statutory subject matter. Claims 121-125; 126; and 127 are 
respectively drawn to a component assemblies comprising a first and second load module each 
comprising a load module header and a load module body including executable programming 
and a reference to data. These elements are disembodied data structures involving no more than 


» 

Application/Control Number: 09/870,801 
Art Unit: 2132 


Page 7 


functional and nonfunctional descriptive material and therefore, are nonstatutory under 35 
U.S.C. 101. See In re Warmerdam, 33 F.3d 1354; 31 USPQ2d 1754. See MPEP § 2106 IV. B. 1 
(a)-(b). See http://www.uspto.gov/web/menu/pbmethod/ (35 U.S.C. 101 Training Materials). 

Claim Rejections - 35 USC § 102 

16. The following is a quotation of the appropriate paragraphs of 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 - 

(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed 
in the United States before the invention by the applicant for patent or (2) a patent granted on an application for 
patent by another filed in the United States before the invention by the applicant for patent, except that an 
international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this 
subsection of an application filed in the United States only if the international application designated the United 
States and was published under Article 21(2) of such treaty in the English language. 

17. Claims 91-96, 98-107, and 1 1 1-128 are rejected under 35 U.S.C. 102(e) as being 
anticipated by Stefik, U.S. Patent No. 5,715,403 A. 

As per claim 91, Stefik discloses a load module comprising: 

a load module header including a public portion and a private portion (see column 1 8, 
lines 25-26; figure 14; the basic contents of a right including a transactional component and 
specification component); 

the public portion including identification information and information describing 
at least one aspect of a hardware or software platform on which the load module is designed to 
execute (see column 18, lines 25-34; figure 14, items 1450 and 1451; a label (e.g. COPY or 
PRINT) which indicates the use of the item with an indication of software corresponding to that 


Application/Control Number: 09/870,80 1 Page 8 

Art Unit: 2132 

use and hardware to implement that use; see column 19, lines 47-58; figure 15, item 1504; 
Grammar element "Render-Code: = [Play: {Player:Player-ID} [Print: {PrintenPrinter-ID}]"); 

the private portion including at least one correlation tag including information 
used to determine whether a method has authorization to call or load the load module (see 
column 18, lines 35-42; figure 14, items 1452, 1453, 1454, 1455, 1456, and 1457; specifications 
components are used to specify conditions which must be satisfied prior to the right being 
exercised; see column 18, lines 1-5; where the usage rights statements are not readily readable, 
but must be interpreted by repositories to determine what transactions can be successfully carried 
our for a digital work); and 

a load module body, including; 

executable programming specifying that the information relating to a use of the 
load module be communicated to a remote site (see column 29, lines 60-61 and column 30, lines 
23-26; an End-charges transaction to end a charge for metered use involves a repository send 
periodic charge information to a credit server for each block of time); and 

a reference to data, at least some of the data being associated with or used by the 
executable programming (see column 30, lines 10-22; a Begin-charges transaction containing 
usage fee information and a list of charges from parts of the digital work). 

As per claim 92, Stefik further specifies: 

a level or degree of security present or available on the platform (see column 15, line 55 - 
column 16, line 39; TABLE 2; REPOSITORY SECURITY LEVELS). 


Application/Control Number: 09/870,80 1 Page 9 

Art Unit: 2132 

As per claim 93 , Stefik additionally points out: 

the type of hardware (see column 19, lines 47-58; figure 15, item 1504; Grammar 
element "Render-Code: = [Play: {Player:Player-ID} [Print: {Printer:Printer-ID}]" indicating the 
device that would execute the play and/or print application). 

As per claim 94, Stefik next mentions: 

the type of software running on the platform (see column 19, lines 47-58; figure 15, item 
1504; Grammar element "Render-Code: = [Play: {Player:Player-ID} [Print: {Printer:Printer-ID}]" 
indicating the code required for the play and/or print application). 

As per claim 95, Stefik moreover admits: 

one or more computer languages recognized by the platform (see column 3, lines 52-61; 
where the hardware platform can accommodate different software that is metered during usage). 

