I hereby certify that this paper {along with any paper relerred to as being attached
`or enclosed) is being transmitted Via the Office electronic tiling system in
`accordance with 37 CFR § 1.6{alt4}.
`
` Electronic Signature Ior matthew H. Grady:
`
`
`
`Dam --——Ma'°h? 2°13
`
`--———-———
`
`r'Malthew H. Grady!
`
`Docket No.: wosamomo
`
`(PATENT)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application No.: 133231184
`
`Confirmation No: 7352
`
`Filed: September 20, 2011
`
`Art Unit: 3621
`
`
`For: UNIVERSAL SECURE REGISTRY
`
`Examiner: C. K. Cheung
`
`AMENDMENT AFTER FINAL ACTION UNDER 37 C.F.R. 1.116
`
`Commissioner for Patents
`
`Dear Madam:
`
`INTRODUCTORY COMMENTS
`
`In response to the Office Action dated January 1?, 2013, finally rejecting claims 1, 2 and
`
`4-28, please amend the above-identified US. patent application as follows:
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
`
`of this paper.
`
`RemarkslArguments begin on page 8 of this paper.
`
`1
`
`1
`
`VISA - EXHIBIT 1111
`
`VISA - EXHIBIT 1111
`
`

`

`Application No. $937,184
`Amendment dated March 7. 2013
`
`After Final Office Action of January 17, 2013
`
`Ix.)
`
`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:
`
`i.
`
`(Currently Amended) An electronic ID device configured to allow a user to seiect 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 inciuding secret information known to the
`
`user and identifying information concerning an account seiected by the user from the plurality of
`
`accounts:
`
`a communication interface configured 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, 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 eiectronic ID device is activated the processor is configured to generate a non-
`
`predictable value and to generate encrypted authentication information from the non-predictable
`
`value, information associated with dented—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 1‘egistry;a_nd
`
`wherein the communication interface is configured to wirelessiy transmit the encrypted
`
`authentication information to a point—of—sale {POS} device. and wherein the secure registry is
`
`configured to receive at least a portion of the encrypted authentication information from the POS
`
`device.
`
`2.
`
`(Cancelled)
`
`1546382.]
`
`2
`
`

`

`Application No. [3937.184
`Amendment dated March 7. 2013
`
`Alter Final Office Action of January 17. 2013
`
`3.
`
`(Cancelled)
`
`3
`
`Docket No: “10537-701 320
`
`4.
`
`(Currently Amended) The electronic ID device of claim [[2]] 1, wherein the electronic ID
`
`device comprises a discrete code associated with the electronic ID device.
`
`5.
`
`(Currently Amended) The electronic ID device of claim 1, wherein at least a portion of the
`
`biometric input received by the biometric sensor is communicated to the secure registry for
`
`authentication prior to generation of the encrypted authentication information.
`
`6.
`
`{Currently Amended) The electronic ID device of claim 1, wherein the secret information
`
`includes the identifying information.
`
`7’.
`
`(Currently Amended) The electronic ID device of claim 1, further comprising a memory
`
`coupled to the processor, wherein the memory stores information employed by the electronic ID
`
`device to authenticate the biometric received by the biometric sensor.
`
`8.
`
`(Currently Amended) The electronic ID device of claim 7, wherein the electronic ID 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 electronic ID device.
`
`9.
`
`(Currently Amended) The electronic ID 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 electronic lD device for a financial transaction.
`
`ID.
`
`(Currently Amended) The electronic ID 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 electronic ID device until the electronic ID device is activated.
`
`1546382.]
`
`3
`
`

`

`Application No. [$237,184
`Amendment dated March 7. 2013
`
`After Final Office Action of January 17, 2013
`
`4
`
`Docket No: “10537-701 320
`
`l 1.
`
`(Currently Amended) The electronic ID device of claim l0, wherein the data is subject to a
`
`mathematical operation that acts to modify the data such that it is unintelligible until the electronic
`
`Q device is activated.
`
`12.
`
`{Currently Amended) The electronic ID device of claim 9, further comprising a memory
`
`coupled to the processor and configured to store an electronic serial number of the electronic ID
`
`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 electronic ID 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 electronic ID device of claim 1, wherein the biometric sensor is
`
`configured to receive and process at least one of a fingerprint, a speechr’voice input, an iris scan, a
`
`retina scan, a facial scan, written information and a DNA input.
`
`14.
`
`(Currently Amended) The electronic ID device of claim 13, wherein 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.
`
`15.
`
`(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 electronic ID device from the user and secret information known to
`
`the user and provided to the electronic ID device;
`
`activating the electronic ID device based on successful authentication;
`
`generating, responsive to activating, a non-predictable value with the electronic ID device;
`
`receiving. in a user interface, identifying information from the user concerning a selected
`
`one of a plurality of user accounts;
`
`1546382.]
`
`4
`
`

