`or enclosed) is being transmitted via the Office electronic filing system in
`accordance with 37 CFR § 1.6(a)(4).
`
`
`
`DatedzNovember 29, 2011
`Electronic Signature for Robert V. Donahoe:
`
`/Robert V. Donahoe/
`
`Docket No.: W0537-700620
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`(PATENT)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application No.: 11/768,729
`
`Confirmation No.: 3536
`
`Filed: June 26, 2007
`
`Art Unit: 2435
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`
`
`For: UNIVERSAL SECURE REGISTRY Examiner: B. W. Dada
`
`AMENDMENT AFTER FINAL ACTION UNDER 37 C.F.R. 1.116
`
`MS RCE
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the final Office Action mailed June 29, 2011, please amend the above-
`
`identified application as follows. Changes to the Claims are shown by strike through (for
`
`deleted matter) and underlining (for added matter).
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
`
`of this paper.
`
`Remarks begin on page 9 of this paper.
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`APPLE 1114
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`APPLE 1114
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`AMENDMENTS TO THE CLAIMS
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`This listing of claims will replace all prior versions, and listings, of claims in the
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`application.
`
`Listing of Claims:
`
`1.
`
`(Currently Amended) A secure registry system for providing information to a
`
`first partyserviee—previder to enable transactions between the first party andflaesewieepraéder
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`te—previde—serviees—te entities with secure data stored in the secure registry system, the secure
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`registry system comprising:
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`a database including secure data for each entity, wherein each entity is associated with a
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`time-varying multicharacter code for each entity having secure data in the secure registry
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`system, respectively, each time-varying multicharacter code representing an identity of one of
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`the respective entities; and
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`a processor configured to receive, from the first partyserviee—previder, the time-varying
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`multicharacter code for the entity on whose behalf a transaction is to be performedserviees—are—te
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`lee—provided, configured to map the time-varying multicharacter code to the identity of the entity
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`and secure data associated with the entity including information required to enableprevide the
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`transactionserviees, the information including account identifying information where the account
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`identifying information is unknown to the first partyserviee—previder, to provide the account
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`identifying information to a third party to enable th_e[[a]] transaction without providing the
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`account identifying information to the first partyseiaviee—previder.
`
`2.
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`3.
`
`(Canceled)
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`(Previously Presented) The system of claim 1, wherein the time-varying
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`multicharacter code is provided to the system via a secure electronic transmission device.
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`4.
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`(Previously Presented) The system of claim 1, wherein the time-varying
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`multicharacter code is encrypted and transmitted to the system, and
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`wherein the system is configured to decrypt the time-varying multicharacter code with a
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`public key of the entity.
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`5.
`
`(Currently Amended) The system as claimed in claim 1, wherein the transaction
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`includes a service provided by the first party,
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`wherein said first party’sservieeprevideris service includes delivery,
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`wherein the information is an address to which an item is to be delivered to the entity,
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`wherein the system receives the time-varying multicharacter code, and
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`wherein the system uses the time-varying multicharacter code to obtain the appropriate
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`address for delivery of the item by the third party.
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`6.
`
`7.
`
`8.
`
`9.
`
`(Canceled).
`
`(Canceled).
`
`(Canceled).
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`(Previously Presented) The secure registry system as claimed in claim 1, wherein
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`the account identifying information includes credit card account information regarding the
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`entity, and wherein the processor is configured to provide the credit card account information
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`based upon the multicharacter code of the entity to enable the transaction.
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`10.
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`(Previously Presented) The system as claimed in claim 9, wherein the system is
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`configured to receive an approval of the credit card transaction.
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`11.
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`(Previously Presented) The system as claimed in claim 1, wherein the account
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`identifying information includes bank card account information regarding the entity, and
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`wherein the processor is configured to provide the bank card account information to enable the
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`transaction based upon the multicharacter code of the entity.
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`12.
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`(Previously Presented) 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.
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`13.
