Attorney Docket No. PL2891174
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Inventor Name: Nader Asghari-Kamrani
`
`Title: CENTRALIZED IDENTIFICATION AND AUTHENTICATION SYSTEM AND
`
`
`
`
`
`
`
`AUG (18 2015
`
`'
`OFFICE OF PETITION
`
`METHOD
`
`Patent No.: 8,266,432
`
`Issue Date: Sep. 11, 2012
`
`Filing Date: Sep. 15, 2008
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`Art Unit: 2432
`
`Confirmation Number: 7516
`
`RENEWED RE UEST FOR CERTIFICATE OF CORRECTION PURSUANT TO 37 C.F.R.
`
`
`§1.323
`
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`This is a renewed request for a Certificate of Correction which replaces a prior request filed
`
`on Feb. 22, 2016. Enclosed is a Certificate of Correction Form PTO-SBI44 for U.S. Patent No.
`
`8,266,432 (“the ‘432 Patent”), which issued Sep. 11, 2012.
`
`The ‘432 Patent was filed on Sep. 15, 2008 claiming the benefit of priority of U.S. Patent
`
`Application Ser. No. 11;’239,046, filed Sep. 30, 2005, which issued as US. Pat. No. 7,444,676
`
`(“the ‘676 Patent”) on Oct. 28, 2008, with a priority of a US. provisional application 60/615,603,
`
`filed Oct. 5, 2004, with the same inventors.
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`Attorney Docket No. PL2891174
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`The ‘432 Patent also claims the benefit of priority of U.S. Application Ser. No. 09/940,635,
`
`filed Aug. 29, 2001, which issued as U.S. Pat. No. 7,356,837 (“the ‘837 Patent”), on Apr. 8, 2008
`
`with the same inventors.
`
`This Certificate of Correction corrects priority claims, specifically,
`
`(1) omitted
`
`reference to an intervening application in the priority chain for which a petition under pre-
`
`AIA 37 CFR 1.’78(a)(3) is concurrently submitted, and (2) an error in the ‘432 Patent. The
`
`intervening application provides an additional benefit path from the ‘432 Patent to the ‘837 Patent
`
`(a benefit path parallel with the ‘676 Patent).
`
`(1) Omitted Reference To All Intervening Application In the Priority Chain
`
`The original priority claim omitted intervening, co-pending U.S. Patent Application Ser.
`
`No. 11:"333,400, filed on Jan. 18, 2006, which issued as Patent No. 8,281,129 (“the ‘129 Patent”)
`
`on Oct. 2, 2012. The ‘ 129 Patent is a continuation-in-part ofthe ‘837 Patent and also claims priority
`
`to U.S. provisional application no. 60765 0,137 filed Feb. 7, 2005.
`
`Patent Owner submits that the noted errors do not constitute new matter, and correction
`
`thereof would not require reexamination. The priority date of Aug. 29, 2001 under which the ‘432
`
`Patent was examined remains unchanged.
`
`(2) Correcting the Relationship
`
`It is submitted that the relationship between the ‘432 Patent and other related patents needs
`
`to be corrected. The ‘432 patent is currently listed as a continuation of application Ser. No.
`
`11/239,046. However,
`
`it
`
`is submitted that the ‘432 Patent should be corrected to read a
`
`continuation-in-part ofthe application Ser. No. 1 1723 9,046. Further, Patent Application Ser. No.
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`2
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`Attorney Docket No. PL2891174
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`11/239,046 is currently listed as a continuation of application No. 09/940,635. However, Patent
`
`Application Ser. No. 1 1/239,046 should be corrected to read a continuation-in-part of application
`
`No. 09!940,635.
`
`Accordingly, please amend a section (63) on the face page of the patent, under the heading
`
`“Related U.S. Application Data,” as below:
`
`“(63) Gentinuatien Continuation-in-part of application No. 11f239,046, filed on Sep. 30,
`
`2005, now Pat No. 7,444,676, which is a eeatinuatien continuation-in-part of application No.
`
`09f940,63S, filed on Aug. 29, 2001, now Pat. No. 7,356,837; and continuation-in-part of
`
`application No. 1l!333,400, filed on Jan. 18, 2006, now Pat. No. 8,281,129, which is a
`
`continuation—in-part of application No. 09i’940,63S, filed on Aug. 29, 2001, now Pat. No. 7,356,837
`
`and also claims priority to U.S. provisional application no. 60r’65 0,13? filed Feb. 7, 2005.”
