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`11768729
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`F'l'”g
`Date
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`F'rSl Name‘l Kenneth P. Weiss
`Inventor
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`
`
`
`
`
`2007-06-26
`
`9°Cket .Number W0537-700620
`(If applicable)
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`Art.
`Unit
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`B. W. Dada
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`Elaetagonichgignzatiurzeofosr Matthew H. Grady:
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`/Matthew H. Grady/
`
`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
`
`
`For: UNIVERSAL SECURE REGISTRY
`
`Examiner: B. W. Dada
`
`AMENDMENT
`
`Commissioner for Patents
`
`Dear Madam:
`
`INTRODUCTORY COMMENTS
`
`In conjunction with a Request for Continued Examination and in response to the
`
`Advisory Action mailed on May 1, 2013 and the Final Office Action mailed on December 18,
`
`2012, 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/Arguments begin on page 10 of this paper.
`
`1601508.l
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`2
`
`Docket No.: W0537-700620
`
`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in the
`application.
`
`Listing of Claims:
`
`1.
`
`(Currently Amended) A secure registry system for providing information to a first party
`
`to enable transactions between the first party and entities with secure data stored in the secure
`
`registry system, the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time—varying multicharacter code for each entity having secure data in the secure registry
`
`system, respectively, each time—varying multicharacter code representing an identity of one of
`
`the respective entities; and
`
`a processor configured to receive, from the first party, at least the time-varying
`
`multicharacter code for the entity on whose behalf a transaction is to be performed, configured to
`
`map the time—varying multicharacter code to the identity of the entity in the database using en-l—y
`
`the time-varying multicharacter code, to execute a restriction mechanism configured to
`
`determine compliance with any access restrictions for the first party to secure data for
`
`completing the transaction, and to allow or not allow access Q 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—LN
`
`provided to the first partyrte—previdefll the account identifying information is provided to a
`
`third party to enable the transaction with the first party and without providing the account
`
`identifying information to the first party.
`
`2.
`
`3.
`
`(Canceled)
`
`(Previously Presented) The system of claim 1, wherein the time-varying multicharacter
`
`code is provided to the system Via a secure electronic transmission device.
`
`4.
`
`(Previously Presented) The system of claim 1, wherein the time-varying multicharacter
`
`code is encrypted and transmitted to the system, and
`
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`3
`
`Docket No.: W0537-700620
`
`wherein the system is configured to decrypt the tirne—varying multicharacter code with a
`
`public key of the entity.
`
`5.
`
`(Previously Presented) The system as claimed in claim 1, wherein the transaction
`
`includes a service provided by the first party,
`
`wherein said first party’s service includes delivery,
`
`wherein the information is an address to which an item is to be delivered to the entity,
`
`wherein the system receives the time-varying multicharacter code, and
`
`wherein the system uses the time-varying multicharacter code to obtain the appropriate
`
`address for delivery of the item by the third party.
`
`6.
`
`7.
`
`8.
`
`9.
`
`(Canceled)
`
`(Canceled)
`
`(Canceled)
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information includes credit card account information regarding the entity, and wherein the
`
`processor is configured to provide the credit card account information based upon the
`
`multicharacter code of the entity to enable the transaction.
`
`10.
`
`(Previously Presented) The system as claimed in claim 9, wherein the system is
`
`configured to receive an approval of the credit card transaction.
`
`11.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information includes bank card account information regarding the entity, and wherein the
`
`processor is configured to provide the bank card account information to enable the transaction
`
`based upon the multicharacter code of the entity.
`
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`4
`
`Docket No.: W0537-700620
`
`12.
`
`(Previously Presented) The system as claimed in claim 11, wherein the system is
`
`configured to provide an approval of the bank card transaction.
`
`13.
`
`(Previously Presented) The system as claimed in claim 1, wherein the information
`
`includes personal identification information regarding the entity.
`
`14.
`
`(Previously Presented) 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 party.
`
`15.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information identifies email address information regarding the entity.
`
`16.
`
`(Currently Amended) A method for providing information to a first party to enable
`
`transactions between the first party and entities who have secure data stored in a secure regisz
`
`in which each entity is identified by a time-varying multicharacter code, the method comprising:
`
`receiving the time-varying multicharacter code for an entity on whose behalf a
`
`transaction is to take place;
`
`mapping the time—varying multicharacter code to an identity of the entity in a database
`
`using only the time-varying multicharacter code;
`
`determining compliance based—en with any access restrictions for the first party to secure
`
`data for completing the transaction;
`
`accessing information required to perform the transaction, the information including
`
`account identifying information—unknown—te—thefirst—pafi—y;
`
`providing the account identifying information to a third party without providing the
`
`account identifying information to the first party; and
`
`using the account identifying information to enable the first party to perform the
`
`transaction without the first party’s knowledge of the account identifying information.
