`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
`CONF {MATION NO.
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`13/237,184
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`09/20/2011
`
`Kenneth P. Weiss
`
`w0537—701320
`
`7352
`
`7590
`37462
`LANDO&ANASTAS1,LLP
`ONE MAIN STREET, SUITE 1100
`CAMBRIDGE, MA 02142
`
`08/15/2012
`
`:
`
`CHEUNG, CAtVIN K
`ART UNIT
`PAPER NUMBER
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`3621
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`
`
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`NOT *ICATION DATE
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`DELIVERY MODE
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`08/15/2012
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`ELECTRONIC
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`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.c0m
`gengelson @ LALaw.c0m
`
`PTOL—90A (Rev. 04/07)
`
`Apple 1007
`Apple 1007
`
`
`
`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`
` 13/237,184 WEISS, KENNETH P.
`Examiner
`Art Unit
`CALVIN CHEUNG
`3621
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)IZI Responsive to communication(s) filed on 20 Sthember 2011.
`
`2a)|:l This action is FINAL.
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`2b)IXI This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)|Zl CIaim(s) 1-20is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)I:l CIaim(s) _ is/are allowed.
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`7)|Xl Claim(s) 1-_20is/are rejected.
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`8)I:l CIaim(s) _ is/are objected to.
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`9)I:I CIaim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`
`11)I:l The drawing(s) filed on _ is/are: 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).
`
`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:| AII
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`b)|:l Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.|:l Certified copies of the priority documents have been received in Application No. _
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`1) I] Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`
`Paper No(s)/Mai| Date 9/20/2011' 6/19/2012.
`U.S. Patent and Trademark Office
`
`4) I] Interview Summary (PTO-413)
`Paper N0(S )/Mai| Date. _
`5)I:I Notice 0f Informal Patent Application
`6)I:I Other:—
`
`PTOL-326 (Rev. 03-11)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20120807
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`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 2
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`Art Unit: 3621
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`DETAILED ACTION
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`1.
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`This office action is given an identifier, Paper No. 20120807, for reference purposes
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`only.
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`2.
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`Claims 1—20, filed 20 September 2011, are pending and examined in this office action.
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`Status of Claims
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`3.
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`The disclosure is objected to because of the following informalities:
`
`Specification
`
`The Original Specification (pl :5) identifies “application No. 12/393586” however fails to
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`identify it as Patent Number 8234220. Appropriate correction is required.
`
`4.
`
`Claim 13 is objected to because of the following informalities:
`
`Claim Objections
`
`Regarding Claim 13, “a fingerprint” is recited twice. One recitation is sufficient therefore
`
`the second recitation should be deleted. Appropriate correction is required.
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`Claim Rejections - 35 USC § 102
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`5.
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`
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`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 3
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`Art Unit: 3621
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`A person shall be entitled to a patent unless ,
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States.
`
`6.
`
`Claims 1—2, 4—6 and 13—20 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`US 20020178364 Al (“Weiss”) from IDS.
`
`Regarding Claim 1, Weiss discloses a system (e.g., computer system 10) configured to
`
`allow a user (e.g., person) to select any one of a plurality of accounts (e. g., “Credit Card and
`
`other financial information” in FIG. 1) associated with the user to employ in a financial
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`transaction, comprising (Abstract, (H 17, 52, FIG. 1, 3—4 with associated text):
`
`0
`
`a biometric sensor (e.g., data input devices, such as voice and other audio and video
`
`capture devices) configured to receive a biometric input provided by the user (‘J[ 17,
`
`42);
`
`o
`
`a user interface (e.g., user interface 26) configured to receive:
`
`0
`
`a user input including secret information (e.g., personal identification number)
`
`known to the user (‘J[ 42, 53) and
`
`0
`
`identifying information (e.g., biometric information) concerning an account
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`selected by the user from the plurality of accounts (Abstract, (H 43, 47, 57,
`
`FIG. 1, 3—4 with associated text);
`
`0
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`a communication link (e.g., Internet) configured to communicate with a secure
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`registry (e.g., database 24) (‘J[ 38, 41); and
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 4
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`Art Unit: 3621
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`o
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`a processor (e.g., CPU 16) coupled to the biometric sensor to receive information
`
`concerning the biometric input (‘JI 38—42, 48—53, FIG. 1, 3 with associated text), the
`
`user interface and the communication link, the processor configured:
`
`o
`
`to generate a non—predictable value (e.g., non—predictable single use codes, (H
`
`52) and
`
`o
`
`to generate encrypted authentication information from the non—predictable
`
`value, the identifying information, and at least one of the information
`
`concerning the biometric input and the secret information (‘J[ 12, 45, 51—53, 74,
`
`100. Weiss discloses (1) “transactions to and from the database may take
`
`place using a public key/private key security system” from 1] 12 and (2) “a
`
`secret user code and/or time varying value. . .and personal identification
`
`code... combines these three numbers using a predetermined algorithm to
`
`generate a one—time nonpredictable code” from 1] 51 is used to authenticate the
`
`user.), and
`
`o
`
`to communicate the encrypted authentication information via the
`
`communication link to the secure registry (‘J[ 12, 45, 51, 100).
