FN
`
`LANDO&
`ANASTASI
`
`Date
`
`To:
`
`Email:
`
`From:
`
`November 28, 2017
`
`Numberof pages (including cover): 3
`
`Examiner Immanuel {P# 469-295-9094)
`
`Isidora.Immanuel@USPTO.gov
`
`John Spangenberger (P#: 617-395-7030)
`John Anastasi (P#: 617-395-7001)
`
`Application No.:
`
`14/071,126
`
`Our Docket No.: W0537-701321
`
`ORIGINAL DOCUMENTS WILL NOT BE MAILED.
`
`Message:Below is a proposed Agenda for the Telephone Interview for Wednesday, November 29°,
`2017 at 1:00 p.m. EST:
`
`Applicant's representatives would like to discuss the rejections made in the most recent Office
`Action under 35 U.S.C. §§ 101, 103, and 112. In particular, Applicant’s representatives would like to
`discuss the following:
`
`«
`
`Rejections under 35 U.S.C. § 101
`
`oO Applicant's representative is unaware of any precedent which has held encryption-related
`claims patent-ineligible. To the contrary, Applicant’s representative referred in its
`response to the most recent Office Action two decisions’ 2 which held encryption-related
`claims to be patent-eligible. Applicant’s representative would like to review the claims
`and discuss further why the claims as previously presented are patent-eligible in view of
`the remarks madein the cited decisions, which emphasized that encryption-related
`claims are patent-eligible.
`
`Applicant's representative would like to discuss why the claims are directed to an abstract
`idea in view of DDR Holdings, LLC v. Hotels.com, L.P., which found the claims at issue to
`be patent-eligible in part because “the claimed solution is necessarily rooted in computer
`technology in order to overcome a problem specifically arising in the realm of computer
`networks.” 773 F.3d at 1257. Similarly, the claims are directed to a problem which arises
`specifically in the realm of computer networks and are therefore patent-eligible.
`
`Applicant's representative would like to discuss that even if the claims are considered to
`be directed to an abstract idea, the arrangement of elements recited in the claims
`renders the claims patent-eligible. As discussed in BASCOM Global Internet v. AT&T
`Mobility LLC?, even though the high-level concept of contentfiltering was known, the
`elements were arranged te address problems specific to an Internet context. Similarly,
`the present application details how the arrangement of elements provides a system
`whichis resistant to malicious actors who attemptto fraudulently access remotely-
`transmitted data.
`
`«
`
`Rejections under 35 U.S.C. § 103
`
`oO The Applicant's representative would like to discuss the Examiner’s assertions that
`Gullman teaches the claimed element of “a user interface configured to receive a user
`input including authentication information known to the user and information indicative
`of a secure operation to be executed {column 4, line 3-8, 39-64 [of Gullman]).” (Office
`
`Action, Page 23.)
`
`APPLE1014
`
`APPLE 1014
`
`

`

`LANDO &
`ANASTASI
`
`Page 2
`Ser. No. 14/071,126
`"Applicant's representative would like to discuss the cited portions of Gullman,
`which refer to a biometric security apparatus 14 which includes a biometric
`sensor, an on/off switch, and a display, none of which are “configured to
`receive..., authentication information known to the user”or “information
`indicative of a secure operation to be executed.”
`
`e
`
`Rejections under 35 U.S.C. § 112
`
`o
`
` Applicant’s representative would appreciate clarification of the rejection made in section
`48 on page 18 of the Office Action.
`
`Tentative Participants:
`John Anastasi (Reg. No.: 37,765)
`John Spangenberger (Reg. No.: 76,607)
`Examiner Immanuel
`
`This transmission contains confidential information intended for use only by the above-named recipient. Reading, discussing,
`distributing, or copying this message by anyone other than the named recipient, or his or her employees or agents,is strictly
`prohibited. If you have received this fax in error, please notify us immediately by telephone, and destroy the original message.
`
`IF YOU DID NOT RECEIVE ALL OF THE PAGES OF THIS TRANSMISSION OR IF ANY OF THE PAGES ARE
`ILLEGIBLE, PLEASE CALL <+1> (617) 395-7000 IMMEDIATELY.
`
`Riverfront Office Park, One Main Street, Eleventh Floor, Cambridge, MA 02142 T<+1> 617-395-7000
`www.lajaw.com
`
`F <+1> 617-395-7070
`
`2
`
`

