IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Docket No.: W0537—700620
`
`Applicant:
`Serial No:
`Confirmation No:
`
`Kenneth P. Weiss
`11/768,729
`3536
`
`Filed:
`For:
`
`June 26, 2007
`UNIVERSAL SECURE REGISTRY
`
`Dada, Beemnet W.
`Examiner:
`2435
`Art Unit:
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`
`CERTIFICATE OF TRANSMISSION UNDER 37 C.F.R. §1.8§a[
`
`The undersigned hereby certifies that this document is being electronically filed in accordance with
`§ l.6(a)(4), on the 3rd day of May, 2010.
`
`/Robert V. Donahoe/
`
`Robert V. Donahoe, Reg. No. 46,667
`
`Commissioner for Patents
`
`Sir:
`
`AMENDMENT AFTER FINAL
`
`In response to the final Office Action mailed February 3, 2010, please amend the above—
`
`identified application as follows. Changes to the Claims are shown by strike through (for deleted
`
`matter) and underlining (for added matter).
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
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`of this paper.
`
`Remarks begin on page 8 of this paper.
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`1029667 .1
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`APPLE 1008
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`APPLE 1008
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`Serial No.: 11/768,729
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`- 2 -
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`Art Unit: 2435
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`Amendments to the Claims
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`This listing of claims will replace all prior versions, and listings, of claims in
`
`the application.
`
`Listing of Claims:
`
`1.
`
`(Currently Amended) A secure registry system for providing information to a
`
`service provider to enable the service provider to provide services to entities with
`
`secure data stored in the secure registry system, comprising:
`
`a database including secure data for each entity, wherein each entity is
`
`associated with and a time-varying multicharacter code for each entity having secure
`
`
`data in the secure registry system, respectivelythe multicharacter cede being mapped
`
`to—the—seeure—d—ata; and
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`a processor configured to receive, from the service provider, the time-varying
`
`multicharacter code for the entity on whose behalf services are to be provided,
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`configured to map the time-varying multicharacter code to secure data including
`
`information required to provide the services, the information including account
`
`identifying information where the account identifying information is unknown to the
`
`service provider, to provide the account identifying information to a third party to
`
`enable a transaction without providing the account identifying information to the
`
`service provider.
`
`2.
`
`(Currently Amended) The system of claim 1, wherein the time-varying
`
`multicharacter code represents an identityis—a—seeret—eode of the entity.
`
`3.
`
`(Currently Amended) The system of claim 1, wherein the time-varying
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`multicharacter code is provided to the system via a secure electronic transmission
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`device.
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`Art Unit: 2435
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`4.
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`(Currently Amended) The system of claim 1, wherein the time-varying
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`multicharacter code is encrypted and transmitted to the system, and
`
`wherein the system is configured to decrypt the time-varying multicharacter
`
`code with a public key of the entity.
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`5.
`
`(Currently Amended) The system as claimed in claim 1, wherein said service
`
`provider’s service includes delivery, wherein the information is an address to which
`
`an item is to be delivered to the entity, wherein the system receives the time-varying
`
`multicharacter code, and
`
`wherein the system uses the time-varying multicharacter code to obtain the
`
`appropriate address for delivery of the item by the third party.
`
`6.
`
`7.
`
`8.
`
`(Canceled)
`
`(Canceled)
`
`(Canceled)
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`9.
`
`(Currently Amended) The secure registry system as claimed in claim 13-},
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`wherein the account identifyingidentit—y information includes credit card account
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`information regarding the entity, and wherein the processor is configured to provide
`
`the credit card account information based upon the multicharacter code of the entity to
`
`enable the transaction.
`
`10.
`
`(Currently Amended) The system as claimed in claim 9, wherein the system is
`
`configured to receive an approval of the credit card transaction—witheut—providing—the
`
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`11.
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`(Currently Amended) The system as claimed in claim 13-}, wherein the
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`account identifyingidentit—y information includes bank card account information
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`regarding the entity, and wherein the processor is configured to provide the bank card
`10296671
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`Serial No.: 11/768,729
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`- 4 -
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`Art Unit: 2435
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`account information to enable the transaction based upon the multicharacter code of
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`the entity.
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`12.
`
`(Currently Amended) The system as claimed in claim 11, wherein the system
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`is configured to provide an approval of the bank card transaction—without—providing
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`13.
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`(Currently Amended) The system as claimed in claim 13-1, wherein the
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`information includesis personal identification information regarding the entity.
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`14.