`
`Regarding Claim 2, Weiss discloses:
`
`0 wherein the communication link is configured to Wirelessly transmit the encrypted
`
`authentication information to a point—of—sale (POS) device (‘J[ 17, 51—52, 74 and FIG.
`
`10, 17 with associated text), and
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 5
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`Art Unit: 3621
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`0 wherein the POS device is configured to transmit at least a portion of the encrypted
`
`authentication information to the secure registry (“The merchant transmits to the
`
`credit card company. . .the code. . .The credit card company takes this information and
`
`passes the code. . .to the USR”, ‘J[ 74).
`
`Regarding Claim 4, Weiss discloses wherein the processor is configured to generate the
`
`encrypted authentication information from each of the non—predictable value, the identifying
`
`information, the information concerning the biometric input and the secret information (‘J[ 42, 51—
`
`53, 74).
`
`Regarding Claim 5, Weiss discloses wherein the biometric received by the biometric
`
`sensor is communicated to the secure registry for authentication prior to generation of the
`
`encrypted authentication information (‘fl 12—13, 16—17, 41—42, 47—48).
`
`Regarding Claim 6, Weiss discloses wherein the secret information includes the
`
`identifying Information (‘J[ 53).
`
`Regarding Claim 13, Weiss discloses wherein the biometric sensor is configured to
`
`receive and process at least one (Only one option is required to satisfy the claimed limitation of
`
`“at least one’) of a fingerprint (e. g., fingerprint), a speech/voice input (e. g., voice print), an iris
`
`scan (e.g., iris), a retina scan, a facial scan (e.g., facial), a fingerprint (see Claim Objection
`
`above), written information (e.g., signature) and a DNA input (e.g., DNA analysis).
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 6
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`Art Unit: 3621
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`Regarding Claim 14, Weiss discloses a handheld device including each of the biometric
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`sensor, the user interface, the communication link and the processor (‘J[ 17, 43, 52, FIG. 1 with
`
`associated text. The examples of devices listed in Weiss’ 1] l7 and 52 are types of “handheld
`
`devices” that verifies the user “at the point of use”).
`
`Regarding Claim 15, Weiss discloses a method of generating authentication information
`
`comprising acts of (Abstract, (H 17, 47—48, 54):
`
`authenticating an identity of a user to a device based on at least one (Only one option
`
`is required to satisfy the 'at least one' limitation) of biometric data received by the
`
`device from the user and secret information known to the user and provided to the
`
`device (‘J[ 17, 51—53);
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`generating a non—predictable value with the device (‘][51—53);
`
`receiving identifying information from the user concerning a selected one of a
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`plurality of user accounts (Abstract, (H 74); and
`
`generating encrypted authentication information from the non—predictable value, the
`
`identifying information, and at least one of the biometric data and the secret
`
`information (‘11 12, 45, 51—53, 74, 100. Weiss discloses (l) “transactions to and from
`
`the database may take place using a public key/private key security system” from 1] l2
`
`and (2) “a secret user code and/or time varying value. . .and personal identification
`
`code... combines these three numbers using a predetermined algorithm to generate a
`
`one—time nonpredictable code” from 1] 51 is used to authenticate the user).
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 7
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`Art Unit: 3621
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`Regarding Claim 16, Weiss discloses generating encrypted authentication information
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`from each of the non—predictable value, the biometric data, the secret information, and the
`
`identifying information (‘J[ 12, 45, 51—53, 74, 100).
`
`Regarding Claim 17, Weiss discloses de—activating the deVice without generating the
`
`encrypted authentication information if the identity of the user is not successfully authenticated
`
`to the deVice (‘J[ 108).
`
`Regarding Claim 18, Weiss discloses generating a seed from which the authentication
`
`information is generated by employing the biometric data and the secret information known to
`
`the user (‘J[ 17, 51—53, 74. Two options satisfy the “at least two’ limitation which are listed by
`
`Weiss).
`
`Regarding Claim 19, Weiss discloses generating encrypted authentication information in
`
`a manner that allows the identification of the user and the selected one of the plurality of user
`
`accounts by a secure registry (FIG. 3, 6—10, 13 with associated text).
