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)(4).
`
`
`
`DatedzNovember 29, 2011
`Electronic Signature for Robert V. Donahoe:
`
`/Robert V. Donahoe/
`
`Docket No.: W0537-700620
`
`(PATENT)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application No.: 11/768,729
`
`Confirmation No.: 3536
`
`Filed: June 26, 2007
`
`Art Unit: 2435
`
`
`
`For: UNIVERSAL SECURE REGISTRY Examiner: B. W. Dada
`
`AMENDMENT AFTER FINAL ACTION UNDER 37 C.F.R. 1.116
`
`MS RCE
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the final Office Action mailed June 29, 2011, please amend the above-
`
`identified application as follows. Changes to the Claims are shown by strike through (for
`
`deleted matter) and underlining (for added matter).
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
`
`of this paper.
`
`Remarks begin on page 9 of this paper.
`
`Apple 1014
`
`Apple 1014
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`2
`
`Docket No.2 W0537—70062O
`
`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 secure registry system for providing information to a
`
`first partyserviee—previder to enable transactions between the first party andflaesewieepraéder
`
`te—previde—serviees—te entities with secure data stored in the secure registry system, the secure
`
`registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time-varying multicharacter code for each entity having secure data in the secure registry
`
`system, respectively, each time-varying multicharacter code representing an identity of one of
`
`the respective entities; and
`
`a processor configured to receive, from the first partyserviee—previder, the time-varying
`
`multicharacter code for the entity on whose behalf a transaction is to be performedserviees—are—te
`
`lee—provided, configured to map the time-varying multicharacter code to the identity of the entity
`
`and secure data associated with the entity including information required to enableprevide the
`
`transactionserviees, the information including account identifying information where the account
`
`identifying information is unknown to the first partyserviee—previder, to provide the account
`
`identifying information to a third party to enable th_e[[a]] transaction without providing the
`
`account identifying information to the first partyseiaviee—previder.
`
`2.
`
`3.
`
`(Canceled)
`
`(Previously Presented) The system of claim 1, wherein the time-varying
`
`multicharacter code is provided to the system via a secure electronic transmission device.
`
`4.
`
`(Previously Presented) The system of claim 1, wherein the time-varying
`
`multicharacter code is encrypted and transmitted to the system, and
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`3
`
`Docket No.2 W0537—70062O
`
`wherein the system is configured to decrypt the time-varying multicharacter code with a
`
`public key of the entity.
`
`5.
`
`(Currently Amended) The system as claimed in claim 1, wherein the transaction
`
`includes a service provided by the first party,
`
`wherein said first party’sservieeprevideris service includes delivery,
`
`wherein the information is an address to which an item is to be delivered to the entity,
`
`wherein the system receives the time-varying multicharacter code, and
`
`wherein the system uses the time-varying multicharacter code to obtain the appropriate
`
`address for delivery of the item by the third party.
`
`6.
`
`7.
`
`8.
`
`9.
`
`(Canceled).
`
`(Canceled).
`
`(Canceled).
`
`(Previously Presented) The secure registry system as claimed in claim 1, wherein
`
`the account identifying information includes credit card account information regarding the
`
`entity, and wherein the processor is configured to provide the credit card account information
`
`based upon the multicharacter code of the entity to enable the transaction.
`
`10.
`
`(Previously Presented) The system as claimed in claim 9, wherein the system is
`
`configured to receive an approval of the credit card transaction.
`
`11.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account
`
`identifying information includes bank card account information regarding the entity, and
`
`wherein the processor is configured to provide the bank card account information to enable the
`
`transaction based upon the multicharacter code of the entity.
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`4
`
`Docket No.2 W0537—70062O
`
`12.
`
`(Previously Presented) The system as claimed in claim 11, wherein the system is
`
`configured to provide an approval of the bank card transaction.
`
`13.
`
`(Previously Presented) The system as claimed in claim 1, wherein the information
`
`includes personal identification information regarding the entity.
`
`14.
`
`(Currently Amended) The system as claimed in claim 13, wherein the personal
`
`identification information comprises a photograph of the entity, and wherein the photograph is
`
`provided to the first partyseiaviee—previder.