`
`Please amend the specification, at col 1,
`
`lines 6-1?, under the heading “RELATED
`
`APPLICATIONS,” as below:
`
`“This application is a Gentinuatien Continuation—in-part of application Ser. No. 1 N23 9,046,
`
`filed Sep. 30, 2005 now U.S. Pat. No. 7,444,676, with a priority of a U.S- provisional application
`
`60/615,603, filed Oct. 5, 2004, with the same inventors and assignee.
`
`
`
`has the same exact specification and Figures as those submitted with the original application Ser.
`
`No. 09/940,635, filed Aug. 29, 2001 . Further, this application claims priority under 35 U.S.C. §l20
`
`as a continuation-in-part of U.S. patent application Ser. No. 11/333,400, filed on Jan. 18, 2006,
`
`and issued as U.S. Pat. No. 8,281,129 on Oct. 2, 2012, which is a continuation-in-part of
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`3
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`Attorney Docket No. PL2891174
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`application No. 09/940,635, filed on Aug. 2'3, 2001, now Pat. No. 7,356,837 and also claims
`
`priority to U.S. provisional application no. 60f650,137 filed Feb. 7, 2005.”
`
`Pursuant to 37 C.F.R. §1.323, Patent Owner requests that the enclosed Certificate of
`
`Correction be approved.
`
`Since this is a renewed request, it is believed that a fee is not required. However, the
`
`Commissioner is hereby authorized to charge any additional fees which may be required regarding
`
`this request under 37 CPR. §§ 1 . 16-1 . 17, or credit any overpayment, to Deposit Account No. 50-
`
`5922, making reference to Attorney Docket No. PL2891174. Should no proper payment be
`
`enclosed herewith, as by the credit card payment instructions in EFS-Web being incorrect or absent,
`
`resulting in a rejected or incorrect credit card transaction, the Commissioner is authorized to charge
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`the unpaid amount to Deposit Account. No. 50-5922.
`
`Respectfully submitted,
`Nader Asghari-Kamrani et al.
`
`__/Jae Youn Kimr’
`Jae Youn Kim
`
`Reg. No. 69,215
`
`August 8, 2016
`Novick, Kim & Lee, PLLC
`325] Old Lee Highway, Suite 404 Fairfax, VA 22030
`TELEPHONE 703-745-5495
`
`FACSIMILE 703-563-9748
`
`EMAIL <docket@nklIaw.com>
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`-
`m1 PTO-
`5
`Under the Paperwork Redlaciion Ad (#1995. no persons are required In respond In a enlledion of iniemielion unless it displays a valid Obhgfifirzoniroi nur111abeg.
`
`Praise.-'44 (as-on
`Approved for use through 0813112013. OMB 0651-0033
`11.5. Patient and Trademark Offlce; I.l.S. DEP.RRTMEN‘I' OF COMMERCE
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CERTIFICATE OF CORRECTION
`
`PATENT NO.
`
`: 8,266,432
`
`APPLICATION NO.: 121210325
`
`ISSUE DATE
`
`= September11,2012
`
`'""E"T°“‘s3
`
`‘ Nader Asghari-Kamrani, Kamran Asghari-Kamrani
`
`It is certified that an error appears or errors appear in the above-identified patent and that said Letters Patent
`is hereby corrected as shown below:
`
`Please amend a section (63) on the face page of the patent, under the heading “Related US.
`Application Data," as below:
`
`“{63) Geatinuatien Continuation-in-part of application No. 11,039,046. filed on Sep. 30.
`2005, now Pat No. 7,444,676, which is a continuation continuation-in-pat’: of application No.
`09i940,635, fried on Aug. 29, 2001, now Pat. No. 7,356,837; and corltitiuation-in-part of
`application No.
`l1i'333,400. filed on }an. 18, 2006, now Pat. No. 8,281,129, which is a
`continuation-i.n-part of application No. 09r‘940,635, filed on Aug. 29, 2001, now Pat. No- 7,356.83 7
`and also claims priority to U.S. provisional application no. -60i’650,l 37 filed Feb. 7, 2005."
