`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
` FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
`
`CONFIRMATIONNO.
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`13/237,184
`
`09/20/2011
`
`Kenneth P. Weiss
`
`W0537-701320
`
`7352
`
`37462
`7590
`LANDO & ANASTASI, LLP
`ONE MAIN STREET, SUITE 1100
`CAMBRIDGE, MA 02142
`
`08/15/2012
`
`3
`
`EXAMINER
`CHEUNG,CALVIN K
`ART UNIT
`PAPER NUMBER
`
`3621
`
`
`
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/15/2012
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`docketing @LALaw.com
`gengelson@LALaw.com
`
`PTOL-90A (Rev. 04/07)
`
`Apple 1007
`Apple 1007
`
`
`
`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`
` 13/237,184 WEISS, KENNETH P.
`Examiner
`Art Unit
`CALVIN CHEUNG
`3621
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) OR THIRTY(30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`1) Responsive to communication(s)filed on 20 September 2011.
`2a)L] This action is FINAL.
`2b) This action is non-final.
`3)L]
`Anelection was made bythe applicant in responseto a restriction requirementset forth during the interview on
`___; the restriction requirement and election have beenincorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Status
`
` U.S. Patent and Trademark Office
`
`Disposition of Claims
`
`5) Claim(s) 1-20 is/are pending in the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claims)
`is/are allowed.
`7)X] Claim(s) 1-20is/are rejected.
`8)L] Claim(s) ___ is/are objected to.
`9)L] Claim(s)___ are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)L] The specification is objected to by the Examiner.
`
`11)L] The drawing(s)filed on
`is/are: a)L_] accepted or b)_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`12) The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13).] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)LJ All
`b)L] Some * c)L] None of:
`1.] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copiesof the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) Cc Notice of References Cited (PTO-892)
`2) [J Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) XX] Information Disclosure Statement(s) (PTO/SB/08)
`
`Paper No(s)/Mail Date 9/20/2011; 6/19/2012.
`
`4) | Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __
`5) L] Noticeof Informal Patent Application
`6) C Other:
`
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20120807
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 2
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`Art Unit: 3621
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`1.
`
`This office action is given an identifier, Paper No. 20120807, for reference purposes
`
`DETAILED ACTION
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`only.
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`2.
`
`Claims 1-20, filed 20 September 2011, are pending and examinedin this office action.
`
`Status of Claims
`
`3.
`
`The disclosure is objected to because of the following informalities:
`
`Specification
`
`The Original Specification (p1:5) identifies “application No. 12/393586” howeverfails to
`
`identify it as Patent Number 8234220. Appropriate correction is required.
`
`4,
`
`Claim 13 is objected to because of the following informalities:
`
`Claim Objections
`
`Regarding Claim 13, “a fingerprint” is recited twice. One recitation is sufficient therefore
`
`the second recitation should be deleted. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 102
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`5.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 3
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`Art Unit: 3621
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`A personshall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one yearprior to the date of application for patent in the United States.
`
`6.
`
`Claims 1-2, 4-6 and 13-20 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`US 20020178364 Al (“Weiss”) from IDS.
`
`Regarding Claim 1, Weiss discloses a system (e.g., computer system 10) configured to
`
`allow a user(e.g., person) to select any one of a plurality of accounts(e.g., “Credit Card and
`
`other financial information” in FIG. 1) associated with the user to employinafinancial
`
`transaction, comprising (Abstract, {J 17, 52, FIG. 1, 3-4 with associated text):
`
`e
`
`a biometric sensor (e.g., data input devices, such as voice and other audio and video
`
`capture devices) configured to receive a biometric input providedby the user({| 17,
`
`42);
`
`e
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`auserinterface (e.g., user interface 26) configured to receive:
`
`©
`
`auser input including secret information (e.g., personal identification number)
`
`knownto the user ({| 42, 53) and
`
`o
`
`identifying information (e.g., biometric information) concerning an account
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`selected by the user from the plurality of accounts (Abstract, {| 43, 47, 57,
`
`FIG. 1, 3-4 with associated text);
`
`e
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`acommunication link (e.g., Internet) configured to communicate with a secure
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`registry (e.g., database 24) (7 38, 41); and
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 4
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`Art Unit: 3621
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`e
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`a processor(e.g., CPU 16) coupled to the biometric sensor to receive information
`
`concerning the biometric input ({| 38-42, 48-53, FIG. 1, 3 with associated text), the
`
`user interface and the communication link, the processor configured:
`
`©
`
`to generate a non-predictable value (e.g., non-predictable single use codes, {
`
`52) and
`
`©
`
`to generate encrypted authentication information from the non-predictable
`
`value, the identifying information, andat least one of the information
`
`concerning the biometric input and the secret information ({ 12, 45, 51-53, 74,
`
`100. Weiss discloses (1) “transactions to and from the database may take
`
`place using a public key/private key security system” from 4] 12 and (2) “a
`
`secret user code and/or time varying value...and personalidentification
`
`code... combines these three numbers using a predetermined algorithm to
`
`generate a one-time nonpredictable code” from 4] 51 is used to authenticate the
`
`user.), and
`
`©
`
`to communicate the encrypted authentication information via the
`
`communication link to the secure registry ({ 12, 45, 51, 100).
