`
`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.
`
`15/045,408
`
`
`
`
` FILING DATE
`
`
`02/17/2016
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`Kenneth P. Weiss
`
`W0537-701322
`
`6442
`
`ANDO & ANASTASI, LLP Le
`
`ONE MAIN STREET, SUITE 1100
`CAMBRIDGE, MA 02142
`
`CHOO,JOHANN Y
`
`PAPER NUMBER
`
`ART UNIT
`
`3685
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/27/2017
`
`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
`CKent@LALaw.com
`
`PTOL-90A (Rev. 04/07)
`
`APPLE 1015
`
`Page | of 44
`
`APPLE 1015
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`Page 1 of 44
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`

`

`
`
`Status
`1)X] Responsive to communication(s)filed on 11/1/2016.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`___} the restriction requirement and election have been incorporated into this action.
`4)[] Since this application is in condition for allowance exceptfor 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.
`
`Disposition of Claims*
`5) Claim(s) 1-74 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7)X] Claim(s) 1-14 is/are rejected.
`8)L] Claim(s)____is/are objectedto.
`
`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If 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
`
`nito/www. uspte.gov/natenis/init events/poh/index.isp
`
`or send an inquiry to PPHieedback@uspte.aov.
`
`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)L_] 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)[] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)L] All
`b)[-] Some** c)L] None ofthe:
`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] 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 for a list of the certified copies not received.
`
`
`
`Applicant(s)
`Application No.
` 15/045,408 WEISS, KENNETH P.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3685JOHANN CHOO Na
`
`-- 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 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`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).
`Anyreply 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).
`
`In no event, however, may a reply betimely filed
`
`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4) Ol Other:
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20170118
`
`Page 2 of 44
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`

`

`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 2
`
`DETAILED ACTION
`
`This action is responsive to the application filed on 11/1/2016.
`
`Claims 1-4, 6, 9, 12 have been amended.
`
`Claims 1-14 are currently pending and have been examined.
`
`Several 112(b) rejections have been withdrawn in response to applicant's amendments.
`
`Response to Amendment
`
`Response to Arguments
`
`Applicant asserts that the claims recite more than the abstract idea because they recite "an
`
`electronic ID device configured to provide encrypted information to execute a secure transaction,
`
`comprising: a biometric sensor configured to receive a biometric". However, an electronic ID device
`
`configured to provide information to execute a transition is indeed a generic computer; Similarly, a
`
`biometric sensor is also widespread technology and at
`
`the time of applicant's invention would be
`
`considered a generic computing device/accessory found in numerous computing systems, especially in
`
`the realm of secure communications. Furthermore, processors, communication interfaces, etc. are all also
`
`generic computing devices/parts.
`
`Applicant asserts that the claims are not abstract because there has been no abstract idea as
`
`recited in the claims and specified by the courts. However,
`
`in the previous rejection,
`
`it was specifically
`
`pointed out that the claim recites steps of “receive identifying information...”, “communicate encrypted
`
`information”,
`
`‘generate
`
`the
`
`encrypted information’,
`
`etc. That
`
`is,
`
`the
`
`claims
`
`are directed to
`
`transmitting/receiving/collecting of data and processing/authenticating of transaction information which is
`
`similar to processing that information through a clearinghouse with the use of transforming one form of
`
`data to another, which have been noted asabstract ideas in the guidelines. Asis laid out by the Alice test,
`
`the claim is first checked to see if there is a corresponding abstract idea, and then the technological
`
`aspects and limitations are a whole are considered to determine if there is significantly more than the
`
`abstract idea present.
`
`Page 3 of 44
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`Page 3 of 44
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`

