I hereby certify that this paper (along with any paper referred to as being attached
`or enclosed) is being transmitted via the Office electronic filing system in
`accordance with 37 CFR § 1.6( )(4).
`
`
`
`Dated: September 6, 2012
`Electronic Signature for Matthew H. Grady:
`
`/Matthew H. Grady/
`
`Docket No.: W0537—700620
`
`(PATENT)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application No.: 11/768,729
`
`Confirmation N0.: 3536
`
`Filed: June 26, 2007
`
`Art Unit: 2435
`
`For: UNIVERSAL SECURE REGISTRY
`
`Examiner: B. W. Dada
`
`AMENDMENT IN RESPONSE TO NON-FINAL OFFICE ACTION UNDER 37 C.F.R. 1.111
`
`Commissioner for Patents
`
`Alexandria, VA 223 13— 1450
`
`Dear Madam:
`
`INTRODUCTORY COMMENTS
`
`In response to the Office Action dated March 6, 2012, 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.
`
`Remarks/Arguments begin on page 10 of this paper.
`
`12777233
`
`APPLE 1016
`
`APPLE 1016
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`2
`
`Docket N0.: W0537-700620
`
`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) A secure registry system for providing information to a first party to
`
`enable transactions between the first party and entities with secure data stored in the secure registry
`
`system, the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time—varying multicharacter code for each entity having secure data in the secure registry system,
`
`respectively, each time—varying multicharacter code representing an identity of one of the respective
`
`entities; and
`
`a processor configured to receive, from the first party, at least the time—varying
`
`multicharacter code for the entity on whose behalf a transaction is to be performed, configured to
`
`map the time—varying multicharacter code to the identity of the entity in the database using only the
`
`time—varying multicharacter code, and to access secure data associated with the entity including
`
`information required to enable the transaction, the information including account identifying
`
`information where the account identifying information is unknown to the first party, to provide the
`
`account identifying information to a third party to enable the transaction without providing the
`
`account identifying information to the first party.
`
`2.
`
`(Canceled)
`
`3.
`
`(Previously Presented) The system of claim 1, wherein the time—varying multicharacter code
`
`is provided to the system via a secure electronic transmission device.
`
`4.
`
`(Previously Presented) The system of claim 1, wherein the time—varying multicharacter code
`
`is encrypted and transmitted to the system, and
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`3
`
`Docket N0.: W0537-700620
`
`wherein the system is configured to decrypt the time—varying multicharacter code with a
`
`public key of the entity.
`
`5.
`
`(Previously Presented) The system as claimed in claim 1, wherein the transaction includes a
`
`service provided by the first party,
`
`wherein said first party’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. — 8. (Cancelled)
`
`9.
`
`(Currently Amended) The secure—registry system as claimed in claim 1, wherein the account
`
`identifying information includes credit card account 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.
`
`(Previously Presented) The system as claimed in claim 9, wherein the system is configured
`
`to receive an approval of the credit card transaction.
`
`11.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information includes bank card account information regarding the entity, and wherein the processor
`
`is configured to provide the bank card account information to enable the transaction based upon the
`
`multicharacter code of the entity.
`
`12.
`
`(Previously Presented) The system as claimed in claim 11, wherein the system is configured
`
`to provide an approval of the bank card transaction.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`4
`
`Docket N0.: W0537-700620
`
`13.
`
`(Previously Presented) The system as claimed in claim 1, wherein the information includes
`
`personal identification information regarding the entity.
`
`14.
`
`(Previously Presented) The system as claimed in claim 13, wherein the personal
`
`identification information comprises a photograph of the entity, and wherein the photograph is
`
`provided to the first party.
`
`15.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information identifies email address information regarding the entity.
`
`16.
`
`(Currently Amended) A method for providing information to a first party to enable
`
`transactions between the first party and entities who have secure data stored in a secure registry in
`
`which each entity is identified by a time—varying multicharacter code, the method comprising:
`
`receiving the time—varying multicharacter code for an entity on whose behalf a transaction is
`
`to take place;
`
`mapping the time—varying multicharacter code to an identity of the entity in a database using
`
`only the time—varying multicharacter code;
`
`accessing information required to perform the transaction, the information including account
`
`identifying information unknown to the first party;
`
`providing the account identifying information to a third party without providing the account
`
`identifying information to the first party; and
`
`using the account identifying information to enable the first party to perform the transaction
`
`without the first party’ s knowledge of the account identifying information.
`
`17. — 18.
`
`(Cancelled)
`
`19.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the time—
`
`varying multicharacter code comprises receiving the time—varying multicharacter code transmitted
`
`via a secure electronic transmission device.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`5
`
`Docket N0.: W0537-700620
`
`20.
`
`(Previously Presented) 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.