As per claim 96, Stefik illustrates an operating system comprising: 

a component assembling program which assembles a plurality of elements into a 

component (see column 30, lines 38-62; processing a usage request to print or view one or 

multiple digital works under particular conditions), including; 

(a) validation programming used to validate the elements (see column 31, lines 1-6; it is 

necessary to verify that the requirements are met for ALL of the parts that are involved in a 

transaction including checking for each of the relevant parts of the work), including: 


Application/Control Number: 09/870,801 Page 10 

Art Unit: 2132 

(1) tag checking programming used to check the identity and validity of elements 
by comparing tags incorporated in the elements to expected values (see column 3 1, lines 32-37; 
figure 18, step 1806; comparing the time specification of the work with the current time; see 
column 31, lines 49-53; figure 18, step 1808; checking if the copy count equals zero; see column 
31, lines 54-57; figure 18, step 1809; checking the copies in use for the requested right is greater 
than or equal to any copy count for the requested right); and 

(2) element identification and referencing programming (see column 32, lines 61- 
64; figure 18, step 1810; referencing the digital work in use by incrementing the number of 
copies in use by the number of digital); and 

(b) communications programming used to communicate at least one result of the tag 
comparison to a remote site (see column 32, lines 39-45; figure 18, steps 1818 and 1819; when 
the use is authorized by conditions satisfied above, and there is a metered usage fee specification, 
there is an End-Charge financial transaction to confirm billing with a credit server); and 

an object switch which controls and communicates objects (see column 31, lines 32-57; 
figure 18, steps 1805, 1806, 1808, and 1809; the server controls the rights associated with the 
digital work in accordance with different conditions being satisfied), including: 

one or more stream interfaces (see column 7, lines 62-67; figure 2, items 201, 205, and 
203; communication between repositories concerning access to digital works utilizing a 
repository transaction protocol); and 

a container manager to manage secure containers (see column 7, lines 59-62; figure 2, 
item 201 ; when in server mode, the repository is an exchange medium for digital works; see 


Application/Control Number: 09/870,801 Page 1 1 

Art Unit: 2132 

column 8, lines 43-50; figure 4a, items 401, 402, and 403; including a boundary at a security 
level to provide physical integrity and security for the digital work). 

As per claim 98, Stefik further elaborates: 

that the operating system runs in a processing environment (see column 30, lines 39-40; 
in which a usage request is processed); and 

the operating system includes at least one added component delivered at some point after 
the initial installation of the operating system at the processing environment (see column 30, 
lines 40-49; a request for the digital work received at the server). 

As per claim 99, Stefik additionally points out: 

that the added component provides scalability to the operating system (see column 30, 
lines 59-62; the request can be for a folder comprised of a plurality of digital works; see column 
31, lines 32-57; figure 18, steps 1805, 1806, 1808, and 1809; requiring authorization for a 
plurality of rights). 

As per claim 100, Stefik then describes: 

that the added component comprises a component assembly made up of a plurality of 
elements (see column 30, lines 59-62; the request can be for a folder comprised of a plurality of 
digital works). 


As per claim 101, Stefik also mentions: 


Application/Control Number: 09/870,80 1 Page 1 2 

Art Unit: 2132 

a channel definition programming which sets up and initializes channels in which 
component assemblies are assembled (see column 32, lines 29-30; figure 18, steps 1806-1815; 
there may be a particular order in which the conditions are evaluated for the rights). 

As per claim 102, Stefik then embodies: 

programming which checks the components for information regarding the manner in 
which they are designed to be assembled into a component assembly, such that they are 
assembled in a manner specified by the information (see column 31, lines 54-64; figure 18, steps 
1809 and 1810; processing the request for copies in use such that the maximum of allowed 
copies is not exceeded). 

As per claim 103, Stefik moreover discusses: 

comparison programming which compares the contents of a public tag associated with 
the element with the contents of a private tag associated with the element (see column 3 1 , lines 
54-57; figure 18, step 1809; checking the copies in use for the requested right is greater than or 
equal to any copy count for the requested right; see column 16, lines 7-8; Level Description of 
Security (stored files are encrypted, communications not necessarily encrypted); where the 
request for access for the digital work is unencrypted (public), but the authorized maximum 
number of copies in use is encrypted (private)). 


