`
`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.
`
`15/661,955
`
`07/27/2017
`
`Kenneth P. Weiss
`
`W0537-701324FT
`
`5899
`
`LANDO& ANASTASILLP a
`
`ONEMAIN STREET,SUITE 1100
`CAMBRIDGE, MA 02142
`
`IMMANUEL,ISIDORA I
`
`ART UNIT
`
`3685
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/13/2017
`
`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)
`
`APPLE 1016
`
`Page | of 20
`
`APPLE 1016
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`Page 1 of 20
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`

`

`Office Action Summary
`
`Application No.
`15/661,955
`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 07/27/2017
`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.
`
`
`
`Disposition of Claims*
`5)¥) Claim(s) 1-28 is/are pending in the application.
`5a} Of the above claim(s) 22-28 is/are withdrawn from consideration.
`6)D Claim(s) _is/are allowed.
`7}) Claim(s) 1-21 is/are rejected.
`8)LJ Claim(s)__is/are objected to.
`9\[) Claim(s) See office action 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
`http:/Avww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)(J The specification is objected to by the Examiner.
`11) The drawing(s) filed on _is/are: a)[) accepted or b)(J abjected 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 Noneofthe:
`bj Some”
`aD All
`Certified copies of the priority documents have been received.
`110
`Certified copies of the priority documents have been received in Application Ne.
`2.LJ
`3.1.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 07/27/2017 .
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) gO Other.
`
`5
`Y
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20170824
`
`Page 2 of 20
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`

`

`Application/Control Number: 15/661,955
`Art Unit: 3685
`
`Page2
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`DETAILED ACTION
`
`Acknowledgements
`
`This office action is in responseto the claimsfiled 07/27/2017.
`
`Claims 1-21 are elected.
`
`Claims 1-28 are pending.
`
`Claims 22-28 are non-elected
`
`Claims 1-21 have been examined.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Notice of Pre-AlA or AIA Status
`
`6.
`
`The presentapplication is being examined underthe pre-AlAfirst to invent
`
`provisions.
`
`Restriction/Election Acknowledgement
`
`f.
`
`During a telephone conversation with Applicant’s representative John Anastasi
`
`on 08/17/2017 a provisional election was made without traverse to prosecute the
`
`invention of Group 1, claims 1-21. Affirmation of this election must be made by
`
`applicantin replying to this Office action. Claims 22-28 are withdrawn from further
`
`consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected
`
`invention.
`
`Examiner's Comments
`
`8.
`
`Regarding claims 1, and 15, “code is generated... responsive to successful
`
`authentication...”, and claim 10, “code is generated using...” are optional language
`
`because if there is no successful authentication the generating will not occur. The
`
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`Application/Control Number: 15/661,955
`Art Unit: 3685
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`Page3
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`limitations are optional language and therefore do not have patentable weight. Ex parte
`
`Schulhauser, Appeal No. 2013-00784/7 at 7-9 (P.T.A.B. April 28, 2016) See MPEP
`
`2103(I)(c ).
`
`9.
`
`Regarding claim 1, with respect to claim language “interface configured to
`
`receive...”, “processors configured to retrieve...”, claims 6 and 20, “sensoris configured
`
`to capture...”, recites intended use and therefore does not have patentable weight. See
`
`MPEP 2114.
`
`10.
`
`Regarding claims 2 and 16, “authentication code comprises a code...”, claims 8
`
`and 15, “input comprising a personal...”, claim 9, “code comprises...”, and claim 10,
`
`“code is generated...” are nonfunctional descriptive 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
`
`2111.05.
`
`11.
`
`Regarding claim 8, the language “code is generated...”, “input is received...”,
`
`claim 11, “account is communicated...”, and claim 12, “code are encrypted...”, does not
`
`disclose a positively recited step and therefore does not patentable weight. See MPEP
`
`2103 (I) (C), MPEP 2114.
`
`12.
`
`Regarding claim 13, the language “sensoris configured to capture...”, claim 14,
`
`“computer system comprises one or more...” is a structural limitation in a method claim
`
`and has no patentable weight. Ex parte Pfeiffer, 135 USPQ 31 (Bd. App. 1961).
`
`Claim Rejections - 35 USC § 101
`
`13.