`
`17.
`
`(Canceled)
`
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`5
`
`18.
`
`(Canceled)
`
`Docket No.: W0537-700620
`
`19.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the time-
`
`varying multicharacter code comprises receiving the time—varying multicharacter code
`
`transmitted via a secure electronic transmission device.
`
`20.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the time—
`
`varying multicharacter code comprises receiving an encrypted multicharacter code, and
`
`wherein the method further comprises decrypting the encrypted multicharacter code.
`
`21.
`
`(Previously Presented) The method as claimed in claim 16, wherein the transaction
`
`includes a service provided by the first party,
`
`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 first
`
`party.
`
`22.
`
`(Canceled)
`
`23.
`
`(Canceled)
`
`24.
`
`(Previously Presented) The method as claimed in claim 16, wherein the account
`
`identifying information includes a credit card number, and wherein the act of using the account
`
`identifying information comprises using the credit card number to enable the transaction.
`
`25.
`
`(Previously Presented) The method as claimed in claim 24, wherein the act of using the
`
`account identifying information comprises receiving a validation or denial of the transaction
`
`without providing the credit card number of the entity to the first party.
`
`8 of 16
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`6
`
`Docket No.: W0537-700620
`
`26.
`
`(Previously Presented) The method as claimed in claim 16, wherein the act of using the
`
`account identifying information comprises using bank card information about the entity to
`
`enable a transaction.
`
`27.
`
`(Previously Presented) 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 party.
`
`28.
`
`(Previously Presented) The method as claimed in claim 16, wherein the act of mapping
`
`the time—varying multicharacter code to information required by the first party comprises
`
`mapping the time—varying multicharacter code to personal identification information about the
`
`entity.
`
`29.
`
`(Previously Presented) The method as claimed in claim 28, wherein the personal
`
`identification information comprises a photograph of the entity, and
`
`wherein the method further comprises an act of providing the photograph to the first
`
`party.
`
`30.
`
`(Previously Presented) The method as claimed in claim 16, wherein the account
`
`identifying information identifies email address information about the entity.
`
`31.
`
`(Canceled).
`
`32.
`
`(Previously Presented) The method as claimed in claim 24, further comprising an act of
`
`transmitting to the first party one of an approval or a denial of the credit card transaction.
`
`33.
`
`(Previously Presented) The system of claim 1, wherein the database is further configured
`
`to associate biometric information with each entity having secure data in the secure registry,
`
`respectively.
`
`9 of 16
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`7
`
`Docket No.: W0537-700620
`
`34.
`
`(Previously Presented) The system of claim 33, wherein the processor is further
`
`configured to map the time-varying multicharacter code to biometric information associated with
`
`the entity on whose behalf the transaction is to be performed and to provide the biometric
`
`information to the first party.
`
`35.
`
`(Previously Presented) The system of claim 34, wherein the biometric information
`
`includes an image of the entity on whose behalf the transaction is to be performed.
`
`36.
`
`(Previously Presented) The system of claim 34, wherein the time-varying multicharacter
`
`code is generated by a device associated with the entity on whose behalf the transaction is to be
`
`performed.
`
`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 registry,
`
`respectively.
`
`38.
`
`(Previously Presented) 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 performed; and
`
`providing the biometric information to the first party.
`
`39.
`
`(Previously Presented) The method of claim 38, wherein the biometric information
`
`includes an image of the entity on whose behalf the transaction is to be performed.
`
`40.
`
`(Canceled).
`
`41.
`
`(Previously Presented) The system of claim 1, wherein the account identifying
`
`information includes an account number.
`
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`8
`
`Docket No.: W0537-700620
`
`42.
`
`(Previously Presented) The system of claim 41, wherein the account identifying
`
`information includes credit card account information and the account number includes a credit
`
`card number.
`
`43.
`
`(Previously Presented) The system of claim 41, wherein the third party includes a
`
`financial service provider and the account number includes at least one of a debit card number
`
`and a credit card number.
`
`44.
`
`(Previously Presented) The system of claim 43, wherein the first party includes a
`
`merchant, and the service includes a sale of at least one of goods and services.
`
`45.
`
`(Previously Presented) The system of claim 44, wherein the processor is further
`
`configured to receive, from the first party, a merchant ID, and a purchase amount.
`
`46.
`
`(Previously Presented) The system of claim 1, wherein the identity of the entity is
`
`unknown until the time-varying code is mapped to the identity by the processor.
`
`47.