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`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 3
`
`Similarly, while a “biometric sensor” receiving a "biometric" from a user may not be fully done in a
`
`human mind,
`
`the use of authenticating information such as passwords, fingerprints, eye color, facial
`
`features, etc. may indeed be received by a human mind and checked with previous inputs in order to
`
`validate a user.
`
`Applicant asserts that as the claims do not preempt the abstract
`
`idea,
`
`the claims are not
`
`considered routine and conventional. However, applicant is reminded that questions of preemption are
`
`inherent in and resolved by the two-part framework from Alice. Moreover, while a preemptive claim may
`
`be ineligible, the absence of complete preemption does not demonstrate that the claim is eligible.
`
`Applicant asserts that there has been no reasoned explanation that supports that the additional
`
`elements would be well understood, routine, conventional activities. However, it was noted in the previous
`
`office action that The claim(s) does not
`
`include additional elements that are sufficient to amount to
`
`significantly more than the judicial exceptions because the additional elements or combination of
`
`elements in the claims other than the abstract
`
`idea per se, e.g.
`
`receiving/sending/collecting data,
`
`comparing/processing data, encrypting/decrypting data etc., amount to more than: (i) mere instructions to
`
`implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to
`
`perform generic computer functions that are well-understood, routine, and conventional activities
`
`previously known to the pertinent industry.
`
`Applicant asserts that the dependent claims were not addressed adequately. However,
`
`the
`
`dependent claims were indeed addressed and specific limitations were indeed considered of
`
`the
`
`dependent claims. Applicant has provided no arguments as to what applicant considers to be significantly
`
`more than the abstract idea in any specific dependent claim, and as such, currently,
`
`the office has
`
`provided more than sufficient evidence that the dependentclaims fall within the same abstract ideas as
`
`the independentclaims without adding significantly more than the abstract ideas.
`
`Applicant asserts that the teachings of Waugh do notdisclose the use of encrypting with a private
`
`key a non-predictable value because Waugh teaches the use of a private key and therefore cannot
`
`include the key inside the message itself. However, as shown in the current rejection below, Waugh does
`
`teach that a message may be encrypted, and the message may include a variety of
`
`information.
`
`Page 4 of 44
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`Page 4 of 44
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`

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`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 4
`
`Therefore it is obvious to one of ordinary skill
`
`in the art that the message of Waugh could include any
`
`variety of information, words, identifiers, etc. which would act as non-predictable values. Furthermore, as
`
`the intended definition of "non-predictable-value” is unclear,
`
`it
`
`is most certainly within the realm of
`
`obviousness that any message a user creates would constitute a "non-predictable value" and interpreted
`
`by the office.
`
`Claim Rejections - 35 USC § 101
`
`35 U.S.C. 101 reads asfollows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvementthereof, may obtain a patent
`therefor, subject to the conditions and requirementsofthistitle.
`
`Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-
`
`statutory subject matter. The claim does notfall within at least one of the four categories of patenteligible
`
`subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a
`
`natural phenomenon, or an abstract idea) without significantly more.
`
`In the instant case, claims 1-14 are directed to a device. Hence, the claimed invention is directed
`
`towards one of the four statutory categories under 35 USC 101. Nevertheless, the claims also fall within
`
`the judicial exception of abstract
`
`idea. The claims are directed towards the abstract
`
`idea of
`
`sending/receiving information in order to process a transaction. More specifically, the claim recites steps
`
`of “receive a biometric’, “receive identifying information...”, “communicate encrypted information’,
`
`“generate
`
`the
`
`encrypted
`
`information’,
`
`etc.
`
`That
`
`is,
`
`the
`
`claims
`
`are
`
`directed
`
`to
`
`transmitting/receiving/collecting of data and processing/authenticating of transaction information through
`
`a clearing house and processing that information with the use of transforming one form of data to another
`
`similar in scope to Cybersource and buySAFE. The conceptin the claims is not meaningfully different that
`
`those concepts found by the courts and guidelines to be abstract ideas.
`
`Page 5 of 44
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`Page 5 of 44
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`

