fix AND
`”W
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`15/019,660
`
`02/09/2016
`
`Kenneth P. Weiss
`
`W0537—700924
`
`1202
`
`LANDO & ANASTASI, LLP
`ONE MAIN STREET, SUITE 1100
`CAMBRIDGE, MA 02142
`
`CHEUNG’ CALVIN K
`
`ART UNIT
`
`3668
`
`PAPER NUIVIBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/15/2016
`
`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)
`
`i
`
`Apple 1007
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/019,660 WEISS, KENNETH P.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`CALVIN CHEUNG first“ 3668
`
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136(a).
`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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 2/9/2016.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`a)I:| 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
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)|XI CIaim(s)1-_12is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s)_ is/are allowed.
`7)IZ| Claim(s)_1-12 is/are rejected.
`8)IZ| Claim(s)_3 and 4 is/are objected to.
`
`9)|: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
`
`
`
`://www.usoto. ov/ atentS/init events"
`h/index.‘s , orsend an inquiry to PPI-Ifeedback{<‘buspto.qov.
`
`htt
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I 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:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)|:l All
`1.|: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)
`
`
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) E InformatIon DIscIosure Statement(s) (PTO/SB/08a and/or PTO/SB/Osb)
`Paper No(s)/Mai| Date 2/9/2016.
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`1
`
`Part of Paper No./Mai| Date 20160408
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 2
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`Art Unit: 3668
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`DETAILED ACTION
`
`Office Action Identifier
`
`This office action is given an identifier, Paper No. 20160408, for reference purposes
`
`only.
`
`Continuation Application
`
`This application is a continuation application (“CON”) of US. App# 14027860, now
`
`US. Pat# 9100826 which is a CON of US. App# 13621609, now US. Pat# 8538881 which is a
`
`CON of US. App# 13168556, now U.S. Pat# 8271397 which is a CON of U.S. App# 11677490,
`
`now US. Pat# 8001055 . See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and
`
`MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art
`
`cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all
`
`documents cited or considered “of record’ in the Parent Application are now considered cited or
`
`“of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the
`
`information cited or “of record’ in the Parent Application need not be resubmitted in this
`
`application unless Applicant(s) desire the information to be printed on a patent issuing from this
`
`application. See MPEP §609.02 A. 2. Finally, Applicant(s) are reminded that the prosecution
`
`history of the Parent Application is relevant in this application. See e. g., Microsoft Corp. v.
`
`Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding
`
`that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 - Page 3
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`Art Unit: 3668
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`Notice of Pre-AIA 0r AIA Status
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`The present application is being examined under the pre—AIA first to invent provisions.
`
`Track-1 Status
`
`Track—1 status was granted to this application by the USPTO on 22 March 2016.
`
`Status of Claims
`
`Claims 1—12 filed 9 February 2016 are examined in this office action.
`
`Allowable Subject Matter
`
`Claims 3—4 would be allowable if rewritten to overcome all pending objection(s) and all
`
`pending rejection(s) set forth in this Office action and to include all of the limitations of the base
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`claim and any intervening claims.
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`1.
`
`Claims 1 and 10 are objected to because of the following informalities:
`
`Claim Objections
`
`Claim 1 does not follow the convention of separating distinct elements/steps of the claims
`
`with line spacings or line indentations. MPEP 608.01(i) expressly states, “. .. Where a claim sets
`
`forth a plurality of elements or steps, each element or step of the claim should be separated by a
`
`line indentation.” For example, claim 1 contains an individual “wherein” clause hiding a
`
`