`

`LSA LANDO &
`
`ANASTASI
`
`Page 3
`Ser. No. 14/071,126
`
`1On pages 12-13 of the most recent response, Applicant’s representative cited Paonev.
`
`Broadcom Corp., which held that “it would require an overly broad view of the Supreme Court's § 101
`
`jurisprudence to find that a patent directed at a method of encryption does not claim eligible subject
`
`matter per se, as long as it is specific enough... [I[]n TOP, Judge Bryson rejected the notion that the
`
`claimed encryption method was a ‘mental process’ineligible under [Gottschalk], because ‘the
`
`invention involves a several-step manipulation of data that, except perhaps in its most simplistic form,
`
`could not conceivably be performed in the human mind or with pencil and paper." 2015 U.S.
`
`Dist. LEXIS 109725 (2015), citing TOP Dev., LLC v. Intuit Inc., 2014 U.S. Dist. LEXIS 20077 (2014).
`
`“On page 13 of the most recent response, Applicant's representative cited TOP Dev., LLC v. Intuit
`
`Inc., which held that “that “[t]ypically, transforming data from one form to another does not qualify as
`
`the kind of transformation that the Supreme Court in Bilski regarded as an importantindicator of patent
`
`eligibility... In: fhe case ofan invention in the field ofencryption, however, the entire object of
`
`the invention is to transform data from one form into another that will be recognizable by the
`
`intended recipient but secure against decryption by unintended recipients. In that setting, /# does not
`
`make sense to say that the transformation ofdata from one form to another cannot qualify
`
`as a patent-eligible invention, because that is what the field ofcryptology is alf about.” 2014
`
`U.S. Dist. LEXIS 20077 (2014).
`
`3» __.the claims [do not] preemptall ways offiltering content on the Internet; rather, they
`
`recite a specific, discrete implementation of the abstract idea of filtering content.
`
`Filtering content on the Internet was already a known concept, and the patent describes how its
`
`particular arrangement of elements is a technical
`
`improvement over prior art ways of
`
`filtering such content. As explained earlier, prior art filters were either susceptible to
`
`hacking and dependenton local hardware and software, or confined to an inflexible one-size-fits-
`
`all scheme.... [T]he claims may [therefore] be read to ‘improve[] an existing technological
`
`process.’ [...] [A]lthough the invention in the ‘606 patent is engineered in the content of filtering
`
`content, the invention is not claiming the idea of filtering content simply applied to the
`
`Internet. The ‘606 patent is instead claiming a technology-based solution (not an abstract-
`
`idea-based solution implemented with generic technical components in a conventional way) to
`
`filter content on the Internet that overcomes existing problems with other Internet
`
`filtering systems....
`
`that
`[T]he claimed invention represents a ‘software-based invention[]
`
`improve[s] the performance of the computer system itself.” BASCOM Global Internet _v. AT&T
`
`Mobility LLC, 827 F.3d at 1350-51 (Fed. Cir. 2016).
`Riverfront Office Park, One Main Street, Eleventh Floor, Cambridge, MA 02142 T<+1> 617-395-7000
`wwwlajaw.com
`
`F <+1> 617-395-7070
`
`3
`
`

`

`
`
`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.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/071,126
`
`11/04/2013
`
`Kenneth P. Weiss
`
`W0537-701321
`
`3814
`
`LANDO& ANASTASILLP a
`
`ONEMAIN STREET,SUITE 1100
`CAMBRIDGE, MA 02142
`
`IMMANUEL,ISIDORA I
`
`ART UNIT
`
`3685
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/05/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, 1f any, 1s 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
`CKent@LALaw.com
`
`PTOL-90A (Rev. 04/07)
`
`4
`
`