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`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 5
`
`The claim(s) does not include additional elements that are sufficient to amount to significantly
`
`more than the judicial exceptions because the additional elements or combination of elements in the
`
`claims other than the abstract idea per se, e.g. receiving/sending/collecting data, comparing/processing
`
`data, encrypting/decrypting data etc., amount to more than: (i) mere instructions to implement the idea on
`
`a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer
`
`functions that are well-understood, routine, and conventional activities previously knownto the pertinent
`
`industry.
`
`Limitations such as
`
`"biometric",
`
`"electronic
`
`ID device",
`
`"receiver",
`
`"interface",
`
`‘encrypted
`
`information", "processor", "biometric sensor", "non-predictable value", etc. merely recite well known and
`
`widespread functions and environments and data that are prevalent throughout the current art. Thatis,
`
`the claims do not recite an improvement to another technology or technical field, an improvement to the
`
`functioning of any computing device itself, or provide meaningful limitations beyond generally linking an
`
`abstract idea to a particular technological environment(i.e. computer processing environment, networked
`
`system of computers, and computer interfaces/connections). That is, the computer system/devices and
`
`their
`
`components
`
`recited
`
`in
`
`the
`
`specification
`
`for
`
`performing
`
`the
`
`claimed
`
`functions
`
`of
`
`receiving/sending/collecting data, comparing/processing data, etc. and these functions both individually
`
`and in an ordered combination constitute generic computer functions that any general purpose computer
`
`is fully capable of performing.
`
`Claims 2-14 include the same limitations as the independentclaims and thus encounter the same
`
`issues, but also include “transmit the encrypted information”, “receive transaction approval”, “display
`
`options”, “receive a user input”, “generate information for display”, “stores information”, etc. which areall
`
`similar
`
`to
`
`limitations
`
`already
`
`covered
`
`in
`
`the
`
`independent
`
`claims
`
`and_
`
`still
`
`amount
`
`to
`
`sending/receiving/comparing/processing/displaying of data or the transformation of one form of data to
`
`another as described for the independent claim above with the use of still more generic computing
`
`devices, environments, and systems.
`
`Therefore, since there are no limitations in the claims taken individually and as an ordered
`
`combination that transform the abstract idea into a patent eligible application such that the claim amounts
`
`Page 6 of 44
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`Page 6 of 44
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`

`

`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 6
`
`to significantly more than the abstract ideaitself,
`
`the claims are rejected under 35 U.S.C. 101 as being
`
`directed to non-statutory subject matter.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall conclude with one or more claimsparticularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph,
`
`as being indefinite for failing to particularly point out and distinctly claim the subject matter which the
`
`inventor or a joint inventor, or for pre-AlA the applicant regards as the invention.
`
`Claim 1 recites the limitation “non-predictable value” which is unclear. The limitation does not
`
`indicate what constitutes as being predictable or non-predictable and therefore it
`
`is unclear as to what
`
`constitutes infringement of this limitation. For the purposes of compact prosecution, the term has been
`
`interpreted to mean any value, message, or information that it not readily available to the public.
`
`Claim 9 recites the limitation “entry of the user input” which lacks antecedent basis
`
`Claim 12 recites the limitation “unintelligible until the electronic ID device is triggered for the
`
`secure transaction” which is unclear.
`
`It
`
`is unclear as to what constitutes “unintelligible”, e.g.
`
`if
`
`it
`
`is
`
`completely unintelligiole to any party, how it would be processed at all. For the purposes of compact
`
`prosecution examiner has interpreted the limitation to read on the data being encrypted while being
`
`stored.
`
`Claims 2-14 depend on the claims above and are rejected as a result.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`Page 7 of 44
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`Page 7 of 44
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`

`

`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 7
`
`A patent may not be obtained though the invention is not identically disclosed or described as
`set forth in section 102 of thistitle, if the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinaryskill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966),
`
`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
`
`summarized asfollows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence presentin the application indicating obviousness or
`
`nonobviousness.
`
`Claims 1-8, 10, 11, 18, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Stewart
`
`(US 2006/0191995 A1)
`
`in view of Goldthwaite (US 2004/0019564 A1) and (Waugh (US
`
`6,678,821 B1)
`
`Regarding Claim 1:
`
`Stewart
`
`teaches an electronic Identification (ID) device configured to provide encrypted
`
`information to execute a secure transaction, comprising:
`
`a biometric sensor configured to receive a biometric provided by the user;
`
`(Paragraph 0020,
`
`0025, 0028, 0059, “The majority of identification methods employed in face to face transactions involve
`
`the use of a reader device to scan the user's card, biometrics feature,... “)
`
`a receiver configured to receive, from the user, identifying information concerning a plurality of
`
`accounts, and information concerning the secure transaction to be executed at a Point-Of-Sale (POS)
`
`deviceParagraph 0019—0022, 0025, 0041-0044, 0047, 0049, 0050, 0056, 0057, 005,
`
`“In online
`
`transactions, online identity protocols are used. The user will also provide the merchant or Third Party
`
`Page 8 of 44
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`Page 8 of 44
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`