`
`Please amend the specification. at col 1, lines 6-17. under the heading “RELATED
`APPLICATIONS,” as below:
`
`“This application is a €ei‘~1t-imiat-ion Continuation-in-part of application Scr. No. l li239._046,
`tiled Sep. 30, 2005 now U.S. Pat. No. 7,444,676. with a priority of a US. provisional application
`enters and assignee.
`-
`'
`-
`..
`.
`.
`I
`pp
`‘.
`H,
`1
`.-‘.-:
`
`- . Please note that the current application
`mitted with the original application Ser.
`No. 09f940,635, filed Aug. 29, 2001. Further, this application claims priorigg under 35 U.S.C. §120
`as a continuation-ir1—part of Us. patent application Ser. No.
`l1t‘333,400, filed on Jan. I8, 2006.
`and issued as US. Pat. No. 8,281,129 on Oct. 2, 2012, which is a continuation-in-part of
`application No. 09z’940,635, filed on Aug. 29, 2001, now Pat. No. 7,356,837 and also claims
`priorigy to US. provisional application no. 60:‘6S0, 137 filed Feb. 7. 2005."
`
`MAILING ADDRESS OF SENDER (Please do not use customer number below):
`
`Novick, Kim 8: Lee, PLLC
`3251 Old Lee Highway. Suite 404
`Fairfax. VA 22030
`This collection of information is required by 37 GFR 1.322. 1.323. and 1.324. The information is required in obtain or retain a benefit by the public which in to tile
`(and by the USPTD to process) an application. confiderrliality is governed by as use. 122 and 37 cm 1.14. This aouauian is eelimeled to take 1.0 hour lie
`complete, Including gathering. preparing. and submitting the completed application four: to the USPTO. Time will vary depending upon lhe indivicluel case. Any
`comments on the arrioml of time you require to complete this form andior suggestions for reducirq Ihie burden. ehould be sent to the chief Information Officer,
`U.S. Patent and Trademark Office, U.8. Depertrnerrl of Commerce, P.O. Bear 1450. Alexandria. VA 22313-1450. DO NOT SEND FEES OR COMPLETED
`FORMS To THIS ADDRESS. D 1'0: Attention certificate of corrections Branch, Commissioner for Patients. P.O. Box 1450, Alexandria,
`VA 2231 3-1450.
`
`lfyauneedessiistenceinoonnoietingtlre form, call 1-800-PTO-9199andseiecronii'on 2.
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`Attorney Docket No. PL28911?4
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Inventor Name: Nader Asghari-Kamrani
`
`Title: CENTRALIZED IDENTIFICATION AND AUTHENTICATION SYSTEM AND
`
`METHOD
`
`Patent No.: 8,266,432
`
`Issue Date: Sep. 11, 2012
`
`Filing Date: Sep. 15, 2008
`
`Art Unit: 2432
`
`Confirmation Number: 75 16
`
`RENEWED PETITION UNDER PRE-AIA 37 CFR 1.78{a[§3) TO ACCEPT AN
`UNINTENTIONALLY DELAYED BENEFIT CLAIM UNDER 35 U.S.C. §120
`
`Mail Stop PETITIONS
`P.0. Box 1450
`
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`This is a renewed Petition to make a delayed claim in U.S. Patent No. 8,266,432 (“the ‘432
`
`Patent”) for the benefit to an earlier—filed, copending patent application, now US. Patent 8,281 ,129.
`
`A previous Petition was filed on Feb. 22, 2016 to correct the relationship between this patent and
`
`other related patents. This renewed Petition replaces the previous petition of Feb. 22, 2016.
`
`Specifically, this renewed Petition is submitted:
`
`(1) pursuant to pre—AIA 37 CFR 1.78(a)(3) to accept an unintentionally delayed claim
`
`under 35 U.S.C. §120 for the benefit of a prior-filed application; and
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`(2) to correct the relationship between U.S. Patent No. 8,266,432 and other related
`
`patents.
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`Attorney Docket No. PL28911?4
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`Because the ‘432 Patent is involved with two CBM proceedings (CBM2016-00063 and
`
`00064), under 3'? CFR 1.323, Petitioner (Patent Owner) first filed a motion before the PTAB to
`
`get permission to file this instant petition to correct the claim of priority. The motion was
`
`granted on August 4, 2016. See the attached decision, paper 10.