As per claim 104, Stefik then suggests: 


Application/Control Number: 09/870,80 1 Page 1 3 

Art Unit: 2132 

decrypting the private tag prior to the comparison (see column 31, lines 54-57; figure 18, 
step 1809; checking the copies in use for the requested right is greater than or equal to any copy 
count for the requested right; see column 16, lines 7-8; Level Description of Security (stored files 
are encrypted, communications not necessarily encrypted); where the request for access for the 
digital work is unencrypted (public), but the authorized maximum number of copies in use is 
encrypted (private) and decrypted before comparison). 

As per claim 105, Stefik also specifies: 

comparison programming which compares the contents of a tag associated with an 
element with the contents of a tag associated with a process requesting the element (see column 
31, lines 54-57; figure 18, step 1809; checking the copies in use for the requested right is greater 
than or equal to any copy count for the requested right). 

As per claim 106, Stefik next describes: 

decrypting the tag associated with the element prior to the comparison (see column 31, 
lines 54-57; figure 18, step 1809; checking the copies in use for the requested right is greater 
than or equal to any copy count for the requested right; see column 16, lines 7-8; Level 
Description of Security (stored files are encrypted, communications not necessarily encrypted); 
where the request for access for the digital work is unencrypted (public), but the authorized 
maximum number of copies in use is encrypted (private) and decrypted before comparison). 


As per claim 107, Stefik additionally states: 


Application/Control Number: 09/870,801 


Page 14 


Art Unit: 2132 

comparison programming which compares the contents of a tag associated with an 
element with the contents of a tag stored in a secure processing unit (see column 31, lines 54-57; 
figure 18, step 1809; checking the copies in use for the requested right is greater than or equal to 
any copy count for the requested right; see column 7, lines 59-62; figure 2, item 201; when in 
server mode, the repository is an exchange medium for digital works; see column 8, lines 43-50; 
figure 4a, items 401, 402, and 403; including a boundary at a security level to provide physical 
integrity and security for the digital work and its attached rights). 

As per claim 111, Stefik further specifies: 

an object repository manager (see column 8, lines 10-14; figure 2, item 203; a rendering 
repository coupled to a rendering device to output the digital work). 

As per claim 1 12, Stefik then points out: 

that the object repository manager provides services relating to access to an object 
repository (see column 8, lines 10-14; figure 3, item 203; a rendering repository is coupled to a 
rendering device (e.g. a printer device) to comprise a rendering system). 

As per claim 113, Stefik moreover describes: 

certificate programming which checks digital certificates associated with the elements 
(see column 28, lines 8-19; figure 16, step 1605; checking an identification certificate by 
decrypting it with a public key). 


Application/Control Number: 09/870,80 1 Page 1 5 

Art Unit: 2132 

As per claim 1 14, Stefik next embodies: 

comparing an expiration data on at least some of the digital certificates with the current 
date (see column 28, lines 17-19; removing repositories from the hot list when their certificates 
expire). 

As per claim 115, Stefik also notes: 

extracting one or more keys from at least one of the digital certificates (see column 27, 
lines 59-62; identification certificate contains a public key for the repository) and using the one 
or more keys to decrypt information associated with the digital certificate from which the one or 
more keys was extrcated (see column 28, lines 8-11; figure 16, step 1607; extracting a repository 
identifier by decrypting it from the digital certificate with the public key for the repository). 

As per claim 116, Stefik then describes: 

a stream router which includes programming which routes streams to and from the stream 
interfaces (see column 17, lines 28-31; credit server periodically communicates with the billing 
clearinghouse). 

As per claim 117, Stefik additionally points out: 

a stream interface including at least one real time stream interface (see column 17, lines 
33-35; the credit server acts as a "debit card" where transactions occur in "real-time" against a 
user account). 


Application/Control Number: 09/870,80 1 Page 1 6 

Art Unit: 2132 

As per claim 118, Stefik next specifies: 

the real time stream interface accepting and routing real time data stream information 
(see column 17, lines 33-35; the credit server acts as a "debit card" where transactions occur in 
both directions in "real-time" against a user account). 

As per claim 119, Stefik moreover illustrates: 

the channels serve to pass events to methods and load modules specified to process the 
events (see column 8, lines 64-67; figure 4a, items 404 and 402; the repository is coupled to the 
printer repository to pass works to be printed). 

As per claim 120, Stefik further suggests: 

using a blueprint in the component assembly process (see column 32, lines 29-30; figure 
18, steps 1806-1815; there is an arbitrary order in which the conditions are checked). 