`
`(Previously Presented) The method as claimed in claim 16, wherein the transaction includes
`
`a service provided by the first party,
`
`wherein the 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 first
`
`party.
`
`22. — 23.
`
`(Cancelled)
`
`24.
`
`(Previously Presented) 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 comprises using the credit card number to enable the transaction.
`
`25.
`
`(Previously Presented) The method as claimed in claim 24, wherein the act of using the
`
`account identifying information comprises receiving a validation or denial of the transaction without
`
`providing the credit card number of the entity to the first party.
`
`26.
`
`(Previously Presented) The method as claimed in claim 16, wherein the act of using the
`
`account identifying information comprises using bank card information about the entity to enable a
`
`transaction.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`6
`
`Docket N0.: W0537-700620
`
`27.
`
`(Previously Presented) 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 a bank card number of the entity to the first party.
`
`28.
`
`(Previously Presented) The method as claimed in claim 16, wherein the act of mapping the
`
`time—varying multicharacter code to information required by the first party comprises mapping the
`
`time—varying multicharacter code to personal identification information about the entity.
`
`29.
`
`(Previously Presented) 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 first party.
`
`30.
`
`(Previously Presented) The method as claimed in claim 16, wherein the account identifying
`
`information identifies email address information about the entity.
`
`3 l .
`
`(Canceled).
`
`32.
`
`(Previously Presented) The method as claimed in claim 24, further comprising an act of
`
`transmitting to the first party one of an approval or a denial of the credit card transaction.
`
`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.
`
`34.
`
`(Previously Presented) The system of claim 33, wherein the processor is further configured
`
`to map the time—varying multicharacter code to biometric information associated with the entity on
`
`whose behalf the transaction is to be performed and to provide the biometric information to the first
`
`party.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`7
`
`Docket N0.: W0537-700620
`
`35.
`
`(Previously Presented) The system of claim 34, wherein the biometric information includes
`
`an image of the entity on whose behalf the transaction is to be performed.
`
`36.
`
`(Previously Presented) The system of claim 34, wherein the time—varying multicharacter
`
`code is generated by a device associated with the entity on whose behalf the transaction is to be
`
`performed.
`
`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.
`
`(Previously Presented) 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 transaction is to be performed; and
`
`providing the biometric information to the first party.
`
`39.
`
`(Previously Presented) The method of claim 38, wherein the biometric information includes
`
`an image of the entity on whose behalf the transaction is to be performed.
`
`40.
`
`(Canceled).
`
`41.
`
`(Currently Amended) The secure—registry system of claim 1, wherein the account
`
`identifying information includes an account number.
`
`42.
`
`(Currently Amended) The seeureregistr—y system of claim 41, wherein the account
`
`identifying information includes credit card account information and the account number includes a
`
`credit card number.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`8
`
`Docket N0.: W0537-700620
`
`43.
`
`(Currently Amended ) The seeureregistr—y system of claim 41, wherein the third party
`
`includes a financial service provider and the account number includes at least one of a debit card
`
`number and a credit card number.
`
`44.
`
`(Currently Amended ) The seeureregistr—y of claim 43, wherein the first party includes a
`
`merchant, and the service includes a sale of at least one of goods and services.
`
`45.
`
`(Currently Amended ) The seeureregistr—y system of claim 44, wherein the processor is
`
`further configured to receive, from the first party, a merchant ID, and a purchase amount.
`
`46.
`
`(Currently Amended ) The seeure—registry—system of claim 1, wherein the identity of the
`
`entity is unknown until the time—varying code is mapped to the identity by the processor.
`
`47.
`
`(New) A secure registry system for providing information to a first party to enable
`
`transactions between the first party and entities with secure data stored in the secure registry system,
`
`the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time—varying multicharacter code for each entity having secure data in the secure registry system,
`
`respectively, each time—varying multicharacter code representing an identity of one of the respective
`
`entities, wherein the database is configured to permit or deny access to information on the
`
`respective entity using the time—varying multicharacter code; and
`
`a processor configured to receive, the time—varying multicharacter code for the entity on
`
`whose behalf a transaction is to be performed, configured to map the time—varying multicharacter
`
`code to the identity of the entity to identify the entity, configured to obtain from the database the
`
`secure data associated with the entity including information required to enable the transaction, the
`
`information including account identifying information, and configured to provide the account
`
`identifying information to a third party to enable the transaction without providing the account
`
`identifying information to the first party.
`
`1277723.3
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`9
`
`Docket N0.: W0537-700620
`
`48.
