`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CONINJERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 223 13-1450
`www.uspto.gov
`
`15/661,943
`
`07/27/2017
`
`Kenneth P. Weiss
`
`W0537-701323FT
`
`4068
`
`LANDO & ANASTASI, LLP
`ONE MAIN STREET, SUITE 1100
`CAMBRIDGE, MA 02142
`
`EMMANUEL ISIDORAI
`
`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, 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-QOA (Rev. 04/07)
`
`APPLE 1017
`
`Page 1 of 17
`
`APPLE 1017
`
`Page 1 of 17
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`

`

`017709 A0110” Summary
`
`Application No.
`15/661,943
`
`Examiner
`ISIDORAI IMMANUEL
`
`Applicant(s)
`Weiss, Kenneth P.
`
`Art Unit
`3685
`
`AIA Status
`No
`
`- The MAILING DA TE ofthis communication appears on the cover sheet with the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if 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
`.
`D A declaration(s)laffidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a)[:| This action is FINAL.
`2b)
`This action is non-final.
`
`3)|:| An election was made by 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)I:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparfe Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims"
`
`5). Claim(s) 1-28 is/are pending in the application.
`
`5a) Of the above Claim(s) 1-7 and 22-28 is/are withdrawn from consideration.
`
`6)[:| Claim(s)
`
`is/are allowed.
`
`7). Claim(s) 8-21 is/are rejected.
`
`8)[:| 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:llwww.usptogovlpatents/init_events/pphlindex.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)|:| The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)|:| objected to by the Examiner.
`11)|:| The drawing(s) filed on
`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 1.1 21 (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 ( ).
`Certified copies:
`
`a)l:l All
`
`b)l:l Some“
`
`c)l:l None of the:
`
`1.I:l
`
`2.|:|
`
`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No.
`
`3.1:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTOISBIOSa andfor PTOISBIOBb)
`2)
`Paper No(s)lMail Date 07/27/2017 _
`US. Patent and Trademark Office
`
`3) |:| Interview Summary (PTO—413)
`Paper No(s)!Mail Date
`4) D Other'
`
`.
`'
`
`PTOL-325 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper NoJMail Date 20170824
`
`Page 2 of 17
`
`

`

`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page2
`
`DETAILED ACTION
`
`Acknowledgements
`
`This office action is in response to the claims filed 07/27/2017.
`
`Claims 8-21 are elected.
`
`Claims 1-28 are pending.
`
`Claims 1-7 and 22-28 are non-elected
`
`Claims 8-21 have been examined.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Notice of Pre-AIA or AM Status
`
`6.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Restriction/Election Acknowledgement
`
`7.
`
`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 2, claims 8-21. Affirmation of this election must be made by
`
`applicant in replying to this Office action. Claims 1-7 and 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 8 and 15, “wherein the enablement signal is only received after
`
`successful validation of the identification information" and "wherein the generating the
`
`one-time authentication code occurs responsive to successful authentication...”, are
`
`optional language because if there is no validation the signal will not be received and if
`
`Page 3 of 17
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`Page 3 of 17
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`

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`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page3
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`there is no successful authentication the generating will not occur. The limitations are
`
`optional language and therefore do not have patentable weight. Ex parte Schthauser,
`
`Appeal No. 2013-00784? at 7-9 (P.T.A.B. April 28, 2016) See MPEP 2103(l)(c ).
`
`9.
`
`Regarding claims 9 and 16, "authentication code comprise a code...,” are
`
`nonfunctional descriptive material and therefore do not have patentable weight. See In
`
`re GuIack, 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.
`
`10.
`
`Regarding claim 13, the language “sensor is 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).
`
`11.
`
`Regarding claim 20, "sensor is configured to capture...” recites intended use and
`
`therefore does not have patentable weight. See MPEP 2114.
`
`Claim Rejections - 35 USC § 101
`
`12.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`13.
`
`Claims 8-21 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`Subject Matter Eligibility Standard
`
`14. When considering subject matter eligibility under 35 U.S.C. 101, it must be
`
`determined whether the claim is directed to one of the four statutory categories of
`
`invention, i.e., process, machine, manufacture, or composition of matter.
`
`If the claim
`
`does fall within one of the statutory categories, it must then be determined whether the
`
`Page 4 of 17
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`Page 4 of 17
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`