`
`35 U.S.C. 101 reads as follows:
`
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`Application/Control Number: 15/661,955
`Art Unit: 3685
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`Page4
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`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may cbtain a patent
`therefor, subject to the conditions and requirements ofthistitle.
`
`14.
`
`Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`Subject Matter Eligibility Standard
`
`15. When considering 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.¢., 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
`
`abstract idea), and if so, it must additionally be determined whetherthe claim is a
`
`patent-eligible application of the exception.
`
`If an abstract idea is present in the claim,
`
`any element or combination of elementsin the claim must be sufficient to ensure that
`
`the claim amounts to significantly more than the abstractidea 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
`
`16.
`
`‘In the instant case, claim 1 is directed to a system, claim 8 is directed to a
`
`method and claim 15 is directed to a storage medium.
`
`17.
`
`Theclaims recite “receiving identification information...”, “retrieving account
`
`information...”, and “using the retrieved accountinformation....” Additionally, the claim is
`
`directed towards a fundamental economic practice, in this case, authenticating a user
`
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`Application/Control Number: 15/661,955
`Art Unit: 3685
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`Page5
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`whichis similar to Alice which is drawnto receiving, storing and processing information
`
`and dealt with intermediated settlement. 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)). Claims 1 and 15 are directed towards the generic
`
`computer used to implement the method of claim 8 and are therefore also directed
`
`towardsa judicial exception regarding an abstract idea involving the financial security,
`
`based on case law precedent, is claiming subject matter similar to concepts identified by
`
`the courts as dealing with abstract ideas.
`
`18.
`
`Taking the claim elements separately, the functions performed by the machineat
`
`each step of the process are purely conventional. Using a processor, using software,
`
`receiving information and authenticating information. All of these functions are well-
`
`understood, routine, conventional activities previously known to the industry. In short,
`
`each step does no more than require a generic computer to perform generic computer
`
`functions.
`
`19.
`
`The claims do not include additional elements that are sufficient to amount to
`
`significantly more than the judicial exception because the elements are receiving, and
`
`processing data (Alice Corp. Pty. Ltd. v. CLS Bank Intl, 573 U.S. __, 134 S. Ct. 2347,
`
`2356 (2014)}, electronic recordkeeping (Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 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, €.g., using the Internet to gather data
`
`Page 6 of 20
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`Application/Control Number: 15/661,955
`Art Unit: 3685
`
`Page6
`
`(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)).
`
`20.
`
`Viewed as a whole, instructions/method claims simply recite the concept of
`
`authenticating a user 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 improvementin any other technologyor technical field. Instead, the claims at issue
`
`amount to nothing significantly more than an instruction to apply the abstract idea of a
`
`fundamental economic practice using some unspecified, generic computer. See Alice
`
`Corp. Pty. Ltd., 134 S.Ct. at 2360.
`
`21.
`
`The use of a dedicated processor implementing the abstract idea does not
`
`render the claim patent eligible because it does not provide meaningful limitations
`
`beyond generally linking the use of an abstract idea to a particular technology
`
`environment and requires no more than a generic computerto perform generic
`
`computer functions.
`
`Conclusion
`
`22.
`
` Theclaim as a whole, does not amountto significantly more than the abstract
`
`idea itself. This is because the claim does not affect an improvement to another
`
`technology or technical filed; the claim does not amount to an improvementto the
`
`functioning of a computer system itself; and the claim does not move beyond a general
`
`link of the use of an abstract idea to a particular technological environment.
`
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`Application/Control Number: 15/661,955
`Art Unit: 3685
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`Page/
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`23.
`
`Accordingly, the Examiner concludes that there are no meaningful limitations in
`
`the claim that transform the judicial exception into a patent eligible application such that
`
`the claim amounts to significantly more than the judicial exceptionitself.
`
`24.
`
`Dependent claims do not resolve the deficiency of independent claims and
`
`accordingly stand rejected under 35 USC 101 based on the same rationale.
`
`25.
`
`26.
`
`Dependent claims 2-7, 9-14, and 16-21 are also rejected.
`
`Claims 15-21 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`2/.
