UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`14/866,234
`
`09/25/2015
`
`Masayuki KOZUKA
`
`2015-1496T
`
`3927
`
`Wenderoth, L1nd & Ponaek, L.L.P.
`1030 15th Street, NW, Suite 400 East
`Washington, DC 20005
`
`OUSSIR'EL MEHDI
`
`ART UNIT
`
`3685
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/ 14/20 1 8
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`eoa @ wenderoth. com
`kmiller @ wenderotheom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`14/866,234
`Examiner
`EL MEHDI OUSSIR
`
`Applicant(s)
`KOZUKA et al.
`Art Unit
`3685
`
`AIA Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS 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.
`|f 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 09/25/2015.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—2,4—13 and 15—17 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 1—2,4—13 and 15—17 is/are rejected.
`
`[:1 Claim(s)
`
`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 09/25/2015 is/are: a). accepted or b)[:] 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).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:I All
`
`b)D Some”
`
`C)D None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3:] 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.
`
`Attachment(s)
`
`1) C] Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20181127
`
`

`

`Application/Control Number: 14/866,234
`Art Unit: 3685
`
`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
`
`2.
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`This communication is a Final Office action in response to Applicant’s response on
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`08/06/2018 to Examiner's Non—Final communication on 05/04/2018.
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`3.
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`Claims 1—2, 4—13, and 15—17 have been examined in this Application. All other claims
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`have been cancelled.
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`4.
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`No new information disclosure statement has been submitted.
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`Response to Arguments
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`5.
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`Page 9 of Applicant’s arguments, filed on 08/06/2018, regarding the title of the invention
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`have been considered. The new title is indicative of the invention to which the claims are
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`directed.
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`6.
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`Applicant’s arguments, page 9, regarding claim rejections under 35 U.S.C §112 have
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`been fully considered; however they are not persuasive.
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`Applicant amended the claims to recite “a memory, and processing circuitry that, in
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`operation, performs operations including” in order to overcome the rejection.
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`The Examiner disagrees that the claim amendments overcome the rejection. The claims
`
`do not provide the structure required to carry out the claimed limitations. In particular, the
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`recited “memory” and “processing circuitry” are not found in the Applicant’s Disclosure. There
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`is no recitation of a “processing circuitry” that performs the claimed limitations. Nor is there any
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`recitation of a “memory” storing instructions that a processor would execute in order to perform
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 3
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`operations comprising the claims limitations. Paragraphs 0004, 0038, and 0043 only recite a
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`“copy processor” which executes the copying of the content only. As result, one of ordinary skill
`
`in the art would not know how to carry out the claimed limitations without sufficient structure to
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`indicate how the claim limitations are being carried out. For at least these reasons, the claims are
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`deemed indefinite and are rejected. Examiner notes that if the Applicant can provide support for
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`the correlating structure that would perform the claimed limitations, then the rejection would be
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`withdrawn.
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`7.
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`Applicant’s arguments, page 9, regarding claim interpretation under 35 U.S.C §112 (f)
`
`have been fully considered and are persuasive. Therefore, the claim interpretation under 112(f)
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`has been withdrawn.
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`8.
`
`Applicant’s arguments, pages 9—1 1, regarding claim interpretation under 35 U.S.C §101
`
`have been fully considered but are not persuasive.
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`Applicant argues:
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`I. The claimed invention is directed to a specific improvement of a solution in
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`copying content between devices.
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`A. The claims are merely directed to manipulation of data in order to copy content.
`
`The Examiner disagrees with the Applicant’s arguments. More specifically, the Applicant
`
`argues that the “claimed invention recites, in a specific manner, a specific improvement over
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`prior systems” in controlling the copying of content. Applicant also notes that the claims are
`
`“directed to a specific implementation of a solution to a problem in... controlling copy
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`permission among consumer electronics so as to allows content data stored in a portable
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`recording medium to be easily copied to another recording medium...” (Pages 9—10 in Remarks).