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`(Currently Amended) The system as claimed in claim 13, wherein the personal
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`identification information comprises a photograph of the entity, and wherein the
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`photograph is provided to the service provider.
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`15.
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`(Currently Amended) The system as claimed in claim 1, wherein the account
`
`identifying information identifies is email address information regarding the entity.
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`16.
`
`(Currently Amended) A method for providing a service to entities who have
`
`secure data stored in a secure registry in which each entity is identified by a time-
`
`varying multicharacter code, the service provided by a service provider, the method
`
`comprising:
`
`receiving the time-varying multicharacter code for an entity on whose behalf
`
`the services are to be provided;
`
`mapping the time-varying multicharacter code to information required to
`
`provide the services, the information including account identifying information
`
`unknown to the service provider;
`
`providing the account identifying information to a third party without
`
`providing the account identifying information to the service provider; and
`
`using the account identifying information to enable the service provider to
`
`provide the service without the service provider’s knowledge of the account
`
`identifying information.
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`Serial No.: 11/768,729
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`- 5 -
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`Art Unit: 2435
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`17.
`
`(Canceled)
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`18.
`
`(Currently Amended) The method of claim 16, wherein the act of receiving the
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`time-varying multicharacter code comprises receiving a seeret multicharacter code
`
`which represents an identity ofis—seeret—to the entity.
`
`19.
`
`(Currently Amended) The method of claim 16, wherein the act of receiving the
`
`time-varying multicharacter code comprises receiving the time-varying multicharacter
`
`seeret—code—whieh—has—been transmitted by via a secure electronic transmission device.
`
`20.
`
`(Currently Amended) The method of claim 16, wherein the act of receiving the
`
`time-varying multicharacter code comprises receiving an encrypted multicharacter
`
`code, and
`
`wherein the method further comprises decrypting the encrypted multicharacter
`
`code.
`
`21.
`
`(Currently Amended) The method as claimed in claim 16, wherein the service
`
`provider’s service includes delivery, wherein the account identifying information is
`
`associated with an address to which an item is to be delivered for the entity, and
`
`wherein the third party receives the address for delivery of an item provided by the
`
`service provider.
`
`22.
`
`(Canceled)
`
`23.
`
`(Canceled)
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`24.
`
`(Currently Amended) The method as claimed in claim 16, wherein the account
`
`identifying information includes a credit card number, and wherein the act of using
`
`the account identifying information to perform the services comprises using the credit
`
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`Serial No.: 11/768,729
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`- 6 -
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`Art Unit: 2435
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`25.
`
`(Currently Amended) The method as claimed in claim 24, wherein the act of
`
`using the account identifying information comprises receiving a validation or denial
`
`of the eredit—eard—transaction without providing the credit card number of the entity to
`
`the service provider.
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`26.
`
`(Currently Amended) The method as claimed in claim 16, wherein the act of
`
`using the account identifying information to perform the services comprises using
`
`bank card information about the entity to enable a transaction.
`
`27.
`
`(Currently Amended) The method as claimed in claim 26, wherein the act of
`
`using the information comprises receiving a validation or denial of the bank card
`
`transaction without providing athe bank card number of the entity to the service
`
`provider.
`
`28.
`
`(Currently Amended) The method as claimed in claim 16, wherein the act of
`
`mapping the time-varying multicharacter code to information required by the service
`
`provider comprises mapping the time-varying multicharacter code into personal
`
`identification information about the entity.
`
`29.
`
`(Currently Amended) The method as claimed in claim 28, wherein the
`
`personal identification information comprises a photograph of the entity, and
`
`wherein the method further comprises an act of providing the photograph to
`
`the service provider.
`
`30.
`
`
`(Currently Amended) The method as claimed in claim 16, wherein the account
`
`identifying information identifiesto—eompr—ises—an email address information about the
`
`entity.
`
`3 1 .
`
`(Canceled)
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`Serial No.: 11/768,729
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`- 7 -
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`Art Unit: 2435
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`32.
`
`(Currently Amended) The method as claimed in claim 24, further comprising
`
`an act of transmitting to the service provider one of an approval or a denial of the
`
`
`credit card transaction—witheut—providing the credit card number of the entity tothe
`
`33.
`
`(Previously Presented) The system of claim 1, wherein the database is further
`
`configured to associate biometric information with each entity having secure data in
`
`the secure registry, respectively.
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`34.
`
`(Currently Amended) The system of claim 33, wherein the processor is further
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`configured to map the time-varying multicharacter code to biometric information
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`associated with the entity on whose behalf the services are to be provided and to
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`provide the biometric information to the service provider.