`

`Applicant-/nitiatedinterview Summary
`
`Application
`No.
`14/071,126
`Examiner
`ISIDORA |
`
`IMMANUEL
`
`Applicant(s)
`Weiss, Kenneth P.
`
`AIA (First Inventor
`to File) Status
`
`i
`
`All participants (applicant, applicants representative, PTO personnel):
`
`1. ISIBDORA | IMMANUEL(Examiner); Telephonic
`
`Z. JOHN SPANGENBERGER (Attorney); Telephonic
`
`3. JOHN ANASTASI|(Attorney); Telephonic
`
`Date of Interview: 29 November 2017
`
`Claims Discussed: Discussed claim 40, 101 rejection, overall claimed idea and claim language.
`
`Brief Description of the main topic(s) of discussion: Discussed 101 and the use of encryptions in 101 rejections
`. Discussed case law and Applicant's argument for encryption overcoming the 101 rejection. No agreements
`reached.
`
`Issues Discussed:
`
`Item(s) under 35 U.S.C. 101:
`Discussed case law and encrypting
`
`Attachment(s): Agenda,
`
`5
`
`

`

`JUL
`Examiner, Art Unit 3685
`
`/JAMES D NIGH/
`Primary Examiner, Art Unit 3685
`
`37 CFR § 1.2 Business to be transacted in writing U.S. Patent and Trademark Office
`
`Applicant is reminded that a complete written statement as to the substanceof the interview must be made ofrecord in
`the application file. It is the applicants responsibility to provide the written statement, unless the interview wasinitiated
`by the Examiner and the Examiner has indicated that a written summary will be provided. See MPEP 713.04
`Please further see:
`MPEP 713.04
`Title 37 Code of Federal Regulations (CFR) § 1.133 Interviews, paragraph (b)
`
`PTOL-413/413b (Rev. 01/01/2015)
`
`Interview Summary
`
`Paper No. 20171129
`
`Applicant recordation instructions: The formal written reply to the last Office action must include the substance of the
`interview. (See MPEPsection 713.04). If a reply to the last Office action has already beenfiled, applicant is given a
`non-extendable period of the longer of one month orthirty days from this interview date, or the mailing date of this
`interview summary form, whicheveris later, to file a statement of the substance of the interview
`
`Examiner recordation instructions: Examiners must summarize the substance of any interview of record. A complete
`and properrecordation of the substance of an interview should include the items listed in MPEP 713.04 for complete
`and proper recordation including the identification of the general thrust of each argument or issue discussed, a general
`indication of any other pertinent matters discussed regarding patentability and the general results or outcomeof the
`interview,to include an indication as to whether or not agreement was reached on the issuesraised.
`
`6
`
`

`

`
`
`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.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/071,126
`
`11/04/2013
`
`Kenneth P. Weiss
`
`W0537-701321
`
`3814
`
`LANDO& ANASTASILLP a
`
`ONEMAIN STREET,SUITE 1100
`CAMBRIDGE, MA 02142
`
`IMMANUEL,ISIDORA I
`
`ART UNIT
`
`3685
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/15/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, 1f any, 1s 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
`CKent@LALaw.com
`
`PTOL-90A (Rev. 04/07)
`
`7
`
`7
`
`

`

`8
`
`Disposition of Claims*
`5\¥) Claim(s) 21-49 is/are pending in the application.
`5a} Of the above claim(s)
`isfare withdrawn from consideration.
`6}00 Claim(s)
`is/are allowed.
`7)\¥) Claim(s) 21-49 is/are rejected.
`8) Claim(s) _is/are objectedto.
`9} Claim{s)___ are subject to restriction and/or election requirement.
`* lf any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Avww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Office Action Summary
`
`Application No.
`14/071,126
`Examiner
`ISIDORA | IMMANUEL
`
`Applicant(s)
`Weiss, Kenneth P.
`Art Unit
`AIA Status
`3685
`No
`
`- The MAILING DATE ofthis communication appears on the cover sheet with the correspondence adaress --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply be timelyfiled
`after SIX (6) MONTHSfrom the mailing date of this communication.
`IfNO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended pericd 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 monthsafter the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1}[¥) Responsive to communication(s) filed on 07/06/2017
`OC A declaration(s)/affidavit(s) under 37 CFR 1.130{b) was/werefiled on
`
`2a) This action is FINAL. 2b)lv]This action is non-final.
`3)L) An election was madeby the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4\0 Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Eyparfe Quayle, 1935 C.D. 11, 453 0.G. 213.
`
`Application Papers
`10)_) The specification is objected to by the Examiner.
`11) The drawing(s) filed on
`isfare: a)(]) 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).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c}L] Noneof the:
`bjLJ Some**
`aU All
`Certified copies of the pricrity documents have been received.
`1.0
`2.0 Certified copies of the priority dacuments have been received in Application No. |
`3.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a}).
`*™* See the attached detailed Office action foralist of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) Cc) Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) gO Other.
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20170905
`
`8
`
`

