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 20th day of November, 2009.
`
`/Robert V. Donahoe/
`
`Robert V. Donahoe, Reg. No. 46,667
`
`Commissioner for Patents
`
`Sir:
`
`AMENDMENT
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`In response to the Office Action mailed July 20, 2009, please amend the above—identified
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`application as follows. Changes to the Claims are shown by strike through (for deleted matter)
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`and underlining (for added matter).
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`Amendments to the Claims are reflected in the listing of claims which begins on page 2
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`of this paper.
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`Remarks begin on page 8 of this paper.
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`APPLE 1106
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`APPLE 1 106
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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
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`the application.
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`Listing of Claims:
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`10
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`15
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`1.
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`(Currently Amended) 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
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`secure data stored in the secure registry system, comprising:
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`a database including secure data for each entity and a multicharacter code for
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`each entity having secure data in the secure registry system, the multicharacter code
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`being mapped to the secure data; and
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`a processor configured to receive, from the service provider, the
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`multicharacter code for the entity on whose behalf services are to be provided,
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`configured to map the multicharacter code to information required by—the—sewiee
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`provider—inorder—to provide the services where the information is unknown to the
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`service provider, to provide the information to—one—of—the—ser—viee—provider—to—perform
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`Wto a third party to enable a transaction without providing the
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`20
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`information to the service provider.
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`2.
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`(Original) The system of claim 1, wherein the multicharacter code is a secret
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`code of the entity.
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`25
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`30
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`3.
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`(Currently Amended) The system of claim 1, wherein the multicharacter code
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`is provided to the systemvi—a—the—entit—y via a secure electronic transmission device.
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`4.
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`(Currently Amended) The system of claim 1, wherein the multicharacter code
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`is encrypted and transmitted to the systemby—the—entit—y, and the system is configured
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`to decrypt the multicharacter code with a public key of the entity.
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`5.
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`(Currently Amended) The system as claimed in claim 1, wherein said service
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`provider’s service includes provides delivery—serviees, wherein the information is an
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`address to which an item is to be delivered t_ofor the entity, wherein the system
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`receives the multicharacter code and the system uses the multicharacter code to obtain
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`the appropriate address for delivery of the item by the third party.
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`6.
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`7.
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`8.
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`(Canceled)
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`(Canceled)
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`(Currently Amended) The secure registry system as claimed in claim 1,
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`wherein the information includes the secure datawherein—the—s—ystem—is—eonfi—gured—to
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`
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`9.
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`(Currently Amended) The secure registry system as claimed in claim fl[[1]],
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`wherein the identity information includesis credit card information regarding the
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`entity, and wherein the processor is configured to provide the credit card information
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`based upon the multicharacter code of the entity to enable the a—transaction.
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`10.
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`(Original) The system as claimed in claim 9, wherein the system is configured
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`to receive an approval of the credit card transaction without providing the credit card
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`number of the entity to the service provider.
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`11.
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`(Currently Amended) The system as claimed in claim Q1, wherein the identity
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`information includesis bank card information regarding the entity, and wherein the
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`processor is configured to provide the bank card information to enable th_ea
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`transaction based upon the multicharacter code of the entity.
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`12.
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`(Original) The system as claimed in claim 11, wherein the system is
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`configured to provide an approval of the bank card transaction without providing the
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`bank card number of the entity to the service provider.
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`13.
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`(Currently Amended) The system as claimed in claim 31, wherein the
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`information is personal identification information regarding the entity.
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`14.
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`(Original) The system as claimed in claim 13, wherein the personal
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`identification information comprises a photograph of the entity.
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`15.
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`(Original) The system as claimed in claim 1, wherein the information is email
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`address information regarding the entity.
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`16.
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`(Currently Amended) 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
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`multicharacter code, the service provided by a service provider, the method
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`comprising:
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`receiving the multicharacter code for an entity on whose behalf the services
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`are to be provided;
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`mapping the multicharacter code to information required by—the—sewiee
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`provider—inorder—to provide the services;
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`providing the information to a third party without providing the information to
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`the service provider; and
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`using the eorresponding information to enable the service provider to
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`provideper—for—m the service without the service provider’s knowledge of the
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`information.
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`17.
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`(Canceled)
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`18.
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`(Original) The method of claim 16, wherein the act of receiving the
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`multicharacter code comprises receiving a secret multicharacter code which is secret
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`to the entity.
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`19.
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`(Original) The method of claim 16, wherein the act of receiving the
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`multicharacter code comprises receiving the secret code which has been transmitted
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`by via a secure electronic transmission device.
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`20.
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`(Original) The method of claim 16, wherein the act of receiving the
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`multicharacter code comprises receiving an encrypted multicharacter code and the
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`method further comprises decrypting the encrypted multicharacter code.