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`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page4
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`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 whether the claim is a
`
`patent-eligible application of the exception.
`
`If an abstract idea is present in the claim,
`
`any element or combination of elements in the claim must be sufficient to ensure that
`
`the claim amounts to significantly more than the abstract idea itself. Examples of
`
`abstract ideas include fundamental economic practices; certain methods of organizing
`
`human activities; an idea itself; and mathematical relationships/formulas. (Alice
`
`Corporation Pty. Ltd. V. CLS Bank International, et al. US Supreme Court, No. 13-298,
`
`June 19, 2014).
`
`Analysis
`
`15.
`
`In the instant case, claim 8 is directed to a method and claim 15 is directed to a
`
`storage medium.
`
`H
`The claims recite “authenticating the user... ,
`
`II
`
`16.
`
`retrieving account information...”,
`
`“generating...”, “wirelessly transmitting...”, and “receiving an enablement signal....”
`
`Additionally, the claim is directed towards a fundamental economic practice, in this
`
`case, authenticating a user which is similar to Alice which is drawn to 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, US. 593, 611 (2010)). Claim 15 is
`
`directed towards the generic computer used to implement the method of claim 8 and is
`
`therefore also directed towards a judicial exception regarding an abstract idea involving
`
`Page 5 of 17
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`Page 5 of 17
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`

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`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page5
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`the financial security, based on case law precedent, is claiming subject matter similar to
`
`concepts identified by the courts as dealing with abstract ideas.
`
`17.
`
`Taking the claim elements separately, the functions performed by the machine at
`
`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.
`
`18.
`
`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 Int’l, 573 U.S. _, 134 S. Ct. 2347,
`
`2356 (2014)), electronic recordkeeping (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 US
`
`_, 134 S. Ct. 2347, 2356 (2014)), automating mental tasks (Bancorp Services LLC v.
`
`Sun Life Assurance Co. of Canada (U.S.), 103 USPQZd 1425 (Fed. Cir. 2012),
`
`(Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)) and
`
`receiving or transmitting data over a network, e.g., using the Internet to gather data
`
`(Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15 (Fed. Cir. 2014), (buySAFE, Inc.
`
`v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014), (Cyberfone Systems, LLC v.
`
`CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)).
`
`19.
`
`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 improvement in any other technology or technical field. Instead, the claims at issue
`
`Page 6 of 17
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`Page 6 of 17
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`

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`Application/Control Number: 15/661,943
`Art Unit: 3685
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`Page6
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`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.
`
`20.
`
`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 computer to perform generic
`
`computer functions.
`
`Conclusion
`
`21.
`
`The claim as a whole, does not amount to 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 improvement to 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.
`
`22.
`
`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 exception itself.
`
`23.
`
`Dependent claims do not resolve the deficiency of independent claims and
`
`accordingly stand rejected under 35 USC 101 based on the same rationale.
`
`24.
`
`Dependent claims 9-14, and 16-21 are also rejected.
`
`25.
`
`Claims 15-21 are rejected under 35 U.S.C. 101 because the claimed invention is
`
`directed to non-statutory subject matter.
`
`Page 7 of 17
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`Page 7 of 17
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`

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`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page?
`
`26.
`
`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 Nurjten, 515 F3d 1361, 85 USPQ2d 1927 (Fed. Cir. 2008). Dependent claims
`
`16-21 are also rejected.
`
`Claim Rejections - 35 USC § 112
`
`27.
`
`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-AIA), 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.
`
`28.
`
`Claims 15-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA),
`
`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-AIA the
`
`applicant regards as the invention.
`
`29.
`
`Claims 8 and 15 recite “wherein the enablement signal is only received after
`
`successful validation of the identification information..." The claims are being
`
`incomplete for omitting essential steps, such omission amounting to a gap between the
`
`steps. See MPEP § 2172.01. The omitted steps are:
`
`the receipt of the result of
`
`successful validation. Dependent claims 9-14 and 16-21 are also rejected.
`
`Page 8 of 17
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`Page 8 of 17
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`