`
`(New) A secure registry system for providing information to a first party to enable
`
`transactions between the first party and entities with secure data stored in the secure registry system,
`
`the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time—varying multicharacter code for each entity having secure data in the secure registry system,
`
`respectively, each time—varying multicharacter code representing an identity of one of the respective
`
`entities; and
`
`a processor configured to receive the time—varying multicharacter code for the entity on
`
`whose behalf a transaction is to be performed, configured to map the time—varying multicharacter
`
`code to the identity of the entity without requiring further information to identify the entity,
`
`configured to access from the database secure data associated with the entity including information
`
`required to enable the transaction, the information including account identifying information, and
`
`configured to provide the account identifying information to a third party to enable the transaction
`
`without providing the account identifying information to the first party.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`10
`
`Docket N0.: W0537-700620
`
`REMARKS
`
`Claim 1, 3—5, 9—16, 19—21, 24—30, 32—39 and 41—46 were previously pending for examination
`
`with claims 1 and 16 being independent claims. Claims 47 and 48 have been added. Claims 1, 9,
`
`16, and 41—46 have been amended. As a result claims 1, 3—5, 9—16, 19—21, 24—30, 32—39 and 41—48
`
`are pending for examination with claims 1, 16, 47, and 48 being independent claims. No new
`
`matter has been added.
`
`Examiner Interview
`
`Applicant wishes to thank Examiner Dada for the courtesies extended to Applicant’s
`
`Representative during the course of the Interview conducted on August 30, 2012. Applicant’s
`
`Representative and Examiner Dada discussed the application and claims in light of the current
`
`rejection and the references of record. In particular, Applicant’ s Representative alleged that Hsiao
`
`does not teach or suggest a “time—varying multicharacter code for each entity having secure data in
`
`the secure registry system, respectively, each time—varying multicharacter code representing an
`
`identity of one of the respective entities,” as recited in claim 1, for example. Applicant’s
`
`Representative argued that Hsiao explicitly discloses identifying users with entry of respective
`
`account numbers (See e.g., Abstract, Col. 4, lines 6—1 1, and Col. 6, lines 1—5, lines 38—41, and lines
`
`52—54) and, as disclosed in Hsiao, the RPIN/SPIN is used to validate the identified user (see e.g.,
`
`Col. 4 line 32 — Col. 5, line 4).
`
`Although agreement was not reached, Examiner Dada indicated that there are differences
`
`between the claimed approach and the disclosure in the references cited in the Office Action.
`
`Applicant’s Representative and Examiner Dada discussed potential amendments to clarify the
`
`distinction over the current rejection. Accordingly, Applicant presents the current amendments and
`
`remarks, and respectfully requests reconsideration.
`
`Re'ections Under 35 U.S.C.
`
`103
`
`The Office Action rejected claims 1, 3—5, 9—16, 19—21, 24—30, 32—39 and 41—46 under 35
`
`U.S.C. §103(a) as being unpatentable over US. Patent No. 7,571,139 to Gioradano et al.
`
`(hereinafter Gioradano) in view of US. Patent No. 5,971,272 to Hsiao (hereinafter Hsiao).
`
`1277723.3
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`1 1
`
`Docket N0.: W0537-700620
`
`Applicant respectfully asserts that that claims as amended herein are patentable in view of the cited
`
`references at least because Giordano and Hsiao alone or in proper combination do not teach or
`
`suggest a processor “configured to map the time—varying multicharacter code to the identity of the
`
`entity in the database using only the time—varying multicharacter code,” as recited in claim 1, as
`
`amended.
`
`The Examiner admits and Applicant agrees that “Giordano does not explicitly teach a time—
`
`varying code.” (Office Action at page 3.) Instead, the Office Action relies on Hsiao for an alleged
`
`teaching of “a time—varying multicharacter code, each time—varying multicharacter code
`
`representing an identity of one of the respective entities (i.e., RPIN/SPIN, column 4, lines 32—
`
`column 4, line 4).” Id. Applicant respectfully notes that Hsiao does not cure the deficiencies of
`
`Giordano because, in Hsiao, the user necessarily also provides a static identification for an entity in
`
`the form of an account number: “verifying that a user has entered a valid account identifier as a
`
`preliminary condition to the account access provides additional security and avoids wasting
`
`resources which might otherwise be expended generating an RPIN for a non—existent account.”
`
`(Col. 7, lines 25—29; see also Abstract — “the present invention is readily applicable to any type of
`
`account which is accessed by entry of an account number ...”; and Col. 6, lines 52—54 — “the user
`
`responds to the request by providing an appropriate account identifier”).
`
`According to Hsiao, a security mechanism is provided for conventional PINs, making them
`
`not “susceptible to detection by observation or repeated trial attempts.” (Col 3, lines 54—57).
`
`However, as discussed above, Hsiao teaches and relies on entry of account numbers prior to
`
`validating any RPIN/SPIN. Thus, Hsiao does not teach or suggest a processor “configured to map
`
`the time—varying multicharacter code to the identity of the entity in the database using only the time—
`
`varying multicharacter code,” as recited in claim 1, as amended.