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`35.
`
`(Previously Presented) The system of claim 34, wherein the biometric
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`information includes an image of the entity on whose behalf the services are to be
`
`provided.
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`36.
`
`(Currently Amended) The system of claim 34, wherein the multicharacter
`
`eode—eompr—ises—a time-varying multicharacter code isgenerated by a device
`
`associated with the entity on whose behalf services are to be provided.
`
`37.
`
`(Previously Presented) The method as claimed in claim 16, further comprising
`
`an act of associating biometric information with each entity having secure data in the
`
`secure registry, respectively.
`
`38.
`
`(Currently Amended) The method of claim 37, further comprising acts of:
`
`mapping the time-varying multicharacter code to biometric information
`
`associated with the entity on whose behalf the services are to be provided; and
`
`providing the biometric information to the service provider.
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`Serial No.: 11/768,729
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`Art Unit: 2435
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`39.
`
`(Previously Presented) The method of claim 38, wherein the biometric
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`information includes an image of the entity on whose behalf the services are to be
`
`provided.
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`40.
`
`(Canceled)
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`41.
`
`(New) The secure registry system of claim 1, wherein the account identifying
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`information includes an account number.
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`42.
`
`(New) The secure registry system of claim 41, wherein the account
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`identifying information includes credit card account information and the account
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`number includes a credit card number.
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`43.
`
`(New) The secure registry system of claim 41, wherein the third party
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`includes a financial service provider and the account number includes at least one of a
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`debit card number and a credit card number.
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`44.
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`(New) The secure registry of claim 43, wherein the service provider includes
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`a merchant, and the service includes a sale of at least one of goods and services.
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`45.
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`(New) The secure registry system of claim 44, wherein the processor is
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`further configured to receive, from the service provider, a merchant ID, and a
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`purchase amount.
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`Serial No.: 11/768,729
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`— 9 —
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`Art Unit: 2435
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`REMARKS
`
`Claims 1—5, 8—16, 18—21 and 24—40 were previously pending in this application. By this
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`amendment, Applicant is canceling claims 8, 31 and 40 without prejudice or disclaimer. Claims
`
`1—5, 9—16, 18—21, 24—30, 32, 34, 36 and 39 are amended herein. New claims 41—45 are added
`
`herein. As a result, claims 1—5, 9—16, 18—21, 24—30, 32—39 and 41—45 are pending for examination
`
`with claims 1 and 16 being independent claims. No new matter has been added. Support for the
`
`amendments to the claims can be found at least, for example, in the Specification as originally
`
`filed at paragraph [0078] of the published application.
`
`Re'ections Under 35 U.S.C.
`
`112
`
`The Office Action rejects claims 1—5, 8—16, 18—21 and 24—40 under 35 U.S.C. §112, first
`
`paragraph, as failing to comply with the written description requirement because the
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`specification allegedly “fails to mention or teach the system/method, ‘. .. where the information
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`is unknown to the service provider...’ and ‘provide the service without the service provider’s
`’7’
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`knowledge of the information.
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`(Office Action at page 3.) Applicant respectfully disagrees
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`because the specification as originally filed provides clear support such that one of ordinary skill
`
`in the art would recognize that the Applicant was in possession of all of the subject matter of
`
`claims at the time the application was filed. Because the claim amendments included herein
`
`modify some of the language which is subject to this rejection, Applicant also describes below
`
`the support for the amendments to independent claims 1 and 16 included herein.
`
`As an initial matter, Applicant respectfully notes that compliance with the written
`
`description requirement is met when the specification conveys with reasonable clarity to those
`
`skilled in the art that, as of the filing date sought, applicant was in possession of the invention
`
`claimed. (MPEP 2163.02.) The preceding may be achieved via express, implicit, or inherent
`
`support found in the originally filed disclosure. (MPEP 2163.05.)
`
`Applicant respectfully asserts that the application as originally filed provides clear
`
`support more than sufficient to convey with reasonable clarity to those skilled in the art that in
`
`some embodiments “information required to provide the services
`
`[and] unknown to the
`
`service provider
`
`[is provided] to a third party to enable a transaction without providing the
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`1 0296-57. 1
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`Serial No.: 11/768,729
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`— 10 —
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`Art Unit: 2435
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`information to the service provider,” as recited in claim 1. As one example, at paragraph [0018]
`
`the specification describes that:
`
`In a financial context, providing anonymous identification of a person enables the person
`
`to purchase goods and/or services from a merchant without ever transmitting to the
`
`merchant information, such as the person's credit card number, or even the person's na e,
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`that could be intercepted and/or usurped and used in subsequent or additional
`
`unauthorized transactions or for other undesired purposes. (Emphasis added.)