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`The Examiner respectfully disagrees. The claims have been thoroughly examined under the
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 4
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`Alice/Mayo Two—Step framework set by the Court. Once the claims were determined to be
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`directed to an abstract idea, the Examiner then analyzed the claims under Step—2B to determine if
`
`they amount to significantly more. However, the claim limitations do not transform the claims
`
`individually or as a whole to significantly more. The claims are not found to include the
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`significance of any additional element(s) which include improving another technology or
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`technical field, improve the functioning of a computer itself, applied the abstract idea with, or by
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`use of, a particular machine (not a generic computer, not adding the words "apply it" or words
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`equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a
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`computer), effects a transformation or reduction of a particular article to a different state or thing,
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`add a specific limitation other than what is well understood, routine and conventional in the field,
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`add unconventional steps that confine the claim to a particular useful application, or add
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`meaningful limitations that amount to more than generally linking the use of the abstract idea to
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`a particular technological environment.
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`The additional element(s) or combination of elements in the claim(s) other than the
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`abstract idea(s) per se amount(s) to no more than significantly more than the abstract idea itself.
`77 (L
`77 (L
`
`The claims recite the additional elements of a “memory,
`77 (L
`
`processing circuitry,
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`recording
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`medium(s),
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`server,” and an “information apparatus,” are only recited at a high level of
`
`generality and only perform generic functions of reading data, transmitting data, receiving data,
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`and copying data in order to determine whether content can be copied to another device or not.
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`Generic computers performing generic computer functions, without an inventive concept, do not
`
`amount to significantly more than the abstract idea. All of the elements recited in the claims and
`
`all of the limitations as a whole amount to merely generic functions, which are recited to attempt
`
`to limit the abstract idea to a particular technological environment. The type of information being
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 5
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`manipulated and obtained does not impose meaningful limitations or render the idea less
`
`abstract. Looking at the elements as a combination does not add anything more than the elements
`
`analyzed individually. Therefore, the claims do not amount to significantly more than the
`
`abstract idea itself. The claim is not patent eligible.
`
`9.
`
`Applicant’s arguments, pages 11—13, regarding claim interpretation under 35 U.S.C
`
`§102/ 103 have been fully considered but are not persuasive.
`
`Applicant argues:
`
`1. Downs does not teach content data stored in a portable recording medium and
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`controlling copying of content data.
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`A. Downs teaches storing content at user mobile device and controlling rendering of
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`the content, copying, and overall controlling the content according to data rights
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`management rules.
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`Examiner disagrees with Applicant’s arguments. Downs teaches purchasing,
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`downloading, and storing content on the user’s device, wherein the content is obtained from a
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`store 103. See Figures 6, l4 and 16 which portray explicitly how a user is able to obtain content,
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`store the content on their device. The users are able to access the content at any time while also
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`enforcement of the content in accordance with DRM rights is carried out. See also Col. 10, Ln.
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`19—29 and Col. ll, Ln. 30—54. In the cited portions, Downs explicitly recites controlling the
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`copying of content to another device if the user has the rights to copy the content. Furthermore,
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`Col. 7, Ln. 40—55 teach DRM rule enforcement for content including copy/play operations. Col.
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`21, Ln. 23—42. Col. ll, Ln. l—lS disclose how the clearinghouse controls the rendering and
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`reporting of user usage of the content. Therefore the reference to Down explicitly teaches storing
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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`content on a user device and controlling the copy/play operations of the content by either the
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`mobile device API or the clearinghouse/server.
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`Claim Rejections - 35 US C § 112
`
`The following is a quotation of the first paragraph of 35 USC. 112(a):
`
`(a) IN GENERAL7The 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 USC. 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.
`
`10.