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`(Previously Presented) The system as claimed in claim 1, wherein the information
`
`includes personal identification information regarding the entity.
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`14.
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`(Currently Amended) The system as claimed in claim 13, wherein the personal
`
`identification information comprises a photograph of the entity, and wherein the photograph is
`
`provided to the first partyseiaviee—previder.
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`15.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account
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`identifying information identifies email address information regarding the entity.
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`16.
`
`(Currently Amended) A method for providing information to a first party to
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`enable transactions—a—serviee—te 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
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`serviee—previded—by—a—serviee—previderrthe method comprising:
`
`receiving the time-varying multicharacter code for an entity on whose behalf a
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`transaction is to take placethe—sewiees—are—te—be—previded;
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`mapping the time-varying multicharacter code to an identity of the entity and information
`
`required to perform the transactionprevide—the—sewiees, the information including account
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`identifying information unknown to the first partyserviee—previder;
`
`providing the account identifying information to a third party without providing the
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`account identifying information to the first partysewieeprevider; and
`
`using the account identifying information to enable the first partyservieeprevider to
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`performprevide the transactionseiaviee without the first party’sserviee—previderis knowledge of
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`the account identifying information.
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`17.
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`(Canceled).
`
`18.
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`(Canceled)
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`19.
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`(Previously Presented) The method of claim 16, wherein the act of receiving the
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`time-varying multicharacter code comprises receiving the time-varying multicharacter code
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`transmitted via a secure electronic transmission device.
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`20.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the
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`time-varying multicharacter code comprises receiving an encrypted multicharacter code, and
`
`wherein the method further comprises decrypting the encrypted multicharacter code.
`
`21.
`
`(Currently Amended) The method as claimed in claim 16, wherein the transaction
`
`includes a service provided by the first party,previderis—serviee
`
`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 m
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`partyseiaviee—previder.
`
`22.
`
`(Canceled).
`
`23.
`
`(Canceled).
`
`24.
`
`(Currently Amended) The method as claimed in claim 16, wherein the account
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`identifying information includes a credit card number, and wherein the act of using the account
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`identifying information te—perferm—theserviees comprises using the credit card number to enable
`
`th_e[[a]] trans action.
`
`25.
`
`(Currently Amended) The method as claimed in claim 24, wherein the act of
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`using the account identifying information comprises receiving a validation or denial of the
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`transaction without providing the credit card number of the entity to the first partyserviee
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`provider.
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`26.
`
`(Currently Amended) The method as claimed in claim 16, wherein the act of
`
`using the account identifying information te—perferm—the—seiflviees comprises using bank card
`
`information about the entity to enable a transaction.
`
`27.
`
`(Currently Amended) The method as claimed in claim 26, wherein the act of
`
`using the information comprises receiving a validation or denial of the bank card transaction
`
`without providing a bank card number of the entity to the first partysewieeprefider.
`
`28.
`
`(Currently Amended) The method as claimed in claim 16, wherein the act of
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`mapping the time-varying multicharacter code to information required by the first partyserviee
`
`previder comprises mapping the time-varying multicharacter code to personal identification
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`information about the entity.
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`29.
`
`(Currently Amended) The method as claimed in claim 28, wherein the personal
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`identification information comprises a photograph of the entity, and
`
`wherein the method further comprises an act of providing the photograph to the m
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`partyseFviee—previder.
`
`30.
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`(Previously Presented) The method as claimed in claim 16, wherein the account
`
`identifying information identifies email address information about the entity.
`
`31.
`
`(Canceled).
`
`32.
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`(Currently Amended) The method as claimed in claim 24, further comprising an
`
`act of transmitting to the first partyservieeprevider one of an approval or a denial of the credit
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`card transaction.
`
`33.
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`(Previously Presented) The system of claim 1, wherein the database is further
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`configured to associate biometric information with each entity having secure data in the secure
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`registry, respectively.
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`34.