`

`Application/Control Number: 14/071,126
`Art Unit: 3685
`
`Page 2
`
`DETAILED ACTION
`
`Acknowledgements
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`This office action is in responseto the claimsfiled 07/06/2017.
`
`Claims 1-20 are cancelled.
`
`Claims 21, 30, 32, 34-37, 40, 41 and 44 are amendment.
`
`Claims 21-49 are pending.
`
`Claims 21-49 have been examined.
`
`Notice of Pre-AlA or AIA Status
`
`6.
`
`The present application is being examined underthe pre-AlAfirst to invent
`
`provisions.
`
`Continued Examination Under 37 CFR 1.114
`
`f.
`
`A requestfor continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissionfiled on
`
`07/06/2017 has been entered.
`
`9
`
`

`

`Application/Control Number: 14/071,126
`Art Unit: 3685
`
`Page 3
`
`Response to Amendment/Arguments
`
`8.
`
`Applicant's argumentsfiled 07/06/2017 have been fully considered but they are
`
`not persuasive.
`
`9.
`
`101
`
`10.
`
`Applicant’s claims recite “receiving... information... receiving...biometric
`
`data...authenticating an identity... generating...a non-predictable value and encrypted
`
`authentication information and ... communicating the encrypted authentication
`
`information ...." First, the limitations of the method claims do not require a computerto
`
`execute them, a person can carry out the steps, for example a person can verify a
`
`user’s biometric identity, provide an unpredictable value and an encryption is a
`
`mathematical operation that can be performed by a person. Secondly, even with a
`
`computer, the computer would be performing conventional functions of a computer such
`
`as sending, receiving, comparing and calculating information. Applicant is of the opinion
`
`that a biometric authentication cannot be done by “a human mind”, but facial or voice
`
`recognition are just some examples of biometric authentications performed daily by the
`
`“human mind”. There is no demonstration of an improvement or enhancementto the
`
`particular technological environment.
`
`11.
`
`12.
`
`112
`
`Applicant makes the argument “the language used by the Examineris not an
`
`accurate quotation of the limitations of previously-presentedclaim [], and the rejection is
`
`therefore moot.” Applicant does not explain what language is not an “accurate
`
`10
`
`10
`
`

`

`Application/Control Number: 14/071,126
`Art Unit: 3685
`
`Page 4
`
`quotation.” Applicant does not addressa lot of the rejections and concludesthe claims
`
`to be “clear and accurate as written.”
`
`13.
`
`“When examining computer-implemented functional claims, examiners should
`
`determine whetherthe specification discloses the computer and the algorithm (e.g., the
`
`necessary steps and/orflowcharts) that perform the claimed function in sufficient detail
`
`suchthat one of ordinary skill in the art can reasonably concludethat the inventor
`
`invented the claimed subject matter’. See MPEP 2161.01. There is no disclosed
`
`“system”, in the electronic device that is configured to enact the multiple acts claimed by
`
`the limitations, the specification also provides no support for a definition of a “secure
`
`operation’, examples of the claimed secure operation nor doesit mention a words
`
`“secure operation’.
`
`14.
`
`Applicant actually makes an argumentthat “it is unclear what the Examineris
`
`attempting to convey... the claims are clear and accurate as written.” To addressthis
`
`argumentthe rejection has been expanded upon.
`
`15.
`
`Claim 21 is directed towards “an electronic device...”, dependent claims for
`
`example, Claim 34 is directed towards “an electronic device...” but recites “the
`
`electronic ID device is configured to not....” The claim recites “the entry of the user
`
`input” is not permitted while simultaneously reciting that the biometric input has been
`
`received. The only “entry of the user input” made was a secret authentication
`
`information, “the entry of the user input’ alludes to a past entry. It is therefore unclear as
`
`to whether the “entry” is to be viewed asthe receiving of the biometric input or a
`
`different operation not presentin the claim or there is a mistake and Applicantfailed to
`
`11
`
`11
`
`