`
`Regarding Claim 20, Weiss discloses a method of controlling access to a plurality of
`
`accounts, the method comprising acts of (Abstract, (H 17, 47—48, 54):
`
`o
`
`generating, with a deVice, encrypted authentication information (‘J[ 12, 45) from:
`
`o
`
`a non— predictable value generated by the deVice (‘JI 51—53),
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 8
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`Art Unit: 3621
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`0
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`identifying information concerning an account selected by a user of the device
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`from among a plurality of accounts associated with the user (Abstract, 41, 47—
`
`48, 54 and FIG. 1), and
`
`o
`
`at least one (Only one option is required to satisfy this portion of the
`
`limitation) of a biometric of the user received by the device (‘J[ 17, 53) and
`
`secret information provided to the device by the user (‘J[ 17, 53);
`
`o
`
`communicating the encrypted authentication information from the device to a secure
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`registry via a point—of—sale (POS) device to authenticate or not authenticate the device
`
`with the secure registry (‘J[ 12, 45, 51—53, 74, 100);
`
`o
`
`authorizing the POS device to initiate a financial transaction involving a transfer of
`
`funds to or from the account selected by the user when the encrypted authentication
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`information is successfully authenticated (‘JI 74—76. (H 76 provides the results of a
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`transaction.); and
`
`o
`
`denying the POS device from initiation of the financial transaction involving a
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`transfer of funds to or from the account selected by the user when the encrypted
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`authentication information is not successfully authenticated (‘JI 74—76. (H 76 provides
`
`the results of a transaction.).
`
`7.
`
`Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Weiss and further
`
`in view of US 20040117302 Al (“Weichert”) from IDS.
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 9
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`Art Unit: 3621
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`Regarding Claim 3, Weiss discloses wherein the communication link is configured to
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`wirelessly transmit the encrypted authentication information with the POS device (‘][17, 51—52
`
`and Figures 10 and 17 with associated text).
`
`Weiss does not directly disclose wherein the POS device includes a magnetic stripe
`
`reader, and a converter device configured to generate an emulated magnetic stripe output.
`
`However, Weichert teaches wherein a POS device (e.g., point—of—sale (POS) terminal)
`
`includes a magnetic stripe reader (e. g., magnetic stripe reader, (fl 2), and a converter device
`
`configured to generate an emulated magnetic stripe output (‘J[ 54, 71). It would have been obvious
`
`to one of ordinary skill in the art at the time of the invention was made to modify the devices as
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`disclosed by Weiss by incorporating a card reader feature at a POS terminal as taught by
`
`Weichert in order to read credit cards.
`
`8.
`
`Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over Weiss and further
`
`in view of US 6819219 (“Bolle”) from IDS.
`
`Regarding Claim 7, Weiss discloses a memory coupled to the processor (‘J[ 17, 52, FIG. 1
`
`with associated text.).
`
`Weiss does not directly disclose wherein the memory stores information employed by the
`
`device to authenticate the biometric received by the biometric sensor (‘J[ 17, 52, FIG. 1 with
`
`associated text.)
`
`However, Bolle teaches a memory stores information employed by the device to
`
`authenticate the biometric received by the biometric sensor (Figure l, 7 and 10 with associated
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 10
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`Art Unit: 3621
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`text. Observe Figure 10, Element 1004). It would have been obvious to one of ordinary skill in
`
`the art at the time of the invention was made to modify the devices as disclosed by Weiss by
`
`incorporating biometric readers on portable devices as taught by Bolle in order to capture
`
`biometric information on a portable device
`
`9.
`
`Claims 8—12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Weiss in
`
`view of Bolle and further in view of Official Notice.
`
`Regarding Claim 8, Weiss/Bolle Combination does not directly disclose wherein the
`
`device does not permit the entry of the user input if the biometric input received by the biometric
`
`sensor is determined to not belong to an authorized user of the device.
`
`The Examiner takes Official Notice it is well known in the art a mismatch or non—
`
`matched biometric reading not belonging to the rightful user provides a negative result which
`
`prevents access. It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention was made to modify the devices as disclosed by Weiss/Bolle Combination by
`
`incorporating a measure which prevents access when biometric readings do not match as taught
`
`by Official Notice in order to increase security to personal equipment and information.
`
`Regarding Claim 9, Weiss discloses:
`
`0 wherein the secret information known to the user includes a PIN (‘J[ 17, 53), and
`
`0 wherein the authentication of the secret information and the biometric input activate
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`the device for the financial transaction (“The identity of the user possessing the
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 11
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`Art Unit: 3621
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`identifying device may be verified at the point of use via any combination. . .”, 1] 17,
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`73, 100).
`
`Regarding Claim 10, Weiss discloses a memory coupled to the processor (‘J[ 17, 52, FIG.
`
`1 with associated text.).
`
`Weiss/B olle Combination does not directly disclose wherein data stored in the memory is
`
`unavailable to an individual in possession of the device until the device is activated.
