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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 —
`06/29/2011 —
`7590
`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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`06/29/201 1
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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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`APPLE 1112
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`APPLE 1112
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`Application No.
`Applicant(s)
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`Office Action Summary
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`11/768,729
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`Examiner
`BEEMNETDADA
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`WEISS, KENNETH P.
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`Art Unit
`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 () 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.
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`- 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)IZI Responsive to communication(s) filed on 18 Agril2011.
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`a)IZl This action is FINAL.
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`2b)I:l This action is non-final.
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`3)|:l 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IXI Claim(s) 1-5 9-16 18-2124-30 32-39 and 41-45is/are pending in the application.
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`4a) Of the above claim(s) _ is/are withdrawn from consideration.
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`5)I:I Claim(s) _ is/are allowed.
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`6)|Zl Claim(s) 1 -5 9- 16 18-2124-30 32-39 and 41 -45is/are rejected.
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`7)I:l Claim(s) _ is/are objected to.
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`8)I:l 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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`OH] The drawing(s) filed on _ is/are: a)|:l accepted or b)I:l 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)|:l 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)|:l AII
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`b)I:l Some * c)|:l None of:
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`1.|:I Certified copies of the priority documents have been received.
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`2.|:I Certified copies of the priority documents have been received in Application No. _
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`3.|:I 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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`Attachment(s)
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`1) I] 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/OS)
`Paper No(s)/Mai| Date
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`US. Patent and Trademark Office
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`4) D Interview Summary (PTO-413)
`Paper N°(5 )/Mai| Date. _
`5)I:I Notice of Informal Patent Application
`)6|:| 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 20110627
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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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`This office action is in reply to an amendment filed on 04/18/2011. Claims 1-5, 9-16, 18-
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`21, 24-30, 32-39 and 41-45 are pending.
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`Response to Arguments
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`Applicant's arguments filed 04/18/2011 have been fully considered but they are not
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`persuasive. Applicant argues that the prior art on record fails to teach the limitation 'mapping the
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`time varying multicharacter code to information required to provide the services" Examiner
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`disagrees.
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`Examiner would point out that, Gioradano teaches a method/system configured to map
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`the multi-character code to secure data including information required to provide the services,
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`the information including account identifying information where the account identifying
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`information is unknown to the service provider, to provide the account identifying information to
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`a third party to enable a transaction without providing the account identifying information to the
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`service provider (i.e., note that the POS system does not get access to customers credit/debit
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`account information, column 18, lines 5-47). Gioradano is silent on the multi-character code
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`being time-varying. However, Brainard teaches an authentication system that maps time-varying
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`multi-character code to stored secure data (i.e., verifying by comparing an authentication code,
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`wherein the authentication code is time dependent, paragraphs 0019, 0020, 0045 and 0063).
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`Examiner would further point out that, the time varying multi-character code of Brainard can be
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`implemented into the multi-character code of Gioradano in order to enhance security of the
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`system by changing the code based on timing data. It is therefore, the combination of
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`Gioradano and Brainard that teaches the limitation mapping a time-varying multi-character code
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`Application/Control Number: 11/768,729
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`Art Unit: 2435
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`to secure data
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`unknown to the service provider. Examiner would further point out that the art
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`on record teaches the claim limitations and therefore, the rejection is respectfully maintained.
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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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`Claims 1-5, 9-16, 18—21, 24-30, 32-39 and 41-45 are rejected under 35 U.S.C. 103(a) as
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`being unpatentable over Gioradano et al. US 7,571,139 B1 (hereinafter Gioradano) in view
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`Brainard et al. US 2006/0256961 A1 (hereinafter Brainard).
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`As per claims 1 and 16, Giorandano teaches a secure registry system for providing
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`information to a service provider to enable the service provider to provide services to entities
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`with secure data stored in the secure registry system, comprising:
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`a database including secure data for each entity, wherein each entity is associated with
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`and a multicharacter_code for each entity having secure data in the secure registry system,
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`respectively [column 18, lines 14-47] and
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`a processor configured to receive, from the service provider, the multicharacter code for
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`the entity on whose behalf services are to be provided, configured to map the multicharacter
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`code to secure data including information required to provide the services, the information
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`including account identifying information where the account identifying information is unknown
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`to the service provider, to provide the account identifying information to a third party to enable a
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`transaction without providing the account identifying information to the service provider (i.e.,
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`Application/Control Number: 11/768,729
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`note that the POS system does not get access to customers credit/debit account information,
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`column 18, lines 5-47). Giorandano does not explicitly teach a time-varying code. In the same
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`field of endeavor, Brainard teaches an authentication system including a time-varying
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`multicharacter code to secure data and data access [paragraphs 0019 and 0020]. It would have
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`been obvious to one having ordinary skill in the art at the time of applicant’s invention to employ
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`the teachings of Brainard within the system of Gioradano in order to enhance the security of the
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`system.
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`As per claims 2 and 18, Gioradano further teaches the system wherein the
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`multicharacter code represents an identity of the entity [column 18, lines 14-47].
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`As per claims 3 and 19, Gioradano further teaches the system wherein the
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`multicharacter code is provided to the system via a secure electronic transmission device
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`[column 18, lines 14-47].
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`As per claim 4 and 20, Gioradano further teaches the system wherein the code is
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`encrypted and transmitted to the system and wherien the system is configured to decrypt the
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`code with a public key of the entity [column 18, lines 14-47].
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`As per claims 5 and 21, Gioradano further teaches the system wherein said service
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`provider's service includes delivery, wherein the information is an address to which n item is to
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`be delivered to the entity, wherein the system receives the code and wherein the system uses
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`the code to obtain the appropriate address for delivery of the item by the third party [column 18,
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`lines 14-47].
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`Application/Control Number: 11/768,729
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`As per claim 9-15, 41-45, 24-27, 30, 32 and 41-45 Gioradano further teaches the system
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`wherein the account identifying information includes credit card information regarding the entity
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`and the processor is configured to provide the credit card information based upon the code of
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`the entity to enable the transaction [column 18, lines 14-47].
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`As per claims 28-29 and 33-39, Gioradano further teaches the system wherein 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 [column 18, lines 14-47].
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as
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`set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing date
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`of this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to BEEMNET 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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`Application/Control Number: 11/768,729
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`Art Unit: 2435
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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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`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 DADA/
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`Primary Examiner, Art Unit 2435
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