`

`Application/Control Number: 14/071,126
`Art Unit: 3685
`
`Page 5
`
`allude to a future entry of the user input. The claims are unclear and not accurate
`
`because as written “the entry of the userinput” alludes to a past entry. The Applicant
`
`has consistently differentiated between biometric input and user input and the phrase
`
`“the entry of the userinput” alludes to one specific use. Clarification is needed. The
`
`limitation remains unclear, the rejection stands.
`
`16.
`
`103
`
`17.|In response to applicant’s argumentthat there is no teaching, suggestion, or
`
`motivation to combine the references, the examiner recognizes that obviousness may
`
`be established by combining or modifying the teachingsof the prior art to produce the
`
`claimed invention where there is some teaching, suggestion, or motivation to do so
`
`found either in the references themselves orin the knowledge generally available to one
`
`of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir.
`
`1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR
`
`International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
`
`In this case,
`
`it would have been obvious to one of ordinary skill in the art at the time of the invention
`
`to combine the teachings of Gullman to Maritzen. Applicant’s proposed invention
`
`teaches a user device is configured to allow a user to select any oneof a plurality of
`
`accounts associated with the user to employin a financial transaction. In one
`
`embodiment, the user device includes a biometric sensor configured to receive a
`
`biometric input provided by the user, for authenticating identity or verifying the identity of
`
`individuals and other entities seeking access to certain privileges and for selectively
`
`granting privileges. Gullman teaches a security apparatus receives a biometric input
`
`12
`
`

`

`Application/Control Number: 14/071,126
`Art Unit: 3685
`
`Page 6
`
`from a user,if access to such system is permitted the useris allowed to perform an
`
`electronic funds transfer. Maritzen teaches that the invention allows a consumer to
`
`utilize a game console to conduct secure transactions and authenticate the identity of
`
`the consumer using the game console. Both art utilize PINs, and Gullman does not
`
`teach away from the use of PINs as Applicant claims. Gullman says “in an exemplary
`
`embodiment of the invention, the biometric security mechanism is an integrated circuit
`
`card including a processing unit, memory and a biometric sensor. The memory stores a
`
`template of the authorized user's biometric information, along with a verification
`
`algorithm. Upon entry of the cardholder's biometric information, the processor executes
`
`the verification algorithm. The verification algorithm uses the template data, the
`
`biometric input, a fixed code (i.e., PIN, embedded serial number, account number)” and
`
`also "for a successful biometric entry or where the useris not informed ofa failed
`
`biometric entry, the correlation factor is combined with a fixed code (i.e., PIN,
`
`embedded serial number, account number)” (column 2, line 48-65, column 4, line 3-11).
`
`Applicant also argues that Gullman does not recite “receiving or requesting a PIN from a
`
`user....” This argued limitation is not within the entered claims for this particular
`
`application. Although the claimsare interpretedin light of the specification, limitations
`
`from the specification are not read into the claims. See /n re Van Geuns, 988
`
`F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
`
`18.
`
`Applicant repeatedly makes the argument “Examiner has omitted limitations” but
`
`there are nolimitations not found within the rejections nor does Applicant actually show
`
`whereor whatlimitations are missing. Applicant again argues that the combination of
`
`13
`
`13
`
`

