I hereby certify that this paper {along with any paper relerreci to as being attached
`or enclosed) is being transmitted via the Office electronic tiling system in
`accordance with 37 CFR § 1.6ta)t_4).
`
`
`
`Dated: ______ December 1? 2612 _________
`Electronic Signature tor Matthew H. Grady:
`
`_
`.IMatthew H. Grady?
`
`_
`,
`DOCket NO' ‘ W053? 101 320
`(PATENT)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application No.: 33231184
`
`Confirmation No.: T352
`
`Filed: September 20, 2011
`
`Art Unit: 3621
`
`For: UNIVERSAL SECURE REGISTRY
`
`Examiner: C. K. Cheung
`
`AMENDMENT IN RESPONSE TO NON-FINAL OFFICE ACTION UNDER 37 C.F.R. 1.111
`
`Commissioner for Patents
`
`Alexandria, VA 22313-1450
`
`Dear Madam:
`
`INTRODUCTORY COMMENTS
`
`In response to the Office Action dated August 15. 2012, please amend the above—
`
`identified US. patent application as follows:
`
`Amendments to the Specification begin on page 2 of this paper.
`
`Amendments to the Claims are reflected in the listing of ciaims which begins on page 3
`
`of this paper.
`
`RemarkslArguments begin on page 9 of this paper.
`
`1
`1
`
`VISA - EXHIBIT 1208
`
`VISA - EXHIBIT 1208
`
`

`

`Application No. 137237.184
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: W0537-701320
`
`AMENDMENTS TO THE SPECIFICATION
`
`Please replace the paragraph beginning at page 1, line 4 with the following:
`
`CROSS REFERENCE TO RELATED APPLICATIONS
`
`This application claims the benefit under 35 U.S.C. § 120 as a continuation of US. patent
`
`application No. 127393586 filed February 26, 2009, now US. Patent No. 8,234,220 which is a
`
`continuation—in—part of each of US. patent application serial no.
`
`i ”760,732 filed June 8, 2007, now
`
`US. Patent No. 7,809,651; US. patent application serial no. 1 17760,729 filed June 8, 2007, now
`
`U.S. Patent No. 7,805,372; and U.S. patent application serial no. 117677,490 filed February 21,
`
`2007, now [1.8. Patent No. 8,001,055. This application also claims the benefit under 35 U.S.C. §
`
`120 as a continuation-in-part of U.S. patent application no. 137168556 filed on June 24, 2011,
`
`which claims the benefit under 35 U.S.C. § l20 as a continuation of US. application no.
`
`1 ”677,490. Each of US. application nos. 1 ”760,732, 1 ”760,729 and 1 ”677,490 claim priority
`
`under 35 U.S.C. § 119 (e) to U.S. Provisional Application Nos. 607812279 filed on June 9, 2006,
`
`and 607859235 filed on November 15, 2006. US. application no. 117677,490 also claims priority
`
`under 35 U.S.C. § 1
`
`'19 (e) to US. Provisional Application No. 607775,046 filed on February 21,
`
`2006. Each of the above—identified applications is hereby incorporated herein by reference in its
`
`entirety.
`
`2
`
`

`

`1 31231184
`Application No.
`Amendment dated December 17, 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No: W0537-701320
`
`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in the application.
`
`Listing of Claims:
`
`1.
`
`(Currently Amended} An electronic ID device configured to allow a user to select any one of
`
`a plurality of accounts associated with the user to employ in a financial transaction, comprising:
`
`a biometric sensor configured to receive a biometric input provided by the user;
`
`a user interface configured to receive a user input including secret information known to the
`
`user and identifying information concerning an account selected by the user from the plurality of
`
`accounts;
`
`a communication interface lin-leconiigured to communicate with a secure registry; and
`
`a processor coupled to the biometric sensor to receive information concerning the biometric
`
`input, the user interface and the communication interface link, the processor being programmed to
`
`activate the electronic ID device based on successful authentication by the electronic ID device of at
`
`least one of the biometric input and the secret information. the processor also being programmed
`
`such that once the electronic ID device is activated the processor i_s configured to generate a non—
`
`predictable value and to generate encrypted authentication information from the non—predictable
`
`value, thetdeiitifiyang—mtonnation; and—at—least—oneet‘ information derived from at least a portion of
`
`the biometric input, and the secret information, and to communicate the encrypted authentication
`
`information via the communication interface iin-k—to the secure registry.
`
`2.
`
`(Currently Amended) The device of claim 1, wherein the communication interface link—is
`
`configured to wirelessly transmit the encrypted authentication information to a point—of—sale (PCS)
`
`device, and wherein the secure registry PGS—desiee is configured to receive transmit at least a
`
`portion of the encrypted authentication information from the POS device to—the—seeuie—tegnrtry.
`
`3.
`
`(Cancelled)
`
`3
`
`