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`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page8
`
`30.
`
`Claims 8 and 15 recite “wherein generating the one time authentication code
`
`occurs responsive to successful authentication...” Claims 8 and 15 are rejected as
`
`being incomplete for omitting essential steps, such omission amounting to a gap
`
`between the steps. See MPEP § 2172.01. The omitted steps are: the receipt of the
`
`result of successful authentication. Dependent claims 9-14 and 16-21 are also rejected.
`
`Claim Rejections - 35 USC § 103
`
`31.
`
`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:
`
`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.
`
`32.
`
`Claims 8-9, 10-17 and 19-21 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Pizano et. (2007/0245152) (“Pizano”), and in view of Walker et al.
`
`(6,163,771) (‘Walker”).
`
`33.
`
`Regarding claims 8 and 15, Pizano teaches authenticating the user based on at
`
`least one of: 1) biometric information of the user captured by a biometric sensor of the
`
`mobile electronic device, and 2) a user input received by a user interface of the mobile
`
`electronic device and comprising a personal identification number (PIN) or other secret
`
`information known to the user (1] 29, 35, 39, 40, 48); retrieving identification information
`
`including information specific to the mobile electronic device and information specific to
`
`a user account to be employed in the transaction (11 39); generating a one-time
`
`authentication code specific to the transaction (1] 36, 38); wirelessly transmitting the
`
`Page 9 of 17
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`