`
`15.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account
`
`identifying information identifies email address information regarding the entity.
`
`16.
`
`(Currently Amended) A method for providing information to a first party to
`
`enable transactions—a—serviee—te between the first party and entities who have secure data stored
`
`in a secure registry in which each entity is identified by a time-varying multicharacter code, the
`
`serviee—previded—by—a—serviee—previderrthe method comprising:
`
`receiving the time-varying multicharacter code for an entity on whose behalf a
`
`transaction is to take placethe—sewiees—are—te—be—previded;
`
`mapping the time-varying multicharacter code to an identity of the entity and information
`
`required to perform the transactionprevide—the—sewiees, the information including account
`
`identifying information unknown to the first partyserviee—previder;
`
`providing the account identifying information to a third party without providing the
`
`account identifying information to the first partysewieeprevider; and
`
`using the account identifying information to enable the first partyservieeprevider to
`
`performprevide the transactionseiaviee without the first party’sserviee—previderis knowledge of
`
`the account identifying information.
`
`17.
`
`(Canceled).
`
`18.
`
`(Canceled)
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`5
`
`Docket No.2 W0537—70062O
`
`19.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the
`
`time-varying multicharacter code comprises receiving the time-varying multicharacter code
`
`transmitted via a secure electronic transmission device.
`
`20.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the
`
`time-varying multicharacter code comprises receiving an encrypted multicharacter code, and
`
`wherein the method further comprises decrypting the encrypted multicharacter code.
`
`21.
`
`(Currently Amended) The method as claimed in claim 16, wherein the transaction
`
`includes a service provided by the first party,previderis—serviee
`
`wherein the service includes delivery,
`
`wherein the account identifying information is associated with an address to which an
`
`item is to be delivered for the entity, and
`
`wherein the third party receives the address for delivery of an item provided by the m
`
`partyseiaviee—previder.
`
`22.
`
`(Canceled).
`
`23.
`
`(Canceled).
`
`24.
`
`(Currently Amended) The method as claimed in claim 16, wherein the account
`
`identifying information includes a credit card number, and wherein the act of using the account
`
`identifying information te—perferm—theserviees comprises using the credit card number to enable
`
`th_e[[a]] trans action.
`
`25.
`
`(Currently Amended) The method as claimed in claim 24, wherein the act of
`
`using the account identifying information comprises receiving a validation or denial of the
`
`transaction without providing the credit card number of the entity to the first partyserviee
`
`provider.
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`6
`
`Docket No.2 W0537—70062O
`
`26.
`
`(Currently Amended) The method as claimed in claim 16, wherein the act of
`
`using the account identifying information te—perferm—the—seiflviees comprises using bank card
`
`information about the entity to enable a transaction.
`
`27.
`
`(Currently Amended) The method as claimed in claim 26, wherein the act of
`
`using the information comprises receiving a validation or denial of the bank card transaction
`
`without providing a bank card number of the entity to the first partysewieeprefider.
`
`28.
`
`(Currently Amended) The method as claimed in claim 16, wherein the act of
`
`mapping the time-varying multicharacter code to information required by the first partyserviee
`
`previder comprises mapping the time-varying multicharacter code to personal identification
`
`information about the entity.
`
`29.
`
`(Currently Amended) The method as claimed in claim 28, wherein the personal
`
`identification information comprises a photograph of the entity, and
`
`wherein the method further comprises an act of providing the photograph to the m
`
`partyseFviee—previder.
`
`30.
`
`(Previously Presented) The method as claimed in claim 16, wherein the account
`
`identifying information identifies email address information about the entity.
`
`31.
`
`(Canceled).
`
`32.
`
`(Currently Amended) The method as claimed in claim 24, further comprising an
`
`act of transmitting to the first partyservieeprevider one of an approval or a denial of the credit
`
`card transaction.
`
`33.
`
`(Previously Presented) The system of claim 1, wherein the database is further
`
`configured to associate biometric information with each entity having secure data in the secure
`
`registry, respectively.
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`7
`
`Docket No.2 W0537—70062O
`
`34.
