`or enclosed) is being transmitted via the Office electronic filing system in
`accordance with 37 CFR § 1.6(a)(4).
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`
`
`Dated:W—
`Electronic Signature for Matthew H. Grady:
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`/Matthew H. Grady/
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`Docket No.: W0537 —7 01320
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`(PATENT)
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application No.: 13/237,184
`
`Confirmation No.: 7352
`
`Filed: September 20, 2011
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`Art Unit: 3621
`
`
`For: UNIVERSAL SECURE REGISTRY
`
`Examiner: C. K. Cheung
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`AMENDMENT AFTER FINAL ACTION UNDER 37 C.F.R. 1.116
`
`Commissioner for Patents
`
`Dear Madam:
`
`INTRODUCTORY COMMENTS
`
`In response to the Office Action dated January 17, 2013, finally rejecting claims 1, 2 and
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`4—28, 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
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`of this paper.
`
`Remarks/Arguments begin on page 8 of this paper.
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`1
`1
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`Apple 1211
`Apple 1211
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`Application No. 13/237,184
`Amendment dated March 7, 2013
`After Final Office Action of January 17, 2013
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`2
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`Docket N0.: W0537-701320
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`AMENDMENTS TO THE CLAIMS
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`This listing of claims will replace all prior versions, and listings, of claims in the application.
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`Listing of Claims:
`
`1.
`
`(Currently Amended) An electronic ID device configured to allow a user to select any one of
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`a plurality of accounts associated with the user to employ in a financial transaction, comprising:
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`a biometric sensor configured to receive a biometric input provided by the user;
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`a user interface configured to receive a user input including secret information known to the
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`user and identifying information concerning an account selected by the user from the plurality of
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`accounts;
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`a communication interface configured to communicate with a secure registry;—and
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`a processor coupled to the biometric sensor to receive information concerning the biometric
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`input, the user interface and the communication interface, the processor being programmed to
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`activate the electronic ID device based on successful authentication by the electronic ID device of at
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`least one of the biometric input and the secret information, the processor also being programmed
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`such that once the electronic ID device is activated the processor is configured to generate a non—
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`predictable value and to generate encrypted authentication information from the non—predictable
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`value, information associated with derived—from at least a portion of the biometric input, and the
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`secret information, and to communicate the encrypted authentication information via the
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`communication interface to the secure registry; and
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`wherein the communication interface is configured to wirelessly transmit the encrypted
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`authentication information to a oint—of—sale POS device and wherein the secure re istr
`is
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`configured to receive at least a portion of the encrypted authentication information from the POS
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`device.
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`2.
`
`(Cancelled)
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`Application No. 13/237,184
`Amendment dated March 7, 2013
`After Final Office Action of January 17, 2013
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`3.
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`(Cancelled)
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`3
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`Docket N0.: W0537-701320
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`4.
`
`(Currently Amended) The electronic ID device of claim [[2]] 1, wherein the electronic ID
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`device comprises a discrete code associated with the electronic ID device.
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`5.
`
`(Currently Amended) The electronic ID device of claim 1, wherein at least a portion of the
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`biometric input received by the biometric sensor is communicated to the secure registry for
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`authentication prior to generation of the encrypted authentication information.
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`6.
`
`(Currently Amended) The electronic ID device of claim 1, wherein the secret information
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`includes the identifying information.
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`7.
`
`(Currently Amended) The electronic ID device of claim 1, further comprising a memory
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`coupled to the processor, wherein the memory stores information employed by the electronic ID
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`device to authenticate the biometric received by the biometric sensor.
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`8.
`
`(Currently Amended) The electronic ID device of claim 7, wherein the electronic ID device
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`does not permit the entry of the user input if the biometric input received by the biometric sensor is
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`determined to not belong to an authorized user of the electronic ID device.
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`9.
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`(Currently Amended) The electronic ID device of claim 8, wherein the secret information
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`known to the user includes a PIN, and wherein the authentication of both the secret information and
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`the biometric input activate the electronic ID device for a financial transaction.
`
`10.
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`(Currently Amended) The electronic ID device of claim 9, further comprising a memory
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`coupled to the processor, wherein data stored in the memory is unavailable to an individual in
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`possession of the electronic ID device until the electronic ID device is activated.
