`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
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`
`
`
`
`CONF {MATION NO.
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`11/768,729
`
`06/26/2007
`
`Kenneth P. Weiss
`
`W0537—700620
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`3536
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`37462
`
`7590
`
`10/02/2013
`
`LANDO&ANASTASLLLP
`ONE MAIN STREET, SUITE 1100
`CAMBRIDGE, MA 02142
`
`GYORFI, THOMAS A
`ART UNIT
`PAPER NUMBER
`
`2435
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`10/02/2013
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`docketing @LALaw.c0m
`gengelson @ LALaw.c0m
`
`PTOL—90A (Rev. 04/07)
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`1 of 14
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`APPLE 1121
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`APPLE 1121
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`

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`
`
`Applicant(s)
`Application No.
` 11/768,729 WEISS, KENNETH P.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`2435Thomas Gyorfi it?“
`
`-- 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 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.
`-
`- 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 5/20/13.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| 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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`5)IZI Claim(s) 1 3-5 9-16 19-21 24-30 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)|Z| Claim(s) 135 9-1619-2124-30 32-39 and 41 -48 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* 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
`\WII‘IN.LIsct0. ov/ atents/init events/
`
`
`
`hit
`:i/
`iindex.‘s or send an inquiry to PPI-iieedback{®usgto.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I 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:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some * c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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)
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`1) E Notice of References Cited (PTO-892)
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`3) D Interview Summary (PTO-413)
`
`Paper N°ISI/Ma" Date' —
`PTO/SB/08
`t
`t
`St
`I
`D'
`1'
`r
`2 IZI I
`)
`4) I:I Other:
`a emen (s) (
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date 5/20/13.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 08-13)
`
`Part of Paper No./Mai| Date 20130925
`
`Office Action Summary
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`2 of 14
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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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`1.
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`Claims 1, 3-5, 9-16, 19-21, 24-30, 32-39, & 41-48 remain for examination. The
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`amendment filed 5/20/13 amended claims 1, 16, 47, & 48.
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`Continued Examination Under 37 CFR 1. 1 14
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`2.
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/20/13
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`has been entered.
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`Information Disclosure Statement
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`3.
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`The information disclosure statement (IDS) submitted on 5/20/13 was filed after
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`the mailing date of the Final Rejection on 12/18/12. The submission is in compliance
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`with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is
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`being considered by the examiner.
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`Response to Arguments
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`4.
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`Applicant’s arguments, see pages 10-13 of the amendment filed 5/20/13, with
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`respect to the rejection(s) of claim(s) 1-48 under 35 USC 103(a) have been fully
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`considered and are persuasive. Therefore, the rejection has been withdrawn.
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`Application/Control Number: 11/768,729
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`Page 3
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`Art Unit: 2435
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`However, upon further search and consideration of the art, a new ground(s) of rejection
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`is made in view of the newly discovered reference U.S. Patent 7,742,967 (hereinafter,
`
`“Keresman”).
`
`Claim Objections
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`5.
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`Applicant is advised that should claim 1 be found allowable, claim 47 will be
`
`objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two
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`claims in an application are duplicates or else are so close in content that they both
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`cover the same thing, despite a slight difference in wording, it is proper after allowing
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`one claim to object to the other as being a substantial duplicate of the allowed claim.
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`See MPEP § 706.03(k).
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`Claim Rejections - 35 USC § 103
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`6.
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`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
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`7.
`
`Claims 1, 3-5, 9-16, 19-21, 24-30, 32-39, & 41-48 are rejected under pre-AIA 35
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`U.S.C. 103(a) as being unpatentable over Giordano (U.S. Patent 7,571,139) in view of
`
`Keresman (U.S. Patent 7,742,967).
`
`Regarding claims 1, 47, and 48:
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`Giordano teaches a secure registry system comprising: a database including
`
`secure data for each entity, wherein each entity is associated with a [time-varying] multi-
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`character code for each entity having secure data in the secure registry system,
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`respectively, each [time-varying] multi-character code representing an identity of one of
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`the respective entities (col. 18, lines 14-47); and a processor configured to receive, from
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`the first party, at least the [time-varying] multi-character code for the entity on whose
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`behalf a transaction is to be performed, configured to map the [time-varying] multi-
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`character code to the identity of the entity in the database using the [time-varying] multi-
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`character code, and to allow or not allow access to secure data associated with the
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`entity including information required to enable the transaction, the information including
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`account identifying information, wherein the account identifying information is not
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`provided to the first party, and the account identifying information is provided to a third
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`party to enable the transaction with the first party and without providing the account
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`identifying information to the first party (i.e. note that the POS system does not get
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`access to customers credit/debit account information: col. 18, lines 5-47). Specific to
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`claim 48, Giordano further discloses wherein enabling the transaction without providing
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`the account identifying information to the first party includes limiting transaction
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`information provided by the secure registry system to the first party to transaction
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`approval information (the buyer either succeeds in purchasing his desired products or is
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`declined, with no other information being provided: col. 18, line 65 — col. 19, line 15).