`
`11) Unintentionally Delayed Claim Under Pre-AIA 3’? C.F.R. 1.78ga)(3[
`
`When a reference required by 35 U.S.C. §120 and pre-AIA paragraph 1.78(a)(2) is
`
`presented after the time period provided by pre-AIA 37 CFR 1.78(a)(2)(ii), a petition under pre-
`
`AIA 37 CFR l.78(a)(3) “to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or
`
`365(c) for the benefit of a prior-filed application must be accompanied by: (i) The reference
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`required by 35 U.S.C. 120 and paragraph (a)(2) of this section to the prior-filed application, unless
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`previously submitted; (ii) The surcharge set forth in § 1.17(t); and (iii) A statement that the entire
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`delay between the date the claim was due under paragraph (a)(2)(ii) of this section and the date
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`the claim was filed was unintentional. The Director may require additional information where there
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`is a question whether the delay was unintentional. (Pre—AIA 37 CFR I.78(a)(3); see also MPEP
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`§1481.03).”
`
`Petitioner respectfully submits that this petition should be granted because each of the
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`three requirements under pre-AIA 37 CFR 1.78(a)(3) has been satisfied.
`
`First, Pre-AIA 37 CFR 1.78ga1g3;gig is satisfied by making the reference reguired by
`
`35 U.S.C. §l20 and 37 CFR 1.78ga[§2}. The reference required by 35 U.S.C. §120 is “a specific
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`reference to the earlier filed application” and pre-AIA 3'? CFR 1.78(a)(2)(iii) states that “[i]f the
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`later-filed application is a nonprovisional application, the reference required by this paragraph
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`must be included in an application data sheet (§ 1.76), or the specification must contain or be
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`amended to contain such reference in the first sentence(s) following the title.” Petitioner
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`Attorney Docket No. PL2891174
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`respectfully submits a Supplemental Application Data Sheet and a Request for Certification of
`
`Correction accompanying this petition to satisfy pre-AIA 37 CFR 1.”/'8(a)(3)(i) by amending the
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`specification to contain the reference in the first sentence following the title. Petitioner files
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`concurrently herewith Form PTO SBI44.
`
`In particular,
`
`the accompanying Supplemental
`
`Application Data Sheet and Request for Certification of Correction amend the specification to
`
`include a reference to co—pending, prior-filed U.S. Patent Application Serial No. 1 U3 33,400, filed
`
`on Jan. 18, 2006, and issued as Pat. No. 8,281,129 (the ‘ 129 Patent) on Oct. 2, 2012. Accordingly,
`
`Petitioner respectfully submits that the requirement under 37 CFR l.78(a)(3)(i) has been met.
`
`Second, Petitioner respectfully submits that the reguirement under pre-AIA 37 CFR
`
`1.78 a 3 ii has been met b
`
`a ment of the surehar e fee under
`
`1.17 t in the revious
`
`Petition of Feb. 22, 2016. Further, Application hereby authorizes the Commissioner to charge any
`
`additional fees which may be required regarding this petition under 37 C.F.C. §§ 1.16-1.17 to
`
`Deposit Account No. 50-5922, making reference to Attorney Docket No. PL289l 174.
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`Third, Petitioner states that the entire delay between the date the benefit claim was
`
`due under ara ra h re-AIA 37 CFR 1.78 a 2 ii and the date the benefit claim as filed
`
`was unintentional. A reference to an intervening patent application was omitted from the original
`
`priority claim of the application of the ‘432 patent. The unintentionally omitted claim of benefit
`
`was first discovered on or about July 6, 2016, while preparing the Patent Owner’s Preliminary
`
`Response in the CBM proceedings involving the ‘432 patent.
`
`It was discovered that a second
`
`chain of claiming benefit under Section 120 existed. This chain involved a patent application
`
`l1;'333,400 filed on Jan. 18, 2006 (the second parent application), which is a continuation-in-part
`
`of the application of the grandparent patent, now patent 8,281,129, and which was then copending
`
`with the application ofthe involved patent. The failure to claim the benefit under this second chain
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`Attorney Docket No. PL2891174
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`was a mistake of a clerical nature, which occurred in good faith, and which was completely
`
`unintentional. This petition has been timely filed since the mistake was discovered since most of
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`the time has been spent obtaining the granting of an Order from the Patent Trial and Appeal Board.
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`It is stated that the entire delay between the date the benefit claim was due under pre-AIA
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`37 CPR §1.78(a)(2)(ii) and the date the claim was filed was unintentional.