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`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 8
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`with one of the selection methods described above unless the identification method also serves as the
`
`selection method.” Various forms of information regarding a transaction may be received/sent)
`
`to enable execution of the secure transaction, and wherein an account numberrelated to the
`
`selected account remains unknown to a merchant receiving the identifying information. (Paragraph 0006,
`
`0020, 0021,
`
`0022,
`
`“If
`
`the financial
`
`institution authorizes the purchase, an authorization code is
`
`transmitted to the merchant who may then conclude the transaction.... the user may employ the present
`
`invention to initiate anonymousfinancial transactions and a variety of information sharing services.... The
`
`merchantor Third Party transfers the identification and selection methods to a secure intermediary which
`
`uses this information to determine the user's Unique Identification Number within the Central Databank
`
`and which stored data field the user has elected to use in that transaction.... Upon receipt, the merchant
`
`concludes the transaction but at no point
`
`in the transaction does the merchant have access to the
`
`customer's name,
`
`type of card accessed or
`
`the account number. Thus it
`
`is not possible for an
`
`unscrupulous employee to detect account or personal information.")
`
`Stewart does not specifically disclose a communication interface configured to communicate the
`
`encrypted information concerning the secure transaction; and a processor coupled to the biometric
`
`sensor and the
`
`communication interface,
`
`the communication interface being programmed to
`
`communicate the encrypted information concerning the secure transaction responsive to the Electronic ID
`
`device successfully authenticating the biometric ..., and wherein the processor is configured to
`
`communicate the encrypted information via the communication interface
`
`However, Goldthwaite, an analogous art of Stewart, @ communication interface configured to
`
`communicate the encrypted information concerning the secure transaction; and a processor coupled to
`
`the biometric sensor and the communication interface, the communication interface being programmed to
`
`communicate the encrypted information concerning the secure transaction responsive to the Electronic ID
`
`device successfully authenticating the biometric .... and wherein the processor is configured to
`
`communicate the encrypted information via the communication interface (Paragraph 0003, 0018, 0037,
`
`0040, 0045, 0046, 0052,
`
`“Message routing 114-140 is encrypted.” data may be encrypted when
`
`transmitted between parties.)
`
`Page 9 of 44
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`Page 9 of 44
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`

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`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 9
`
`It would have been obvious to one of ordinary skill in the art at the time of applicant's invention to
`
`combine the teachings of using a communication interface of a user mobile device to encrypt transaction
`
`information and send the encrypted information to a merchant/POS in order to perform transaction as
`
`disclosed by Goldthwaite to the teachings of using biometric data and transaction information in order to
`
`conduct transaction as disclosed by Stewart in order to ensure that the merchant does not obtain any
`
`sensitive information that is not protected and therefore increase security of the transaction.
`
`Stewart does not specifically disclose wherein the processor is configured to generate the
`
`encrypted information,
`
`the encrypted information including a non-predictable value and identifying
`
`information related to an account selected from a plurality of accounts associated with the user,
`
`in
`
`response to authentication of at least a portion of a biometric input, (Stewart does disclose identifying
`
`information and other identifiers, as seen above, but does not specify a “non-predictable value”)
`
`However, Waugh, an analogous art of Stewart, teaches wherein the processoris configured to
`
`generate the encrypted information,
`
`the encrypted information including a non-predictable value and
`
`identifying information related to an account selected from a plurality of accounts associated with the
`
`user,
`
`in response to authentication of at least a portion of a biometric input, (Col/Line: 5/385-65, “Every
`
`time the user wishes to use the private key to encrypt or decrypt the message, the user must bio -
`
`authenticate using the biometric device 24” user is authenticated by the biometric before sending
`
`information that is encrypted using a user specific key. Any variety of information may be sent in the
`
`encrypted message including non-predictable values, identifiers, information, etc. as any message a user
`
`would make would be non-predictable and therefore include non-predictable value of somekind.)
`
`While Waugh does not explicitly disclose the use of a "non-predictable value". However, as the
`
`combination of Stewart, Goldthwaite and Waugh does teach that any variety of messages may be sent
`
`including identifiers, and other data, it is certainly within the realm of obviousnessthat a value of some
`
`kind,
`
`€.g.
`
`a written message, a single use identifier, and user identifier, etc., could be included.
`
`Furthermore, as the intended definition of "non-predictable-value’”is unclear,it is most certainly within the
`
`realm of obviousness that any message a user creates would constitute a "non-predictable value" and
`
`interpreted by the office.
`
`Page 10 of 44
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`Page 10 of 44
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`

