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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`11/768,729
`
`06/26/2007
`
`Kenneth P. Weiss
`
`W0537—7006
`
`3536
`
`EXAMINER
`.
`Jew/Imam —
`””8”” —
`7590
`c/o Lowrie, Lando & Anastasi, LLP
`DADA, BEEMNET w
`Riverfront Office Park, One Main Street
`ART UNIT
`PAPER
`Cambridge, MA 02142
`— NW
`2435
`
`BER
`
`MAIL DATE
`
`12/18/2012
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`1 of 7
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`lof7
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`APPLE 1117
`
`APPLE 1117
`
`

`

`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`11/768,729
`
`Examiner
`BEEMNETDADA
`
`WEISS, KENNETH P.
`
`Art Unit
`2435
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`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 CFR1. 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.
`-
`- 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).
`
`Status
`
`1)IZI Responsive to communication(s) filed on 06 September 2012.
`
`2a)IZ| This action is FINAL.
`
`2b)I:l This action is non-final.
`
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZI Claim(s) 1 3-5 9-16 19-2124-30 32-39 and 41-48 is/are pending in the application.
`
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`
`6)I:I Claim(s) _ is/are allowed.
`
`7)|Zl Claim(s) 135 9- 16 19-2124-30 32-39 and 41 -48 is/are rejected.
`
`8)I:I Claim(s) _ is/are objected to.
`
`
`9)I:l Claim((s)
`
`are subject to restriction and/or election requirement.
`
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`
`htt
`:/'/www.us to. ovI’Watents/Init events/neb/Indexls or send an inquiry to PPeredback usntqt 0v.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`11)|:| The drawing(s) filed on _ is/are: a)|:l accepted or b)I:l objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)|:l AII
`
`b)I:I Some * c)|:l None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No. _
`
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) X Notice of References Cited (PTO-892)
`
`2) I] Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 09-12)
`
`3) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date.
`4) D Other:
`
`Office Action Summary
`20f7
`
`2 of 7
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`Part of Paper No./Mai| Date 20121210
`
`
`
`

`

`Application/Control Number: 11/768,729
`
`Page 2
`
`Art Unit: 2435
`
`DETAILED ACTION
`
`This office action is in reply to an amendment filed on September 06, 2012. Claims 1, 9,
`
`16 and 41—46 have been amended and new claims 47 and 48 have been added. Claims 1, 3—5, 9—
`
`16, 19—21, 24—30, 32—39 and 41—48 are pending.
`
`Response to Arguments
`
`Applicant’s arguments filed 09/06/2012 have been considered but are moot in View of
`
`new ground of rejection.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 USC. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(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.
`
`Claims 1, 3—5, 9—16, 19—21, 24—30, 32—39 and 41—48 are rejected under 35 USC. 103(a)
`
`as being unpatentable over Gioradano et al. US 7,571,139 B1 (hereinafter Gioradano) in View
`
`Weiss US 5,657,388.
`
`As per claims 1, 16, 47 and 48, Giorandano teaches a secure registry system for providing
`
`information to a service provider to enable the service provider to provide services to entities
`
`with secure data stored in the secure registry system, comprising:
`
`3 of 7
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`3of7
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`

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`Application/Control Number: 11/768,729
`
`Page 3
`
`Art Unit: 2435
`
`a database including secure data for each entity, wherein each entity is associated with
`
`and a multicharacter_code for each entity having secure data in the secure registry system,
`
`respectively [column 18, lines 14—47] and
`
`a processor configured to receive, from the first party, the multicharacter code for the
`
`entity on whose behalf of a transaction is to be performed, configured to map the multicharacter
`
`code to the identity of the entity and secure data associated with the entity including information
`
`required to enable the transaction, the information including account identifying information
`
`where the account identifying information is unknown to the first party, to provide the account
`
`identifying information to a third party to enable a transaction without providing the account
`
`identifying information to the first party (i.e., note that the POS system does not get access to
`
`customers credit/debit account information, column 18, lines 5—47). Giorandano does not
`
`explicitly teach a time—varying code. In the same field of endeavor, Weiss teaches a time varying
`
`multi character code, mapping the time—varying multi character code to the identity of an entity
`
`in a database using only the time—varying multi character code (i.e., one time non predictable
`
`code). It would have been obvious to one having ordinary skill in the art at the time of
`
`applicant’s invention to employ the teachings of Weiss within the system of Gioradano in order
`
`to enhance the security of the system.
`
`As per claims 3 and 19, Gioradano further teaches the system wherein the multicharacter
`
`code is provided to the system via a secure electronic transmission device [column 18, lines 14—
`
`47].
`
`4 of 7
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`4of7
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`Application/Control Number: 11/768,729
`
`Page 4
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`Art Unit: 2435
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`As per claim 4 and 20, Gioradano further teaches the system wherein the code is
`
`encrypted and transmitted to the system and wherein the system is configured to decrypt the code
`
`with a public key of the entity [column 18, lines 14—47].
`
`As per claims 5 and 21, Gioradano further teaches the system wherein said service
`
`provider's service includes delivery, wherein the information is an address to which n item is to
`
`be delivered to the entity, wherein the system receives the code and wherein the system uses the
`
`code to obtain the appropriate address for delivery of the item by the third party [column 18,
`
`lines 14—47].
`
`As per claim 9—15, 41—45, 24—27, 30, 32 and 41—45 Gioradano further teaches the system
`
`wherein the account identifying information includes credit card information regarding the entity
`
`and the processor is configured to provide the credit card information based upon the code of the
`
`entity to enable the transaction [column 18, lines 14—47].
`
`As per claims 28—29 and 33—39, Gioradano further teaches the system wherein the
`
`database is further configured to associate biometric information with each entity having secure
`
`data in the secure registry respectively [column 18, lines 14—47].
`
`As per claim 46, Giordano further teaches the system wherein the identity of the entity is
`
`unknown until the code is mapped to the identity by the processor [column 18, lines 5—47].
`
`5 of 7
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`Application/Control Number: 11/768,729
`
`Page 5
`
`Art Unit: 2435
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`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this
`
`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
`
`Applicant is reminded of the extension of time policy as set forth in 37 CFR l.l36(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the event a first reply is filed Within TWO
`
`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
`
`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
`
`Will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
`
`CFR l.l36(a) Will be calculated from the mailing date of the advisory action. In no event,
`
`however, Will the statutory period for reply expire later than SIX MONTHS from the date of this
`
`final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BEEMNET DADA Whose telephone number is (571)272—3847.
`
`The examiner can normally be reached on Monday — Friday (9:00 am — 5:30 pm).
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Kim Y. Vu can be reached on (571) 272—3859. The fax phone number for the
`
`organization Where this application or proceeding is assigned is 571—273—8300.
`
`6 of 7
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`Application/Control Number: 11/768,729
`
`Page 6
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`Art Unit: 2435
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto. gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/BEEMNET DADA/
`
`Primary Examiner, Art Unit 2435
`
`7 of 7
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`70f7
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