`
`Giordano does not disclose wherein his multi-character code is a time-varying
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`multi-character code; nor [specific to claims 1 & 47] does Giordano disclose a restriction
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`mechanism configured to determine compliance with any access restrictions for the first
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`party to secure data for completing the transaction. However, Keserman discloses a
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`related invention for securing e-commerce wherein in addition to explicitly disclosing the
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`use of time-varying multi-character codes for identity verification and authentication (col.
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`7, lines 1-45), but additionally Keserman discloses wherein his invention comprises a
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`restriction mechanism that can specify and enforce access restrictions for the first party
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`to secure data for completing the transaction (i.e. even if the first party can successfully
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`authenticate oneself to the system, said first party may be restricted to where, when and
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`with whom one may conduct transactions with: col. 6, lines 45-65).
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`It would have been
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`obvious to incorporate these features of Keserman's e-commerce system into
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`Giordano's, as time-varying multi-character codes have long since been known in the
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`art as an obvious improvement for authentication (e.g. Keserman, col. 7, lines 35-45),
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`while the restriction mechanism provides the obvious benefits of protecting customers
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`from transactions with dubious merchants, or preventing one from spending beyond
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`one’s approved limits (col. 6, lines 60-65).
`
`Regarding claim 16:
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`Giordano discloses a method comprising: receiving the [time-varying] multi-
`
`character code for an entity on whose behalf a transaction is to take place (col. 18, lines
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`15-20); mapping the [time-varying] multi-character code to an identity of the entity in a
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`database using the [time-varying] multi-character code (col. 18, lines 20-35); accessing
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`information required to perform the transaction, the information including account
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`identifying information (col. 18, lines 20-54); providing the account identifying
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`information to a third party without providing the account identifying information to the
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`Page 6
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`first party (i.e. note that the POS system does not get access to customers credit/debit
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`account information: col. 18, lines 5-47); and using the account identifying information to
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`enable the first party to perform the transaction without the first party’s knowledge of the
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`account identifying information (Ibid).
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`Giordano does not disclose wherein his multi-character code is a time-varying
`
`multi-character code; nor does Giordano disclose determining compliance with any
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`access restrictions for the first party to secure data for completing the transaction.
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`However, Keserman discloses a related invention for securing e-commerce wherein in
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`addition to explicitly disclosing the use of time-varying multi-character codes for identity
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`verification and authentication (col. 7, lines 1-45), but additionally Keserman discloses
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`wherein his invention comprises a restriction mechanism that can specify and enforce
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`access restrictions for the first party to secure data for completing the transaction (i.e.
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`even if the first party can successfully authenticate oneself to the system, said first party
`
`may be restricted to where, when and with whom one may conduct transactions with:
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`col. 6, lines 45-65).
`
`It would have been obvious to incorporate these features of
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`Keserman's e-commerce system into Giordano's, as time-varying multi-character codes
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`have long since been known in the art as an obvious improvement for authentication
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`(e.g. Keserman, col. 7, lines 35-45), while the restriction mechanism provides the
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`obvious benefits of protecting customers from transactions with dubious merchants, or
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`preventing one from spending beyond one’s approved limits (col. 6, lines 60-65).
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`Application/Control Number: 11/768,729
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`Page 7
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`Art Unit: 2435
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`Regarding claims 3 and 19:
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`The combination further discloses wherein the multi-character code is provided to
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`the system via a secure electronic transmission device (Giordano: col. 18, lines 14-47;
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`Keresman: col. 7, lines 1-35).
`
`Regarding claims 4 and 20:
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`The combination further discloses wherein the code is encrypted and transmitted
`
`to the system and wherein the system is configured to decrypt the code with a public
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`key of the entity (Giordano: col. 18, lines 14-47).
`
`Regarding claims 5 and 21:
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`The combination further discloses wherein said service provider includes
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`delivery, wherein the information is an address to which an item is to be delivered to the
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`entity, wherein the system receives the code and wherein the system uses the code to
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`obtain the appropriate address for delivery of the item by the third party (Giordano: lbid;
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`Keresman: col. 9, lines 15-30).
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`Regarding claims 9 and 24:
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`The combination further discloses wherein the account identifying information
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`includes a credit card number, and wherein the act of using the account identifying
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`information comprises using the credit card number to enable the transaction (Giordano:
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`col. 16, lines 45-67; Keresman: col. 11, lines 30-50).
`
`Regarding claims 10 and 25:
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`The combination further discloses wherein the act of using the account
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`identifying information comprises receiving a validation or denial of the transaction
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`without providing the credit card number of the entity to the first party (lbid).
