1
`
`USAA 1040
`USAA v. Asghari-Kamrani et al.
`CBM2016-00063
`CBM2016-00064
`
`

`
`Office Action Summary
`
`Application No.
`
`App|icant(s)
`
`11/333,400
`
`Examiner
`
`ABDULHAKIM NOBAHAR
`
`ASGHAR|—KAMRAN| ET AL.
`
`Art Unit
`
`2432
`
`- The MAILING DA TE 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 Q MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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 NO period for reply is specified above. the maximum statutory period will apply and will expire SIX (5) 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)|X| Responsive to communication(s) filed on 08 June 2010.
`2a)I:I This action is FINAL.
`2b)IXI This action is non-final.
`
`3)I:I 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 Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)IZ C|aim(s) 21-31 34-38 and 41-57 is/are pending in the application.
`is/are withdrawn from consideration.
`4a) Of the above c|aim(s)
`
`5)I:I C|aim(s)j is/are allowed.
`6)IZI C|aim(s) 21-31 34-38 and 41-57 is/are rejected.
`7)I:I C|aim(s)j is/are objected to.
`
`8)I:I C|aim(s)j are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`10)I:I The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I 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).
`Replacementdrawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)I:I Acknowledgment is made ofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or ( ).
`a)|:| All
`b)I:I Some * c)I:I None of:
`Certified copies ofthe priority documents have been received.
`Certified copies ofthe priority documents have been received in Application No.
`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)
`
`4) El Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`El Notice of Informal Patent Application
`5)
`6) |:| Other:
`.
`
`1) E Notice of References Cited (PTO-892)
`2) El Notice of Draftsperson’s Patent Drawing Review (PTO—948)
`3) El Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20100620
`
`2
`
`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`DETAILED ACTION
`
`This office action is in response to applicants’ amendment filed on 06/08/2010.
`
`Claims 21-31, 34-38 and 41-57 are pending.
`
`Claims 41 -57 are new.
`
`Claim Objections
`
`The amendment to the claims filed on 06/08/2010 does not comply with the
`
`requirements of 37 CFR 1.1 21 (c) because the status of claims 1-20 is not provided in
`
`the listing of claims. Amendments to the claims filed on or after July 30, 2003 must
`
`comply with 37 CFR 1.121(c) which states:
`
`(c) C/aims. Amendments to a claim must be made by rewriting the entire claim
`with all changes (e.g., additions and deletions) as indicated in this subsection, except
`when the claim is being canceled. Each amendment document that includes a change
`to an existing claim, cancellation of an existing claim or addition of a new claim, must
`include a complete listing of all claims ever presented, including the text of all pending
`and withdrawn claims, in the application. The claim listing, including the text of the
`claims, in the amendment document will serve to replace all prior versions of the claims,
`in the application. In the claim listing, the status of every claim must be indicated after
`its claim number by using one of the following identifiers in a parenthetical expression:
`(Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented),
`(New), and (Not entered).
`(1) Claim listing. All of the claims presented in a claim listing shall be
`presented in ascending numerical order. Consecutive claims having the same status of
`‘‘canceled’’ or “not entered” may be aggregated into one statement (e.g., Claims 1-5
`(cance|ed)). The claim listing shall commence on a separate sheet of the amendment
`document and the sheet(s) that contain the text of any part of the claims shall not
`contain any other part of the amendment.
`(2) When claim text with markings is required. All claims being currently
`amended in an amendment paper shall be presented in the claim listing, indicate a
`status of “currently amended,” and be submitted with markings to indicate the changes
`that have been made relative to the immediate prior version of the claims. The text of
`any added subject matter must be shown by underlining the added text. The text of any
`deleted matter must be shown by strike-through except that double brackets placed
`
`3
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`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`Page 3
`
`before and after the deleted characters may be used to show deletion of five or fewer
`consecutive characters. The text of any deleted subject matter must be shown by being
`placed within double brackets if strike—through cannot be easily perceived. Only claims
`having the status of “currently amended," or “withdrawn" if also being amended, shall
`include markings. If a withdrawn claim is currently amended, its status in the claim
`listing may be identified as “withdrawn—current|y amended.”