`
`Claims l—2, 4—13, and 15—17 are rejected under 35 USC. 112(a) or 35 USC. 112 (pre—
`
`AIA), first paragraph, as failing to comply with the written description requirement. The
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`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
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`pre—AIA the inventor(s), at the time the application was filed, had possession of the claimed
`
`invention. Claim 1 for instance recites “a memory; and processing circuitry that, in operation,
`
`performs operations including...” The Disclosure was examined carefully, however, no
`
`indication of such recited structure is found. The Disclosure at best discloses “a copy processor
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`that copies the content data stored in the portable recording medium to the other recording
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`medium...” (Paragraph 0004, 003 8). Paragraph 0043 recites: “The copy processor may receive
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`one of the plurality of file formats selected by the user and copy the content data in the received
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`

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`Art Unit: 3685
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`Page 7
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`file format.” Paragraphs 0048—005 1 disclose conditions that the processor receives based on user
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`selection: “The copy processor may receive the first condition, the second condition, or the third
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`condition selected by the user and copy the content data under the first condition, the second
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`condition, or the third condition selected by the user.” The Disclose does not recite a “memory”
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`storing instructions that a processor would execute in order to perform operations comprising the
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`claim limitations. As a result, no support is found in regards to a memory and processing
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`circuitry as having the ability to carry out the claimed limitations. For at least these reasons the
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`claims are rejected.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.7The 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.
`
`11.
`
`Claims 1—2, 4—13, and 15—17 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 pre—AIA the applicant
`
`regards as the invention. The claim limitations recite a memory and processing circuitry that in
`
`operation performs operations including... However, the processor is not executing any
`
`instructions stored in the memory. The claims merely recite that a memory is included in the
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`apparatus. Also, the claimed limitations performed by the processing circuitry are ambiguous.
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`One of ordinary skill in the art would not know how the carry out the claimed limitations recited
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`as being carried out by the processing circuitry. For purposes of examination, any teaching of an
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`apparatus comprising a memory and processing abilities to determine whether content can be
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`copied to another device will be determined as reading on the claim limitations. All dependent
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`claims are rejected at least for their dependence on the rejected claims.
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`Claim Rejections - 35 US C § 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.
`
`12.
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`Claims 1—2, 4—13, and 15—17 are rejected under 35 U.S.C. 101 because the claimed
`
`invention is directed to non—statutory subject matter.
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`JUDICIAL EXCEPTIONS TO SECTION 101
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`13.
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`The Supreme Court held that the patent claims in Alice Corporation Pry. Ltd. v. CLS
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`Bank International, el al. ("Alice Corp. ") are not patent—eligible under 35 U.S.C. § 101. The
`
`Supreme Court made clear in Alice Corp. that it applies the framework set forth in Mayo
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`Collaborative Services v. Prometheus Laboratories, Inc., 566 US. _ (2012) (Mayo), to analyze
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`all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter
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`eligibility under 35 U.S.C. § 101. This framework is currently being used by the USPTO to
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`examine claims involving laws of nature, but had not been used for claims involving abstract
`
`ideas. Therefore, the following instructions differ from prior USPTO guidance in two ways:
`
`14.
`
`Alice Corp. establishes that the same analysis should be used for all types of judicial
`
`exceptions, whereas prior USPTO guidance applied a different analysis to claims with abstract
`
`ideas (Bilski guidance in MPEP 2106(11) (B)) than to claims with laws of nature (Mayo
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`guidance in MPEP 2106.01).
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 9
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`15.
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`Alice Corp. also establishes that the same analysis should be used for all categories of
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`claims (e.g., product and process claims), whereas prior guidance applied a different analysis to
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`product claims involving abstract ideas (relying on tangibility in MPEP 2106(II) (A)) than to
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`process claims (Bilski guidance).
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`ALICE V. CLS BANK: TWO-PART ANALYSIS
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`16.
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`Following Alice Corp, all claims (product and process) having an abstract idea must be
`
`analyzed using the following two—part analysis set forth in Mayo. For additional guidance, see
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`"2014 Interim Guidance on Patent Subject Matter Eligibility" December 16, 2014.
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`17.
`
`Limitations referenced in Alice Corp. that may be enough to qualify as "significantly
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`more" when recited in a claim with an abstract idea include, as non—limiting or non—exclusive
`
`examples:
`
`a.
`
`b.
`
`c.
