I hereby certify that this paper (along with any paper referred to as being attached
`or enclosed) is being transmitted via the Office electronic filing system in
`accordance with 37 CFR § 1.6(a)( ).
`
`1
`
`
`
`Dated:Ju|y 15: 2016
`Electronic Signature for John N. Anastasi:
`
`/John N. Anastasi/
`
`Docket N0.: W0537-700924
`
`(PATENT)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application N0.: 15/019,660
`
`Confirmation N0.: 1202
`
`Filed: February 9, 2016
`
`Art Unit: 3668
`
`For: METHOD AND APPARATUS FOR SECURE
`ACCESS PAYMENT AND IDENTIFICATION
`
`Examiner: C. K. Cheung
`
`AMENDMENT IN RESPONSE TO NON-FINAL OFFICE ACTION UNDER 37 C.F.R.
`1.111
`
`MS Amendment
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`INTRODUCTORY COMMENTS
`
`In response to the Office Action dated April 15, 2016, please amend the above-identified
`
`US. patent application as follows:
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
`
`of this paper.
`
`Remarks/Arguments begin on page 6 of this paper.
`
`Apple 1009
`Apple 1009
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`2
`
`Docket No.: W0537—700924
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`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in the
`
`application.
`
`Listing of Claims:
`
`1.
`
`(Currently Amended) A system for authenticating a user for enabling a
`
`transaction, the system comprising:
`
`a first device including:
`
`a first processor, the first processor programmed to authenticate a user of the first device
`
`based on secret information and to retrieve or receive first biometric information of the user of
`
`the first handheld device; and
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`a first wireless transceiver coupled to the first processor and programmed to transmit a
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`first wireless signal including first authentication information of the user of the first handheld
`
`device;
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`a biometric sensor configured to capture the first biometric information of the user; and
`
`wherein the first processor is programmed to generate one or more signals including the
`
`first authentication information, an indicator of biometric authentication, and a time varying
`
`value in response to valid authentication of the first biometric information, mto provide the
`
`one or more signals including the first authentication information for preeessi-ng—by transmitting
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`tpa second device; and
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`wherein the first processor is further configured to receive an enablement signal from the
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`second device;
`
`the system further including the second device that is configured to provide the enablement
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`signal indicating that the second device an—approved th_etransaction—frem—th%seeend—devie%
`based on use of the one or
`
`more signals[,];
`
`wherein the second device includes a second processor that is configured to—retrieve
`
`
`
`reeei—ve—preef—ef provide the enablement signal based on the indication of biometric
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`authentication asseei—ateel—with ithe user of the first handheld device, and—wherein—the—seeenel
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`3
`
`Docket No.2 W0537—700924
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`preeesser—is—a—lse—eenfigu-red—te—use at least a portion of the first authentication information, and
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`second authentication information of the user of the first handheld device with—the—preef—ef
`
`biometfleauthentieatien to enable and complete processing of the transactionrwherein
`
`
`
`2.
`
`(Currently Amended) The system according to claim 1, wherein the first
`
`processor is programmed to determine the first authentication information so that the first
`
`authentication information is generated based on[,] at least part of the first biometric information
`
`or generated based on receiving the first biometric information.
`
`3.
`
`(Currently Amended) The system according to claim 1, wherein—the—fi-rst—handhelel
`
`deviee—is—eenfigured—te—eemmurfieate—witlba—seeend—deviee, the second device including:
`
`a—seeend—preeessefi
`
`a second communication interface coupled to the second processor, and
`
`wherein the second processor is configured to[:] receive the first authentication
`
`information of the user of the first handheld device[;],t_oretrieve or receive second th_e
`
`authentication information of the user of the first handheld device; and use the first
`
`authentication information and the second authentication information to authenticate the user of
`
`the first handheld device to enable the transaction.
`
`4.
`
`(Currently Amended) The system according to claim 1, lwhorei-n—the—fi-1=st—lqanellcn-zlel
`
`WWW, the second device including:
`
`a—seeond—preeessefi
`
`a second wireless transceiver coupled to the second processor, and
`
`wherein the second processor is configured to[:] receive the first authentication
`
`information of the user of the first handheld device[;], to retrieve or receive the second
`
`authentication information of the user of the first handheld device; and use the first
`
`authentication information and the second authentication information to authenticate the user of
`
`the first handheld device with—theseeenel—eleviee to enable the transaction.