`

`Application/Control Number: 15/019,660
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`Paper No. 20160408 — Page 4
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`Art Unit: 3668
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`plurality of fiarther “wherein” clauses that also including multiple distinct steps and/or elements;
`
`however, the claim as presented fails to delineate these elements in accordance with MPEP
`
`608.01(i).
`
`Claim 10 does not follow the convention of separating distinct elements/steps of the
`
`claims with line spacings or line indentations. MPEP 608.01(i) expressly states, “. .. Where a
`
`claim sets forth a plurality of elements or steps, each element or step of the claim should be
`
`separated by a line indentation.” For example, claim 10 contains more than one “wherein”
`
`clause; however, the claim as presented fails to delineate these elements in accordance with
`
`MPEP 608.01(i).
`
`Claim Rejections - 35 USC § 112(3) 0r (pre-AIA) Second Paragraph
`
`2.
`
`The following is a quotation of 35 USC. 112(B):
`
`(B) CONCLUSION.7The specification shall conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
`
`The following is a quotation of 35 USC. 112 (pre—AIA), second paragraph:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject
`matter which the applicant regards as his invention.
`
`3.
`
`Claims 1—11 are rejected under 35 USC. 112(B) or 35 USC. 112 (pre—AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
`
`invention.
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 - Page 5
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`Art Unit: 3668
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`Claim 1 recites “a first device including” which solely pertains to actions performed by
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`and components contained within said “first device” only; however, the claim filrther recites
`
`“wherein the second device is configured to retrieve biometric information associated with the
`
`user of the first handheld device from stored biometric information of a plurality of first users
`
`stored in a second memory of the second device, or receive proof of biometric authentication
`
`associated with the user of the first handheld device, and wherein the second processor is also
`
`configured to use at least a portion of the first authentication information with the proof of
`
`biometric authentication to complete processing of the transaction, wherein processing of the
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`transaction includes authentication of an identity of the user of the first handheld device to
`
`enable the transaction” are not actions and components performed by or components contained
`
`within said “first device”. The Examiner interprets these limitations are performed by and
`
`contained within “a second device including” not by “a first device including”.
`
`Claim 1 also recites the limitations “th_e first handheld device” and “th_e second
`
`processor”. There is insufficient antecedent basis for these limitations in the claim.
`
`Claims 2—11 are rejected based on their dependency.
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`Claim Rejections - 35 USC § 103
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`4.
`
`The following is a quotation of pre—AIA 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
`
`

`

`Application/Control Number: 15/019,660
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`Paper No. 20160408 - Page 6
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`Art Unit: 3668
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`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`5.
`
`Claims 1—2 and 5—12 are rejected under pre—AIA 35 U.S.C. 103(a) as being unpatentable
`
`over US 20020178364 Al (“Weiss”) from IDS and further in View of US 6819219 B1 (“Bolle”)
`
`from IDS.
`
`Regarding Claim 1, Weiss discloses a system for authenticating a user for enabling a
`
`transaction (‘fl 1, 12, 17), the system comprising:
`
`0
`
`a first device (‘J[ 52, 108) including:
`
`o
`
`a first processor, the first processor programmed (‘J[ 40, 52)
`
`I
`
`to authenticate (e. g., identification/verification. . .functions) a user
`
`(e. g., person) of the first device based on secret information (‘JI 17—18,
`
`46, 51) and
`
`I
`
`to retrieve or receive first biometric information of the user of the first
`
`handheld device (‘fl 52—53, 108); and
`
`o
`
`a first transceiver
`
`I
`
`coupled to the first processor (‘J[ 40, 52, and FIG. 17 with associated
`
`text. The Examiner interprets FIG. 17 showing a laptop connecting to
`
`another entity therefore the laptop is demonstrating this feature.) and
`
`I
`
`programmed to transmit a first signal including first authentication
`
`information (e. g., biometric information) of the user of the first
`
`handheld device (‘J[ 53, 99—100, FIG. 17 with associated text);
`
`0 wherein the first processor is programmed (‘J[ 40, 52)
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 7
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`Art Unit: 3668
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`to generate one or more (Only one option is required to satisfy a “one
`
`or more” limitation.) signals including the first authentication
`
`information, an indicator of biometric authentication (e.g., facial
`
`confirmation), and a time varying value (e.g., time varying number) in
`
`response to valid authentication of the first biometric information (‘fl
`
`51—53, FIG. 6 and 10 with associated text. All embodiments of Weiss’
`
`invention practice a signal representative of “enable the identity of the
`
`user possessing the identifying device to be verified at the point of
`
`use”, meaning a positive result confirms the person is the correct
`
`person),
`
`to provide the first authentication information for processing by a
`
`second device (‘11 53, FIG. 1 with associated text. IN 1] 53, “database” is
`
`located in USR system according to (H 20.); and
`
`to receive an enablement signal indicating an approved transaction
`
`from the second device (‘J[ 68),
`
`0 wherein the enablement signal is provided from the second
`
`device based on use of the one or more signals (‘J[ 68, 74),
`
`0 wherein the second device (e.g., USR system) (“USR system
`
`may be physically embodied as a separate identification
`
`device”, 1] l7 and “. . .an information system is formed as a
`
`computer program running on a computer or group of
`
`