`

`Application/Control Number: 14/071,126
`Art Unit: 3685
`
`Page 7
`
`Gullman and Maritzen does not teach “a userinterface....” As explained in what
`
`Gullman and Maritzen teach and imported from their abstracts and fields of invention,
`
`Gullman’s user, inputs information gain to accessso the useris allowed to perform an
`
`electronic funds transfer. Specifically, Gullman says “the biometric security mechanism
`
`14 generates a security token which the user inputs to the access device 12,” (Figure 1;
`
`column 4, line 1-20). Gullman explicitly says the user inputs the information to the
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`access device. Maritzen’s secure operation to be executedis for a consumerto utilize a
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`game console to conduct secure transactions. Maritzen also teachesa userinterface (|
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`28) saying “A variety of user interfaces may be used. In one embodiment, and input
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`device may be incorporated on the transaction device. Alternately, a supplemental input
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`device may be coupledto the transaction device. In one embodiment, an input device
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`may be provided on a digital wallet coupled to a privacy card. User inputs may be
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`provided onthe point-of-sale terminals including a personal point-of-sale terminal.”
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`Examiner’s Comments
`
`19.
`
`Regarding claim 21, with respect to claim language “sensor configured to
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`receive...”, “interface configured to receive...”, “interface configured to communicate...”,
`
`“processor configured to generate... to encrypt ... to communicate...”, claim 22,
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`“transmitter configured to wirelessly transmit ...”, claim 23, “the system...configured to
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`transmit... to receive ... to perform...”, claim 24, “system configured to perform...”, claim
`
`25, “interface configured to display options for purchase”, claim 26, “interface configured
`7
`it
`to accept...for purchase”, claim 27, “system configured to execute...”, “operation is
`
`14
`
`14
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`