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`After Final Office Action of January 17, 2013
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`11.
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`(Currently Amended) The electronic ID device of claim 10, wherein the data is subject to a
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`mathematical operation that acts to modify the data such that it is unintelligible until the electronic
`
`Q device is activated.
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`12.
`
`(Currently Amended) The electronic ID device of claim 9, further comprising a memory
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`coupled to the processor and configured to store an electronic serial number of the electronic ID
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`device, wherein the processor is configured to generate a seed using at least two of the electronic
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`serial number, a discrete code associated with the electronic ID device, the PIN, a time value, and
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`the biometric input to generate the encrypted authentication information, and wherein the seed is
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`employed by the processor to generate the non—predictable value.
`
`13.
`
`(Currently Amended) The electronic ID device of claim 1, wherein the biometric sensor is
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`configured to receive and process at least one of a fingerprint, a speech/voice input, an iris scan, a
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`retina scan, a facial scan, written information and a DNA input.
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`14.
`
`(Currently Amended) The electronic ID device of claim 13, wherein the processor is
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`configured to generate account identifying information for the respective one of the plurality of
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`accounts, wherein the account identifying information does not identify an account number of the
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`respective one of the plurality of accounts.
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`15.
`
`(Currently Amended) A method of generating authentication information comprising acts of:
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`authenticating an identity of a user to an electronic ID device based on at least one of
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`biometric data received by the electronic ID device from the user and secret information known to
`
`the user and provided to the electronic ID device;
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`activating the electronic ID device based on successful authentication;
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`generating, responsive to activating, a non—predictable value with the electronic ID device;
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`receiving, in a user interface, identifying information from the user concerning a selected
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`one of a plurality of user accounts;
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`generating encrypted authentication information from the non—predictable value, information
`
`associated with derived—from at least a portion of the biometric data, and the secret information; and
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`communicating, by a communication interface, the encrypted authentication information
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`from the electronic ID device to a secure registry via a point—of—sale (POS) device to authenticate
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`the electronic ID device with the secure registry.
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`16.
`
`(Currently Amended) The method of claim 15, further comprising an act of displaying, on
`
`the user interface indicators for the plurality of user accounts stored in a memory of the electronic
`
`Q device.
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`17.
`
`(Currently Amended) The method of claim 15, further comprising an act of de—activating the
`
`electronic ID device without generating the encrypted authentication information if the identity of
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`the user is not successfully authenticated to the electronic ID device.
`
`18.
`
`(Currently Amended) The method of claim 15, further comprising an act of generating a
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`seed from which the authentication information is generated by employing at least two of the
`
`biometric data, the secret information known to the user, and an electronic serial number of the
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`electronic ID device.
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`19.
`
`(Original) The method of claim 15, further comprising an act of generating encrypted
`
`authentication information in a manner that allows the identification of the user and the selected one
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`of the plurality of user accounts by a secure registry.
`
`20.
`
`(Currently Amended) A method of controlling access to a plurality of accounts, the method
`
`comprising acts of:
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`generating, with an electronic ID device, a non—predictable value;
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`generating, with a the electronic ID device, encrypted authentication information from & th_e
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`non—predictable value generated by the electronic ID device, information associated with derived
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`Docket N0.: W0537-701320
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`from at least a portion of a biometric of the user received by the electronic ID device, and secret
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`information provided to the electronic ID device by the user;
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`communicating the encrypted authentication information from the electronic ID device to a
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`secure registry via a point—of— sale (POS) device to authenticate or not authenticate the electronic ID
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`device with the secure registry;
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`authorizing the POS device to initiate a financial transaction involving a transfer of funds to
`
`or from the account selected by the user when the encrypted authentication information is
`
`successfully authenticated; and
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`denying the POS device from initiation of the financial transaction involving a transfer of
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`funds to or from the account selected by the user when the encrypted authentication information is
`
`not successfully authenticated.
`
`21.
`
`(Currently Amended) The method of claim 15, further comprising an act of generating an
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`account identifier for the selected one of the plurality of user accounts that does not include an
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`account number, and wherein the a_ct of generating encrypted authentication information includes
`
`using the account identifier for the identifying information.
`
`22.