`

`Application/Control Number: 15/019,660
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`Paper No. 20160408 - Page 8
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`Art Unit: 3668
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`computers configured to provide a universal secure registry
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`(USR) system”, 1] 37) is configured to
`
`o
`
`retrieve biometric information associated with the user
`
`of the first handheld device from stored biometric
`
`information (e.g., universal secure registry (“USR”)) of
`
`a plurality of first users (e.g., “Person No. 1”, “Person
`
`No. 2”, “Person No. 11” from FIG. 1) stored in a second
`
`memory (e.g., USR database) of the second device
`
`(FIG. 1 and 6 with associated text; in particular, see (H
`
`20 and “. . .retrieving data from the USR database”, 1]
`
`25), or
`
`0
`
`receive proof (e.g., picture) of biometric authentication
`
`associated with the user of the first handheld device (‘J[
`
`53, 100. Weiss discloses “. . .transmitting back to the
`
`validator a picture of the person to whom the electronic
`
`ID card was issued”, 1] 100), and
`
`wherein the second processor (e.g., CPU 16) is also configured
`
`to use at least a portion of the first authentication information
`
`with the proof of biometric authentication to complete
`
`processing of the transaction (‘J[ 17, 37—38, 53, 100. Weiss
`
`discloses the use of “biometric information”, 1] 53, with “the
`
`