`
`(Currently Amended) A secure registry system for providing information to a first party
`
`to enable transactions between the first party and entities with secure data stored in the secure
`
`registry system, the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time-varying multicharacter code for each entity having secure data in the secure registry
`
`system, respectively, each time-varying multicharacter code representing an identity of one of
`
`the respective entities, wherein the database is configured to permit or deny access to
`
`information on the respective entity using the time—varying multicharacter code; and
`
`a processor configured to receive; the time-varying multicharacter code for the entity on
`
`whose behalf a transaction is to be performed, configured to map the time-varying
`
`multicharacter code to the identity of the entity to identify the entity, configured to execute a
`
`restriction mechanism configured—to determine compliance with any access restrictions for the
`
`first party to secure data for completing the transaction, configured to obtain from the database
`
`the secure data associated with the entity including information required to enable the
`
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`9
`
`Docket No.: W0537-700620
`
`transaction, the information including account identifying information, and configured to
`
`provide the account identifying information to a third party to enable the transaction without
`
`providing the account identifying information to the first party.
`
`48.
`
`(Currently Amended) A secure registry system for providing information to a first party
`
`to enable transactions between the first party and entities with secure data stored in the secure
`
`registry system, the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time-varying multicharacter code for each entity having secure data in the secure registry
`
`system, respectively, each time—varying multicharacter code representing an identity of one of
`
`the respective entities; and
`
`a processor configured to receive the time-varying multicharacter code for the entity on
`
`whose behalf a transaction is to be performed, configured to map the time-varying
`
`multicharacter code to the identity of the entity without requiring further information to identify
`
`the entity, configured to access from the database secure data associated with the entity
`
`including information required to enable the transaction, the information including account
`
`identifying information, and configured to provide the account identifying information to a third
`
`party to enable the transaction without providing the account identifying information to the first
`
`party, and wherein enabling the transaction without providing account identifying information to
`
`the first party includes limiting the—aeeeunt—identifyi—n—g transaction information provided by the
`
`secure registry system to the first party to transaction approval information.
`
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
`
`10
`
`Docket No.: W0537-700620
`
`REMARKS
`
`Claims 1, 3-5, 9-16, 19-21, 24-30, 32-39 and 41-48 were previously pending in this
`
`application. Claims 1, 16, 47 and 48 have been amended. As a result claims 1, 3-5, 9-16, 19-21,
`
`24—30, 32—39 and 41—48 are pending for examination with claims 1, 16, 47 and 48 being
`
`independent claims. No new matter has been added.
`
`mm
`
`As indicated in the Advisory Action communicated on May 1, 2013, the submitted
`
`amendments require further search and/or consideration. Applicant respectfully submits the
`
`present amendment (assuming entry of the Amendments to the claims submitted on April 12,
`
`2013) for further considered. For the convenience of the Examiner, Applicant has included the
`
`prior argument in the April 12, 2013 Response updated to reflect the claim amendments
`
`presented herein.
`
`Rejections Under 35 U.S.C. §103
`
`The Office Action rejected claims 1, 3—5, 9—16, 19—21, 24—30, 32—39 and 41—48 under 35
`
`U.S.C. §103(a) as being unpatentable over U.S. Patent No. 7,571,139 B1 to Gioradano et a1.
`
`(hereinafter Gioradano) in view of U.S. Patent No. 5,657,388 to Weiss (hereinafter Weiss). In
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`response, Applicant has amended claims 1, 16, 47 and 48 and submits the following remarks.
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`Applicant respectfully asserts that the claim 1, as amended, is patentable in View of the
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`alleged combination at least because Giordano and Weiss alone or in proper combination do not
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`teach or suggest “a restriction mechanism configured to determine compliance with any access
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`restrictions for the first party to secure data for completing the transaction,” as recited in claim 1,
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`as amended.
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`Giordano is directed to “a network for processing retail sales transactions” including “a
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`customer transceiver with a unique customer number” (Abstract). Giordano teaches a
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`“transaction processing system” that processes transactions with the “appropriate payment
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`processing center” based on received authorization requests including “the customer ID,
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`merchant ID and transaction data” (Col. 3 Lines 29—36). In summary, Giordano teaches the use
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`of a customer transceiver to authorize a transaction processing system to carry out a monetary
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`transaction between a customer and a merchant at the appropriate payment processing center.
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`13 of 16
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`Application No. 1 1/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
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`11
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`Docket No.: W0537-700620
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`Giordano does not teach or suggest “a restriction mechanism configured to determine
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`compliance with any access restrictions for the first party to secure data for completing the
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`transaction,” as recited in claim 1, as amended. Rather, Giordano teaches the use of a customer
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`transceiver to authorize a transaction processing system to carry out a monetary transaction
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`between a customer and a merchant at the appropriate payment processing center. Accordingly,
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`claim 1, as amended, distinguishes over the Giordano reference.