`
`Regarding Claim 2, Weiss discloses:
`
`e wherein the communication link is configured to wirelessly transmit the encrypted
`
`authentication information to a point-of-sale (POS) device ({| 17, 51-52, 74 and FIG.
`
`10, 17 with associated text), and
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 5
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`Art Unit: 3621
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`e wherein the POSdevice is configured to transmit at least a portion of the encrypted
`
`authentication information to the secure registry (“The merchant transmits to the
`
`credit card company...the code...The credit card companytakes this information and
`
`passes the code...to the USR”, J 74).
`
`Regarding Claim 4, Weiss discloses wherein the processor is configured to generate the
`
`encrypted authentication information from each of the non-predictable value, the identifying
`
`information, the information concerning the biometric input and the secret information ({[ 42, 51-
`
`53, 74).
`
`Regarding Claim 5, Weiss discloses wherein the biometric received by the biometric
`
`sensor is communicatedto the secure registry for authentication prior to generation of the
`
`encrypted authentication information ({ 12-13, 16-17, 41-42, 47-48).
`
`Regarding Claim 6, Weiss discloses wherein the secret information includes the
`
`identifying Information ({ 53).
`
`Regarding Claim 13, Weiss discloses wherein the biometric sensor is configured to
`
`receive and processat least one (Only one option is required to satisfy the claimed limitation of
`
`‘at least one’) of a fingerprint (e.g., fingerprint), a speech/voice input (e.g., voice print), an iris
`
`scan (e.g., iris), a retina scan, a facial scan (e.g., facial), a fingerprint (see Claim Objection
`
`above), written information (e.g., signature) and a DNA input (e.g., DNA analysis).
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 6
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`Art Unit: 3621
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`Regarding Claim 14, Weiss discloses a handheld device including each of the biometric
`
`sensor, the user interface, the communication link and the processor ({| 17, 43, 52, FIG. 1 with
`
`associated text. The examples of devices listed in Weiss’ {17 and 52 are types of “handheld
`
`devices” that verifies the user “at the point of use’’.).
`
`Regarding Claim 15, Weiss discloses a method of generating authentication information
`
`comprising acts of (Abstract, { 17, 47-48, 54):
`
`authenticating an identity of a user to a device based on at least one (Only one option
`
`is required to satisfy the ‘at least one’ limitation) of biometric data received by the
`
`device from the user and secret information knownto the user and provided to the
`
`device (J 17, 51-53);
`
`generating a non-predictable value with the device ({51-53);
`
`receiving identifying information from the user concerning a selected one of a
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`plurality of user accounts (Abstract, { 74); and
`
`generating encrypted authentication information from the non-predictable value, the
`
`identifying information, and at least one of the biometric data and the secret
`
`information (J 12, 45, 51-53, 74, 100. Weiss discloses (1) “transactions to and from
`
`the database may take place using a public key/private key security system” from ¥ 12
`
`and (2)“a secret user code and/or time varying value...and personal identification
`
`code... combines these three numbers using a predetermined algorithm to generate a
`
`one-time nonpredictable code” from 4 51 is used to authenticate the user.).
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 7
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`Art Unit: 3621
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`Regarding Claim 16, Weiss discloses generating encrypted authentication information
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`from each of the non-predictable value, the biometric data, the secret information, and the
`
`identifying information ({ 12, 45, 51-53, 74, 100).
`
`Regarding Claim 17, Weiss discloses de-activating the device without generating the
`
`encrypted authentication information if the identity of the user is not successfully authenticated
`
`to the device ({ 108).
`
`Regarding Claim 18, Weiss discloses generating a seed from which the authentication
`
`information is generated by employing the biometric data and the secret information known to
`
`the user (J 17, 51-53, 74. Two optionssatisfy the ‘at least two’ limitation whichare listed by
`
`Weiss).
`
`Regarding Claim 19, Weiss discloses generating encrypted authentication information in
`
`a mannerthat allows the identification of the user and the selected one of the plurality of user
`
`accounts by a secure registry (FIG. 3, 6-10, 13 with associated text).