`
`Regarding claims 11 and 26:
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`The combination further discloses wherein the account identifying information
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`includes bank card account information regarding the entity, and wherein the processor
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`is configured to provide the bank card account information to enable the transaction
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`based upon the multi-character code of the entity (Giordano: col. 16, lines 45-67;
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`Keresman, col. 11, lines 30-50; debit cards equally applicable at col. 10, lines 28—45).
`
`Regarding claims 12 and 27:
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`The combination further discloses wherein the system is configured to provide an
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`approval of the bank card transaction without providing a bank card number of the entity
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`to the first party (Giordano: col. 18, lines 40-67; Keresman: col. 10, lines 28—45).
`
`Regarding claims 13 and 28:
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`Application/Control Number: 11/768,729
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`Page 9
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`Art Unit: 2435
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`The combination further discloses wherein the information includes personal
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`identification information regarding the entity (Giordano: col. 16, lines 30-40; Keresman:
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`col. 4, lines 40-55).
`
`Regarding claims 14 and 29:
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`The combination further discloses wherein the personal identification comprises
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`a photograph of the entity, and wherein the photograph is provided to the first party
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`(Giordano: picture ID at col. 11, lines 35-45).
`
`Regarding claims 15 and 30:
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`The combination further discloses wherein the account identifying information
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`identifies email address information regarding the entity (Keresman: col. 4, lines 40-60).
`
`Regarding claim 32:
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`The combination further discloses an act of transmitting to the first party one of
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`an approval or denial of the credit card transaction (Giordano: col. 18, line 65 — col. 19,
`
`line 15; Keresman: col. 6, lines 5-20).
`
`Regarding claims 33 and 37:
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`The combination further discloses wherein the database is further configured to
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`associate biometric information with each entity having secure data in the secure
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`registry, respectively (Keresman: col. 8, lines 35-46).
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`Application/Control Number: 11/768,729
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`Page 10
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`Art Unit: 2435
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`Regarding claims 34 and 38:
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`The combination further discloses wherein the processor is further configured to
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`map the time-varying multi-character code to biometric information associated with the
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`entity on whose behalf the transaction is to be performed and to provide the biometric
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`information to the first party (Keresman: col. 8, lines 10-45).
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`Regarding claims 35 and 39:
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`The combination further discloses wherein the biometric information includes an
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`image of the entity on whose behalf the transaction is to be performed (Keresman: lbid;
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`see also Giordano: col. 11, lines 35-45).
`
`Regarding claim 36:
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`The combination further discloses wherein the time-varying multi-character code
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`is generated by a device associated with the entity on whose behalf the transaction is to
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`be performed (the credit token: Keresman: col. 7, lines 1-20).
`
`Regarding claim 41:
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`The combination further discloses wherein the account identifying information
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`includes an account number (Giordano: col. 18, lines 15-20; Keresman: col. 5, lines 40-
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`60).
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`Application/Control Number: 11/768,729
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`Page 11
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`Art Unit: 2435
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`Regarding claim 42:
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`The combination further discloses wherein the account identifying information
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`includes credit card account information and the account number includes a credit card
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`number (Giordano: col. 9, lines 10-20; Keresman: col. 6, lines 5-25).
`
`Regarding claim 43:
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`The combination further discloses wherein the third party includes a financial
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`service provider and the account number includes at least one of a debit card number
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`and a credit card number (Giordano: lbid; Keresman: lbid).
`
`Regarding claim 44:
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`The combination further discloses wherein the first party includes a merchant,
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`and the service includes a sale of at least one of goods and services (Giordano: col. 9,
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`lines 45-60; Keresman: col. 4, lines 40-60).
`
`Regarding claim 45:
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`The combination further discloses wherein the processor is further configured to
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`receive, from the first party, a merchant ID, and a purchase amount (Giordano: col. 10,
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`lines 25-35; Keresman: col. 10, line 45 — col. 11, line 30).
`
`Regarding claim 46:
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`Application/Control Number: 11/768,729
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`Page 12
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`Art Unit: 2435
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`The combination further discloses wherein the identity of the entity is unknown
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`until the time-varying code is mapped to the identity by the processor (Giordano: col. 18,
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`lines 5-47).
`
`Conclusion
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`8.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Thomas Gyorfi whose telephone number is (571 )272—
`
`3849. The examiner can normally be reached on 10:00am - 6:30pm Monday - Friday.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Joseph Hirl can be reached on (571) 272-3685. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
`
`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
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`Application/Control Number: 11/768,729
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`Page 13
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`Art Unit: 2435
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`/Thomas Gyorfi/
`Examiner, Art Unit 2435
`9/25/13
`
`/Darren B Schwartz/
`
`Primary Examiner, Art Unit 2435
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