`

`1 31231184
`Application No.
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`4.
`
`(Currently Amended)The device of claim 2, wherein the device comprises thepreGessorLis
`
`
`
`information a discrete code associated with the electronic ID device.
`
`5.
`
`(Currently Amended) The device of claim l, wherein at least a portion of the biometric
`
`received by the biometric sensor is communicated to the secure registry for authentication prior to
`
`generation of the encrypted authentication information.
`
`6.
`
`{Original} The device of claim 1, wherein the secret information includes the identifying
`
`information.
`
`7’.
`
`(Original) The device of claim l._ further comprising a memory coupled to the processor,
`
`wherein the memory stores information employed by the device to authenticate the biometric
`
`received by the biometric sensor.
`
`8.
`
`(Original) The device of claim 7, 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.
`
`9.
`
`(Currently Amended) The device of claim 8. wherein the secret information known to the
`
`user includes a PIN, and wherein the authentication of both the secret information and the biometric
`
`input activate the device for the a_financial transaction.
`
`ID.
`
`(Original) The device of claim 9, further comprising a memory coupled to the processor,
`
`wherein data stored in the memory is unavailable to an individual in possession of the device until
`
`the device is activated.
`
`4
`
`

`

`Application No. 131237.184
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`I 1.
`
`(Original) The device of claim 10, 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.
`
`12.
`
`(Currently Amended) The device of claim 9, further comprising a memory coupled to the
`
`processor and configured to store an electronic serial number of the device, wherein the processor is
`
`configured to generate a seed using at least two of the electronic serial number, a discrete code
`
`associated with the device, the PIN. a time value, and the biometric input to generate the encrypted
`
`authentication information, and wherein the seed is employed by the processor to generate the non—
`
`predictable value.
`
`13.
`
`("Currently Amended) The device of claim 1, wherein the biometric sensor is configured to
`
`receive and process at least one of a fingerprint, a speechfvoice input, an iris scan, a retina scan, a
`
`facial scan, a—fingerprint, written information and a DNA input.
`
`l4.
`
`{Currently Amended) The device of claim 13, fufiheneomprisingwherein the processor is
`
`configured to generate account identifying information for the respective one of the plurality of
`
`accounts, wherein the account identifying information does not identify an account number of the
`
`respective one of the plurality of accounts a—h-and-held—dewee—melud—mg—eaeikeflthe—biememc—sensei—
`
`
`
`l5.
`
`(Currently Amended) A method of generating authentication information comprising acts of:
`
`authenticating an identity of a user to an electronic ID device based on at least one of
`
`biometric data received by the device from the user and secret information known to the user and
`
`provided to the device;
`
`activating the electronic ID device based on successful authentication;
`
`generating. responsive to activating. a non—predictable value with the device;
`
`receiving in a user interface identifying information from the user concerning a selected
`
`one of a plurality of user accounts; and
`
`5
`
`

`

`1 31231184
`Application No.
`Amendment dated December 17. 2012
`
`Reply to()l’t"1ce Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`generating encrypted authentication information from the non—predictable value, the
`
`tdentttyntg—tuforntatronrand—at—least—oneof information derived from at least a portion of the
`
`biometric data, and the secret information; and
`
`communicating, by a communication interface, the encpypted authentication information to a
`
`secure registry.
`
`l6.
`
`(Currently Amended) The method of claim 15, further comprising an act ofgenetut—i-Hg
`
`enerypted—autheutteunoH—tufosmatton—fsouseachef the non predictable value, the biometsiodata—the
`
`
`
`displaying on the user interface indicators for
`
`the plurality of user accounts stored in a memory of the device.
`
`17.
`
`(Original) The method of claim 15, further comprising an act of de-activating the device
`
`without generating the encrypted authentication information if the identity of the user is not
`
`successfully authenticated to the device.
`
`18.
`
`{Original} The method of claim 15, further comprising an act of generating a seed from
`
`which the authentication information is generated by employing at least two of the biometric data,
`
`the secret information known to the user, and an electronic serial number of the device.
`
`i9.
`
`(Original) The method of claim 15, further comprising an act of 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.
`
`20.
`
`(Currently Amended) A method of controlling access to a plurality of accounts, the method
`
`comprising acts of:
`
`generating, with a device, encrypted authentication information from a non—predictabie vaiue
`
` generated by the device, '
`
`deuree—fiom—among—a—plurahty—of aecounts associated with the user and at least oneof information
`
`6
`
`