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`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page9
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`identification information and the one-time authentication code to a computer system for
`
`processing (11 41, 43, 44, 48); wherein the enablement signal is only received after
`
`successful validation of the identification information and the one-time authentication
`
`code by the computer system (11 46, 47).
`
`Pizano does not teach receiving an enablement signal indicating an approved
`
`transaction, wherein generating the one-time authentication code occurs responsive to
`
`successful authentication of at least one of the biometric information and the user input
`
`by the mobile electronic device. Walker teaches receiving an enablement signal
`
`indicating an approved transaction (column 6, line 6-13), wherein generating the one-
`
`time authentication code occurs responsive to successful authentication of at least one
`
`of the biometric information and the user input by the mobile electronic device (column
`
`6, line 14-39). Therefore, it would have been obvious to one of ordinary skill in the art at
`
`the time of the invention to combine Pizano and Walker in order to provide a high level
`
`of security for financial transactions (Walker; column 1, line 6-50).
`
`34.
`
`Regarding claims 9 and 16, Walker teaches wherein the one-time authentication
`
`code comprises a code associated with credit or bank card information of the user, and
`
`wherein the one-time authentication code does not contain the credit or bank card
`
`information of the user (column 7, line 60-67).
`
`35.
`
`Regarding claims 10 and 17, Walker teaches wherein the one-time
`
`authentication code is generated using at least one of a non-predictable value, a time-
`
`variant value, and a transaction-specific value (column 6, line 29-38, 64-67).
`
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`Application/Control Number: 15/661,943
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`Page10
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`36.
`
`Regarding claim 12, Pizano teaches encrypting the identification information and
`
`the one-time authentication code before they are transmitted to the computer system (11
`
`34, 41, 42).
`
`37.
`
`Regarding claims 13 and 20, Pizano teaches wherein the biometric sensor is
`
`configured to capture at least one of fingerprint information, voice print information,
`
`signature information, iris information, facial scan information, and DNA information (1]
`
`29).
`
`38.
`
`Regarding claims 14 and 21, Walker teaches wherein the computer system
`
`comprises one or more servers associated with a credit card company or bank (column
`
`6, line 3949.
`
`39.
`
`Regarding claim 19, Pizano teaches wherein execution of the instructions by the
`
`one or more processors further causes the one or more processors to carry out the step
`
`of encrypting the identification information and the one-time authentication code before
`
`the identification information and the one-time authentication code are transmitted to the
`
`computer system (1] 34, 41, 42).
`
`40.
`
`Claims 11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Pizano et. (2007/0245152) ("Pizano"), in view of Walker et al. (6,163,771) (“Walker")
`
`and further in view of Flitcroft et al. (2003/0028481) (“Flitcroft”).
`
`41.
`
`Regarding claims 11 and 18, neither Pizano nor Walker teaches wherein the
`
`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
`
`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
`
`Page 11 of17
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`Application/Control Number: 15/661,943
`Art Unit: 3685
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`Page11
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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 communicated to a credit or
`
`bank card issuer to enable the transaction (11 141, 153, 220-223, 234, 240). Therefore, it
`
`would have been obvious to one of ordinary skill in the art at the time of the invention to
`
`combine Pizano, Walker and Flitcroft in order to reduce the potential for fraud in
`
`financial transactions (Flitcroft; 11 5-9).
`
`Conclusion
`
`42.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ISIDORA I IMMANUEL whose telephone number is
`
`(469)295-9094. The examiner can normally be reached on Monday-Friday 9:00 am to
`
`5:00pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, CALVIN L HEWITT can be reached on 571-272-6709. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571 -
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Page 12 of 17
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`Application/Control Number: 15/661,943
`Art Unit: 3685
`
`Page12
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`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/I.I.I./
`
`Examiner, Art Unit 3685
`
`IJAMES D NIGH/
`
`Primary Examiner, Art Unit 3685
`
`Page 13 of17
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`Page 13 of 17
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`AddIESS. COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandria, ViJgLnia 22313-1450
`wwwusptogov
`
`APPLICATION
`NUMBER
`
`FILING or
`371(0) DATE
`
`GRP ART
`UNIT
`
`
`
`
`
`F
`
`15/661,943
`
`07/27/2017
`
`2431
`
`FEE REC'D
`
`1260
`
`ATTY.DOCKET.NO
`
`W0537-701323FT
`
`TOT CLAHVIS IND CLAIMS
`28
`4
`
`37462
`LANDO & ANASTASI, LLP
`ONE MAIN STREET, SUITE 1100
`CAMBRIDGE, MA 02142
`
`CONFIRMATION NO. 4068
`
`FILING RECEIPT
`
`HIIIIIIIIIIIllIIIIIIIIUIIIIIIIIIIIIIIIIIIIIIIMIIIIIIIIIIIIIIIIIIIIIIII
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`Date Mailed: 08/04/2017
`
`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
`application must include the following identification information: the US. APPLICATION NUMBER, FILING DATE,
`NAME OF APPLICANT, and TITLE OF INVENTION. Fees transmitted by check or draft are subject to collection.
`Please verify the accuracy of the data presented on this receipt. If an error is noted on this Filing Receipt, please
`submit a written request for a Filing Receipt Correction. Please provide a copy of this Filing Receipt with the
`changes noted thereon. If you received a "Notice to File Missing Parts" for this application, please submit
`any corrections to this Filing Receipt with your reply to the Notice. When the USPTO processes the reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`
`lnventor(s)
`
`Applicant(s)
`
`Kenneth P. Weiss, Newton, MA;
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`UNIVERSAL SECURE REGISTRY, LLC, Newton, MA;