`

`Application/Control Number: 15/045,408
`
`Art Unit: 3685
`
`Page 10
`
`It would have been obviousto oneof ordinary skill in the art at the time of applicant's invention to
`
`combine the teachings of authenticating a user through biometrics before sending transaction data as
`
`disclosed by Waugh to the teachings of sending transaction information from a user device to a POS to
`
`conduct transactions as disclosed by the combination of Stewart and Goldthwaite in order to ensure only
`
`authorized users are making transactions and increase security.
`
`Applicant is notified that the description of files, data,
`
`information, etc. manipulates neither the
`
`process nor the system performing the process and therefore does not moveto distinguish over prior art.
`
`Regarding claim 2:
`
`Goldthwaite further
`
`teaches wherein the communication interface comprises a_
`
`transmitter
`
`configured to wirelessly transmit the encrypted information to the POS device to enable execution of the
`
`secure transaction. (Paragraph 0003, 0018, 0037, 0040, 0045, 0046, 0052, Fig. 2A-C “The customer 102
`
`chooses to pay via her mobile phone 110 and gives her mobile phone identification information to the
`
`merchant server 104 (114)...” information may be sent to a POS from the user’s mobile device.)
`
`Applicant is notified that the description of files, data, etc. in this and the dependentclaims do not
`
`manipulate the system or processing being performed and therefore does not move to distinguish over
`
`the prior art so long as the systems/devicesof the art is capable of performing said functions.
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`Applicant is notified that the limitations “in order to” , “to”, etc.
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`in this and dependent claims are
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`indicative of intended us/result and therefore does not moveto distinguish over prior art.
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`Regarding claim 3:
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`Goldthwaite further
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`teaches wherein communication interface is configured to receive a
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`transaction approval responsive to validation of the encrypted information, wherein the merchant
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`receiving the encrypted information is unable to access account information of the user of the electronic
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`device.(Abstract, Paragraph 0010-0017, 0041, 0042, 0045,
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`, “The financial institution is asked to approve
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`and execute the requested payment and to route the payment approval result through the authentication
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`server to the merchant server and to the communication device....”)
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`Page 11 of 44
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`Page 11 of 44
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`Application/Control Number: 15/045,408
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`Art Unit: 3685
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`Page 11
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`Regarding claim 4:
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`Goldthwaite further teaches wherein the electronic ID device further comprises a user interface
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`configured to display options for a purchase.(Paragraphs 0038, 0044, 0046"Customer 102 interacts with
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`the merchant server 104 through a "customer interface portal" (not shown). The customer 102 views the
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`offered goods and services and places an order
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`through the customer
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`interface portal...The
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`authentication client application 150 further provides a user interface to the mobile phone user, i.e.,
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`customer, and managesthe interactions between the mobile phone and the payment cards.”)
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`Regarding claim 5:
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`Stewart further teaches a user input including secret information known to the user and the
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`identifying information related to the account selected by the user from the plurality of accounts.
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`(Paragraph 0019—0022, 0025, 0041-0044, 0047, 0049, 0050, 0056, 0057, 005, “In online transactions,
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`online identity protocols are used. The user will also provide the merchant or Third Party with one of the
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`selection methods described above unlessthe identification method also serves as the selection method.”
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`Various forms of information regarding a transaction may be indicated by the user.)
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`Regarding claim 6:
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`Goldthwaite further teaches the processor is configured to generate information for display
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`associated with the respective one ofthe plurality of accounts, wherein the information for display does
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`not identify an account number of the respective one of the plurality of accounts used to process an
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`exchange of funds.(Paragraph 0010-0017, “The communication device includes identification information
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`of the payment card, and is adapted to receive the first message from the authentication server over the
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`second network,display the first message to the customer, request and receive authorization for payment
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`from the customer, retrieve payment card identification information, request and receive payment card
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`security information from the customer”)
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`Page 12 of 44
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`Page 12 of 44
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`Application/Control Number: 15/045,408
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`Page 12
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`Art Unit: 3685
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`Regarding claim 7:
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`Goldthwaite further
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`teaches wherein the electronic ID device comprises a discrete code