`(3) When claim text in clean version is required. The text of all pending
`claims not being currently amended shall be presented in the claim listing in clean
`version, i.e., without any markings in the presentation of text. The presentation of a
`clean version of any claim having the status of “original,” “withdrawn” or “previously
`presented” will constitute an assertion that it has not been changed relative to the
`immediate prior version, except to omit markings that may have been present in the
`immediate prior version of the claims of the status of “withdrawn” or “previously
`presented.” Any claim added by amendment must be indicated with the status of “new"
`and presented in clean version, i.e., without any underlining.
`(4) When claim text shall not be presented; canceling a claim.
`(i) No claim text shall be presented for any claim in the claim listing
`with the status of “canceled” or “not entered.”
`
`(ii) Cancellation of a claim shall be effected by an instruction to
`cancel a particular claim number. Identifying the status of a claim in the claim listing as
`“cance|ed” will constitute an instruction to cancel the claim.
`
`(5) Reinstatement of previously canceled claim. A claim which was
`previously canceled may be reinstated only by adding the claim as a “new” claim with a
`new claim number.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the second paragraph of 35 U.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.
`
`Claims 21-31, 34-38 and 41-57 are 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.
`
`Normally an entity, a device, an item, an element or an individual is preceded by
`
`article “a” when recited in a claim for the first time. Thereafter, that entity, device, item,
`
`element or individual is preceded by article “the" if recited in that claim or any
`
`4
`
`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`Page 4
`
`independent claims for any subsequent number of times. This practice has not been
`
`followed in numerous places throughout the amended and new claims. Therefore, the
`
`claims are indefinite because it is not clear whether the same computer, entity and
`
`individual are involved and performing the recited functions or different ones. The
`
`applicant should make appropriate corrections to the claims to rectify the indefiniteness
`
`of the claims caused by this issue.
`
`Claim 22 recites the limitation "the authentication request from the entity" in lines
`
`2 and 3. There is insufficient antecedent basis for this limitation in the claim.
`
`Claim 23 recites the limitation "the first trusted-authenticator" in lines 2 and the
`
`limitation "the authentication request from the entity" in lines 2 and 3. There is
`
`insufficient antecedent basis for this limitation in the claim.
`
`Response to Arguments
`
`Applicant’s arguments with respect to the rejections of claims stated in the
`
`Remarks and in the Affidavit filed under 132 rule on 06/08/2010 have been fully
`
`considered and are persuasive. Therefore, the rejections have been withdrawn.
`
`However, upon further consideration of the amended claims, a new ground(s) of
`
`rejection is made.
`
`5
`
`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`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
`obviousness-type 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 c|aim(s) because the examined application claim is either anticipated
`by, or would have been obvious over, the reference c|aim(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); and In re Thorington, 418 F.2d 528, 163 USPQ
`644 (CCPA 1969).
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(0) or 1.321(d)
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`double patenting ground provided the conflicting application or patent either is shown to
`be commonly owned with this application, or claims an invention made as a result of
`activities undertaken within the scope of a joint research agreement.
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`37 CFR 3.73(b).
`
`Claims 21-31, 34-38 and 41-57 of the instant application are anticipated by
`
`claims 1-14 of the U.S. Patent No. 7,356,837. The patented claims teach the same
`
`invention as claimed by the pending claims. Claims 21-31, 34-38 and 41-57 of the
`
`instant application are included in the limitations of the patented claims, but lack some
`
`of the minor detailed features of the patented claims and therefore are broader. Claims
`
`21-31, 34-38 and 41 -57 of the instant application therefore are not patently distinct from
`
`the earlier patented claims 1-14 and as such are unpatentable for obvious—type double
`
`patenting.
`
`6
`
`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`Claim Rejections - 35 USC § 102
`
`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 a patent granted on an application for patent by another filed in the
`United States before the invention thereof by the applicant for patent, or on an international application
`by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this
`title before the invention thereof by the applicant for patent.
`
`The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act
`
`of 1999 (AIPA) and the Intellectual Property and High Technology Technical
`
`Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting
`
`directly or indirectly from an international application filed before November 29, 2000.
`
`Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior
`
`to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
`
`Claims 21-31, 34-38 and 41-57 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by Chen et al. (US 7,096,204 B1), hereinafter Chen.