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`21.
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`(Currently Amended) The method as claimed in claim 16, wherein the service
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`provider’s service includes provides delivery—services, wherein the information is an
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`address to which an item is to be delivered for the entity, and wherein the third party
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`the—provider receives an—item—to—be—deli—vered—and the address for delivery of the Q
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`item provided by the service provider.
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`22.
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`(Canceled)
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`23.
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`(Canceled)
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`24.
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`(Original) The method as claimed in claim 16, wherein the act of using the
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`information to perform the services comprises using credit card information about the
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`25
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`entity to enable a transaction.
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`25.
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`(Original) The method as claimed in claim 24, wherein the act of using the
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`information comprises receiving a validation or denial of the credit card transaction
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`without providing the credit card number of the entity to the service provider.
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`26.
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`(Original) The method as claimed in claim 16, wherein the act of using the
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`information to perform the services comprises using bank card information about the
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`entity to enable a transaction.
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`27.
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`(Original) The method as claimed in claim 26, wherein the act of using the
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`information comprises receiving a validation or denial of the bank card transaction
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`without providing the bank card number of the entity to the service provider.
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`28.
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`(Currently Amended) The method as claimed in claim 16, wherein the act of
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`mapping the multicharacter code to information required by the service provider
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`comprises mapping the multicharacter code i—nto personal identification information
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`about the entity.
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`29.
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`(Original) The method as claimed in claim 28, wherein the personal
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`identification information comprises a photograph of the entity.
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`30.
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`(Original) The method as claimed in claim 16, wherein the information to
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`comprises an email address information about the entity.
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`31.
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`(New) The system of claim 1, wherein the information includes identity
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`information concerning the entity.
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`32.
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`(New) The method as claimed in claim 24, further comprising an act of
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`transmitting to the service provider one of an approval or a denial of the credit card
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`transaction without providing the credit card number of the entity to the service
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`provider.
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`33.
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`(New) The system of claim 1, wherein the database is further configured to
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`associate biometric information with each entity having secure data in the secure
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`registry, respectively.
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`34.
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`(New) The system of claim 33, wherein the processor is further configured to
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`map the multicharacter code to biometric information associated with the entity on
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`whose behalf the services are to be provided and to provide the biometric information
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`to the service provider.
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`35.
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`(New) The system of claim 34, wherein the biometric information includes an
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`image of the entity on whose behalf the services are to be provided.
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`36.
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`(New) The system of claim 34, wherein the multicharacter code comprises a
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`time-varying multicharacter code generated by a device associated with the entity on
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`whose behalf services are to be provided.
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`37.
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`(New) The method as claimed in claim 16, further comprising an act of
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`associating biometric information with each entity having secure data in the secure
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`15
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`registry, respectively.
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`38.
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`(New) The method of claim 37, further comprising acts of:
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`mapping the multicharacter code to biometric information associated with the
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`entity on whose behalf the services are to be provided; and
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`providing the biometric information to the service provider.
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`39.
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`(New) The method of claim 38, wherein the biometric information includes
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`an image of the entity on whose behalf the services are to be provided.
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`40.
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`(New) The method of claim 38, further comprising an act of generating a
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`time-varying multicharacter code by a device associated with the entity on whose
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`behalf the services are to be provided.
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`REMARKS
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`Claims 1—30 were previously pending in this application. By this amendment, Applicant
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`is canceling claims 6, 7, 17, 22, and 23 without prejudice or disclaimer. Claims 1, 3—5, 8, 9, 11,
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`13, 16, 21 and 28 are amended herein. New claims 31—40 are added herein. As a result claims 1—
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`5, 8—16, 18—21 and 24—40 are pending for examination with claims 1 and 16 being independent
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`claims. No new matter has been added. Support for the amendments to the independent claims
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`can be found at least, for example, in Figs. 7—10 and the associated description at pages 17—20 of
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`the application as originally filed. Support for the new claims can be found at least, for example,
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`at page 12, lines 20—28 and page 17, lines 5—26.
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`Re'ections Under 35 U.S.C.
`
`102
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`The Office Action rejects claims 1—3, 5—19 and 21—30 under 35 U.S.C. §102(e) as being
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`anticipated by US. Patent No. 6,941,271 B1 to Soong (hereinafter Soong). This rejection
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`includes the rejection of independent claims 1 and 16.
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`Applicants respectfully assert that Soong does not anticipate independent claims 1 and
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`16, as amended herein. Claim 1 recites “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 processor configured to receive, from the
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`service provider, the multicharacter code for the entity on whose behalf services are to be
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`provided, configured to map the multicharacter code to information required to provide the
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`services where the information is unknown to the service provider, to provide the information to
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`a third party to enable a transaction without providing the information to the service provider.”
