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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`11/768,729
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`06/26/2007
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`Kenneth P. Weiss
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`W0537—7006
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`3536
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`EXAMINER
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`Jew/Imam —
`07/202009 —
`”90
`c/o Lowrie, Lando & Anastasi, LLP
`DADA, BEEMNET w
`Riverfront Office Park, One Main Street
`ART UNIT
`PAPER
`Cambridge, MA 02142
`— NW
`2435
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`BER
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`MAIL DATE
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`07/20/2009
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`1 of 8
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`APPLE 1105
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`APPLE 1 105
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`Application No.
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`Applicant(s)
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`11/768,729
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`WEISS, KENNETH P.
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`Office Action Summary
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`Examiner
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`BEEMNET w. DADA
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`Art Unit
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`2435 -
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)IXI Responsive to communication(s) filed on 26 June 2007.
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`2a)I:I This action is FINAL.
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`2b)IZI This action is non-final.
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`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZI Claim(s) fl) is/are pending in the application.
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`4a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`5)I:I Claim(s)
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`is/are allowed.
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`6)IXI Claim(s) fl) is/are rejected.
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`7)I:I Claim(s) _ is/are objected to.
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`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`9)I:I The specification is objected to by the Examiner.
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`
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`10)I:I The drawing(s) filed on
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`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)I:I All
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`b)I:I Some * c)I:I None of:
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`Certified copies of the priority documents have been received.
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`Certified copies of the priority documents have been received in Application No.
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`Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attach ment(s)
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`1) IZI Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date
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`U.S. Patent and Trademark Office
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`4) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. _
`5) I:I Notice of Informal Patent Application
`6) D Other:
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`PTOL-326 (Rev. 08-06)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20090716
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`Application/Control Number: 11/768,729
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`Page 2
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`Art Unit: 2435
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`DETAILED ACTION
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`Claims 1-30 are presented for examination.
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`Information Disclosure Statement
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`The information disclosure statement (IDS) submitted on 06/26/2007 and 08/26/2008
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`have been considered. The submission is in compliance with the provisions of 37 CFR 1.97.
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`Form PTO-1449 is signed and attached hereto.
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`The drawings filed on June 26, 2007 are accepted.
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`Drawings
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`The specification filed June 26, 2007 is accepted.
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`Specification
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351 (a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21(2)
`of such treaty in the English language.
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`Application/Control Number: 11/768,729
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`Page 3
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`AnlJnfl:2435
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`Claims 1-3, 5-19 and 21-30 are rejected under 35 U.S.C. 102(e) as being anticipated by
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`Soong US 6,941,271 B1.
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`As per claim 1, Soong teaches a secure registry system for providing information to a
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`service provider to enable the service provider to provide services to entities with secure data
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`stored in the secure registry system, comprising:
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`a database including secure data for each entity and a multicharacter code for each
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`entity having secure data in the secure registry system, the multicharacter code being mapped
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`to the secure data [column 6, lines 33-44]; and
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`a processor configured to receive the multicharacter code for the entity on whose behalf
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`services are to be provided, configured to map the multicharacter code to information required
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`by the service provider in order to provide the services, to provide the information to one of the
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`service provider to perform the services or to a third party to enable a transaction without
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`providing the information to the service provider [column 6, lines 16-59].
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`As per claim 16, Soong teaches a method for providing a service to entities who have
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`secure data stored in a secure registry in which each entity is identified by a multicharacter
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`code, the method comprising:
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`receiving the multicharacter code for an entity on whose behalf the services are to be
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`provided [column 6, lines 14-32] ;
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`mapping the multicharacter code to information required by the service provider in order
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`to provide the services [column 6, lines 28-59]; and
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`using the corresponding information to perform the service [column 6, lines 28-59].
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`Application/Control Number: 11/768,729
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`Page 4
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`Art Unit: 2435
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`As per claims 2 and 18, Soong further teaches the system wherein the multicharacter
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`code is a secret code of the entity [column 6, lines 14-32].
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`As per claims 3 and 19, Soong further teaches the system wherein the multicharacter
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`code is provided via the entity via a secure electronic transmission device [column 6, lines 14-
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`32].
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`As per claims 5 and 21, Soong further teaches the system wherein said service provider
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`provides delivery services, wherein the information is an address to which an item is to be
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`delivered for the entity, wherein the system receives the multicharacter code and the system
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`uses the multicharacter code to obtain the appropriate address for delivery of the item [column
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`6, lines 28-59].
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`As per claims 6, 7 and 22, Soong further teaches the system wherein said provider
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`provides telephone services, wherein the information is a current telephone number for the
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`entity, wherein the system receives the multicharacter code and the system provides the
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`current telephone number of the entity [column 6, lines 28-59].
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`As per claims 8 and 23, Soong further teaches the system wherein the system is
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`configured to enable the service provider to perform the service without disclosing the secure
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`data to the service provider [column 6, lines 28-59].
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`As per claims 9, 10, 24 and 25, Soong further teaches the system wherein the
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`information is credit card information regarding the entity, and wherein the processor is
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`Application/Control Number: 11/768,729
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`Page 5
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`configured to provide the credit card information based upon the multicharacter code of the
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`entity to enable a transaction [column 6, lines 28-59].
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`As per claims 11, 12, 26 and 27, Soong further teaches the system wherein the
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`information is bank card information regarding the entity, and wherein the processor is
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`configured to provide the bank card information to enable a transaction based upon the
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`multicharacter code of the entity [column 6, lines 28-59].
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`As per claims 13, 14, 28 and 29, Soong further teaches the system wherein the
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`information is personal identification information regarding the entity [column 6, lines 28-59].
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`As per claims 15 and 30, Soong further teaches the system wherein the information is
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`email address information regarding the entity [column 6, lines 28-59].
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`As per claim 17, Soong further teaches the system wherein the act of using the
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`corresponding information to perform the service comprises one of providing the information
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`to one of the service provider to perform the services or to a third party to enable a transaction
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`without providing the information to the service provider [column 6, lines 28-59].
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`Application/Control Number: 11/768,729
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`Page 6
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`Art Unit: 2435
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`Claims 4 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Soong
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`US 6,941,271 B1 in view of Borgelt et al US 5,398,285 (hereinafter Borgelt).
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`As per claims 4 and 20, Soong teaches the system/method as indicated above. Soong is
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`silent on the system wherein the multicharacter code is encrypted and transmitted by the entity,
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`and the system is configured to decrypt the multicharacter code with a public key of the entity.
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`In the same field of endeavor, Borgelt teaches a system wherein the multicharacter code is
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`encrypted and transmitted by the entity, and the system is configured to decrypt the
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`multicharacter code with a public key of the entity [see abstract]. It would have been obvious to
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`one having ordinary skill in the art at the time of applicant's invention to employ the teachings
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`of Borgelt within the system of Soong in order to enhance the security of the system.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to BEEMNET W. DADA whose telephone number is (571 )272-3847. The
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`examiner can normally be reached on Monday - Friday (9:00 am - 5:30 pm).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Kim Y. Vu can be reached on (571) 272-3859. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 11/768,729
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`Page 7
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`Art Unit: 2435
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
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`would like assistance from a USPTO Customer Service Representative or access to the
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`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/Beemnet W Dada/
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`Primary Examiner, Art Unit 2435
`July 16, 2009
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