`
`Regarding Claim 20, Weiss discloses a method of controlling access to a plurality of
`
`accounts, the method comprising acts of (Abstract, {| 17, 47-48, 54):
`
`e
`
`generating, with a device, encrypted authentication information ({| 12, 45) from:
`
`©
`
`anon- predictable value generated by the device ({ 51-53),
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 8
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`Art Unit: 3621
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`o
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`identifying information concerning an accountselected by a user of the device
`
`from amonga plurality of accounts associated with the user (Abstract, 41, 47-
`
`48, 54 and FIG. 1), and
`
`oat least one (Only oneoption is required to satisfy this portion of the
`
`limitation) of a biometric of the user received by the device ({| 17, 53) and
`
`secret information provided to the device by the user ({ 17, 53);
`
`¢
`
`communicating the encrypted authentication information from the device to a secure
`
`registry via a point-of-sale (POS) device to authenticate or not authenticate the device
`
`with the secure registry (| 12, 45, 51-53, 74, 100);
`
`e
`
`authorizing the POS deviceto 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 ({| 74-76. {| 76 providesthe results of a
`
`transaction.); and
`
`e
`
`denying the POSdevice from initiation of the financial transaction involving a
`
`transfer of funds to or from the account selected by the user when the encrypted
`
`authentication information is not successfully authenticated (| 74-76. { 76 provides
`
`the results of a transaction.).
`
`7.
`
`Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Weiss and further
`
`in view of US 20040117302 Al (“Weichert’’) from IDS.
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 9
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`Art Unit: 3621
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`Regarding Claim 3, Weiss discloses wherein the communication link is configured to
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`wirelessly transmit the encrypted authentication information with the POS device ({17, 51-52
`
`and Figures 10 and 17 with associated text).
`
`Weiss does not directly disclose wherein the POS device includes a magnetic stripe
`
`reader, and a converter device configured to generate an emulated magnetic stripe output.
`
`However, Weichert teaches wherein a POS device (e.g., point-of-sale (POS) terminal)
`
`includes a magnetic stripe reader (e.g., magnetic stripe reader, {| 2), and a converter device
`
`configured to generate an emulated magnetic stripe output ({| 54, 71). It would have been obvious
`
`to one of ordinary skill in the art at the time of the invention was made to modify the devices as
`
`disclosed by Weiss by incorporating a card reader feature at a POS terminal as taught by
`
`Weichert in order to read credit cards.
`
`8.
`
`Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over Weiss and further
`
`in view of US 6819219 (“Bolle”) from IDS.
`
`Regarding Claim 7, Weiss discloses a memory coupledto the processor ({| 17, 52, FIG. 1
`
`with associated text.).
`
`Weiss does notdirectly disclose wherein the memory stores information employed by the
`
`device to authenticate the biometric received by the biometric sensor ({ 17, 52, FIG. 1 with
`
`associated text.)
`
`However, Bolle teaches a memory stores information employed by the device to
`
`authenticate the biometric received by the biometric sensor (Figure 1, 7 and 10 with associated
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 10
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`Art Unit: 3621
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`text. Observe Figure 10, Element 1004). It would have been obviousto one of ordinary skill in
`
`the art at the time of the invention was made to modify the devices as disclosed by Weiss by
`
`incorporating biometric readers on portable devices as taught by Bolle in order to capture
`
`biometric information on a portable device
`
`9.
`
`Claims 8-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Weiss in
`
`view of Bolle and further in view of Official Notice.
`
`Regarding Claim 8, Weiss/Bolle Combination does not directly disclose wherein the
`
`device does not permit the entry of the user input if the biometric input received by the biometric
`
`sensor is determined to not belong to an authorized user of the device.
`
`The Examinertakes Official Notice it is well knownin the art a mismatch or non-
`
`matched biometric reading not belongingto the rightful user provides a negative result which
`
`prevents access. It would have been obviousto one of ordinary skill in the art at the time of the
`
`invention was made to modify the devices as disclosed by Weiss/Bolle Combination by
`
`incorporating a measure which prevents access when biometric readings do not match as taught
`
`by Official Notice in order to increase security to personal equipment and information.
`
`Regarding Claim 9, Weiss discloses:
`
`e wherein the secret information knownto the user includes a PIN ({ 17, 53), and
`
`e wherein the authentication of the secret information and the biometric input activate
`
`the device for the financial transaction (“The identity of the user possessing the
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 11
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`Art Unit: 3621
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`identifying device may beverified at the point of use via any combination...”, | 17,
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`73, 100).
`
`Regarding Claim 10, Weiss discloses a memory coupled to the processor ({[ 17, 52, FIG.
