IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Docket No.: W0537—700620
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`Applicant:
`Serial No:
`Confirmation No:
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`Kenneth P. Weiss
`11/768,729
`3536
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`Filed:
`For:
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`June 26, 2007
`UNIVERSAL SECURE REGISTRY
`
`Dada, Beemnet W.
`Examiner:
`2435
`Art Unit:
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`CERTIFICATE OF TRANSMISSION UNDER 37 C.F.R. §1.8§a[
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`The undersigned hereby certifies that this document is being electronically filed in accordance with
`§ l.6(a)(4), on the 18th day of April, 2011.
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`Robert V. Donahoe/
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`Robert V. Donahoe, Reg. No. 46,667
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`Commissioner for Patents
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`Sir:
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`RESPONSE
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`In response to the final Office Action mailed December 22, 2010, please enter the
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`following response in the above—identified application.
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`Remarks begin on page 2 of this paper.
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`1029667 .1
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`Apple 1011
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`Apple 1011
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`Serial No.: 11/768,729
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`— 2 —
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`Art Unit: 2435
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`Claims 1—5, 9—16, 18—21, 24—30, 32—39 and 41—45 are currently pending for examination
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`with claims 1 and 16 being independent claims. No amendments are included herein.
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`REMARKS
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`Rejections Under 35 U.S.C. §1031a1
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`The Office Action rejects claims 1—5, 9—16, 18—21, 24—30, 32—39 and 41—45 under 35
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`U.S.C. §103(a) as being unpatentable over U.S. Patent No. 7,571,139 to Giordano et al.
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`(hereinafter Giordano) in view of U.S. Publication No. 2006/0256961 to Brainard et al.
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`(hereinafter Brainard). This rejection includes a rejection of each of the pending independent
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`claims 1 and 16. Applicant respectfully asserts that the pending claims are patentable in view of
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`the asserted combination at least because Giordano and Brainard either alone or in proper
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`combination do not teach or suggest either “a processor
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`configured to map the time-varying
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`multicharacter code to secure data including information required to provide the services, the
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`information including account identifying information where the account identifying information
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`is unknown to the service provider,” as recited in claim 1, or a method including “mapping the
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`time-varying multicharacter code to information required to provide the services, the
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`information including account identifying information unknown to the service provider,” as
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`recited in claim 16.
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`The Office Action states and Applicant agrees that Giordano “does not explicitly teach a
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`time—varying code.” (Office Action at page 3.) The Office Action then asserts that Brainard
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`teaches an “authentication system including a time—varying multicharacter code.” Id. Applicant
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`notes that the Office Action does not assert that any reference teaches or suggests mapping a
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`time-varying multi-character code to secure data including information required to provide
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`services where the information includes “account identifying information . . . unknown to the
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`service provider,” as recited in claims 1 and 16. Accordingly, the Office Action fails to establish
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`a proper prima facie case of obviousness for at least this reason.
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`In addition, Applicant respectfully submits that the cited references do not teach or
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`suggest the preceding. For example, paragraph 19 of Brainard merely describes generating an
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`authentication code in response to the verifier seed and a time dependent value and then
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`authenticating a user by verifying the authentication code. Applicant respectfully asserts that the
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`1 0296-57. 1
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`Serial No.: 11/768,729
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`— 3 —
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`Art Unit: 2435
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`preceding, whether alone or in proper combination with Giordano, does not teach or suggest
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`mapping a time-varying multi-character code to secure data including information required to
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`provide services where the information includes “account identifying information . .. unknown
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`to the service provider,” as recited in claims 1 and 16.
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`Accordingly, each of claims 1 and 16 are patentable for at least the reasons described
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`above. Each of claims 2—5, 9—15, 18—21, 24—30, 32—39 and 41—45 depend from one of the
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`allowable independent claims and is allowable for at least for the same reasons as the
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`independent claim from which it depends. For at least these reasons, Applicant requests
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`reconsideration and withdrawal of the rejection of claims 1—5, 9—16, 18—21, 24—30, 32—39 and 41—
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`45.
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`Applicant also notes that the Office Action states that “as per claims 28—29 and 33—39,
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`Giordano further teaches the system wherein the database is further configured to associate
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`biometric information with each entity having secure data in the secure registry respectively
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`[column 18, lines 14—47].” Applicant respectfully disagrees with the preceding and asserts that
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`claims 28—29 and 33—39 are patentable for reasons in addition to their dependency from an
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`allowable base claim.
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`Specifically, Giordano teaches activation of a customer transceiver 50 based on a
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`customer provided biometric. (Col. 13, lines 23—26; see also, claims 3—6.) In Giordano, the
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`biometric is unavailable to other elements of the system 30. Id. Accordingly, Giordano does not
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`teach or suggest any of: a “database is further configured to associate biometric information with
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`each entity having secure data in the secure registry, respectively,” as recited in claim 33; a
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`“processor is further configured to map the time—varying multicharacter code to biometric
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`information associated with the entity on whose behalf the services are to be provided and to
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`provide the biometric information to the service provider,” as recited in claim 34; and “wherein
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`the biometric information includes an image of the entity on whose behalf the services are to be
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`provided,” as recited in claim 35.
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`General Comments on Dependent Claims
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`Since each of the rejected dependent claims depends from a base claim that is believed to
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`be in condition for allowance, Applicant believes that it is unnecessary at this time to argue the
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`1 029667. 1
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`Serial No.: 11/768,729
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`— 4 —
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`Art Unit: 2435
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`allowability of each of the dependent claims individually. However, Applicant does not
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`necessarily concur with the interpretation of the rejected dependent claims as set forth in the
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`Office Action, nor does Applicant concur that the basis for the rejection of any of the dependent
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`claims is proper. Therefore, Applicant reserves the right to specifically address the patentability
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`of the dependent claims in the future, if deemed necessary.
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`J 029667. 1
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`Serial No.: 11/768,729
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`— 5 —
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`Art Unit: 2435
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`CONCLUSION
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`In View of the foregoing amendments and remarks, reconsideration is respectfully
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`requested. This application should now be in condition for allowance; a notice to this effect is
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`respectfully requested. If the Examiner believes, after this amendment, that the application is not
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`in condition for allowance, the Examiner is requested to call the Applicant’ s attorney at the
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`telephone number listed below.
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`If this response is not considered timely filed and if a request for an extension of time is
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`otherwise absent, Applicant hereby requests any necessary extension of time. If there is a fee
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`occasioned by this response, including an extension fee that is not covered by an accompanying
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`payment, please charge any deficiency to Deposit Account No. 50/2762, Ref. No. W0537—
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`700620.
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`Respectfully submitted,
`Kenneth P. Weiss, Applicant
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`By: /Robert V. Donahoe/
`Robert V. Donahoe, Reg. No. 46,667
`LANDO & ANASTASI, LLP
`One Main Street
`
`Cambridge, Massachusetts 02142
`United States of America
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`Telephone: 617—395-7000
`Facsimile: 617—395-7070
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`Docket No.: W0537—700620
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`Date: April 18, 2011
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`1 0296-57. 1
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