`
`Regarding claims 15-21, the claims recite “a computer readable medium or
`
`media” in the preamble. Giving the claim its broadest reasonable interpretation, a
`
`storage medium is a signal. Therefore, as a signal, carrier wave or other propagation
`
`media is not one of the four statutory classes, the claim is rejected under 35 USC 101
`
`(See In re Nuijten, 515 F3d 1361, 85 USPQ2d 1927 (Fed. Cir. 2008). Dependent claims
`
`16-21 are also rejected.
`
`Claim Rejections - 35 USC § 112
`
`28.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GENERAL.—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and usingit, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in suchfull, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with whichit is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
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`Application/Control Number: 15/661,955
`Art Unit: 3685
`
`Pages
`
`29.
`
`Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first
`
`paragraph, asfailing to comply with the written description requirement. The claim(s)
`
`contains subject matter which was not described in the specification in such a way as to
`
`reasonably conveyto one skilled in the relevant art that the inventor or a joint inventor,
`
`or for pre-AlA the inventor(s), at the time the application wasfiled, had possession of
`
`the claimedinvention.
`
`30.
`
`Claims 1, 8 and 15 recite “to use the retrieved account information to validate the
`
`received identification and one time authentication code...” or “using the retrieved
`
`accountinformation to validate the received identification and one time authentication
`
`code....” To satisfy the written description requirement, the specification must describe
`
`the claimed invention in sufficient detail that one skilled in the art can reasonably
`
`conclude that the inventor had possessionof the claimed invention. LizardTech, Inc. v.
`
`Earth Res.Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d1724, 1731-32 (Fed. Cir.
`
`2005). According to the specification (page 11-14) the one-time authentication code is
`
`generated by a mobile device and “the one-time authentication code is generated using
`
`at least one of a non-predictable value, a time-variant values and a transaction specific
`
`value.” “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 The specification does not
`
`provide support for how the computer system can validate the one-time authentication
`
`Page 9 of 20
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`Application/Control Number: 15/661,955
`Art Unit: 3685
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`Page9
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`code when the computer system does not have the “non-predictable value, a time-
`
`variant values and a transaction specific value” needed to generated non-predictable
`
`value, a time-variant values and a transaction specific value, nor how retrieved “account
`
`information” allows for a capability of validating both identification and a one time
`
`authentication code. Dependentclaims 2-7, 9-14 and 16-21 are also rejected.
`
`31.—The following is a quotation of 35 U.S.C. 112(b):
`
`(b) CONCLUSION —The specification shall conclude with one or more claims particularly
`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.
`
`32.
`
`Claims 1-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`second paragraph, as beingindefinite 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.
`
`33.
`
`Claims 1, 8 and 15 recite “to use the retrieved accountinformation to validate the
`
`received identification and one time authentication code...” or “using the retrieved
`
`accountinformation to validate the received identification and one time authentication
`
`code....” According to the specification (page 11) the one-time authentication codeis
`
`generated by a mobile device and “the one-time authentication code is generated using
`
`at least one of a non-predictable value, a time-variant values and a transaction specific
`
`value.”It is unclear how the computer system can validate the one-time authentication
`
`code when the computer system does not have the “non-predictable value, a time-
`
`variant values and a transaction specific value” needed to generated non-predictable
`
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`value, a time-variant values and a transaction specific value, also the claim is unclear as
`
`to how retrieved “account information” allowsfor a capability of validating both
`
`identification and a one time authentication code. Dependentclaims 2-7, 9-14 and 16-
`
`21 are also rejected.
`
`34.
`
`Claim 1 recites a system and also recites “wherein the one-time authentication
`
`code is generated by the mobile electronic device responsive to successful
`
`authentication by the mobile electronic device”. As the mobile electronic device is not
`
`being positively claimed as being part of the system it is unclear whether the scopeis
`
`inclusive of the mobile electronic device. Claims 8 and 15 share the samedeficiency.
`
`35.
`
`Regarding claim 1, the claim recites “code is generated by the mobile electronic
`7
`it
`device’, “user is captured by a biometric sensor’ and claim 6 recites “the biometric
`
`sensoris configured to capture. ...” However, claim 1, from which claim 6 depends, is
`
`directed to a computer system with an interface and one or more processors. The claim
`
`is a hybrid claim as the cited languageis not directed to the computer system but to
`
`external use of claimed structural elements. Therefore, itt would be unclear whether
`
`infringement of claims 1 and 6 occurs based on possession of the computer system. /n
`
`re Katz interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011).