`

`Application No. 131237.184
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`
`derived from at least a portion of a biometric of the user received by the device1 and secret
`
`information provided to the device by the user;
`
`communicating the encrypted authentication information from the device to a secure registry
`
`via a point-of—sale (PCS) device to authenticate or not authenticate the device with the secure
`
`registry;
`
`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 information is
`
`successfully authenticated; and
`
`denying the POS device from initiation of the financial transaction involving a transfer of
`
`funds to or from the account selected by the user when the encrypted authentication information is
`
`not successfully authenticated.
`
`21.
`
`(New) The method of claim 15. further comprising an act of generating an account
`
`identifier for the selected one of the plurality of user accounts that does not include an account
`
`number, and wherein the of generating encrypted authentication information includes using the
`
`account identifier for the identifying information.
`
`22.
`
`(New) The device of claim 1, wherein the processor is configured to display indicators for
`
`the plurality of accounts in the user interface, and the user interface is configured to accept user
`
`seiection of a respective one of the plurality of accounts.
`
`23.
`
`(New) The device of claim 1, wherein the user interface is configured to display options for
`
`purchase.
`
`24.
`
`(New) The device of claim 23, wherein the user interface is configured to accept selection of
`
`at least one product or service.
`
`25.
`
`(New) The method of claim 15, further comprising displaying options for purchase on the
`
`user interface.
`
`7
`
`

`

`Application No. 131237.184
`Amendment dated December 17‘ 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`26.
`
`(New) The method claim 25, further comprising selecting with the user interface at least one
`
`product or service for purchase.
`
`27.
`
`(New) The method of claim 20, further comprising displaying options for purchase on the
`
`user interface.
`
`28.
`
`(New) The method claim 27, further comprising selecting with the user interface at least one
`
`product 01' service for purchase.
`
`8
`
`

`

`Application No. 131237.184
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`REMARKS
`
`Claims 1-20 were originally filed in this application. Claim 3 has been cancelled without
`
`prejudice or disclaimer. Claims 1, 2, 4-5, 9, 12-16, and 20 have been amended. Claims 21-28 have
`
`been added. As a result, claims 1-28 are pending for examination, with claim 1, 15, and 20 being
`
`independent claims. No new matter has been added.
`
`Specification
`
`The original specification was objected to for failing to identify application No. ”893,586
`
`as U.S. Patent Number 8,234,220. The appropriate correction has been made. Accordingly,
`
`withdrawal of the objection of the specification is respectfully requested.
`
`The foice Action objected to claim 13, as “a fingerprint" is recited twice. Applicant has
`
`amended claim l3 as suggested. Applicant respectfully requests withdrawal of the objection.
`
`Claim Objections
`
`Re'ections Under 35 U.S.C. ‘102
`
`The Office Action rejected claims l—2, 4—6, and 13—20 under 35 U.S.C. §102(b) as being
`
`anticipated by U.S. Patent Publication No. 2002f01T8364 Al to Weiss (hereinafter Weiss).
`
`In
`
`response, Applicant has amended the claims and presents the following remarks in support of
`
`patentability.
`
`Claim 1, as amended, recites “the processor is configured to generate a non-predictable
`
`value and to generate encrypted authentication information from the non-predictable value,
`
`information derived from at least a portion of the biometric input, and the secret information, and to
`
`communicate the encrypted authentication information via the communication interface to the
`
`secure registry.” Weiss does not teach or suggest the generation of authentication information from
`
`the non—predictable value, information derived from at least a portion of the biometric input, and the
`
`secret information.
`
`Independent claims l5 and 20 have been amended to recite: “generating encrypted
`
`authentication information from the non-predictable value, information derived from at least a
`
`9
`
`

`

`1 31231184
`Application No.
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`portion of the biometric data, and the secret information” {Claim IS); and “generating, with a
`
`device, encrypted authentication information from a non-predictable value generated by the device,
`
`information derived from at least a portion of a biometric of the user received by the device, and
`
`secret information provided to the device by the user.” As discussed above, Weiss does not teach or
`
`suggest generating authentication information as recited in claims 15 and 20, as amended.
`
`Claims 2, 4—6, and 13—14, and l6—l9 depend from claims I and IS respectively, and are
`
`therefore, allowable for at least the same reasons.
`
`Accordingly, withdrawal of the rejection of claims 1—2, 4—6, and 13—20 are respectfully
`
`requested.
`
`Re'ections Under 35 U.S.C.
`
`’ 103
`
`The Office Action rejected claim 3 under 35 U.S.C. §103(a) as being unpatentable over
`
`Weiss in view of US. Patent Publication No. 2004i’0117302 Al to Weichert (hereinafter Weir-heir).
`
`The Office Action rejected claim 7 under 35 U.S.C. §103(a) as being unpatentable over Weiss and
`
`further in view of US. Patent No. 6,819,219 to Bolle (hereinafter Bolle). Applicant respectfully
`
`asserts that Weiss either alone or in proper combination with Wiechert and Bolle does not teach or
`
`suggest claims 3 and 7, because Weiss does not teach or suggest a processor configured to “generate
`
`encrypted authentication information from the non—predictable value, information derived from at
`
`least a portion of the biometric input, and the secret information,” as recited in claim 1 as amended.
`
`As discussed above with respect to claim 1, Weiss does not teach or suggest generation of
`
`authentication information using the non—predictable value, information derived from at least a
`
`portion of the biometric input, and the secret information. Neither Weichert nor Bolle cure this
`
`deficiency.
`
`Accordingly, withdrawal of the rejections of claims 3 and 7 are respectfully requested.
`
`The Office Action rejected claims 8—12 under 35 U.S.C. §103(a) as being unpatentable over
`
`Weiss in view of Bolle and further in view of Official Notice. Each of claims 8—!2 directly 01'
`
`indirectly depends from allowable claim I . Accordingly each of claims 8—12 are allowable for at
`
`10
`10
`
`