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`associated with the electronic ID device and a respective one of the plurality of accounts.(Paragraph
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`0010, 0011, 0017, Next creating a digital order
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`that
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`includes purchase order
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`information and
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`communication device identification number by the merchant server and routing the digital order to an
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`authentication server via a first network.”)
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`Regarding claim 8:
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`Waugh further
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`teaches a memory coupled to the processor, wherein the memory stores
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`information employed by the electronic ID device to authenticate the biometric received by the biometric
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`sensor. (Col/Line: 3/55-4/05, 5/385-65, “Each client computer comprises a processor (not shown),
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`memory (not shown),
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`...Every time the user wishes to use the private key to encrypt or decrypt the
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`message, the user must bio -authenticate using the biometric device 24”)
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`Regarding claim 10:
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`Goldthwaite and Stewart further teach wherein the secret information known to the user includes
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`a PIN, and wherein the authentication of both the secret information and the biometric input enables the
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`secure transaction. (Goldthwaite: Paragraph 0011, “The security information may include at least one of a
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`personal identification number (PIN), password, biometric signal, fingerprint, retinal scan, voice signal,
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`digital signature, and encrypted signature, username and password combinations, identity certificate such
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`as X.509, public and private keys to support Public Key Infrastructure (PKI), a Universal Card
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`Authentication Field (UCAF), or combinations thereof.” Stewart : 0019)
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`Regarding claim 11:
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`Waugh further teaches wherein at least some of the data stored in the memory is unavailable to
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`an individual in possession of the electronic ID device. (Col/Line: 3/55-4/05, 5/35-65, “Thus, the user
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`cannot give the private key away, nor can the private key be determined by others.”)
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`Page 13 of 44
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`Page 13 of 44
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`Application/Control Number: 15/045,408
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`Art Unit: 3685
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`Page 13
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`Regarding claim 13:
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`Goldthwaite further teaches wherein the memory is configured to store an electronic serial
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`number of the electronic ID device, wherein the processor is configured to generate the encrypted
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`information based on at least two members of a group consisting of a discrete code, a PIN, a time value,
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`and receiving validated biometric input. (Paragraph 0010, 0011, 0017, Next creating a digital order that
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`includes purchase order information and communication device identification number by the merchant
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`server and routing the digital order to an authentication server via a first network.” The biometric is
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`already checked as shownpreviously and the device identifier stored on the device is used in transaction
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`orders.)
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`Regarding claim 14:
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`The memory is configured to store identifying information associated with a respective user
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`account.
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`(Paragraph 0010, 0011, 0017, Next creating a digital order that
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`includes purchase order
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`information and communication device identification number by the merchant server and routing the
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`digital order to an authentication server via a first network.” the device identifier stored on the device is
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`used in transaction orders.)
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`Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Stewart (US 2006/0191995
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`A1) in view of Goldthwaite (US 2004/0019564 A1) and (Waugh (US 6,678,821 B1) as applied to claims 8
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`in further view of Fung (2004/0230536 A1).
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`Regarding claim 9:
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`Fung, an analogousart of Stewart, teaches wherein the electronic ID device denies the entry of
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`the user input if the biometric input received by the biometric sensor is determined to not belong to an
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`authorized userof the electronic ID device. (Paragraph 0190, “example, a user with a cell phone or PDA
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`device can use the central web site of the exemplary embodiments to navigate to a particular e-
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`Page 14 of 44
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`Page 14 of 44
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`Application/Control Number: 15/045,408
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`Art Unit: 3685
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`Page 14
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`commerce merchant and activate the dorm