As per claim 121, Stefik discloses a load module comprising: 

a first load module and a second load module (see column 34, lines 39-67; one for a copy 
transaction; see column 37, lines 1-40; the other for a print transaction), each load module 
comprising: 

a load module header including a public portion and a private portion (see column 18, 
lines 25-26; figure 14; the basic contents of a right including a transactional component and 
specification component); 


Application/Control Number: 09/870,80 1 Page 1 7 

Art Unit: 2132 

the public portion including identification information and information describing 
at least one aspect of a hardware or software platform on which the load module is designed to 
execute (see column 18, lines 25-34; figure 14, items 1450 and 1451; a label (e.g. COPY or 
PRINT) which indicates the use of the item with an indication of software corresponding to that 
use and hardware to implement that use; see column 19, lines 47-58; figure 15, item 1504; 
Grammar element "Render-Code: = [Play:{Player:Player-ID} or [Print: {Printer:Printer-ID}]"); 

the private portion including at least one correlation tag including information 
used to determine whether a method has authorization to call or load the load module (see 
column 18, lines 35-42; figure 14, items 1452, 1453, 1454, 1455, 1456, and 1457; specifications 
components are used to specify conditions which must be satisfied prior to the right being 
exercised; see column 18, lines 1-5; where the usage rights statements are not readily readable, 
but must be interpreted by repositories to determine what transactions can be successfully carried 
our for a digital work); and 

a load module body, including; 

executable programming specifying that the information relating to a use of the 
load module be communicated to a remote site (see column 29, lines 60-61 and column 30, lines 
23-26; an End-charges transaction to end a charge for metered use involves a repository send 
periodic charge information to a credit server for each block of time); and 

a reference to data, at least some of the data being associated with or used by the 
executable programming (see column 30, lines 10-22; a Begin-charges transaction containing 
usage fee information and a list of charges from parts of the digital work). 


Application/Control Number: 09/870,801 Page 18 

Art Unit: 2132 

As per claim 122, Stefik further specifies: 

a level or degree of security present or available on the platform (see column 15, line 55 - 
column 16, line 39; TABLE 2; REPOSITORY SECURITY LEVELS). 

As per claim 123, Stefik additionally points out: 

the type of hardware (see column 19, lines 47-58; figure 15, item 1504; Grammar 
element "Render-Code: = [Play:{Player:Player-ID} or [Print: { Printer :Printer-ID}]" indicating 
the device that would execute the play and/or print application). 

As per claim 124, Stefik next mentions: 

the type of software running on the platform (see column 19, lines 47-58; figure 15, item 
1504; Grammar element "Render-Code: = [Play:{Player:Player-ID} or [Print: {Printer:Printer- 
ID}]" indicating the code required for the play and/or print application). 

As per claim 125, Stefik moreover admits: 

one or more computer languages recognized by the platform (see column 3, lines 52-61; 
where the hardware platform can accommodate different software that is metered during usage). 

As per claim 126, Stefik discloses a load module comprising: 

a first load module and a second load module (see column 34, lines 39-67; one for a copy 
transaction; see column 37, lines 1-40; the other for a print transaction), each load module 
comprising: 



Application/Control Number: 09/870,801 


Page 19 


Art Unit: 2132 

a load module header including a public portion and a private portion (see column 18, 
lines 25-26; figure 14; the basic contents of a right including a transactional component and 
specification component); 

the public portion including identification information (see column 18, lines 25- 
34; figure 14, items 1450 and 1451; a label (e.g. COPY or PRINT)); 

the private portion including at least one correlation tag including information 
used to determine whether a method has authorization to call or load the load module (see 
column 18, lines 35-42; figure 14, items 1452, 1453, 1454, 1455, 1456, and 1457; specifications 
components are used to specify conditions which must be satisfied prior to the right being 
exercised; see column 18, lines 1-5; where the usage rights statements are not readily readable, 
but must be interpreted by repositories to determine what transactions can be successfully carried 
our for a digital work) and information on the stack size (see column 16, lines 17-21; in 
Repository Security Level 3, execution of the works as programs, the repository runs them in 
their own address space and does not give them access to any file storage or other memory); and 
a load module body, including; 

executable programming specifying that the information relating to a use of the 
load module be communicated to a remote site (see column 29, lines 60-61 and column 30, lines 
23-26; an End-charges transaction to end a charge for metered use involves a repository send 
periodic charge information to a credit server for each block of time); and 


executable programming (see column 30, lines 10-22; a Begin-charges transaction containing 
usage fee information and a list of charges from parts of the digital work). 