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`Improvements to another technology or technical fields;
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`Improvements to the functioning of the computer itself;
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`Applying the judicial exception with, or by use of, a particular machine; effecting
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`a transformation or reduction of a particular article to a different state or thing; adding a
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`specific limitation other than what is well—understood, routine and conventional in the
`
`field, or adding unconventional steps that confine the claim to a particular useful
`
`application.
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`18.
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`Limitations referenced in Alice Corp. that are not enough to qualify as "significantly
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`more" when recited in a claim with an abstract idea include, as non—limiting or non—exclusive
`
`examples:
`
`d.
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`Adding the words "apply it" (or an equivalent) with an abstract idea, or mere
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`instructions to implement an abstract idea on a computer;
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`

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`Page 10
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`e.
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`Requiting no more than a genetic computer to perform generic computer
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`functions that are well—understood, routine and conventional activities previously known
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`to the industry. See also, MPEP 2106(1).
`
`19.
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`Claims 1—2, 4—13, and 15—17 are rejected under 35 U.S.C. 101 because the claimed
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`invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
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`abstract idea) without significantly more.
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`20.
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`Claims 1—2, 4—13, and 15—17 are directed to an abstract idea of essentially managing the
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`copying of content between devices, which results in no more than an abstract idea of itself or a
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`fundamental economic practice. Concepts tied to an abstract idea of itself and a fundamental
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`economic practice include: receiving data and comparing data and using rules to identify options,
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`collecting and comparing known information, creating a contractual relationship, and/or
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`delivering user—selected media content to portable devices.
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`21.
`
`Cases tied to the above court decision abstract concepts include Affinity Labs of Texas,
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`LLC v. Amazon.com (_ F.3d _, 120 U.S.P.Q.2d 1210 (Fed. Cir. 2016) CAFC Appeal No. 15—
`
`2080), Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir.
`
`2016)), Classen Immunotherapies Inc. v. Biogen IDEC, 659 F. 3d 1057 (Fed. Cir. 2011),
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`buySAFE, Inc. v. Google 765 F.3d 1350 (Fed. Cir. 2014), Cybersource Corp. v. Retail
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`Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), and SmartGene, Inc. v. Advanced Biological
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`Labs., 555 Fed. Appx. 950 (Fed. Cir. 2014).
`
`22.
`
`The additional elements or combination of elements in claim 1, other than the abstract
`
`idea(s) per se, amount(s) to no more than significantly more than the abstract idea itself. The
`77 (L
`77 (4
`
`claim recite the additional elements of a “memory,
`77 (L
`
`processing circuitry,
`77 (L
`
`recording
`
`medium(s),
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`server,” and an “information apparatus.” The “memory,
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`processing circuitry,”
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
`
`77 (4
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`Page 11
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`“recording medium(s),
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`server,” and the “information apparatus” are only recited at a high level
`
`of generality and only perform generic functions of receiving and sending data / manipulation of
`
`data and copying data to allow a user to copy content to another device. Generic computers
`
`performing generic computer functions, without an inventive concept, do not amount to
`77 (L
`77 (L
`
`significantly more than the abstract idea. The “memory,
`77 (L
`
`processing circuitry,
`
`recording
`
`medium(s),
`
`server,” and the “information apparatus” are simply generic, which are recited to
`
`attempt to limit the abstract idea to a particular technological environment. The type of
`
`information being manipulated or detected and obtained and the result being generated as based
`
`on the comparison of the data does not impose meaningful limitations or render the idea less
`
`abstract including the type of devices being used or that a server is used to aid in the copying of
`
`the content. Looking at the elements as a combination does not add anything more than the
`
`elements analyzed individually. Therefore, the claim does not amount to significantly more than
`
`the abstract idea itself; thus rending the claim not patent eligible.
`
`23.
`
`The claims do not include limitations that meet the criteria required to determine the
`
`claims as a whole amounting to significantly more than the judicial exception itself (see
`
`paragraph 17, a-c). This is evident by the description at Paragraph 0077, which recites: “[the]
`
`present disclosure easily realizes an environment in which ultra—high quality image content
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`stored in a Blu—ray disc is stored in a Blu—ray recorder at home or a home server and viewed
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`outdoors on a smartphone, a tablet computer, or the like through a combination of an information
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`recording and playback apparatus and a copy management server that can be connected to each
`
`other through a networ .”