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`This petition corrects the omission. Petitioner respectfully submits that the forgoing
`
`statement satisfies the final requirement under 3'? CFR 1.78(a)(3)(iii).
`
`With reference to the forgoing, Petitioner respectfully submits that the requirements under
`
`37 CFR 1.78(a)(3) have been met and, therefore, that this Petition is in condition for grant.
`
`(2) The ‘432 Patent is a continuation-in-part of application no. 11l'333,400
`
`The chain of benefit now being so1.1ght(which is the second chain) should be from patent
`
`7,356,837 (the grandparent) through patent 8,281,129 (the second parent) to the involved patent
`
`8,266,432 (the child)
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`The ‘I29 Patent (application no. 11r’333,400, second parent) is a continuation-in~part of
`
`application no- 09/940,635, filed on August 29, 2001, which is now patent no. 7,356,837 (the ‘S37
`
`Patent, grandparent). The specification of the involved ‘432 Patent (child) is identical to that of
`
`the ‘837 Patent (grandparent). Therefore, like the CIP relationship between the ‘S37 Patent
`
`(grandparent) and the ‘ 129 Patent (second parent), the ‘432 Patent (child) should be a CIP of the
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`‘ 129 Patent (second parent).
`
`Additionally, as an example, FIG. 2 of the ‘432 Patent and FIG. 2a of the ‘I29 Patent
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`illustrate a substantially identical subject matter as shown below, and the following claim chart
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`Attorney Docket No. PL28911T-*1
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`shows that independent claim 1 of the involved child ‘432 Patent is supported by the specification
`
`of the parent ‘I29 Patent.
`
`8,266,432
`
`8,281,129
`
`CENTRALIZED IDENTIFICATION AND
`
`Title:
`
`AUTHENTICATION SYSTEM AND
`
`AND METHOD VIA TRUSTED
`
`METHOD
`
`AUTHENTICATORS
`
`‘432 — Claim 1
`
`l. A method for authenticating
`a user during an electronic transaction
`between the user and an external-
`
`‘129 specification support
`
`
`
`
`
`entity, the method comprising:
`
`
`“The present invention generally relates to a direct
`authentication system and method, more particularly,
`to a new two~factor authentication method used by a
`business to authenticate its customers‘ identity
`utilizing trusted-authenticators.” Col. 1, Lines 12-15.
`
`
`
`“Another advantage is that it proofs that the individual
`is who hefshe claims he/she is.
`It [the invention] is
`responsive in any authentication environment, offline,
`domestically, internationally and electronically (on
`line)” Col. 11, Lines 1-16.
`
`“When an individual [the “user”] is on a business‘ site
`(offline or online), for successful direct
`authentication, the business an external entity
`
`
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`Attorney Docket No. PL2891174
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`receiving electronically a request for
`a dynamic code
`
`requires the individual to provide hisfher static and
`dynamic keys." Col. 1’, Lines 2-6.
`
`The “Business online site” 20 in the ‘ 129 patent is
`equivalent to the “external-entity” 20 in the ‘432
`patent.
`
`“The individual requests a dynamic key [dynamic
`code] from hisfher trusted-authenticator (using any
`communication network such as Internet or
`
`wireless)” Col. 7, lines 6-8.
`
`The dynamic code is called a dynamic key in the ‘ 129
`patent and “the individual 10 receives it from hisfher
`trusted-authenticator 30 for authentication purposes.”
`Col. 8, lines 18-19.
`
`for the user by a computer associated
`with a central-entity during the
`transaction between the user and the
`
`The central entity is defined in the ‘432 patent as an
`authentication system “for identification and
`authorization of users over a communication network
`
`external-entity;
`
`such as Internet.” See ‘432 patent, Abstract.
`
`The “trusted authenticator” 30 in the ‘ 129 patent is
`equivalent to the “central-entity” 30 in the ‘432
`patent.
`
`“The proposed method enables businesses [i. e.
`external-entity(s)] to determine whether the customer
`is truly the person who he says he is by adopting a
`new “two-factor” authentication technique and
`authenticating customer’s identity utilizing customer’s
`trusted authenticator." ‘ 129 patent, Abstract.
`
`The “trusted-authenticator” 30 in the ‘ 129 patent,
`defined at Col 7, Lines 59-64, is equivalent to the
`Central Entity and has a computer associated with it.
`See Figure 2a with trusted—authenticator 30 shown
`with a computer.