`
`1 with associated text.).
`
`Weiss/Bolle Combination does not directly disclose wherein data stored in the memoryis
`
`unavailable to an individual in possession of the device until the device is activated.
`
`The Examinertakes Official Notice it is well knownin the art credit card holders call a
`
`telephone numberassociated with the credit card numberto activate their credit cards before they
`
`are allowed to make purchases. It would have been obviousto one of ordinary skill in the art at
`
`the time of the invention was made to modify the devices as disclosed by Weiss/Bolle
`
`Combination by incorporating an activation step as taught by Official Notice in order to verify
`
`the rightful credit card holder has obtained their card.
`
`Regarding Claim 11, Weiss/Bolle Combination doesnot directly disclose wherein the
`
`data is subject to a mathematical operation that acts to modify the data such thatit is
`
`unintelligible until the device is activated.
`
`The Examiner takes Official Notice it is well knownin theart the credit card data is
`
`blocked from making purchases until activated. It would have been obviousto one of ordinary
`
`skill in the art at the time of the invention was made to modify the electronic ID devices as
`
`disclosed by Weiss/Bolle Combination by incorporating a protection step of preventing access to
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 12
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`Art Unit: 3621
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`credit card usage as taught by Official Notice in order to protect the credit card holder in the
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`event the card is obtained by someoneother than the intended credit card holder.
`
`Regarding Claim 12, Weiss discloses
`
`¢
`
`amemory:
`
`o
`
`o
`
`coupled to the processor ({ 17, 52, FIG. | with associated text) and
`
`configured to the device ({[ 17, 52, FIG. | with associated text),
`
`e wherein the processoris configured to generate a seed using at least two (Only two
`
`option are requiredto satisfy the ‘at least two’ limitation) of the electronic serial
`
`number, a discrete code associated with the device (| 74), the PIN ( 17, 53) and the
`
`biometric input ({[ 17) to generate the encrypted authentication information ({[ 51-53,
`
`74), and
`
`e wherein the seed is employed by the processor to generate the non-predictable value
`
`({ 51-53, 74).
`
`Weiss/Bolle Combination does not directly disclose store an electronic serial number.
`
`The Examinertakes Official Notice it is well knownin the art electronic devices that
`
`operate an operating system have unique registration number. It would have been obvious to one
`
`of ordinary skill in the art at the time of the invention was made to modify the devices as
`
`disclosed by Weiss/Bolle combination by incorporating a unique digital numberas taught by
`
`Official Notice in order to identify the device.
`
`Double Patenting
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 13
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`Art Unit: 3621
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`10.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`groundedin public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension ofthe “right to exclude” granted by a patent and to prevent possible
`
`harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection
`
`is appropriate where the conflicting claims are not identical, but at least one examined
`
`application claim is not patentably distinct from the reference claim(s) because the examined
`
`application claim is either anticipated by, or would have been obviousover, the reference
`
`claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
`
`Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225
`
`USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
`
`Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and Jn re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
`
`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
`
`ground provided the conflicting application or patent either is shown to be commonly owned
`
`with this application, or claims an invention madeasa result of activities undertaken within the
`
`scope of a joint research agreement.
`
`Effective January 1, 1994, a registered attorney or agent of record maysign a terminal
`
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR
`
`3.73(b).
`
`Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 1-54 of U.S. Patent No. 8234220. Although the
`
`
`
`Application/Control Number: 13/237,184
`
`Paper No. 20120807 - Page 14
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`Art Unit: 3621
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`conflicting claims are not identical, they are not patentably distinct from each other because the
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`interactions between electronic ID devices and Universal Secure Registry system are in the same
`
`manner.
`
`Claims 15-19 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 1-3, 5-8 and 43 of U.S. Patent No. 7809651.
`
`Although the conflicting claims are not identical, they are not patentably distinct from each other
`
`because the authentication interactions between electronic ID devices and Universal Secure
`
`Registry system are utilized in the same manner.
`
`Conclusion
`
`11.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`Examinershould be directed to Calvin Cheung whosetelephone numberis (571) 270-7041 and
`
`fax is (571) 270-8041. The Examiner can normally be reached on Monday- Friday, 8:00a.m.-
`
`5:00p.m., EST.
`
`If attempts to reach the Examinerby telephone are unsuccessful, Supervisory Primary
`
`Examiner (SPE), James Kramer can be reached on (571) 272-6783. The fax phone numberfor
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`maybe obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 - Page 15
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`Art Unit: 3621
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
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`/CALVIN CHEUNG/
`Examiner, Art Unit 3621
`8 August 2012
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