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`Application/Control Number: 14/071,126
`Art Unit: 3685
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`Ph
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`3
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`Page 8
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`it
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`“system
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`further configured to manage...”, claim 29, “interface configuredto initiate...”,
`ir
`configured to execute...”, claim 30, “system configured to execute...”, claim 31,
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`“software for authentication...”, claim 33, “device to authenticate...”, claim 37, “operation
`ir
`7
`ot
`that acts to modify...”, claim 38, “memory is configured to store...”, “processoris
`7
`it
`configured to generate...”, “processor to generate...”, and claim 39, “system configured
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`to execute...”, recites intended use and therefore does not have patentable weight. See
`
`MPEP 2114.
`
`20.
`
`Regarding claim 21, the language “programmedsuchthat...”, claim 37, “the data
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`suchthat...” is a result and therefore has not patentable weight ( Minton v. Natl Ass’n of
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`Securities Dealers, inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003))
`
`that a “‘whereby clause in a methodclaim is not given weight whenit simply expresses
`
`the intended result of a process step positively recited.” See MPEP 2111.04.
`
`21.
`
`Regarding claim 35, “information... includes a ...”, are nonfunctional descriptive
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`material and therefore do not have patentable weight. See /n re Gulack, 217 USPQ 401
`
`(Fed. Cir. 1983), In re Ngai, 70 USPQ2d (Fed. Cir. 2004), in re Lowry, 32 USPQ2d 1031
`
`(Fed. Cir. 1994); MPEP 2111.05III.
`
`22.
`
`Regarding claim 40, the language “providedto...”, and claim 49, “userinitiates...”
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`doesnot disclose a positively recited step and therefore does not patentable weight.
`
`See MPEP 2111.04.
`
`23.
`
`Regarding claim 43, “entering, via the electronic ID device... if the identity...”,
`
`similarly, claim 45, “a selected one...” is optional and conditional language and therefore
`
`does not have patentable weight. See MPEP 2103(I)(c).
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`15
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`Application/Control Number: 14/071,126
`Art Unit: 3685
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`Page 9
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`Claim Rejections - 35 USC § 101
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`24.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements ofthistitle.
`
`25.
`
`Claims 21-49 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`Subject Matter Eligibility Standard
`
`26. Whenconsidering subject mattereligibility under 35 U.S.C. 101, it must be
`
`determined whetherthe claim is directed to one of the four statutory categories of
`
`invention, i.e., process, machine, manufacture, or composition of matter.
`
`If the claim
`
`doesfall within one of the statutory categories, it must then be determined whether the
`
`claim is directed to a judicial exception(i.e., law of nature, natural phenomenon, and
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`abstract idea), and if so, it must additionally be determined whetherthe claim is a
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`patent-eligible application of the exception.
`
`If an abstract idea is presentin the claim,
`
`any element or combination of elements in the claim must be sufficient to ensure that
`
`the claim amountsto significantly more than the abstract idea itself. Examples of
`
`abstract ideas include fundamental economic practices; certain methods of organizing
`
`human activities; an idea itself; and mathematical relationships/formulas. (Alice
`
`Corporation Pty. Ltd. v. CLS Bank International, et al. US Supreme Court, No. 13-298,
`
`June 19, 2014).
`
`Analysis
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`16
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`16
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`Application/Control Number: 14/071,126
`Art Unit: 3685
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`Page 10
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`27.
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`In the instant case, claim 40 is directed to a method and claim 21 is directed to a
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`device.
`
`28.
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`Theclaim recites “receiving... information... receiving...biometric
`
`data...authenticating an identity... generating...a non-predictable value and encrypted
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`authentication information and ... communicating the encrypted authentication
`
`information ...." Additionally, the claim is directed towards receiving, and processing
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`data and automating mental tasks, in this case an electronic device is used, whichis
`
`similar to Alice which dealt with receiving, processing, and storing data (Alice Corp. Pty.
`
`Lid. v. CLS Bank intl, 573 U.S. ___, 134. S. Ct. 2347, 2356 (2014)), and Classen which
`
`dealt with automating mental tasks. Therefore, based on case law precedent, the claims
`
`are claiming subject matter similar to concepts already identified by the courts as
`
`dealing with abstract ideas. See Alice Corp. Pty. Ltd., 134 S.Ct. at 2356 (citing Bilski v.
`
`Kappos, 561, U.S. 593, 611 (2010)). Claim 21 is directed towards the generic computer
`
`used to implement the method of claim 40 and is therefore also directed towards a
`
`judicial exception regarding an abstract idea involving the receiving and processing
`
`data, based on case law precedent,is claiming subject matter similar to concepts
`
`identified by the courts as dealing with abstractideas.
`
`29.
`
`Taking the claim elements separately, the functions performed by the machineat
`
`each step of the process are purely conventional. Using a processor, using a device,
`
`receiving and processing data. All of these functions are well-understood, routine,
`
`conventional activities previously knownto the industry. In short, each step does no
`
`more than require a generic computer to perform generic computerfunctions.
`
`17
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`Application/Control Number: 14/071,126
`Art Unit: 3685
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`Page 11
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`30.
`
`The claims do not include additional elements that are sufficient to amount to
`
`significantly more than the judicial exception because the elements of “authenticating an
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`identity” are drawn to data comparisons in SmartGene and“activating the electronic
`
`device...” as explained by Applicant’s specification (PGPub{ 255)is “the user
`
`device 352 is activated for a transaction when the user satisfactorily completes an
`
`authentication process with the device”, as the device is already in use, “activating”is
`
`drawnto the using of the device for transactions as in automation of tasks in Classen
`
`and receiving and processing data in Alice (Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573
`
`U.S. , 134 8. Ct. 2347, 2356 (2014)), electronic recordkeeping (Alice Corp. Pty. Ltd.
`
`v. CLS Bank Intl, 573 U.S. __, 134 S. Ct. 2347, 2356 (2014)), automating mental tasks
`
`(Bancorp Services LLC v. Sun Life Assurance Co. of Canada (U.S.), 103 USPQ2d 1425
`
`(Fed. Cir. 2012), (Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372
`
`(Fed. Cir. 2011)) and receiving or transmitting data over a network, e.g., using the
`
`Internet to gather data (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15 (Fed. Cir.
`
`2014), (buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014),
`
`(Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993
`
`(Fed. Cir. 2014)).
`
`31.
`
`Viewed as a whole, instructions/method claims simply recite the concept of
`
`receiving and processing data as performed by a generic computer. The method claims
`
`do not, for example, purport to improve the functioning of the computer itself. Nor do
`
`they effect an improvement in any other technology or technical field. Instead, the
`
`claims at issue amountto nothing significantly more than an instruction to apply the
`
`18
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`Application/Control Number: 14/071,126
`Art Unit: 3685
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`Page 12
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`abstract idea of receiving and processing data using some unspecified, generic
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`computer. See Alice Corp. Pty. Ltd., 134 S.Ct. at 2360.
`
`32.
`
`The use of a device implementing the abstract idea does not render th