`
`24.
`
`As a result, the claims and all of the limitations amount to mere instructions to implement
`
`the idea on a generic computers or devices that serve to perform generic computer functions that
`
`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 12
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`are well—understood, routine, and conventional activities previously known in the pertinent
`
`industry, which do not add meaningful limitations to the system as they would be routinely used
`
`and conventional by those of ordinary skill in the art/industry in order to apply the correlation
`77 (L
`
`and yield predictable results. The functions performed by the “memory,
`77 (4
`
`processing circuitry,”
`
`“recording medium(s),
`
`server,” and the “information apparatus” appear to be conventional and
`
`routine carried out by a general purpose computer or device such as an off the shelf cellular
`
`phone, computers, smart cards, etc. with instructions to allow execution of programmed software
`
`for example to carry out the claimed limitations to determine whether or not to allow the copying
`
`of content between devices. The claimed limitations as a whole do not add significantly more to
`
`the abstract idea of using generic devices, software, and communication methods to receive data,
`
`send data, manipulate the data, analyze the data and determine an outcome based on the data.
`
`25.
`
`Moreover, the claims do not appear to improve the functioning of the “memory,”
`77 (L
`77 (4
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`“processing circuitry,
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`recording medium(s),
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`server,” and the “information apparatus” or
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`effect an improvement in another technology or field; i.e. besides business method or solutions.
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`The claims do not recite limitations beyond to provide grounds for an eligible application.
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`Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that
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`transform the judicial exception into a patent eligible application such that the claim amounts to
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`significantly more than the judicial exception itself.
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`Claim Rejections - 35 US C § 102
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`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the
`
`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 13
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or
`otherwise available to the public before the effective filing date of the claimed invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for
`patent published or deemed published under section 122(b), in which the patent or application, as the
`case may be, names another inventor and was effectively filed before the effective filing date of the
`claimed invention.
`
`26.
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`Claim(s) 1—3, 5, 7—10, 12—14, and 16 are rejected under 35 U.S.C. 102(a)(1) / 102(a)(2) as
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`being anticipated by US. Patent 6226618 to Downs et a1. (“Downs”).
`
`27.
`
`Per claims 1, 7, and 12, Downs teaches all of the following limitations:
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`a.
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`An information apparatus that copies content data stored in a portable recording
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`medium to another recording medium, the information apparatus comprising [Abstract,
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`Col. 6, Ln. 40—48; Figures 1, 10, and 15 and all related text]:
`
`b.
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`c.
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`(1.
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`A memory; and
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`Processing circuitry that, in operation, performs operations including:
`
`obtaining a permission request code for requesting permission to copy the content
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`data [Abstract, Col. 6, Ln. 36—48; Col. 21, Ln. 43—67; Col. 22, Ln. 39—52; Col. 25, Ln. 5—
`
`62; and Figures 1, 6, 10 and 15];
`
`e.
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`reading, from the portable recording medium, content identification information
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`for identifying the content data, the content identification information being stored in the
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`portable recording medium [C01, 19; Ln. 65—67; Col. 20, Ln. 35—41; Col. 22, Ln. 8—38];
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`f.
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`transmitting the permission request code and the content identification
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`information to a management server [C01, 22, Ln. 39—67; Col. 25, Ln. 5—62; and Figures
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`1, 6,10 and 15];
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`g.
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`receiving, from the management server, copy response information having (i)
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`information indicating that copy is permitted and (ii) a copy permission condition that is
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`associated with a combination of the permission request code and the content
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`

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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 14
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`identification information and that indicates a condition under which the content stored in
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`the portable recording medium is copied to the other recording medium [Col. 9, Ln. 34—
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`36; Col. 10, Ln. 19—29 and Col. 11, Ln. 30—54; Col. 22, Ln. 39—67; Col. 25, Ln. 5—62; Col.