`

`1 31231184
`Application No.
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: “10537-70 l 320
`
`least the same reasons as claim 1.
`
`In addition, Applicant respectfully asserts that the Official Notice
`
`fails to support a prima facie case of obviousness at least because:
`
`I)
`
`the Official Notice does not cure the deficiencies of Weiss and Bolle alone or in proper
`
`combination; and
`
`2)
`
`the Examiner has not supported the Official Notice of specific knowledge of the prior art
`
`with a “citation to some reference work recognized as standard in the pertinent art”
`
`where such is required because the recited feature is not capable of instant and
`
`unquestionable demonstration as being well—known.
`
`3)
`
`it is unclear from the record that the alleged knowledge was known at the time of the
`
`invention. Applicant respectfully requests that the Examiner provide a reference
`
`teaching what is alleged to be well-known or withdraw the rejection.
`
`Accordingly, reconsideration and withdrawal of the rejection of claims 8-12 under 35 U.S.C.
`
`§103(a) is respectfully requested.
`
`Claims 21-28 depend directly or indirectly from allowable independent claims 1, 15, and 20,
`
`and are likewise allowable for at least the same reasons.
`
`New Claims
`
`
`Double Patenting Rejection
`
`In paragraph [0 of the Office Action, claims l—20 were rejected under thejudicially created
`
`doctrine of double—patenting over claims 1—54 of US. Patent No. 8,234,220. However, the Office
`
`Action stated that a timely filed Terminal Disclaimer in compliance with 37 CPR. 1.321(c) may be
`
`used to overcome this rejection. Without acceding to the correctness of this rejection, enclosed
`
`herewith is a Terminal Disclaimer with respect to US. Patent No. 8,234,220 in compliance with 3?
`
`C.F.R. 1.321(0) to overcome this rejection. In view of this Terminal Disclaimer, claims 1-20 are
`
`believed to be in allowable condition.
`
`Claims l5— 1 9 were rejected under the judicially created doctrine of double—patenting over
`
`claims 1—3, 5—8 and 43 of US. Patent No. 7,809,651. However, the Office Action stated that a
`
`timely filed Terminal Disclaimer in compliance with 37 C.F.R. 1.321(c) may be used to overcome
`
`11
`11
`
`

`

`Application No. 131237.184
`Amendment dated December 17. 2012
`
`Reply to Office Action of August 15. 2012
`
`Docket No.: W0537-701320
`
`this rejection. Without acceding to the correctness of this rejection, enclosed herewith is a Terminal
`
`Disclaimer with respect to US. Patent No. 2,809,651 in compliance with 37" CPR. 1.321(0) to
`
`overcome this rejection.
`
`In View of this Terminal Disclaimer, Claims 15-19 are believed to be in
`
`allowable condition.
`
`CONCLUSION
`
`In View of the foregoing amendments and remarks. reconsideration is respectfully requested.
`
`This application should now be in condition for allowance; a notice to this effect is respectfully
`
`requested.
`
`If the Examiner believes, after this amendment, that the application is not in condition
`
`for allowance, the Examiner is requested to call the Applicant's attorney at the telephone number
`
`listed below.
`
`If this response is not considered timely filed and if a request for an extension of time is
`
`otherwise absent. Applicant hereby requests any necessary extension of time. If there is a fee
`
`occasioned by this response, including an extension fee that is not covered by an accompanying
`
`payment. please charge any deficiency to Deposit Account No. 501’27’62 (ref. no. W0537-?0'l320).
`
`Dated: December 17", 2012
`
`Respectfully submitted,
`
`Ham-1.:
`
`Electronic signature: {Matthew H. Grady!
`
`Matthew H. Grady
`Registration No.: 52,957
`John N. Anastasi
`
`Registration No.: 37.765
`LANDO & ANASTASI LLP
`
`Riverfront Office Park
`
`One Main Street
`Suite 1100
`
`Cambridge, Massachusetts 02142
`(6i?) 395—7000
`
`Attorney for Applicant
`
`12
`12
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`