`
`(Currently Amended) The system of claim 33, wherein the processor is further
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`configured to map the time-varying multicharacter code to biometric information associated with
`
`the entity on whose behalf the transaction is to be perfonnedseiaviees—are—te—be—previded and to
`
`provide the biometric information to the first partyserviee—previder.
`
`35.
`
`(Currently Amended) The system of claim 34, wherein the biometric information
`
`includes an image of the entity on whose behalf the transaction is to be performedseHLiees—arete
`
`lee—provided.
`
`36.
`
`(Currently Amended) The system of claim 34, wherein the time-varying
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`multicharacter code is generated by a device associated with the entity on whose behalf th_e
`
`transaction is to be perforrnedseiaviees—are—te—be—previded.
`
`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
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`registry, respectively.
`
`38.
`
`(Currently Amended) The method of claim 37, further comprising acts of:
`
`mapping the time-varying multicharacter code to biometric information associated with
`
`the entity on whose behalf the transaction is to be perforrnedseiaviees—are—te—be—previded; and
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`providing the biometric information to the first partyserviee—previder.
`
`39.
`
`(Currently Amended) The method of claim 38, wherein the biometric
`
`information includes an image of the entity on whose behalf the transaction is to be
`
`performedserviees—arete—beprefided.
`
`40.
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`(Canceled).
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`41.
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`(Previously Presented) The secure registry system of claim 1, wherein the
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`account identifying information includes an account number.
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`42.
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`(Previously Presented) The secure registry system of claim 41, wherein the
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`account identifying information includes credit card account information and the account
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`number includes a credit card number.
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`43.
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`(Previously Presented) The secure registry system of claim 41, wherein the third
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`party includes a financial service provider and the account number includes at least one of a
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`debit card number and a credit card number.
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`44.
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`(Currently Amended) The secure registry of claim 43, wherein the m
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`partyservieeprevider includes a merchant, and the service includes a sale of at least one of
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`goods and services.
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`45.
`
`(Currently Amended) The secure registry system of claim 44, wherein the
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`processor is further configured to receive, from the first partyserviee—previder, a merchant ID,
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`and a purchase amount.
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`46.
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`(New) The secure registry system of claim 1, wherein the identity of the entity is
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`unknown until the time-varying code is mapped to the identity by the processor.
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`REMARKS
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`Claims 1-5, 9-16, 18-21, 24-30, 32-39 and 41-45 were previously pending in this
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`application. with claims 1 and 16 being independent claims. By this amendment, Applicant is
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`canceling claims 2 and 18 without prejudice or disclaimer. Claims 1, 5, 16, 21, 24-29, 32, 34-
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`36, 38, 39, 44 and 45 are amended. New claim 46 is added herein. As a result claims 1, 2-5, 9-
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`16, 19-21, 24-30, 32-39 and 41-46 are pending for examination with claims 1 and 16 being
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`independent claims. No new matter has been added. Support for the amendments can be found
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`in the originally-filed application in Fig. 10 and the associated description at page 19, line 22 to
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`page 20, line 16, for example.
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`Re'ections Under 35 U.S.C.
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`103 a
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`The Office Action rejects claims 1-5, 9-16, 18-21, 24-30, 32-39 and 41-45 under 35
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`U.S.C. §103(a) as being unpatentable over US. Patent No. 7,571,139 to Gioradano (hereinafter
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`Gioradano) in view of US. Patent No. 2006/025 6961 to Brainard (hereinafter Brainard).
`
`Applicant respectfully asserts that that claims as amended herein are patentable in view of the
`
`cited references at least because Giordano and Brainard alone or in proper combination do not
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`teach or suggest “a processor configured to receive, from the first party, the time-varying
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`multicharacter code for the entity on whose behalf a transaction is to be performed, configured to
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`map the time-varying multicharacter code to the identity of the entity and secure data associated
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`with the entity including information required to enable the transaction, the information
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`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
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`transaction without providing the account identifying information to the first party,” as recited in
`
`claim 1, for example.