`
`Regarding claims 21, 26, 34, 41, 46 and 51, Chen discloses:
`
`(Currently Amended) A method to authenticate an individual in communication
`
`with an entity over a communication network during communication between the entity
`
`and the individual (see, e.g., abstract and Fig. 9), the method comprising:
`
`receiving by a computer over a communication network a request to generate a
`
`dynamic key for the individual, which request is received during authentication of the
`
`7
`
`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`individual by the entity (see, e.g., BRIEF SUMMARY, 11 (6), temporary identity
`
`corresponds to the recited dynamic key; DETAILED DESCRIPTION, 1) (80), gs
`
` : ‘ll (85));
`
`calculating by a computer a dynamic key for the individual in response to the
`
`request during authentication of the individual by the entity (see, e.g., DETAILED
`
`DESCRIPTION, 1) (80), (89) and Fig. 9, where the ISP which is the client of the bank
`
`issues a temporary identity and a session key to the consumer);
`
`sending by a computer the dynamic key over a communication network to the
`
`individual during authentication of the individual by the entity (see, e.g., Fig. 9, via
`
`1211);
`
`receiving by a computer an authentication request to authenticate the individual
`
`based on a received static key and a received dynamic key included in the
`
`authentication request (see, e.g., DETAILED DESCRIPTION, 1) (80) and Fig. 9, where
`
`the vendor 1203 receives the temporary identity and the session key from the consumer
`
`via 1218; the session key or one of other consumer’s information such as name,
`
`address, phone number or email address which normally is used in a transaction
`
`between a vendor or a consumer can be considered as a static key); and
`
`verifying by a computer an identity of the individual based on the received static
`
`key and the received dynamic key included in the authentication request (see, e.g.,
`
`DETAILED DESCRIPTION, 1) (80), where the vendor is able to verify whether the the
`
`temporary identity and the session key are issued by the ISP).
`
`8
`
`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`Chen discloses:
`
`22, 31 and 38. (Currently Amended) The method of claim 21, wherein the
`
`request for the dynamic key is received by a computer associated with a first trusted-
`
`authenticator and the authentication request from the entity is received by a computer
`
`associated with the first trusted—authenticator (see, e.g., Fig. 9, computer 1202).
`
`23. (Currently Amended) The method of claim 21, wherein the request for the
`
`dynamic key is received by a computer associated with the first trusted—authenticator
`
`(see, e.g., Fig. 9, computer 1202) and the authentication request from the entity is
`
`received by a computer associated with a second trusted—authenticator that is different
`
`than the first trusted—authenticator (see, e.g., Fig. 9, BANK 1 or Bank 2).
`
`24, 28 and 36. (Previously Presented) The method of claim 21, wherein the
`
`dynamic key includes a non-predictable and time-dependent SecureCode (see, e.g.,
`
`DETAILED DESCRIPTION, 11 (68), (80) and (89), where the temporary identity is used
`
`for one purchasing session).
`
`25, 29 and 37. (Previously Presented) The method of claim 21, wherein at least
`
`the dynamic key is encrypted (see, e.g., DETAILED DESCRIPTION, 11 (48), (58) and
`
`(89)).
`
`9
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`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`Page 9
`
`27 and 35. (Currently Amended) The method of claim 26, wherein the static and
`
`dynamic keys comprise credentials for verifying the individual's identity (see, e.g.,
`
`DETAILED DESCRIPTION, 11 (70), (80) and (88), where it is inherent in the system that
`
`user credentials are either part of the static and temporary keys or being used and
`
`transmitted along with these keys).
`
`30. (Previously Presented) The method of claim 26, wherein the entity
`
`corresponds to a business, organization, or another individual (see, e.g., Fig. 9, vendor).
`
`42, 47 and 53. (New) The method according to claim 41, wherein the entity and
`
`the trusted authenticator are the same (see, e.g., DETAILED DESCRIPTION, 1] (79) and
`
`Fig. 8, vendor 1103).
`
`43 and 48. (New) The method according to claim 41, wherein the entity and the
`
`trusted authenticator are different (see, e.g., DETAILED DESCRIPTION, 11 (80) and Fig.
`
`9, vendor 1203 and ISP 1202).
`
`44, 49 and 54. (New) The method according to claim 41, wherein said dynamic
`
`key is calculated by a computer after receiving the request from the individual for the
`
`dynamic key (see, e.g., DETAILED DESCRIPTION, 1} (80) and Fig. 9, ISP 1202
`
`calculates the temporary key after receiving a request from the consumer).
`
`10
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`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`Page 10
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`45, 50 and 55. (New) The method according to claim 41, wherein said dynamic
`
`key comprises a different value each time the dynamic key is requested by the
`
`individual (see, e.g., DETAILED DESCRIPTION, 11 (89), where the temporary identity is
`
`used for one purchasing session which means the temporary identity is unique and it is
`
`different for different purchasing session).