`
`Further, describing and embodiment illustrated in Fig. 7, at paragraph [0078] the
`
`specification describes that in one embodiment, “the user has been able to purchase goods or
`
`services from a merchant without ever providing to the merchant the credit card number” and
`
`then at paragraph [0079], “[a]nother embodiment of a system for facilitating purchase of goods
`
`or services without providing financial information to the merchant is set forth in FIG. 8.”
`
`(Emphasis added.) At paragraph [0080], the specification describes that “[i]n this embodiment,
`
`like the embodiment of FIG. 7, the user can use the USR system 10 to purchase goods or services
`
`from a merchant without providing the merchant with the user's credit card number.” (Emphasis
`
`added.) Still further, at paragraph [0086] the specification describes an embodiment illustrated
`
`in Fig. 9 in which a “check verification system may take place over an unsecured connection
`
`between the merchant and the USR system 10 since the user's bank account information is not
`
`sent over the connection between the merchant and the USR system 10.” (Emphasis added.)
`
`The specification describes still another embodiment in paragraph [0088] stating that Fig. 10
`
`“illustrates a method of conducting a transaction with a merchant without requiring the user to
`
`provide to the merchant the user's name, address, or other identifying information, while
`
`enabling the merchant to ship the goods to the user.” (Emphasis added.)
`
`Applicant respectfully asserts that each of the preceding examples provide express,
`
`implicit and inherent support more than sufficient to convey to one of ordinary skill in the art
`
`that “information required to provide the services
`
`[and] unknown to the service provider
`
`[is provided] to a third party to enable a transaction without providing the
`
`information to the
`
`service provider,” as recited in claim 1. In addition, Applicant respectfully asserts that each of
`
`the preceding examples provide express, implicit and inherent support more than sufficient to
`
`convey to one of ordinary skill in the art a “method for providing a service to entities who have
`
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`Serial No.: 11/768,729
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`— ll —
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`Art Unit: 2435
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`secure data stored in a secure registry in which each entity is identified by a time—varying
`
`multicharacter code, the service provided by a service provider, the method comprising
`
`mapping the time—varying multicharacter code to information reguired to provide the services,
`
`the information including account identifying information unknown to the service provider;
`
`providing the account identifying information to a third party without providing the account
`
`identifying information to the service provider; and using the account identifying information t_o
`
`enable the service provider to provide the service without the service provider’s knowledge of
`
`the account identifying information,” as recited in claim 16.
`
`In addition, Applicant has amended each of claims 1 and 16 to recite that the
`
`“information unknown to the service provider” includes “account identifying information
`
`unknown to the service provider.” (Emphasis added.) This amendment is also clearly supported
`
`in the specification, for example, in some of the examples described above.
`
`At page 2, the Office Action describes the language recited in claim 1 as being directed to
`
`“a negative limitation,” and alleges that the language does not have a basis in the original
`
`disclosure. Applicant respectfully disagrees and asserts that the above provides citations where
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`eXpress support can be found for the language of claims 1 and 16.
`
`For at least all of the above reasons, Applicant respectfully requests reconsideration and
`
`withdrawal of the rejection of claims 1—5, 8—16, 18—21 and 24—40 under 35 U.S.C. §ll2, first
`
`paragraph.
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`J 029667. 1
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`Serial No.: 11/768,729
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`Art Unit: 2435
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`CONCLUSION
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`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
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`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
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`telephone number listed below.
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`If this response is not considered timely filed and if a request for an extension of time is
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`otherwise absent, Applicant hereby requests any necessary extension of time. If there is a fee
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`occasioned by this response, including an extension fee that is not covered by an accompanying
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`payment, please charge any deficiency to Deposit Account No. 50/2762, Ref. No. W0537—
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`700620.
`
`Respectfully submitted,
`Kenneth P. Weiss, Applicant
`
`By: /Robert V. Donahoe/
`Robert V. Donahoe, Reg. No. 46,667
`LANDO & ANASTASI, LLP
`One Main Street
`
`Cambridge, Massachusetts 02142
`United States of America
`
`Telephone: 617—395-7000
`Facsimile: 617—395-7070
`
`Docket No.: W0537—700620
`
`Date: May 3, 2010
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`1 0296-57. 1
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