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`4
`
`Docket No.2 W0537—700924
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`5.
`
`(Original) The system of claim 1, wherein the first processor is further configured
`
`to compare stored authentication information with the authentication information of the user and
`
`configured to enable the first device based on a valid comparison.
`
`6.
`
`(Currently Amended) The system of claim 1, wherein the first processor is further
`
`configured to encrypt the first authentication information to communicate to [a] the second
`
`device.
`
`7.
`
`(Currently Amended) The system of claim 1, wherein the first handheld device
`
`includes a first memory coupled to the first_processor i-nelueled—i-n—thefi—rst—handheld—deviee and
`
`configured to store respeetive the first biometric information.
`
`8.
`
`(Original) The system of claim 1, wherein the first authentication information
`
`includes a multidigit public ID code for a credit card account, which a credit card issuer can map
`
`to a usable credit card number.
`
`9.
`
`(Original) The system of claim 1, wherein the first processor is further configured
`
`to communicate information associated with the biometric information of the user of the first
`
`device.
`
`10.
`
`(Currently Amended) The system of claim 1, further comprising:
`
`
`wherein the first handheld device includes a user interface coupled to the first processor
`
`'lii'lf'lillii',;
`
`wherein the first processor is configured to receive the first biometric information of the
`
`user of the first device[,]; and
`
`wherein the biometric information is employed by the user of the first handheld device to
`
`initiate payment for the transaction.
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`5
`
`Docket No.2 W0537—700924
`
`11.
`
`(Currently Amended) The system of claim 1, wherein the first device is
`
`configured to communicate with the second device that is a networked credit card validation-
`
`information entity configured to approve or deny financial transactions based on authentication
`
`of the user.
`
`12.
`
`(Currently Amended) A system for authenticating a user for enabling a
`
`transaction, the system comprising:
`
`a first device including:
`
`a biometric sensor configured to capture a first biometric information of the user;
`
`a first processor programmed to: 1) authenticate a user of the first device based on secret
`
`information, 2) retrieve or receive first biometric information of the user of the first handheld
`
`device, 3) authenticate the user of the first device based on the first biometric, and 4) generate
`
`one or more signals including first authentication information, an indicator of biometric
`
`authentication of the user of the first handheld device, and a time varying value[,]; and
`
`
`
`a first wireless transceiver coupled to the first processor and programmed to wirelessly
`
`transmit the one or more signals to a second device for processing;
`
`wherein generating the one or more signals occurs responsive to valid authentication of
`
`the first biometric information;id
`
`wherein the first processor is further programmed to receive an enablement signal
`
`indicating an approved transaction from the second device, wherein the enablement signal is
`
`provided from the second device based on acceptance of the indicator of biometric
`
`authentication and use of the first authentication information and use of second authentication
`
`information to enable the transaction.
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`6
`
`Docket No.2 W0537—700924
`
`REMARKS
`
`In response to the Office Action mailed April 15, 2016, Applicant respectfully requests
`
`reconsideration in view of the amendments and the following remarks. Claims 1-12 were
`
`previously pending in this application. By this amendment, claims 1-4, 6-7and 10-12 have been
`
`amended. No new claims have been added. No claims have been deleted. As a result claims 1-
`
`12 are pending for examination with claims 1 and 12 being independent claims. No new matter
`
`has been added.
`
`Claim Objections
`
`The Examiner objected to the claims because Claim 1 does not follow the convention of
`
`separating distinct elements/steps of the claims with line spacings or line indentations. MPEP
`
`608.01(i) expressly states,” Where a claim sets forth a plurality of elements or steps, each
`
`element or step of the claim should be separated by a line indentation.” For example, claim 1
`
`contains an individual ”wherein" clause hiding a plurality of further ”wherein" clauses that also
`
`including multiple distinct steps and/or elements; however, the claim as presented fails to
`
`delineate these elements in accordance with MPEP 608.01(i). Claim 1 has been amended to
`
`conform to the convention and withdrawal of this objection is respectfully requested.
`
`The Examiner objected to the claims because Claim 10 does not follow the convention of
`
`separating distinct elements/steps of the claims with line spacings or line indentations. MPEP
`
`608.0l(i) expressly states,” Where a claim sets forth a plurality of elements or steps, each
`
`element or step of the claim should be separated by a line indentation.” For example, claim 10
`
`contains more than one ”wherein" clause; however, the claim as presented fails to delineate these
`
`elements in accordance with MPEP 608.01(i). Claim 10 has been amended to conform to the
`
`convention and withdrawal of this objection is respectfully requested.