`
`(Currently Amended) The system of claim 33, wherein the processor is further
`
`configured to map the time-varying multicharacter code to biometric information associated with
`
`the entity on whose behalf the transaction is to be perfonnedseiaviees—are—te—be—previded and to
`
`provide the biometric information to the first partyserviee—previder.
`
`35.
`
`(Currently Amended) The system of claim 34, wherein the biometric information
`
`includes an image of the entity on whose behalf the transaction is to be performedseHLiees—arete
`
`lee—provided.
`
`36.
`
`(Currently Amended) The system of claim 34, wherein the time-varying
`
`multicharacter code is generated by a device associated with the entity on whose behalf th_e
`
`transaction is to be perforrnedseiaviees—are—te—be—previded.
`
`37.
`
`(Previously Presented) The method as claimed in claim 16, further comprising an
`
`act of associating biometric information with each entity having secure data in the secure
`
`registry, respectively.
`
`38.
`
`(Currently Amended) The method of claim 37, further comprising acts of:
`
`mapping the time-varying multicharacter code to biometric information associated with
`
`the entity on whose behalf the transaction is to be perforrnedseiaviees—are—te—be—previded; and
`
`providing the biometric information to the first partyserviee—previder.
`
`39.
`
`(Currently Amended) The method of claim 38, wherein the biometric
`
`information includes an image of the entity on whose behalf the transaction is to be
`
`performedserviees—arete—beprefided.
`
`40.
`
`(Canceled).
`
`41.
`
`(Previously Presented) The secure registry system of claim 1, wherein the
`
`account identifying information includes an account number.
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`8
`
`Docket No.2 W0537—70062O
`
`42.
`
`(Previously Presented) The secure registry system of claim 41, wherein the
`
`account identifying information includes credit card account information and the account
`
`number includes a credit card number.
`
`43.
`
`(Previously Presented) The secure registry system of claim 41, wherein the third
`
`party includes a financial service provider and the account number includes at least one of a
`
`debit card number and a credit card number.
`
`44.
`
`(Currently Amended) The secure registry of claim 43, wherein the m
`
`partyservieeprevider includes a merchant, and the service includes a sale of at least one of
`
`goods and services.
`
`45.
`
`(Currently Amended) The secure registry system of claim 44, wherein the
`
`processor is further configured to receive, from the first partyserviee—previder, a merchant ID,
`
`and a purchase amount.
`
`46.
`
`(New) The secure registry system of claim 1, wherein the identity of the entity is
`
`unknown until the time-varying code is mapped to the identity by the processor.
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`9
`
`Docket No.2 W0537—70062O
`
`REMARKS
`
`Claims 1-5, 9-16, 18-21, 24-30, 32-39 and 41-45 were previously pending in this
`
`application. with claims 1 and 16 being independent claims. By this amendment, Applicant is
`
`canceling claims 2 and 18 without prejudice or disclaimer. Claims 1, 5, 16, 21, 24-29, 32, 34-
`
`36, 38, 39, 44 and 45 are amended. New claim 46 is added herein. As a result claims 1, 2-5, 9-
`
`16, 19-21, 24-30, 32-39 and 41-46 are pending for examination with claims 1 and 16 being
`
`independent claims. No new matter has been added. Support for the amendments can be found
`
`in the originally-filed application in Fig. 10 and the associated description at page 19, line 22 to
`
`page 20, line 16, for example.
`
`Re'ections Under 35 U.S.C.
`
`103 a
`
`The Office Action rejects claims 1-5, 9-16, 18-21, 24-30, 32-39 and 41-45 under 35
`
`U.S.C. §103(a) as being unpatentable over US. Patent No. 7,571,139 to Gioradano (hereinafter
`
`Gioradano) in view of US. Patent No. 2006/025 6961 to Brainard (hereinafter Brainard).
`
`Applicant respectfully asserts that that claims as amended herein are patentable in view of the
`
`cited references at least because Giordano and Brainard alone or in proper combination do not
`
`teach or suggest “a processor configured to receive, from the first party, the time-varying
`
`multicharacter code for the entity on whose behalf a transaction is to be performed, configured to
`
`map the time-varying multicharacter code to the identity of the entity and secure data associated
`
`with the entity including information required to enable the transaction, the information
`
`including account identifying information where the account identifying information is unknown
`
`to the first party, to provide the account identifying information to a third party to enable the
`
`transaction without providing the account identifying information to the first party,” as recited in
`
`claim 1, for example.