`

`Application No. [31937. 184
`Amendment dated March 7. 2013
`
`After Final Office Action oi'January 17, 2013
`
`5
`
`Docket No: “JOSH-701320
`
`generating encrypted authentication information from the non—predictable value, information
`
`associated with delayed—hem at least a portion of the biometric data, and the secret information; and
`
`communicating, by a communication interface, the encrypted authentication information
`
`from the electronic ID device to a secure registry via a point-of—sale tPOS} device to authenticate
`
`the electronic ID device with the secure registry.
`
`l6.
`
`(Currently Amended) The method of claim IS, further comprising an act of dispiaying, on
`
`the user interface indicators for the plurality of user accounts stored in a memory of the electronic
`
`Q device.
`
`17.
`
`{Currently Amended) The method of claim 15, further comprising an act of de-activating the
`
`electronic ID device without generating the encrypted authentication information if the identity of
`
`the user is not successfully authenticated to the electronic ID device.
`
`l8.
`
`(Currently Amended) The method of claim l5, 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
`
`electronic ID device.
`
`19.
`
`(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 an electronic ID device. a non-predictable value;
`
`generating, with a the electronic ID device, encrypted authentication information from a th_e
`
`non-predictable value generated by the electronic ID device, information associated with derived
`
`1546382.]
`
`5
`
`

`

`Application No. [3937.184
`Amendment dated March 7. 2013
`
`After Final Office Action of January 17, 2013
`
`6
`
`Docket No: “10537-701 320
`
`from at least a portion of a biometric of the user received by the electronic ID device, and secret
`
`information provided to the electronic ID device by the user;
`
`communicating the encrypted authentication information from the electronic ID device to a
`
`secure registry via a point-of-sale (POS) device to authenticate or not authenticate the electronic ID
`
`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.
`
`(Currently Amended) 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 a_ct of generating encrypted authentication information includes
`
`using the account identifier for the identifying information.
`
`22.
`
`(Currently Amended) The electronic ID 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 selection of a respective one of the plurality of accounts.
`
`23.
`
`(Currently Amended} The electronic ID device of claim 1, wherein the user inteIface is
`
`configured to display options for purchase.
`
`24.
`
`(Currently Amended) The electronic ID device of claim 23, wherein the user interface is
`
`configured to accept selection of at least one product or service.
`
`25.
`
`(Previously Presented) The method of claim 15, further comprising displaying options for
`
`purchase on the user interface.
`
`1546382.]
`
`6
`
`

`

`Application No. l3f237‘184
`Ainendnkznt dated March 7. 2013
`
`After Final Office Action of January 17, 2013
`
`”I
`
`DockelNo; W0537-701320
`
`26.
`
`(Previously Presented) The method claim 25, further comprising selecting with the user
`
`interface at least one product or service for purchase.
`
`2?.
`
`(Previously Presented) The method of claim 20, further comprising displaying options for
`
`purchase on the user interface.
`
`28.
`
`(Previously Presented) The method claim 27, further comprising selecting with the user
`
`interface at least one product or service for purchase.
`
`1546382.]
`
`7
`
`

`

`Application No. [3937.184
`Amendment dated March 7. 2013
`
`Alter Final Office Action of January 17. 2013
`
`8
`
`Docket No: “10537-701 320
`
`REMARKS
`
`Claims 1. 2 and 4-28 were previously pending in this application. By this amendment,
`
`Applicant is canceling claim 2 without prejudice or disclaimer. Claims 1. 4-18, and 20-24 have
`
`been amended. As a result. claims 1, 4-28 are pending for examination with claims 1, 15. and 20
`
`being independent claims. No new matter has been added.
`
`
`Summary of Telephone Conference with Examiner
`
`Applicant wishes to thank Examiner Cheung for the courtesies extended to Applicant’s
`
`Representative during the Interview of March 7, 2013. During the course of the Interview. the
`
`participants discussed the present rejection of record and proposed amendments. Applicant’s
`
`Representative and Examiner Cheun g agreed that incorporation of dependent claim 2 into
`
`independent claim 1 results in allowable subject matter. Likewise, the remaining independent
`
`claims have been amended to recite similar limitations. as necessary.
`
`Accordingly, presented are the amendments to the claims as discussed. Favorable
`
`consideration is respectfully requested.
`
`Claim Objection
`
`The Office Action objected claim 21 as being allegedly grammatically incorrect. Applicant
`
`has amended claim 21 to recite “where the act of.” Accordingly, withdrawal of the object to claim
`
`21 is respectfully requested.
`
`
`Rejection under 35 U.S.C. §1 12
`
`The Office Action rejected claims l—2 and 4—28 under 35 U.S.C. §1 12, second paragraph, as
`
`being allegedly indefinite. Claim 2 has been canceled without prejudice or disclaimer making the
`
`rejection of claim 2 under 35 U.S.C. §l 12. second paragraph moot. Claims 1. 4—l8, and 20—24 have
`
`been amended to overcome this rejection.
`
`1546382.]
`
`8
`
`