`
`For example, the originally-filed application describes that a “user initiates an
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`anonymous purchase by entering a secret code into the electronic ID device and transmit[s] the
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`results to the on-line merchant.” The description further provides that “the merchant transmits
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`this information to the USR software 18, along with the store number and the amount of the
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`purchase.” As a result, approaches described in the application result in a “secure registry”
`
`receiving information to enable a “transaction” where the identity of the entity “on whose behalf
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`the transaction is to be performed” is anonymous until “the time-varying multicharacter code [is
`
`mapped] to the identity of the entity.”
`
`In contrast, Giordano only teaches approaches in which static information must be
`
`provided. For example, a “customer transceiver 50 is programmed with the customer’s ID
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`number in step 370, the customer transceiver 50 is mailed to the customer in step 380.” Further,
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`the “customer transceiver 50 consists of an electronic transmitter/receiver combination including
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`a unique customer/transmitter ID number programmed therein.” Giordano teaches that when the
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`customer transceiver interfaces with the merchant transceiver “a customer identification signal
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`including the unique customer/transmitter ID number is transmitted to the merchant
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`transceiver 48.” (col. 17, lines 28-59.) Accordingly, in Giordano operation of the system
`
`requires that the customer ID number provide the identification. Unlike a time-varying code, the
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`customer ID in Giordano is static and provides an identification that is matched to an index of
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`static values without requiring any additional measures. Although the system 10 does not
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`provide the customer’s credit card to the sales associate, it remains vulnerable to identity theft
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`because the customer ID number is a static piece of information that can be intercepted and later
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`used by an imposter.
`
`The Examiner admits and Applicant agrees that “Giordano does not explicitly teach a
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`time-varying code.” (Office Action at page 4.) Instead, the Office Action relies on Brainard for
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`an alleged teaching of “an authentication system including a time-varying code.” Id. Applicant
`
`respectfully notes that Brainard does not cure the deficiencies of Giordano because, in Brainard,
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`the user necessarily also provides a static identification that is used by a verifier. In particular,
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`“the verifier 221 determines whether the code is appropriate, for example, whether it is, in the
`
`above embodiment, correctly derived from the verifier seed, the user’s PIN and the current
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`time.” (Paragraph 005 8) As taught in Brainard, the verifier 221 necessarily must know the
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`purported identity of the user to determine whether the code was correctly derived.
`
`Thus, independent claims 1 and 16 are patentable at least because Giordano and Brainard
`
`alone or in proper combination do not teach or suggest an approach where a “secure registry”
`
`receives information to enable a “transaction” where the identity of the entity “on whose behalf
`
`the transaction is to be performed” is anonymous until “the time-varying multicharacter code [is
`7
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`mapped] to the identity of the entity.’ Claims 2 and 18 are canceled herein. Each of claims 3-5,
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`9-15, 19-21, 24-30, 32-39 and 41-45 depend from one of the allowable independent claims and
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`is patentable for at least the same reasons. Accordingly, reconsideration and withdrawal of this
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`rejection is respectfully requested.
`
`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
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`respectfully requested. If the Examiner believes, after this amendment, that the application is
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`not in condition for allowance, the Examiner is requested to call the Applicant’s attorney at the
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`telephone number listed below.
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`A Request for Continued Examination and a fee for a two month extension of time are
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`included herewith. If this response is not considered timely filed and if a request for an
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`extension of time is otherwise absent, Applicant hereby requests any necessary extension of
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`time. If there is a fee occasioned by this response, including an extension fee that is not covered
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`by an accompanying payment, please charge any deficiency to Deposit Account No. 50/2762,
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`Ref. No. W0537-700620.
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`Dated: November 29, 2011
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`Respectfully submitted,
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`Electronic signature:
`Robert V. Donahoe
`
`/Robert V. Donahoe/
`
`Registration No.: 46,667
`LANDO & ANASTASI LLP
`Riverfront Office Park
`One Main Street
`Suite 1100
`
`Cambridge, Massachusetts 02142
`(617) 395-7000
`
`Attorney for Applicant
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