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`(Emphasis added.) Claim 16 recites 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 code,
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`the service provided by a service provider, the method comprising: receiving the multicharacter
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`code for an entity on whose behalf the services are to be provided; mapping the multicharacter
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`code to information required to provide the services; providing the information to a third party
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`without providing the information to the service provider;_and using the information to enable
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`the service provider to provide the service without the service provider’s knowledge of the
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`information.” (Emphasis added.)
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`Soong describes a method for accessing component fields of a patient record where
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`access to a site computer by authorized persons is provided through the use of login IDs and
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`passwords. (Col. 6, lines 14—59.) User are allowed access to patient records, for example, when
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`they provide the correct password. In each case, the user seeking access to a patient’s records
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`has knowledge of the information needed to login and gain access. Id. Accordingly, the mere
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`description of login IDs and passwords does not describe either: a secure registry system for
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`providing information to a service provider to enable the service provider to provide services to
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`entities with secure data stored in the secure registry system,
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`where the information is
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`unknown to the service provider, to provide the information to a third party to enable a
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`transaction without providing the information to the service provider,” as recited in claim 1; or a
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`method for providing a service to entities who have secure data stored in a secure registry in
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`which each entity is identified by a multicharacter code, the service provided by a service
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`provider, the method comprising:
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`mapping the multicharacter code to information required to
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`provide the services; providing the information to a third party without providing the information
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`to the service provider; and using the information to enable the service provider to provide the
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`service without the service provider’s knowledge of the information, as recited in claim 16.
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`Thus, Applicant respectfully asserts that independent claims 1 and 16 are patentable in
`
`view of Soong at least for the above reasons. Each of claims 2, 3, 5, 8—16, 18, 19, 21 and 24—30
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`directly or indirectly depend from one of allowable claims 1 and 16 and are therefore patentable
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`for at least the same reasons as the independent claim from which they depend, respectively.
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`Claims 6, 7, 17, 22 and 23 are canceled herein. Accordingly, reconsideration and withdrawal of
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`the rejection of claims 1—3, 5—19 and 21—30 under 35 U.S.C. §102(e) as being anticipated by
`
`Soong is respectfully requested.
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`Re'ections Under 35 U.S.C.
`
`103
`
`The Office Action rejects claims 4 and 20 under 35 U.S.C. §103(a) as being unpatentable
`
`over Soong in view of U.S. Patent No. 5,398,285 to Borgelt (hereinafter Borgelt). Claim 4
`
`depends from independent claim 1 and claim 20 depends from independent claim 16. Applicant
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`respectfully asserts that Borgelt does not cure the deficiencies of Soong because Borgelt alone or
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`in proper combination with Soong also does not teach or suggest “a secure registry system for
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`providing information to a service provider to enable the service provider to provide services to
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`entities with secure data stored in the secure registry system, comprising
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`a processor
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`configured to receive, from the service provider, the multicharacter code for the entity on whose
`
`behalf services are to be provided, configured to map the multicharacter code to information
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`required to provide the services where the information is unknown to the service provider, to
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`provide the information to a third party to enable a transaction without providing the information
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`to the service provider,” as recited in claim 1; or a “method for providing a service to entities
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`who have secure data stored in a secure registry in which each entity is identified by a
`
`multicharacter code, the service provided by a service provider, the method comprising:
`
`receiving the multicharacter code for an entity on whose behalf the services are to be provided;
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`mapping the multicharacter code to information required to provide the services; providing the
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`information to a third party without providing the information to the service provider; and using
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`the information to enable the service provider to provide the service without the service
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`provider’s knowledge of the information,” as recited in claim 16.
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`Accordingly, claims 4 and 20 are patentable for at least the same reasons as claims 1 and
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`16, respectively. Applicant respectfully requests reconsideration and withdrawal of the rejection
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`of claims 4 and 20 under 35 U.S.C. §103(a) as being unpatentable over Soong in view of
`
`Borgelt.
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`W
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`In addition to the above, Applicant respectfully asserts that new claims 31—40 further
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`patentably distinguish over the cited references. For example, new claim 33 recites that “the
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`database is further configured to associate biometric information with each entity having secure
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`data in the secure registry, respectively.” New claim 37 recites “an act of associating biometric
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`information with each entity having secure data in the secure registry, respectively.” Applicant
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`respectfully notes that neither Soong nor Borgelt even refer to biometric information.
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`Accordingly, new claims 33 and 37, and claims 34—36 and 38—40 which depend therefrom,
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`respectively, are patentable for at least this additional reason.
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`CONCLUSION
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`In View of the foregoing amendments and remarks, reconsideration is respectfully
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`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
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`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.
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`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
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