`
`IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145
`
`(Fed. Cir. 2005). Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
`
`Dependent claims 2-7 are also rejected.
`
`36.
`
`Claim 8 recites “wherein the one time authentication code is generated by the
`
`mobile electronic device responsive to successful authentication...” Claim 8 is rejected
`
`as being incomplete for omitting essential steps, such omission amounting to a gap
`
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`Application/Control Number: 15/661,955
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`Page11
`
`between the steps. See MPEP§ 2172.01. The omitted steps are:
`
`the receipt of the
`
`result of successful authentication. Dependentclaims 9-14 are also rejected.
`
`37.
`
`Regarding claim 15, the claim recites “code is generated by the mobile electronic
`
`device”, “user is captured by a biometric sensor’, claim 20 recites “the biometric sensor
`
`is configured to capture...” and claim 21, recites “the computer system comprises....”
`
`However, claim 15, from which claims 20 and 21 depend, is directed to a computer
`
`readable medium. The claim is a hybrid claim as the cited languageis not directed to
`
`the computer system but to external use of claimed structural elements. Therefore, it
`
`would be unclear whether infringement of claims 15, 20 and 21 occurs based on
`
`possession of the computer readable medium. /n re Katz Interactive Call Processing
`
`Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). /PXL Holdings v. Amazon.com, Inc.,
`
`430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005). Ex parte Lyell, 17
`
`USPQ2d 1548 (Bd. Pat. App. & Inter. 1990). Dependent claims 16-21 are also rejected.
`
`Claim Rejections - 35 USC § 103
`
`38.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`39.
`
`Claims 1-3, 5-10, 12-17 and 19-21 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Walker etal. (6,163,771) (‘Walker’) and in view of Pizanoet.
`
`(2007/0245152) (“Pizano’).
`
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`Page12
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`40.
`
`Regarding claims 1, 8, and 15, Walker teachesretrieving account information
`
`associated with the mobile electronic device and the user account to be employed in the
`
`transaction (column 7, line 4-26, column 8, line 40-55); and using the retrieved account
`
`information to validate the received identification information and the one-time
`
`authentication code (column 8, line 40-67, column 9, line 1-20, column 12, line 26-42);
`
`wherein the one-time authentication code is generated by the mobile electronic device
`
`responsive to successful authentication by the mobile electronic device of at least one
`
`of biometric information of the user and a user input comprising a personal identification
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`number (PIN) or other secret information known to the user (column 6, line 14-38); and
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`wherein the biometric information of the user is captured by a biometric sensorof the
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`mobile electronic device, and the user input is received by a userinterface of the mobile
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`electronic device (column 5, line 49-67, column 6, line 14-38). Walker does not teach
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`receiving identification information specific to a mobile electronic device and a user
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`account to be employed in the transaction, and a one-time authentication code specific
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`to the transaction. Pizano teaches receiving identification information specific to a
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`mobile electronic device and a user account to be employed in the transaction, and a
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`one-time authentication code specific to the transaction ({] 34, 41-44, 48). Therefore, it
`
`would have been obviousto oneof ordinary skill in the art at the time of the invention to
`
`combine Walker and Pizanoin order to provide secure access using biometric
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`authentication (Pizano; {J 2-4).
`
`41.
`
`Regarding claims 2, 9, and 16, Walker teaches wherein the one-time
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`authentication code comprises a code associated with credit or bank card information of
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`Application/Control Number: 15/661,955
`Art Unit: 3685
`
`Page13
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`the user, and wherein the one-time authentication code does not contain the credit or
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`bank card information of the user (column 7, line 60-67).
`
`42.
`
`Regarding claims 3, 10, and 17, Walker teaches wherein the one-time
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`authentication code is generated using at least one of a non-predictable value, a time-
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`variant value, and a transaction-specific value (column 6, line 29-38, 64-67).
`
`43.
`
`Regarding claims 5, 12, and 19, Pizano teaches wherein the identification
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`information and the one- time authentication code are encrypted before they are
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`received by the computer system (J 34, 41, 42).