`
`The Examiner takes Official Notice it is well known in the art credit card holders call a
`
`telephone number associated with the credit card number to activate their credit cards before they
`
`are allowed to make purchases. It would have been obvious to one of ordinary skill in the art at
`
`the time of the invention was made to modify the devices as disclosed by Weiss/Bolle
`
`Combination by incorporating an activation step as taught by Official Notice in order to verify
`
`the rightful credit card holder has obtained their card.
`
`Regarding Claim 11, Weiss/Bolle Combination does not directly disclose wherein the
`
`data is subject to a mathematical operation that acts to modify the data such that it is
`
`unintelligible until the device is activated.
`
`The Examiner takes Official Notice it is well known in the art the credit card data is
`
`blocked from making purchases until activated. It would have been obvious to one of ordinary
`
`skill in the art at the time of the invention was made to modify the electronic ID devices as
`
`disclosed by Weiss/Bolle Combination by incorporating a protection step of preventing access to
`
`
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`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 12
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`Art Unit: 3621
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`credit card usage as taught by Official Notice in order to protect the credit card holder in the
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`event the card is obtained by someone other than the intended credit card holder.
`
`Regarding Claim 12, Weiss discloses
`
`o
`
`a memory:
`
`0
`
`o
`
`coupled to the processor (‘J[ 17, 52, FIG. 1 with associated text) and
`
`configured to the device (‘J[ 17, 52, FIG. 1 with associated text),
`
`0 wherein the processor is configured to generate a seed using at least two (Only two
`
`option are required to satisfy the “at least two’ limitation) of the electronic serial
`
`number, a discrete code associated with the device (‘J[ 74), the PIN (‘J[ 17, 53) and the
`
`biometric input (‘J[ 17) to generate the encrypted authentication information (‘JI 51—53,
`
`74), and
`
`0 wherein the seed is employed by the processor to generate the non—predictable value
`
`(‘JI 51—53, 74).
`
`Weiss/Bolle Combination does not directly disclose store an electronic serial number.
`
`The Examiner takes Official Notice it is well known in the art electronic devices that
`
`operate an operating system have unique registration number. It would have been obvious to one
`
`of ordinary skill in the art at the time of the invention was made to modify the devices as
`
`disclosed by Weiss/Bolle combination by incorporating a unique digital number as taught by
`
`Official Notice in order to identify the device.
`
`Double Patenting
`
`
`
`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 13
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`Art Unit: 3621
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`10.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
`
`harassment by multiple assignees. A nonstatutory obviousness—type double patenting rejection
`
`is appropriate where the conflicting claims are not identical, but at least one examined
`
`application claim is not patentably distinct from the reference claim(s) because the examined
`
`application claim is either anticipated by, or would have been obvious over, the reference
`
`claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
`
`Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225
`
`USPQ 645 (Fed. Cir. 1985); In re Van Ornnm, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re
`
`Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
`
`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
`
`ground provided the conflicting application or patent either is shown to be commonly owned
`
`with this application, or claims an invention made as a result of activities undertaken within the
`
`scope of a joint research agreement.
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a terminal
`
`disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR
`
`3.73(b).
`
`Claims 1—20 are rejected on the ground of nonstatutory obviousness—type double
`
`patenting as being unpatentable over claims 1—54 of US. Patent No. 8234220. Although the
`
`
`
`Application/Control Number: 13/237,184
`
`Paper No. 20120807 — Page 14
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`Art Unit: 3621
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`conflicting claims are not identical, they are not patentably distinct from each other because the
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`interactions between electronic ID devices and Universal Secure Registry system are in the same
`
`manner.
`
`Claims 15—19 are rejected on the ground of nonstatutory obviousness—type double
`
`patenting as being unpatentable over claims 1—3, 5—8 and 43 of US. Patent No. 7809651.
`
`Although the conflicting claims are not identical, they are not patentably distinct from each other
`
`because the authentication interactions between electronic ID devices and Universal Secure
`
`Registry system are utilized in the same manner.
`
`Conclusion
`
`11.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Examiner should be directed to Calvin Cheung Whose telephone number is (571) 270—7041 and
`
`fax is (571) 270—8041. The Examiner can normally be reached on Monday — Friday, 8:00am. —
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`5:00pm., EST.
`
`If attempts to reach the Examiner by telephone are unsuccessful, Supervisory Primary
`
`Examiner (SPE), James Kramer can be reached on (571) 272—6783. The fax phone number for
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`the organization Where this application or proceeding is assigned is 571—273—8300.
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`Application/Control Number: 13/237,184
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`Paper No. 20120807 — Page 15
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`Art Unit: 3621
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`/CALVIN CHEUNG/
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`Examiner, Art Unit 3621
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`8 August 2012
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