`

`Application No. [3937.184
`Amendment dated March 7. 2013
`
`After Final Office Action of January 17. 2013
`
`9
`
`Docket No: “10537-701 320
`
`As discussed in the interview, claims I, IS and 20 have been amended to recite “information
`
`associated with at least a portion of the biometric input.” Accordingly, withdrawal of the rejection
`
`of claims 1, l5 and 20 under 35 U.S.C. §112, second paragraph, is respectfully requested.
`
`Claims 4-14, 16-19, and 21-28 depend from claims 1, 15 and 20 respectively. Accordingly,
`
`withdrawal of the rejection of claims 4-14, 16-19 and 21-28 under 35 U.S.C. §i 12, second
`
`paragraph, is respectfully requested.
`
`Claims 4—18, 20 and 22—24 have been amended to recite “The electronic ID device.”
`
`Accordingly, withdrawal of the rejection of claims 4— I 8, 20 and 22—24 under 35 U.S.C. §l l2,
`
`second paragraph, is respectfully requested.
`
`Re'ections Under 35 U.S.C.
`
`' 102
`
`The Office Action rejected claims {-2, 4-6 and 13-28 under 35 U.S.C. §102(b) as being
`
`anticipated by U.S. Patent Publication No. 20030178364 to Weiss {hereinafter Weiss). As
`
`discussed and agreed during the Interview, Weiss does not teach or suggest claim 1, as amended.
`
`In particular, ciaim i, 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 associated with 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 15 and 20, as amended, likewise recite: “generating encrypted
`
`authentication information from the non—predictable value, information associated with at least a
`
`portion of the biometric data, and the secret information” (Claim 15); and “generating, with a
`
`device, encrypted authentication information from a non—predictable value generated by the device,
`
`information associated with at least a portion of a biometric of the user received by the device, and
`
`secret information provided to the device by the user” (Claim 20). As discussed above, Weiss does
`
`not teach or suggest generating authentication information as recited in claims 15 and 20, as
`
`amended.
`
`1546382.]
`
`9
`
`

`

`Application No. [3937.184
`Amendment dated March 7. 2013
`
`After Final Office Action of January 17. 2013
`
`10
`
`Docket No: “10537-701 320
`
`Additionally, as agreed in the lntewiew, Applicant has amended the independent claims, as
`
`necessary, to recite a point-of—sale (POS) system. Accordingly, withdrawal of the rejection of
`
`claims 1, 15, and 20 under 35 U.S.C. §102(b) is respectfully requested.
`
`Claims 4-6, 13-15, 16-19, and 21-28 depend from claims 1. 15 and 20 respectively, and are
`
`therefore, allowable for at least the same reasons. Accordingly, withdrawal of the rejection of
`
`claims 4—6,
`
`I3—15, 16—19, and 21—28 under 35 U.S.C. §102(b) is respectfully requested.
`
`
`Rejections Under 35 U.S.C. §103
`
`The Office Action rejected claim 7 under 35 U.S.C. §lO3(a) as being unpatentable over
`
`Weiss in view ofU.S. Patent No. 6,819,219 to Bolle {hereinafter Bolle). Applicant respectfully
`
`asserts that Weiss either alone or in proper combination Bolle does not teach or suggest claim 7,
`
`because Weiss does not teach or suggest a processor configured to “generate encrypted
`
`authentication information from the non-predictable value, information associated with 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 l, Weiss does not teach or suggest generation of
`
`authentication information using the non—predictable value, information associated with at least a
`
`portion of the biometric input, and the secret information. Bolle does not cure this deficiency.
`
`Accordingly, withdrawal of the rejections of claim 7 under 35 U.S.C. §103 is 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 {as evidence by piior art references
`
`listed in PTO-892). Each of claims 8-12 directly or indirectly depends from allowable claim 1.
`
`Accordingly each of claims 8—12 are allowable for at least the same reasons as claim l.
`
`Accordingly, withdrawal of the rejection of claims 8—12 under 35 U.S.C. §IU3 is respectfully
`
`requested.
`
`W
`
`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
`
`1546382.]
`
`10
`
`10
`
`

`

`Application No. [31937, 184
`Amendment dated March 7. 2013
`
`After Final Office Action of January 17, 2013
`
`l 1
`
`Docket No: “JOSH-701320
`
`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. 502’2762 (Ref. No. W0537—701320).
`
`Dated: March 7, 2013
`
`Respectfully submitted,
`
`Electronic signature: {Matthew H. Grady!
`Matthew H. Grady
`
`Registration No.: 52,95?
`John N. Anastasi
`
`Registration No: 37,765
`LANDO & ANASTASI LLP
`
`Riverfront Office Park
`
`One Main Street
`
`Suite ”00
`
`Cambridge, Massachusetts 02142
`(61?) 395-?000
`Attorneys for Applicant
`
`1546382.]
`
`11
`
`11
`
`