`
`42; Ln. 37—67; Col. 44; Ln. 6—67; Col. 45; Ln. 16—52; Col. 59, Ln. 30—67; and Figures 1, 6,
`
`10, 14 and 15]; and
`
`h.
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`copying the content data stored in the portable recording medium to the other
`
`recording medium in accordance with the copy permission condition [Abstract, Col. 6,
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`Ln. 40—48; Col. 83; Ln. 50],
`
`i.
`
`wherein the copy permission condition includes a condition that a file format of
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`content data obtained as a result of copying be selected from a plurality of predetermined
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`file formats [Col. 6, Ln. 45—48; Col. 8, Ln. 26—40; Col. 66, Ln. 1—15 and Figures 5—6], and
`
`j.
`
`wherein, in copying, one of the plurality of file formats selected by the user is
`
`received, and the content data is copied in the received file format [Col. 6, Ln. 45—48;
`
`Col. 8, Ln. 26—40; Col. 66, Ln. 1—15 and Figures 5—6].
`
`28.
`
`Per claims 2, 8, and 13, Downs teaches wherein, in obtaining, user identification
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`information for identifying a user is received, and received user identification information is
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`received as the permission request code [Abstract, Col. 14, 19—27; Col. 23; Ln. 62—67; Col. 76;
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`Ln. 1—25 and Figures 1, 5—6].
`
`29.
`
`Per claims 5 and 16, Downs teaches wherein the copy permission condition includes a
`
`first condition under which only copying to a certain device is permitted, a second condition
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`under which only copying to a certain type of recording medium is permitted, and a third
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`condition under which only copying to a certain domain in a network is permitted, and wherein,
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`in the copying, the first condition, the second condition, or the third condition selected by the
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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 15
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`user is received, and the content data is copied under the first condition, the second condition, or
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`the third condition selected by the user [Col. 9, Ln. 34—36; Col. 22, Ln. 39—67; Col. 25, Ln. 5—62;
`
`Col. 42; Ln. 37—67; Col. 44; Ln. 6—67; Col. 45; Ln. 16—52; Col. 59, Ln. 30—67; and Figures 1, 6,
`
`10 and 15].
`
`30.
`
`Per claim 9, wherein the processing circuitry, in operation, further performs operations
`
`including: generating the permission request code managed in association with the content
`
`identification information; registering the generated permission request code to the copy
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`permission condition storage; and providing the permission request code and the content
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`identification information for a server managed by a content provider that manufactures the
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`portable recording medium (the mobile device generates a request for validation, the clearing
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`house 105 generates an authorization including an authorization to copy the content and also
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`generates a response to the issuer to let them know that the content associated with a mobile
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`device is authorized and is being monitored — DRM rights based on the device ID) [Col. 6, Ln.
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`40—48; Col. 83; Ln. 50; Col. 9, Ln. 34—36; Col. 22, Ln. 39—67; Col. 25, Ln. 5—62; Col. 42; Ln. 37—
`
`67; Col. 44; Ln. 6—67; Col. 45; Ln. 16—52; Col. 59, Ln. 30—67; and Figures 1, 6, 10 and 15].
`
`31.
`
`Per claim 10, Downs teaches obtaining the combination of the content identification
`
`information and the user identification information and the copy permission condition associated
`
`with the combination from the server managed by the content provider that manufactures the
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`portable recording medium; registering, to the copy permission condition storage, the content
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`identification information, the user identification information, and the copy permission condition
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`obtained by the obtainer [Col. 6, Ln. 40—48; Col. 83; Ln. 50; Col. 9, Ln. 34—36; Col. 22, Ln. 39—
`
`67; Col. 25, Ln. 5—62; Col. 42; Ln. 37—67; Col. 44; Ln. 6—67; Col. 45; Ln. 16—52; Col. 59, Ln. 30—
`
`67; and Figures 1, 6, 10 and 15].
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`Application/Control Number: 14/866,234
`Art Unit: 3685
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`Page 16
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`Claim Rejections - 35 US C § 103
`
`In the event the determination of the status of the application as subject to AIA 35 USC.
`
`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correct