`
`“The individual [the user] requests a dynamic key
`[dynamic code] from hisfher trusted-authenticator [the
`central entity] (using any communication network
`such as Internet or wireless)? Col. 7, Lines 6-8.
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`“If the individual 10 [user] does not own a valid
`dynamic key, the individual 10 requests it 100 from
`hisfher trusted-authenticator 30 [the central entity] by
`communicating over a communication network 50.”
`C01. 9, lines 19-22.
`
`As shown in Figure 2a, this step occurs during the
`transaction between the individual and the business 20
`
`(the external-entity).
`
`generating by the central-entity
`during the transaction a dynamic code
`for the user in response to the request,
`wherein the dynamic code is valid for
`a predefined time and becomes
`invalid after being used;
`
`“In response to the individual‘s request 100, the
`trusted-authenticator 30 [centra1—entity] calculates [i.e.
`generates] and sends 102 a dynamic key [i.e. a
`dynamic code] to the individual 10 [i.e. the user] over
`a communication network 50.” C01. 9, Lines 23~25.
`
`will have a different value each
`“The dynamic key
`time the individual 10 receives it from his/her trusted-
`
`authenticator 30 for authentication purposes. To
`increase security a dynamic key may have a non-
`repeating value, may be time dependent (valid for
`some period of time) and
`Col. 8, Lines 16-21.
`
`providing by the computer associated
`with the central~entity said generated
`dynamic code to the user
`
`“the trusted-authenticator 30 [central-entity] . ..
`sends 102 a dynamic key to the individual 10 [user]
`over a communication network 50.” Co]. 9, Lines 23-
`25.
`
`during the transaction;
`
`receiving electronically by the
`central-entity a request for
`authenticating the user from a
`computer associated with the
`external-entity
`
`As shown in Figure 2a, this occurs during the
`transaction.
`
`“Upon receipt of the individual's 10 static and
`dynamic keys, the business 20 [i.e. the eXtemal-
`entity] constructs an authentication message including
`the individual's 10 keys and communicates it to the
`trusted-authenticator 30 [i.e. the trusted-entity (i.e. the
`central entity) receives the request], 120 for validation
`of the individual's 10 identity [i.e. authenticating the
`user] over a communication network 50 [i.e. receives
`the request e1ectronically].” Col. 9, Lines 32-36.
`
`“When the business receives individua1’s static and
`
`dynamic keys [thus during a transaction between the
`user and the external entity, i.e. the business], the
`business communicates authentication messages
`including individual’s static and dynamic keys to the
`trusted-authenticator.” Col 7, Lines 9-13. Thus,
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`

`
`Attorney Docket No. PL28911?4
`
`based on a user—specific
`information and the dynamic code as
`a digital identity included in the
`request which said dynamic code was
`received by the user during the
`transaction and was provided to the
`external-entity by the user during the
`transaction; and
`
`“A static key [i.e. user—specific information] might be
`any identification phrases such as password, name,
`UserName, SSN, alias, account number, customer
`number, etc or the combination of this information.
`
`Col 8, Lines 8-12
`
`“The use of “authentication message” refers to a
`message
`[that] may include individual’s static [i.e.
`user-specific information] and dynamic keys [i.e.
`dynamic code] and any other information.” Col 8,
`Lines 31-35.
`
`“Upon receipt of the dynamic key, the
`individual 10 provides the static key and the dynamic
`key to the business 20 [i.e. the external entity], 112 for
`validation of his/her I0 identity.” Col. 9, Lines 29-31.
`
`The events all occurred “during the transaction” as
`depicted in Figure 2a, which show a complete
`transaction.
`
`authenticating by the central—entity
`the user and providing a result of the
`authenticating to the extemal~entity
`during the transaction if the digital
`
`identity is valid.
`
`“Upon receipt of the authentication message, the
`trusted-authenticator 30 [central-entity] validates both
`keys and verifies the individual's 10 identity, and
`sends 126 either a confirmation message or a denial
`message back to the business [i.e. the external entity]
`over a communication network 50.”
`
`Col. 9, Lines 37-41.
`
`3] Correcting the Relationship
`
`It is submitted that the relationship between the ‘432 Patent (the child) and other related
`
`patents needs to be corrected. The ‘432 Patent is currently listed as a continuation of application
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`sent by business 20. Col 9, Lines 32-35.