`
`For example, the originally-filed application describes that a “user initiates an
`
`anonymous purchase by entering a secret code into the electronic ID device and transmit[s] the
`
`results to the on-line merchant.” The description further provides that “the merchant transmits
`
`this information to the USR software 18, along with the store number and the amount of the
`
`purchase.” As a result, approaches described in the application result in a “secure registry”
`
`receiving information to enable a “transaction” where the identity of the entity “on whose behalf
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`10
`
`Docket No.2 W0537—700620
`
`the transaction is to be performed” is anonymous until “the time-varying multicharacter code [is
`
`mapped] to the identity of the entity.”
`
`In contrast, Giordano only teaches approaches in which static information must be
`
`provided. For example, a “customer transceiver 50 is programmed with the customer’s ID
`
`number in step 370, the customer transceiver 50 is mailed to the customer in step 380.” Further,
`
`the “customer transceiver 50 consists of an electronic transmitter/receiver combination including
`
`a unique customer/transmitter ID number programmed therein.” Giordano teaches that when the
`
`customer transceiver interfaces with the merchant transceiver “a customer identification signal
`
`including the unique customer/transmitter ID number is transmitted to the merchant
`
`transceiver 48.” (col. 17, lines 28-59.) Accordingly, in Giordano operation of the system
`
`requires that the customer ID number provide the identification. Unlike a time-varying code, the
`
`customer ID in Giordano is static and provides an identification that is matched to an index of
`
`static values without requiring any additional measures. Although the system 10 does not
`
`provide the customer’s credit card to the sales associate, it remains vulnerable to identity theft
`
`because the customer ID number is a static piece of information that can be intercepted and later
`
`used by an imposter.
`
`The Examiner admits and Applicant agrees that “Giordano does not explicitly teach a
`
`time-varying code.” (Office Action at page 4.) Instead, the Office Action relies on Brainard for
`
`an alleged teaching of “an authentication system including a time-varying code.” Id. Applicant
`
`respectfully notes that Brainard does not cure the deficiencies of Giordano because, in Brainard,
`
`the user necessarily also provides a static identification that is used by a verifier. In particular,
`
`“the verifier 221 determines whether the code is appropriate, for example, whether it is, in the
`
`above embodiment, correctly derived from the verifier seed, the user’s PIN and the current
`
`time.” (Paragraph 005 8) As taught in Brainard, the verifier 221 necessarily must know the
`
`purported identity of the user to determine whether the code was correctly derived.
`
`Thus, independent claims 1 and 16 are patentable at least because Giordano and Brainard
`
`alone or in proper combination do not teach or suggest an approach where a “secure registry”
`
`receives information to enable a “transaction” where the identity of the entity “on whose behalf
`
`the transaction is to be performed” is anonymous until “the time-varying multicharacter code [is
`7
`
`mapped] to the identity of the entity.’ Claims 2 and 18 are canceled herein. Each of claims 3-5,
`
`9-15, 19-21, 24-30, 32-39 and 41-45 depend from one of the allowable independent claims and
`
`

`

`Application No. 11/768,729
`Amendment dated November 29, 2011
`After Final Office Action of June 29, 2011
`
`11
`
`Docket No.2 W0537—700620
`
`is patentable for at least the same reasons. Accordingly, reconsideration and withdrawal of this
`
`rejection is respectfully requested.
`
`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.
`
`A Request for Continued Examination and a fee for a two month extension of time are
`
`included herewith. 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,
`
`Ref. No. W0537-700620.
`
`Dated: November 29, 2011
`
`Respectfully submitted,
`
`Electronic signature:
`Robert V. Donahoe
`
`/Robert V. Donahoe/
`
`Registration No.: 46,667
`LANDO & ANASTASI LLP
`Riverfront Office Park
`One Main Street
`Suite 1100
`
`Cambridge, Massachusetts 02142
`(617) 395-7000
`
`Attorney for Applicant
`
`