`
`(Currently Amended) The electronic ID device of claim 1, wherein the processor is
`
`configured to display indicators for the plurality of accounts in the user interface, and the user
`
`interface is configured to accept user selection of a respective one of the plurality of accounts.
`
`23.
`
`(Currently Amended) The electronic ID device of claim 1, wherein the user interface is
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`configured to display options for purchase.
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`24.
`
`(Currently Amended) The electronic ID device of claim 23, wherein the user interface is
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`configured to accept selection of at least one product or service.
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`25.
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`(Previously Presented) The method of claim 15, further comprising displaying options for
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`purchase on the user interface.
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`Application No. 13/237,184
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`After Final Office Action of January 17, 2013
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`7
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`Docket N0.: W0537-701320
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`26.
`
`(Previously Presented) The method claim 25, further comprising selecting with the user
`
`interface at least one product or service for purchase.
`
`27.
`
`(Previously Presented) The method of claim 20, further comprising displaying options for
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`purchase on the user interface.
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`28.
`
`(Previously Presented) The method claim 27, further comprising selecting with the user
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`interface at least one product or service for purchase.
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`Application No. 13/237,184
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`After Final Office Action of January 17, 2013
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`8
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`Docket N0.: W0537-701320
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`REMARKS
`
`Claims 1, 2 and 4—28 were previously pending in this application. By this amendment,
`
`Applicant is canceling claim 2 without prejudice or disclaimer. Claims 1, 4—18, and 20—24 have
`
`been amended. As a result, claims 1, 4—28 are pending for examination with claims 1, 15, and 20
`
`being independent claims. No new matter has been added.
`
`Summary of Telephone Conference with Examiner
`
`Applicant wishes to thank Examiner Cheung for the courtesies extended to Applicant’s
`
`Representative during the Interview of March 7, 2013. During the course of the Interview, the
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`participants discussed the present rejection of record and proposed amendments. Applicant’s
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`Representative and Examiner Cheung agreed that incorporation of dependent claim 2 into
`
`independent claim 1 results in allowable subject matter. Likewise, the remaining independent
`
`claims have been amended to recite similar limitations, as necessary.
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`Accordingly, presented are the amendments to the claims as discussed. Favorable
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`consideration is respectfully requested.
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`Claim Objection
`
`The Office Action objected claim 21 as being allegedly grammatically incorrect. Applicant
`
`has amended claim 21 to recite “where the act of.” Accordingly, withdrawal of the object to claim
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`21 is respectfully requested.
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`Re'ection under 35 U.S.C.
`
`112
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`The Office Action rejected claims 1—2 and 4—28 under 35 U.S.C. §ll2, second paragraph, as
`
`being allegedly indefinite. Claim 2 has been canceled without prejudice or disclaimer making the
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`rejection of claim 2 under 35 U.S.C. §ll2, second paragraph moot. Claims 1, 4—18, and 20—24 have
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`been amended to overcome this rejection.
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`Application No. 13/237,184
`Amendment dated March 7, 2013
`After Final Office Action of January 17, 2013
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`9
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`Docket N0.: W0537-701320
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`As discussed in the interview, claims 1, 15 and 20 have been amended to recite “information
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`associated with at least a portion of the biometric input.” Accordingly, withdrawal of the rejection
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`of claims 1, 15 and 20 under 35 U.S.C. §112, second paragraph, is respectfully requested.
`
`Claims 4—14, 16—19, and 21—28 depend from claims 1, 15 and 20 respectively. Accordingly,
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`withdrawal of the rejection of claims 4—14, 16—19 and 21—28 under 35 U.S.C. §112, second
`
`paragraph, is respectfully requested.
`
`Claims 4—18, 20 and 22—24 have been amended to recite “The electronic ID device.”
`
`Accordingly, withdrawal of the rejection of claims 4—18, 20 and 22—24 under 35 U.S.C. §112,
`
`second paragraph, is respectfully requested.
`
`Re'ections Under 35 U.S.C.
`
`102
`
`The Office Action rejected claims 1—2, 4—6 and 13—28 under 35 U.S.C. §102(b) as being
`
`anticipated by US. Patent Publication No. 2002/0178364 to Weiss (hereinafter Weiss). As
`
`discussed and agreed during the Interview, Weiss does not teach or suggest claim 1, as amended.