`
`
`
`
`The step occurs electronically as shown by Figure 2a
`by the item called “the communication network”
`
`the trusted-authenticator receives the dynamic code
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`Attorney Docket No. PL2891174
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`Ser. No. 11,039,046. However, it is submitted that the ‘432 Patent should be corrected to read a
`
`continuation-in-part of the application Ser. No. 1lf239,046 (first parent). Further, Patent
`
`Application Ser. No. 11;’239,046 is currently listed as a continuation of application No.
`
`09f940,635 (the grandparent) in the ‘432 Patent. However, Patent Application Ser. No. 1 U23 9,046
`
`should be corrected to read a continuation-in-part of application No. 09,940,635 in the ‘432
`
`Patent.
`
`It is stated that the entire delay between the date the benefit claim was due under pre-AIA
`
`37 CFR §I.78(a)(2)(ii) and the date the claim was filed was unintentional.
`
`Petitioner respectfully requests issuance of a Certificate of Correction to correct the
`
`aforementioned errors.
`
`Since this is a renewed petition to replace the previous petition, a fee should not be required.
`
`However, the Commissioner is hereby authorized to charge any additional fees which may be
`
`required, or credit any overpayment,
`
`to Deposit Account No. 50-5922, making reference to
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`Attorney Docket No. PL2891174
`
`Attorney Docket No. PL2891174. Should no proper payment be enclosed herewith,
`
`the
`
`Commissioner is authorized to charge the unpaid amount to Deposit Account No. 50-5922.
`
`Respectfully submitted,
`Nader Asghari-Kamrani et al.
`
`_fJae Youn Kim7
`Jae Youn Kim
`
`Reg. No. 69,215
`
`August 8, ZOI6
`Novick, Kim & Lee, PLLC
`325] Old Lee Highway, Suite 404 Fairfax, VA 22030
`TELEPHONE 703-745-5495
`
`FACSIMILE 703-563-9748
`
`EMAIL <docket@nl<llaw.com>
`
`Attachment: CBM2016-00063 and 00064 Decision, Paper 10 dated August 4, 2016
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`I0
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`us to. ov
`Trials
`571-272-7822
`
`Paper 10
`Entered: August 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`
`V.
`
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARLKAMRANI,
`Patent Owner.
`
`Cases CBM20l6-00063 and CBlVI2016—O0O64
`
`Patent 8,266,432 B2’
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`
`Motion to File a Request for a Certificate of Correction
`37 C.F.R. §§ 42.20 and 1.323
`
`On July 27, 2016, Patent Owner filed a Motion to File a Request for a
`
`Certificate of Correction, seeking to correct U.S. Patent No. 8,266,432 B2
`
`‘ This Order addresses the same issues in the above—identified covered
`
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases.
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`CBM20l6-00063 and CBM20l6-00064
`
`Patent 8,266,432 B2
`
`(Ex. 1001, “the ’432 patent”) with respect to the benefit claim of prior~filed
`
`applications. Paper 82 (“Mot”). Petitioner opposes. Paper 9 (“Opp.”). For
`
`the reasons articulated below, Patent Owner’s Motion is granted, authorizing
`
`Patent Owner to file a request for a certificate of correction and to file a
`
`petition to accept an unintentionally delayed benefit claim.
`
`We observe that the Director has the authority to issue a certificate of
`
`correction of app1icant’s mistake, pursuant to 35 U.S.C. § 255, which, in
`
`part, states:
`
`Whenever a mistake of a clerical or typographical nature, or of
`minor character, which was not the fault of the Patent and
`Trademark Office, appears in a patent and a showing has been
`made that such mistake occurred in good faith, the Director may,
`upon payment of the required fee,
`issue a certificate of
`correction, if the correction does not involve such changes in the
`patent as would constitute new matter or would require
`reexamination.
`
`A patent owner may file a request for such a certificate under 37 C.F.R.
`
`§ 1.323, which states:
`
`The Office may issue a certificate of correction under the
`conditions specified in 35 U.S.C. § 255 at the request of the
`patentee or the patentee’s assignee, upon payment of the fee set
`forth in § 1.20(a). If the request relates to a patent involved in an
`interference or trial before the Patent Trial and Appeal Board, the
`request must comply with the requirements of this section and be
`accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3)
`or § 42.20 of this title.
`
`2 All citations are to CBM2016-00063, as representative, unless otherwise
`noted.