`
`52. (New) The method according to claim 51, further comprising:
`
`sending a confirmation or denial authentication message by a computer to the
`
`entity during authentication of the individual by the entity (see, e.g., DETAILED
`
`DESCRIPTION, 11 (80) and Fig. 9, 1221, where verifying the temporary identity means
`
`confirmation or denial).
`
`Regarding claims 56 and 57, these claims are rejected as applied to the like
`
`elements of claims 21, 26, 27, 34, 35, 41, 46 and 51
`
`Conclusion
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. See attached PTO-892.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ABDULHAKIM NOBAHAR whose telephone number is
`
`(571)272-3808. The examiner can normally be reached on M-T 8-6.
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`11
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`

`
`Application/Control Number: 11/333,400
`Art Unit: 2432
`
`Page 11
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Gilberto Barron can be reached on 571-272-3799. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll—free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`Abdulhakim Nobahar
`/A. N./
`
`Examiner, Art Unit 2432
`
`/Gilberto Barron Jr./
`
`Supervisory Patent Examiner, Art Unit 2432
`
`12
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`

`
`Notice of References Cited
`
`Application/Control No.
`
`11/333400
`Examiner
`
`ABDULHAKIM NOBAHAR
`U.S. PATENT DOCUMENTS
`
`App|icant(s)/Patent Under
`Reexamination
`ASGHARI-KAMRANI ET AL.
`Art Unit
`
`2432
`
`Page 1 of 1
`
`II
`A
`US-7,334,735 B1
`02-2008
`Antebi et al.
`235/492E
`
`Is:
`
`I:
`l
`l
`II
`
`Document Number
`Country Code—Number—Kind Code
`
`‘A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM—YYW format are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademark Office
`PTO—892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20100620
`
`13
`
`

`
`Applicationlcontrol No.
`
`App|icant(s)/Patent Under
`Reexamination
`
`Index Of Claims
`
`11333400
`
`ASGHARI-KAMRANI ET AL.
`
`Examiner
`
`Art Unit
`
`ABDULHAKIM NOBAHAR
`
`2432
`
`El Claims renumbered in the same order as presented by applicant
`
`El CPA
`
`El T.D.
`
`El R.1.47
`
`CLAIM
`
`DATE
`
`Final
`
`Original
`1
`
`09/02/2008 03/01/2009 06/15/2009 12/01/2009 06/20/2010
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`U.S. Patent and Trademark Office
`
`Part of Paper No. : 20100620
`
`14
`
`

`
`Application/Control No.
`
`App|icant(s)/Patent Under
`Reexamination
`
`Index Of Claims
`
`11333400
`
`ASGHARI-KAMRANI ET AL.
`
`Examiner
`
`Art Unit
`
`ABDULHAKIM NOBAHAR
`
`2432
`
`El Claims renumbered in the same order as presented by applicant
`
`CLAIM
`
`06/20/2010
`
`H\\\Kx\
`
`09/02/2008 03/01/2009 06/15/2009
`W
`
`X K \
`
`Final
`
`Original
`37
`38
`39
`40
`41
`42
`43
`44
`45
`46
`47
`48
`49
`50
`51
`52
`53
`54
`55
`56
`57
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. : 20100620
`
`15
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`

`
`Applicationlcontrol No.
`
`Search NOTES
`
`11333400
`
`Examiner
`
`App|icant(s)/Patent Under
`Reexamination
`
`ASGHARI-KAMRANI ET AL.
`
`Art Unit
`
`ABDULHAKIM NOBAHAR
`
`2432
`
`SEARCHED
`
`Subclass
`
`Examiner
`
`182-186
`
`2,5,8,18,27,28
`64,67,72,76,78
`See attached report
`184 (see attached report)
`
`6/ 1 7/2009
`
`6/17/2009
`6/17/2009
`
`6/24/2010
`
`SEARCH NOTES
`
`Search Notes
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`Date
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`l
`
`Examiner
`
`INTERFERENCE SEARCH
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`Subclass
`
`Examiner
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`/A. N./
`Examiner_Art Unit 2132
`
`U.S. Patent and Trademark Office
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`Part of Paper No. : 20100620
`
`16
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`
`EAST Search History
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