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`Weiss is directed to “a method and apparatus for utilizing a token” to “provide secure
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`access by authorized users to a selected resource” (Abstract). Weiss teaches the generation and
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`use of a one-time variable multi-character code based in part on information stored in the token
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`to authenticate the user’s identity. Weiss does not teach or suggest “a restriction mechanism
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`configured to determine compliance with any access restrictions for the first party to secure data
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`for completing the transaction,” as recited in claim 1, as amended. Rather, Weiss teaches the use
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`of a one-time variable multi-character code based in part on information stored in a user’ 5 token
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`to authenticate a user. Accordingly, claim 1, as amended, distinguishes over the Weiss
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`reference.
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`As neither Giordano nor Weiss teach or suggest “a restriction mechanism configured to
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`determine compliance with any access restrictions for the first party to secure data for
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`completing the transaction,” the combination, even if assumed proper, does not teach or suggest
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`claim 1, as amended. Claims 3—5, 9—15, 33—36 and 41—46 depend from claim 1 and are allowable
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`for at least the same reasons. Accordingly, withdrawal of the rejection of claims 1, 3-5, 9-15,
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`33-36 and 41-46 under 35 U.S.C. §103(a) is respectfully requested.
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`Independent Claim 16
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`Independent claim 16, as amended, recites “determining compliance with any access
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`restrictions for the first party to secure data for completing the transaction.” As discussed above
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`with respect to claim 1, Giordano teaches the use of a customer transceiver to authorize a
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`transaction processing system to carry out a monetary transaction between a customer and a
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`merchant at the appropriate payment processing center. Thus, Giordano does teach or suggest
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`“determining compliance with any access restrictions for the first party to secure data for
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`completing the transaction,” as recited in claim 16, as amended. Assuming the combination is
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`proper, the addition of Weiss does not cure this deficiency as Weiss does not teach or suggest
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`14 of 16
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
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`12
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`Docket No.: W0537-700620
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`“determining compliance with any access restrictions for the first party to secure data for
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`completing the transaction,” as recited in claim 16, as amended. Claims 19-21, 24-30, 32 and
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`37-39 depend from claim 16 and are allowable for at least the same reasons. Accordingly,
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`withdrawal of the rejection of claims 16, 19—21, 24—30, 32 and 37—39 under 35 U.S.C. §103(a) is
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`respectfully requested.
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`Independent Claim 47
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`Independent claim 47 is also patentable in view of the alleged combination at least
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`because Giordano and Weiss alone or in proper combination do not teach or suggest “restriction
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`mechanism to determine compliance with any access restrictions for the first party to secure data
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`for completing the transaction,” as recited in claim 47, as amended. As discussed above with
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`respect to claim 1, Giordano teaches the use of a customer transceiver to authorize a transaction
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`processing system to carry out a monetary transaction between a customer and a merchant at the
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`appropriate payment processing center. The addition of Weiss does not cure this deficiency.
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`Accordingly, withdrawal of the rejection of claim 47 under 35 U.S.C. §103(a) is respectfully
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`requested.
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`Independent Claim 48
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`Independent claim 48, as amended, is patentable in view of the alleged combination at
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`least because Giordano and Weiss alone or in proper combination do not teach or suggest
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`“wherein enabling the transaction without providing account identifying information to the first
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`party includes limiting transaction information provided by the secure registry system to the first
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`party to transaction approval information,” as recited claim 48, as amended. Giordano teaches
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`the “transaction processing system” transmitting to the online merchant “identification
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`information and other data unique to the associated customer in the absence of a retail
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`transaction” (See Col. 4 Lines 17-21). Giordano explicitly teaches the transmission of
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`information regarding the user (e.g., entity or purchaser), including loyalty program information
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`(See e.g., Col. 4 Lines 54—58), to a merchant (e.g., first party) rather than limiting the
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`information transmitted to the merchant to transaction approval information. Accordingly,
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`Giordano does not teach or suggest claim 48, as amended. Assuming the combination is proper,
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`the addition of Weiss does not cure this deficiency. Weiss teaches the use of a one-time variable
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`15 of 16
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`Application No. 11/768,729
`Amendment dated May 20, 2013
`After Final Office Action of December 18, 2012
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`13
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`Docket No.: W0537-700620
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`multi—character code based in part on information stored in a user’ 5 token to authenticate a user.
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`Thus, Weiss does not teach “wherein enabling the transaction without providing account
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`identifying information to the first party includes limiting the account identifying information
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`provided by the secure registry system to the first party to transaction approval information,” as
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`recited in claim 48, as amended. Accordingly, withdrawal of the rejection of claim 48 under 35
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`U.S.C. §103(a) is respectfully requested.
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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
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`not in condition