`
`44.
`
`Regarding claims 6, 13, and 20, Pizano teaches wherein the biometric sensoris
`
`configured to capture at least one of fingerprint information, voice print information,
`
`signature information, iris information, facial scan information, and DNAinformation (J
`
`29).
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`45.
`
`Regarding claims 7, 14, and 21, Walker teaches wherein the computer system
`
`comprises one or more servers associated with a credit card company or bank (column
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`6, line 39-49).
`
`46.
`
`Claims 4, 11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Walkeret al. (6,163,771) (“Walker”), in view of Pizano et. (2007/0245152)
`
`(“Pizano”) and furtherin view of Flitcroft et al. (2003/0028481) (“Flitcroft’).
`
`47.
`
`Regarding claims 4, 11, and 18, neither Walker nor Pizano teaches wherein the
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`one-time authentication code is associated with a public identification code for a credit
`
`or bank card account, and wherein the public identification code for the credit or bank
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`card account is communicated to a credit or bank card issuer to enable the transaction.
`
`Flitcroft teaches wherein the one-time authentication code is associated with a public
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`Page 14 of 20
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`Application/Control Number: 15/661,955
`Art Unit: 3685
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`Page14
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`identification code for a credit or bank card account, and wherein the public
`
`identification code for the credit or bank card account is communicatedto a credit or
`
`bank card issuer to enable the transaction ({ 141, 153, 220-223, 234, 240). Therefore, it
`
`would have been obvious to oneof ordinary skill in the art at the time of the invention to
`
`combine Walker, Pizano andFlitcroft in order to reduce the potential for fraud in
`
`financial transactions (Flitcroft; J] 5-9).
`
`Conclusion
`
`48.
`
`Any inquiry concerning this communication or earlier communications from the
`
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`number for the organization where this application or proceedingis assigned is 5/1-
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`Page 15 of 20
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`Page 15 of 20
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`Application/Control Number: 15/661,955
`Art Unit: 3685
`
`Page15
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`ALLL
`Examiner, Art Unit 3685
`
`{JAMES D NIGH/
`Primary Examiner, Art Unit 3685
`
`Page 16 of 20
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`APPLICATION
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`FIL
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`15/661,955
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`ITOT CLAIMSJIND CLAIMS
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`4
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`CONFIRMATION NO. 5899
`FILING RECEIPT
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`OAAS
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`Date Mailed: 08/04/2017
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`Receipt is acknowledged of this non-provisional patent application. The application will be taken up for examination
`in due course. Applicant will be notified as to the results of the examination. Any correspondence concerning the
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`Inventor(s)
`
`Applicant(s)
`
`Kenneth P. Weiss, Newton, MA;
`
`UNIVERSAL SECURE REGISTRY, LLC, Newton, MA;
`
`Powerof Attorney: None
`
`Domestic Priority data as claimed by applicant
`This application is a CON of 15/045,408 02/17/2016
`which is a CON of 14/071,126 11/04/2013
`which is a CON of 13/237,184 09/20/2011 PAT 8577813
`which is a CIP of 13/168,556 06/24/2011 PAT 8271397
`which is a CON of 11/677,490 02/21/2007 PAT 8001055
`which claims benefit of 60/859,235 11/15/2006
`and claims benefit of 60/812,279 06/09/2006
`and claims benefit of 60/775,046 02/21/2006
`and said 13/237,184 09/20/2011
`is a CON of 12/3893,586 02/26/2009 PAT 8234220
`which claims benefit of 61/031,529 02/26/2008
`and is a CIP of 11/760,732 06/08/2007 PAT 7809651
`which is a CON of 11/677,490 02/21/2007 PAT 8001055
`and claims benefit of 60/859,235 11/15/2006
`and claims benefit of 60/812,279 06/09/2006
`and said 12/393,586 02/26/2009
`is a CIP of 11/760,729 06/08/2007 PAT 7805372
`which is a CON of 11/677,490 02/21/2007 PAT 8001055
`and claims benefit of 60/859,235 11/15/2006
`page 1 of 4
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`and claims benefit of 60/812,279 06/09/2006
`and said 12/393,586 02/26/2009
`is a CON of 11/677,490 02/21/2007 PAT 8001055
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