`
`Re‘ections Under 35 U.S.C.
`
`112
`
`Claims 1-11 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.
`
`In particular, the Office Action states:
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`7
`
`Docket No.2 W0537—700924
`
`Claim 1 recites “a first device including” which solely pertains to actions performed by
`
`and components contained within said “first device” only; however, the claim further recites
`
`“wherein the second device is configured to retrieve biometric information associated with the
`
`user of the first handheld device from stored biometric information of a plurality of first users
`
`stored in a second memory of the second device, or receive proof of biometric authentication
`
`associated with the user of the first handheld device, and wherein the second processor is also
`
`configured to use at least a portion of the first authentication information with the proof of
`
`biometric authentication to complete processing of the transaction, wherein processing of the
`
`transaction includes authentication of an identity of the user of the first handheld device to
`
`enable the transacn'on” are not actions and components performed by or components contained
`
`within said “first device”. The Examiner interprets these limitations are performed by and
`
`contained within “a second device including” not by “a first device including”.
`
`In response, the Applicant has amended claim 1 to make it clear that both the first device
`
`and the second device are being positively recited. Accordingly, withdrawal of this objection is
`
`respectfully requested.
`
`Claims 2-11 are rejected based on their dependency and therefore withdrawal of this
`
`rejection is also respectfully requested.
`
`Re‘ections Under 35 U.S.C.
`
`103
`
`Claims 1-2 and 5-12 are rejected under pre-AIA 35 U.S.C. §103(a) as being unpatentable
`
`over US 20020178364 Al (”Weiss”) from IDS and further in View of US 6819219 B1 (”Bolle”)
`
`from IDS. Without acceding to the merits of the asserted combination of references, the
`
`Examiner has indicated the subject matter of dependent claims 3-4 is allowable if incorporated
`
`into independent claim 1. The Applicant has incorporated the common subject matter of
`
`dependent claims 3-4 into independent claim 1, which is believed to render independent claim 1
`
`allowable. Accordingly, allowance of independent claims 1 and dependent claims 2-11 is
`
`respectfully requested.
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`8
`
`Docket No.2 W0537—700924
`
`With respect to independent claim 12, claim 12 recites all of the same limitations of
`
`independent claim 1 from the perspective of the first device, and should be allowable for the
`
`same reasons as independent claim 1. Accordingly, withdrawal of the rejection and allowance of
`
`claim 1 is respectfully requested.
`
`Nonstatutory Double Patenting Rejection
`
`Claims 1 and 12 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of US. Patent Number 8,001,055. Applicant herewith has filed a terminal
`
`disclaimer which obviates this rejection. Accordingly, withdrawal of this rejection is respectfully
`
`requested.
`
`Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over preliminary amended claims 21-40 of copending US. Patent Application
`
`Number 14/814,740. Applicant herewith has filed a terminal disclaimer which obviates this
`
`rejection. Accordingly, withdrawal of this rejection is respectfully requested.
`
`

`

`Application No. 15/019,660
`Amendment dated July 15, 2016
`Reply to Office Action of April 15, 2016
`
`9
`
`Docket No.2 W0537—700924
`
`CONCLUSION
`
`In View of the foregoing amendments and remarks, reconsideration is respectfully
`
`requested. This application should now be in condition for allowance; a notice to this effect is
`
`respectfully requested. If the Examiner believes, after this amendment, that the application is
`
`not in condition for allowance, the Examiner is requested to call the Applicant’s attorney at the
`
`telephone number listed below.
`
`If this response is not considered timely filed and if a request for an extension of time is
`
`otherwise absent, Applicant hereby requests any necessary extension of time. If there is a fee
`
`occasioned by this response, including an extension fee that is not covered by an accompanying
`
`payment, please charge any deficiency to Deposit Account No. 50/2762; Our Ref. W0537-
`
`700924.
`
`Dated: July 15, 2016
`
`Respectfully submitted,
`
`Electronic signature:
`John N. Anastasi
`
`/John N. Anastasi/
`
`Registration No.: 37,765
`LANDO & ANASTASI, LLP
`Riverfront Office Park
`
`One Main Street, Suite 1100
`
`Cambridge, Massachusetts 02142
`(617) 395-7000
`
`Attorney for Applicant
`
`