a reference to data, at least some of the data being associated with or used by the 


Application/Control Number: 09/870,80 1 Page 20 

Art Unit: 2132 


As per claim 127, Stefik discloses a load module comprising: 

a first load module and a second load module (see column 34, lines 39-67; one for a copy 
transaction; see column 37, lines 1-40; the other for a print transaction), each load module 
comprising: 

a load module header including a public portion and a private portion (see column 18, 
lines 25-26; figure 14; the basic contents of a right including a transactional component and 
specification component); 

the public portion including identification information (see column 18, lines 25- 
34; figure 14, items 1450 and 1451; a label (e.g. COPY or PRINT)); 

the private portion including at least one correlation tag including information 
used to determine whether a method has authorization to call or load the load module (see 
column 18, lines 35-42; figure 14, items 1452, 1453, 1454, 1455, 1456, and 1457; specifications 
components are used to specify conditions which must be satisfied prior to the right being 
exercised; see column 18, lines 1-5; where the usage rights statements are not readily readable, 
but must be interpreted by repositories to determine what transactions can be successfully carried 
our for a digital work) and an access tag made up of at least two fields, each of which can be 
accessed and used separately (see column 18, lines 14-18; a purchaser may choose between two 
PRINT rights assigned by the creator: a right to make 5 copies for $10.00 or a right to make 
unlimited copies for $100.00); and 

a load module body, including; 


Application/Control Number: 09/870,80 1 Page 2 1 

Art Unit: 2132 

executable programming specifying that the information relating to a use of the 
load module be communicated to a remote site (see column 29, lines 60-61 and column 30, lines 
23-26; an End-charges transaction to end a charge for metered use involves a repository send 
periodic charge information to a credit server for each block of time); and 

a reference to data, at least some of the data being associated with or used by the 
executable programming (see column 30, lines 10-22; a Begin-charges transaction containing 
usage fee information and a list of charges from parts of the digital work). 

As per claim 128, Stefik illustrates a computer processing system comprising: 

a component assembler which assembles a plurality of elements into a component (see 
column 30, lines 38-62; processing a usage request to print or view one or multiple digital works 
under particular conditions), including; 

a validator used to validate the elements (see column 31, lines 1-6; it is necessary to 
verify that the requirements are met for ALL of the parts that are involved in a transaction 
including checking for each of the relevant parts of the work), including: 

a tag checker used to check the identity and validity of elements by comparing tags 
incorporated in the elements to expected values (see column 31, lines 32-37; figure 18, step 
1806; comparing the time specification of the work with the current time; see column 31, lines 
49-53; figure 18, step 1808; checking if the copy count equals zero; see column 31, lines 54-57; 
figure 18, step 1809; checking the copies in use for the requested right is greater than or equal to 
any copy count for the requested right); and 


Application/Control Number: 09/870,80 1 Page 22 

Art Unit: 2132 

an object switch coupled to the component assembler (see column 31, lines 32-57; figure 
18, steps 1805, 1806, 1808, and 1809; the server controls the rights associated with the digital 
work in accordance with different conditions being satisfied), including: 

(a) a stream router that communicates component assemblies (see column 7, lines 62-67; 
figure 2, items 201, 205, and 203; communication between repositories concerning access to 
digital works utilizing a repository transaction protocol); 

(b) one or more stream interfaces coupled to the stream router (see column 7, lines 62-67; 
figure 2, items 201, 205, and 203; communication between repositories concerning access to 
digital works utilizing a repository transaction protocol); 

(c) a container manager to manage secure containers (see column 7, lines 59-62; figure 2, 
item 201; when in server mode, the repository is an exchange medium for digital works; see 
column 8, lines 43-50; figure 4a, items 401, 402, and 403; including a boundary at a security 
level to provide physical integrity and security for the digital work); 

(d) an object switch interface that interfaces the object switch with the component 
assembler (see column 7, lines 62-67; figure 2, items 201, 205, and 203; communication between 
repositories concerning access to digital works utilizing a repository transaction protocol); and 

a communications module which communicates a unique identifier of the computer 
processing system and user of the computer processing system to a remote locations (see column 
30, lines 1-5; Registration and LOGIN transactions by which the repository and user establish 
their bona fides to a credit server). 