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`Power of 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 12/393,586 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
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`and Claims benefit of 60/812,279 06/09/2006
`and said 12/393,586 02/26/2009
`is a CIP of 11/677,490 02/21/2007 PAT 8001055
`
`Foreign Applications for which priority is claimed (You may be eligible to benefit from the Patent Prosecution
`Highway program at the USPTO. Please see http://www.uspto.gov for more information.) - None.
`Foreign application information must be provided in an Application Data Sheet in order to constitute a claim to
`foreign priority. See 37 CFR 1.55 and 1.76.
`
`Permission to Access Application via Priority Document Exchange: Yes
`
`Permission to Access Search Results: Yes
`
`Applicant may provide or rescind an authorization for access using Form PTO/SB/39 or Form PTO/SB/69 as
`appropriate.
`
`If Required, Foreign Filing License Granted: 08/03/2017
`The country code and number of your priority application, to be used for filing abroad under the Paris Convention,
`is US 15/661 ,943
`Projected Publication Date: 11/09/2017
`Non-Publication Request: No
`Early Publication Request: No
`** SMALL ENTITY **
`Title
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`UNIVERSAL SECURE REGISTRY
`
`Preliminary Class
`
`713
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`Statement under 37 CFR 1.55 or 1.78 for AIA (First Inventor to File) Transition Applications: No
`
`PROTECTING YOUR INVENTION OUTSIDE THE UNITED STATES
`
`Since the rights granted by a US. patent extend only throughout the territory of the United States and have no
`effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent
`in a specific country or in regional patent offices. Applicants may wish to consider the filing of an international
`application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same
`effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing
`of patent applications on the same invention in member countries, but does not result in a grant of "an international
`patent" and does not eliminate the need of applicants to file additional documents and fees in countries where patent
`protection is desired.
`
`Almost every country has its own patent law, and a person desiring a patent in a particular country must make an
`application for patent in that country in accordance with its particular laws. Since the laws of many countries differ
`in various respects from the patent law of the United States, applicants are advised to seek guidance from specific
`foreign countries to ensure that patent rights are not lost prematurely.
`
`Applicants also are advised that in the case of inventions made in the United States, the Director of the USPTO must
`issue a license before applicants can apply for a patent in a foreign country. The filing of a US. patent application
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`serves as a request for a foreign filing license. The application's filing receipt contains further information and
`guidance as to the status of applicant's license for foreign filing.
`
`Applicants may wish to consult the USPTO booklet, "General Information Concerning Patents" (specifically, the
`section entitled "Treaties and Foreign Patents") for more information on timeframes and deadlines for filing foreign
`patent applications. The guide is available either by contacting the USPTO Contact Center at 800-786-9199, or it
`can be viewed on the USPTO website at http://www.uspto.gov/web/offices/pac/doc/general/index.html.
`
`For information on preventing theft of your intellectual property (patents, trademarks and copyrights), you may wish
`to consult the US. Government website, http://www.stopfakes.gov. Part of a Department of Commerce initiative,
`this website includes self-help "toolkits" giving innovators guidance on how to protect intellectual property in specific
`countries such as China, Korea and Mexico. For questions regarding patent enforcement issues, applicants may
`call the US. Government hotline at 1-866-999-HALT (1-866-999-4258).
`
`LICENSE FOR FOREIGN FILING UNDER
`
`Title 35, United States Code, Section 184
`
`Title 37, Code of Federal Regulations, 5.11 & 5.15
`
`GRANTED
`
`if the phrase "IF REQUIRED, FOREIGN FILING
`The applicant has been granted a license under 35 U.S.C. 184,
`LICENSE GRANTED" followed by a date appears on this form. Such licenses are issued in all applications where
`the conditions for issuance of a license have been met, regardless of whether or not a license may be required as
`set forth in 37 CFR 5.15. The scope and limitations of this license are set forth in 37 CFR 5.15(a) unless an earlier
`license has been issued under 37 CFR 5.15(b). The license is subject to revocation upon written notification. The
`date indicated is the effective date of the license, unless an earlier license of similar scope has been granted under
`37 CFR 5.13 or 5.14.
`
`This license is to be retained by the licensee and may be used at any time on or after the effective date thereof unless
`it is revoked. This license is automatically transferred to any related applications(s) filed under 37 CFR 1.53(d). This
`license is not retroactive.
`
`The grant of a license does not in any way lessen the responsibility of a licensee for the security of the subject matter
`as imposed by any Government contract or the provisions of existing laws relating to espionage and the national
`security or the export of technical data. Licensees should apprise themselves of current regulations especially with
`respect to certain countries, of other agencies, particularly the Office of Defense Trade Controls, Department of
`State (with respect to Arms, Munitions and Implements of War (22 CFR 121-128)); the Bureau of Industry and
`Security, Department of Commerce (15 CFR parts 730-774); the Office of Foreign AssetsControl, Department of
`Treasury (31 CFR Parts 500+) and the Department of Energy.
`
`NOT GRANTED
`
`No license under 35 U.S.C. 184 has been granted at this time, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" DOES NOT appear on this form. Applicant may still petition for a license under 37 CFR 5.12,
`if a license is desired before the expiration of 6 months from the filing date of the application. If 6 months has lapsed
`from the filing date of this application and the licensee has not received any indication of a secrecy order under 35
`U.S.C. 181, the licensee may foreign file the application pursuant to 37 CFR 5.15(b).
`
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`SelectUSA
`
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