`
`In particular, claim 1, as amended, recites “the processor is configured to generate a non—
`
`predictable value and to generate encrypted authentication information from the non—predictable
`
`value, information associated with at least a portion of the biometric input, and the secret
`
`information, and to communicate the encrypted authentication information via the communication
`
`interface to the secure registry.” Weiss does not teach or suggest the generation of authentication
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`information from the non—predictable value, information derived from at least a portion of the
`
`biometric input, and the secret information.
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`Independent claims 15 and 20, as amended, likewise recite: “generating encrypted
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`authentication information from the non—predictable value, information associated with at least a
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`portion of the biometric data, and the secret information” (Claim 15); and “generating, with a
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`device, encrypted authentication information from a non—predictable value generated by the device,
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`information associated with at least a portion of a biometric of the user received by the device, and
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`secret information provided to the device by the user” (Claim 20). As discussed above, Weiss does
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`not teach or suggest generating authentication information as recited in claims 15 and 20, as
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`amended.
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`Application No. 13/237,184
`Amendment dated March 7, 2013
`After Final Office Action of January 17, 2013
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`10
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`Docket N0.: W0537-701320
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`Additionally, as agreed in the Interview, Applicant has amended the independent claims, as
`
`necessary, to recite a point—of—sale (POS) system. Accordingly, withdrawal of the rejection of
`
`claims 1, 15, and 20 under 35 U.S.C. §102(b) is respectfully requested.
`
`Claims 4—6, 13—15, 16—19, and 21—28 depend from claims 1, 15 and 20 respectively, and are
`
`therefore, allowable for at least the same reasons. Accordingly, withdrawal of the rejection of
`
`claims 4—6, 13—15, 16—19, and 21—28 under 35 U.S.C. §102(b) is respectfully requested.
`
`Re'ections Under 35 U.S.C.
`
`103
`
`The Office Action rejected claim 7 under 35 U.S.C. §103(a) as being unpatentable over
`
`Weiss in view of US. Patent No. 6,819,219 to Bolle (hereinafter Bolle). Applicant respectfully
`
`asserts that Weiss either alone or in proper combination Bolle does not teach or suggest claim 7,
`
`because Weiss does not teach or suggest a processor configured to “generate encrypted
`
`authentication information from the non—predictable value, information associated with at least a
`
`portion of the biometric input, and the secret information,” as recited in claim 1 as amended. As
`
`discussed above with respect to claim 1, Weiss does not teach or suggest generation of
`
`authentication information using the non—predictable value, information associated with at least a
`
`portion of the biometric input, and the secret information. Bolle does not cure this deficiency.
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`Accordingly, withdrawal of the rejections of claim 7 under 35 U.S.C. §103 is respectfully requested.
`
`The Office Action rejected claims 8—12 under 35 U.S.C. §103(a) as being unpatentable over
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`Weiss in view of 80116 and further in view of Official Notice (as evidence by prior art references
`
`listed in PTO—892). Each of claims 8—12 directly or indirectly depends from allowable claim 1.
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`Accordingly each of claims 8—12 are allowable for at least the same reasons as claim 1.
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`Accordingly, withdrawal of the rejection of claims 8—12 under 35 U.S.C. §103 is respectfully
`
`requested.
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`CONCLUSION
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`In view of the foregoing amendments and remarks, reconsideration is respectfully requested.
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`This application should now be in condition for allowance; a notice to this effect is respectfully
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`requested. If the Examiner believes, after this amendment, that the application is not in condition
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`15463821
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`Application No. 13/237,184
`Amendment dated March 7, 2013
`After Final Office Action of January 17, 2013
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`1 1
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`Docket N0.: W0537-701320
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`for allowance, the Examiner is requested to call the Applicant's attorney at the telephone number
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`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—701320).
`
`Dated: March 7, 2013
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`Respectfully submitted,
`
`/Matthew H. Grady/
`
`Electronic signature:
`Matthew H. Grady
`Registration N0.: 52,957
`John N. Anastasi
`
`Registration N0.: 37,765
`LANDO & ANASTASI LLP
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`Riverfront Office Park
`
`One Main Street
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`Suite 1100
`
`Cambridge, Massachusetts 02142
`(617) 395—7000
`Attorneys for Applicant
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`15463821
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