Application/Control Number: 09/870,801 
Art Unit: 2132 


Page 23 


Claim Rejections - 35 USC § 103 


18. Claims 108-1 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Stefik, 
U.S. Patent No. 5,715,403 A as applied to claim 96 above, and further in view of Dolphin, U.S. 
Patent No. 5,457,746 A. 

As per claim 108, Stefik teaches the operating system of claim 96. However, he does not 
explicitly dislose a secure e-mail management program. Dolphin illustrates: 

e-mail management programming (see column 11, lines 19-21; figure 13, step 81; the 
user develops and signs an electronic mail request for a key and sends it to a billing/access 
center). 

Therefore, it would have been obvious to one of ordinary skill in the computer art at the 
time the invention was made to combine the operating system of Stefik with the e-mail 
management program of Dolphin for the user to obtain a key via e-mail from the billing/access 
center to access an encrypted CD-ROM (see column 11, lines 21-23; figure 13, step 82). 

As per claim 109, Dolphin additionally specifies: 

Secure e-mail management programming which recognizes and controls secure e-mail or 
secure e-mail attachments (see column 11, lines 19-21; figure 13, step 81; the user develops and 
signs an electronic mail request for a key and sends it to a billing/access center). 

Therefore, it would have been obvious to one of ordinary skill in the computer art at the 
time the invention was made to combine the operating system of Stefik with the e-mail 


• 



Application/Control Number: 09/870,801 


Page 24 


Art Unit: 2132 

management program of Dolphin for the billing/access center to authenticate the user before 
sending a key to him (see column 1 1, lines 21-23; figure 13, step 82). 

As per claim 110, Dolphin also elaborates: 

Routing secure e-mail and secure e-mail attachments to a secure memory location (see 
column 11, lines 19-21; figure 13, step 81; the user develops and signs an electronic mail request 
for a key and sends it to a billing/access center). 

Therefore, it would have been obvious to one of ordinary skill in the computer art at the 
time the invention was made to combine the operating system of Stefik with the e-mail 
management program of Dolphin for the billing/access center to authenticate the user before 
sending a key to him (see column 11, lines 21-23; figure 13, step 82). 


Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Justin T. Darrow whose telephone number is (703) 305-3872 and 
whose electronic mail address isjustin.darrow@uspto.gov. The examiner can normally be 
reached Monday-Friday from 8:30 AM to 5:00 PM. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Gilberto Barron, Jr., can be reached at (703) 305-1830. 

The fax numbers for Formal or Official faxes to Technology Center 2100 are (703) 305- 
0040 and (703) 872-9306. Draft or Informal faxes for this Art Unit can also be submitted to 
(703) 746-7240. In order for a formal paper transmitted by fax to be entered into the application 


Telephone Inquiry Contacts 



Application/Control Number: 09/870,801 


Page 25 


Art Unit: 2132 

file, the paper and/or fax cover sheet must be signed by a representative for the applicant. Faxed 
formal papers for application file entry, such as amendments adding claims, extensions of time, 
and statutory disclaimers for which fees must be charged before entry, must be transmitted with 
an authorization to charge a deposit account to cover such fees. It is also recommended that the 
cover sheet for the fax of a formal paper have printed "OFFICIAL FAX". Formal papers 
transmitted by fax usually require three business days for entry into the application file and 
consideration by the examiner. Formal or Official faxes including amendments after final 
rejection (37 CFR 1.116) should be submitted to (703) 872-9306 for expedited entry into the 
application file. It is further recommended that the cover sheet for the fax containing an 
amendment after final rejection have printed not only "OFFICIAL FAX" but also 
"AMENDMENT AFTER FINAL". 

Any inquiry of a general nature or relating to the status of this application should be 
directed to the Group receptionist whose telephone number is (703) 305-3900. 


September 22, 2003 



JUSTIN T. DARROW 
PRIMARY EXAMINER 
TECHNOLOGY CENTER 2100