`
`As neither Giordano nor Hsiao teach or suggest this element, the combination, even if
`
`assumed proper does not teach or suggest claim 1. Claims 3—5, 9—15, 33—36, and 41—46 depend from
`
`claim 1 and are allowable for at least the same reasons. Accordingly, withdrawal of the rejection of
`
`claims 1, 3—5, 9—15, 33—36, and 41—46 is respectfully requested.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`12
`
`Docket N0.: W0537-700620
`
`Likewise, the combination, even if assumed, proper does not teach or suggest “mapping the
`
`time—varying multicharacter code to an identity of the entity in a database using only the time—
`
`varying multicharacter code,” as recited in claim 16, amended. As admitted and agreed, Giordano
`
`does not teach or suggest a time—varying multicharacter code. Hsiao does not cure this deficiency,
`
`because, Hsiao does not teach or suggest “mapping the time—varying multicharacter code to an
`
`identity of the entity in a database using only the time—varying multicharacter code,” as recited in
`
`claim 16, amended. Rather, Hsiao teaches and relies on the use of a static account number to
`
`establish identity and then authorization using the RPIN/SPIN. Each RPIN/SPIN is associated with
`
`a specific account. (See e.g., Col. 4, lines 6—11). The account must be entered to access an retrieve
`
`PIN information, and only after accessing the account information can Hsiao validate a RPIN/SPIN.
`
`(Please see e.g., Col. 6, lines 1—5, lines 38—41, and lines 52—54). As neither reference, taken alone or
`
`in combination, teaches or suggests “mapping the time—varying multicharacter code to an identity of
`
`the entity in a database using only the time—varying multicharacter code,” the combination, even if
`
`assumed proper, does not teach or suggest claim 16, as amended.
`
`Claims 19—21, 24—30, 32 and 37—39 depend from claim 16 and are allowable for at least the
`
`same reasons. Accordingly, withdrawal of the rejection of claims 16, 19—21, 24—30, 32 and 37—39 is
`
`respectfully requested.
`
`New independent claim 47, is also patentable in view of the cited references at least because
`
`Giordano and Hsiao alone or in proper combination do not teach or suggest a database “configured
`
`to permit or deny access to information on the respective entity using the time—varying
`
`multicharacter code to obtain the information on the respective one of the entities,” and a processor
`
`“configured to map the time—varying multicharacter code to the identity of the entity” as recited in
`
`claim 47. As discussed, Giordano does not teach a time—varying multicharacter code, and Hsaio
`
`does not teach or suggest “using the time—varying multicharacter code to obtain the information on
`
`the respective one of the entities,” or a processor “configured to map the time—varying
`
`multicharacter code to the identity of the entity.” Rather, according to Hsaio, a static account
`
`number is used to obtain information. (Please see e.g., Col. 6, lines 1—5, lines 38—41, and lines 52—
`
`54). As neither reference, taken alone or in combination, teaches or suggests a database “configured
`
`to permit access to information on the respective entity using the time—varying multicharacter code
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`13
`
`Docket N0.: W0537-700620
`
`to obtain the information on the respective one of the entities,” as recited in claim 47, the
`
`combination, even if assumed proper, does not teach or suggest the claim.
`
`Further, new independent claim 48 recites: a processor “configured to map the time—varying
`
`multicharacter code to the identity of the entity without requiring further information to identify the
`
`entity.” The alleged combination of Giordano and Hsiao, also does not teach or suggest this
`
`element, as Giordano does not teach a multicharacter code, and in Hsiao does not employ its
`
`RPIN/SPIN “to map” “to the identity of the entity without requiring further information to identify
`
`the entity,” as recited in the claim. Rather, according to Hsiao a static account number is used to
`
`identify an entity and then a submitted secure PIN is verified against information obtained using the
`
`static account number. (Please see e.g., Col. 6, lines 1—5, lines 38—41, and lines 52—54).
`
`Accordingly, new claims 47—48 are also patentable in view of the cited references at least
`
`because Giordano and Hsiao alone or in proper combination do not teach or suggest at least one
`
`element of the respective independent claims.
`
`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.
`
`12777233
`
`

`

`Application No. 1 1/768,729
`Amendment dated September 6, 2012
`Reply to Office Action of March 6, 2012
`
`14
`
`Docket N0.: W0537-700620
`
`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. 50/2762.
`
`Dated: September 6, 2012
`
`Respectfully submitted,
`
`Electronic signature:
`
`/Matthew H. Grady/
`
`Matthew H. Grady
`
`Registration No.:52,957
`
`John N. Anastasi
`
`Registration N0.: 37,765
`
`LANDO & ANASTASI LLP
`
`Riverfront Office Park
`
`One Main Street
`
`Suite 1100
`
`Cambridge, Massachusetts 02142
`
`(617) 395—7000
`
`Attorney for Applicant
`
`12777233
`
`