`
`2
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`CBM2016-00063 and CBIVI2016—00064
`
`Patent 8,266,432 B2
`
`Additionally, a patent owner, who is seeking to add a benefit claim under
`
`35 U.S.C. § 120 in a patent, must file a petition under 37 C.F.R. § 1.78(e) to
`
`accept an unintentionally delayed benefit claim. See § 1481.03 of the
`
`Manual of Patent Examining Procedure, 9"‘ ed. Rev. 7 (2015). Such a
`
`petition must be accompanied by: (1) a statement that the entire delay
`
`between the date the benefit claim was due and the date the benefit claim
`
`was filed was unintentional; (2) the specific reference required by 35 U.S.C.
`
`§ 120 and 37 C.F.R. § 1.78(d)(2); and (3) the required petition fee. See
`
`37 C.F.R. § l.78(e).
`
`Here, the application that issued as the ’432 patent has an actual filing
`
`date of September 15, 2008. Ex. 1001 at [22]. The ’432 patent currently
`
`claims the benefit of the following two prior-filed nonprovisional
`
`applications:
`
`(1) U.S. Patent Application No. 09/940,635 (Ex. 1016, “the first
`
`prior-filed application”), which was filed on August 29, 2001, and issued as
`
`U.S. Patent No. 7,356,837 B2 on April 8, 2008 (Ex. 1005 at [22], [45]); and
`
`(2) U.S. Patent Application No. 11/239,046 (Ex. 1014, “the second
`
`prior~filed application”), which was filed on September 30, 2005, and issued
`
`as U.S. Patent No. 7,444,676 B1 on October 28, 2008 (Ex. 1015 at [22],
`
`[45]). Ex. 1001 at [63], 1:6—17.
`
`On the present record, the front page of the ’432 patent shows that the
`
`’432 patent is a continuation of the second prior-filed application, which is a
`
`continuation of the first prior-filed application. Ex. 1001 at [63], 1:6~17.
`
`However, Patent Owner indicates that it filed a petition under 37 C.F.R.
`
`3
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`CBM20 1 6-00063 and CBM20 I 6-00064
`
`Patent 8,266,432 B2
`
`§ 1.78(e), “to claim the two continuing applications as Continuation-z'n—Part
`
`applications.” Mot. 2 (emphasis added). According to Patent Owner, that
`
`petition is still pending. Id. A review of the patent file of the ’432 patent
`
`shows that Patent Owner also filed a request for a certificate of correction on
`
`February 22, 2016, seeking to correct the benefit claims in the ’432 patent as
`
`follows:
`
`application No.
`of
`Continuation-in-part
`Gent-i-nuatien
`11/239,046, filed on Sep. 30, 2005, now Pat No. 7,444,676,
`which is a semi-nu-atien continuation—in-part of application No.
`09/940,635, filed on Aug. 29, 2001, now Pat. No. 7,3 56,83 7.
`
`See Ex. 3001, 3 (annotations added).
`
`In its Petition (Paper 2, “Pet.”), Petitioner argues that the ’432 patent
`
`does not have a proper benefit claim under 35 U.S.C. § 120 to either
`
`prior-filed application because there is no copendency between the
`
`’432 patent and the first prior-filed application, and the second prior-filed
`
`application does not provide adequate written description support for the
`
`claims of the ’432 patent. Pet. 16-28. Additionally, each ground of
`
`unpatentability asserted by Petitioner is based on at least one intervening
`
`reference that has a filing date or publication date before the actual filing
`
`date of the ’432 patent, but after the filing date of the first prior-filed
`
`application. Id. at 3-4; Ex. 1032 at [22] (filed on December 12, 2005), [43]
`
`(published on May 4, 2006); CBI\/12016-00064, Ex. 1034 at [22] (filed on
`
`July 14, 2006), [54] (published on January 25, 2007).
`
`Patent Owner now seeks to claim the benefit of a third prior-filed
`
`application, as an intermediate to the first prior-filed application. Mot. 2-3.
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`CBM2016-00063 and CBM2016-00064
`
`Patent 8,266,432 B2
`
`In its Motion, Patent Owner contends that it recently discovered a second
`
`chain of benefit claim—namely, that the ’432 patent allegedly is a
`
`continuation-in-part of U.S. Patent Application No. 11/333,400, filed on
`
`January 18, 2006, and issued a