`

`Application/Control Number: 15/019,660
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`Paper No. 20160408 - Page 9
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`Art Unit: 3668
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`validator can ensure that the person using the electronic ID
`
`card is the proper person”, 1] 100),
`
`0 wherein processing of the transaction includes authentication
`
`of an identity of the user of the first handheld device to enable
`
`the transaction (‘J[ 53, 100).
`
`Weiss does not directly disclose a wireless transceiver and wireless signal; and a
`
`biometric sensor configured to capture a first biometric information of the user.
`
`However, Bolle teaches
`
`o
`
`a wireless transceiver and wireless signal (Title, Abstract, FIG. 6 and 8 with
`
`associated text); and
`
`o
`
`a biometric sensor (e. g., “biometric reader” from FIG. 6 and 8) configured to
`
`capture a first biometric information of the user (FIG. 6—8 with associated text;
`
`in particular, FIG. 7, Step 704);
`
`It would have been obvious to one of ordinary skill in the art BEFORE the time of the
`
`invention was made to modify Weiss’ invention by incorporating the wireless technology as
`
`taught by Bolle in order to transmit wirelessly stored biometric for authentication purposes
`
`(Ab stract) .
`
`Regarding Claim 2, Weiss discloses wherein the first processor is programmed to
`
`determine the first authentication information so that the first authentication information is
`
`generated based on, at least part of the first biometric information or (Only one option is required
`
`to satisfy an “or” limitation.) generated based on receiving the first biometric information (‘J[ 11,
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 10
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`Art Unit: 3668
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`53, 100, FIG. 1 with associated text, Claim 14. Weiss discloses identifying a user based on
`
`biometric information which uses said biometric information collected and stored beforehand in
`
`Weiss’ “USR database” in order to meet a need to verify said user’s identity.).
`
`Regarding Claim 5, Weiss discloses wherein the first processor is further
`
`0
`
`configured to compare stored authentication information with the authentication
`
`information of the user (‘J[ 17, 37—38, 44, 112, Claim 14) and
`
`o
`
`configured to enable the first device based on a valid comparison (‘J[ 108, 111, Claim
`
`14).
`
`Regarding Claim 6, Weiss discloses wherein the first processor is further configured to
`
`encrypt the first authentication information to communicate to a second device (‘J[ 12, 45. Weiss
`
`discloses communications is encrypted.).
`
`Regarding Claim 7, Weiss discloses wherein the first handheld device
`
`0
`
`includes a first memory coupled to the processor included in the first handheld device
`
`(1] 52, 108. Weiss discloses “other computing devices” such as these handheld
`
`examples, “cell phone, pager, ID badge, wrist watch, computer, personal digital
`
`assistant, key fob, or other commonly available electronic device” where many of
`
`these devices have embodiments where memory is coupled to a processor along with
`
`“any type of electronic device”. “[L]aptop is disclosed in (H 108.) and
`
`o
`
`configured to store respective biometric information (‘J[ 17, 37—38, 44, 112, Claim 14).
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 11
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`Art Unit: 3668
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`Regarding Claim 8, Weiss discloses wherein the first authentication information includes
`
`a multidigit public ID code for a credit card account, which a credit card issuer can map to a
`
`usable credit card number (‘J[ 15, 48, FIG. 7 with associated text).
`
`Regarding Claim 9, Weiss discloses wherein the first processor is further configured to
`
`communicate information associated with the biometric information of the user of the first
`
`device (‘J[ 53, 99—100, FIG. 17 with associated text).
`
`Regarding Claim 10, Weiss discloses:
`
`0 wherein the first handheld device includes a user interface coupled to the processor
`
`included in the first handheld device (11 40, 52, 108. Weiss discloses “other computer
`
`devices” with operating systems that run under a graphical user interface.),
`
`0 wherein the first processor is configured to receive biometric information of the user
`
`of the first device (‘fl 52-53, 108),
`
`0 wherein the biometric information is employed by the user of the first handheld
`
`device to initiate payment for the transaction (‘J[ 17, 37—38, 53, 100, FIG. 7—9 with
`
`associated text. Weiss discloses “the user initiates a purchase (800), enters a secret
`
`code in the electronic ID device (802) and presents the resultant code to the
`
`merchant” from 1] 75).
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 12
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`Art Unit: 3668
`
`Regarding Claim 11, Weiss discloses wherein the first device is configured to
`
`communicate with a networked credit card validation—information entity (e. g., credit card
`
`company) configured to approve or deny financial transactions based on authentication of the
`
`user (FIG. 7 with associated text. Weiss discloses “The credit card company then processes the
`
`transaction in a standard fashion, such as by checking the credit worthiness of the person,
`
`declining the card or debiting the user's account and transferring money to the merchant's
`
`account (810)” from 1] 76).
`
`Regarding Claim 12, Weiss discloses a system for authenticating a user for enabling a
`
`transaction (‘fl 1, 12, 17), the system comprising:
`
`0
`
`a first device (‘J[ 52, 108) including:
`
`o
`
`a first processor programmed to (‘J[ 40, 52):
`
`I
`
`1) authenticate a user of the first device based on secret information (‘JI
`
`17-18, 46, 51),
`
`I
`
`2) retrieve or receive first biometric information of the user of the first
`
`handheld device (‘fl 52-53, 108),
`
`I
`
`3) authenticate the user of the first device based on the first
`
`biometric (‘J[ 53, 99—100, FIG. 17 with associated text), and
`
`I
`
`4) generate one or more (Only one option is required to satisfy a “one
`
`or more” limitation.) signals including first authentication
`
`information (e. g., biometric information), an indicator of biometric
`
`authentication (e. g., facial confirmation), and a time varying value
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 13
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`Art Unit: 3668
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`(e. g., time varying number) (‘JI 51—53, FIG. 6 and 10 with associated
`
`text. All embodiments of Weiss’ invention practices a signal
`
`representative of “enable the identity of the user possessing the
`
`identifying device to be verified at the point of use”, meaning a
`
`positive result confirms the identity of the person is the correct
`
`person.),
`
`wherein generating occurs responsive to valid authentication of the
`
`first biometric (‘JI 51—53, FIG. 6 and 10 with associated text. All
`
`embodiments of Weiss’ invention practices a signal representative of
`
`“enable the identity of the user possessing the identifying device to be
`
`verified at the point of use”, meaning a positive result confirms the
`
`person is the correct person.);
`
`0
`
`a first transceiver
`
`coupled to the first processor (‘J[ 40, 52, and FIG. 17 with associated
`
`text. The Examiner interprets FIG. 17 showing a laptop connecting to
`
`another entity therefore the laptop is demonstrating this feature.) and
`
`programmed to transmit the one or more signals to a second device for
`
`processing (‘J[ 53, FIG. 1 and 6 with associated text. IN (H 53,
`
`“database” is located in USR system according to 1] 20 and 1] 25.);
`
`0 wherein the first processor is further programmed to (‘J[ 40, 52)
`
`receive an enablement signal indicating an approved transaction from
`
`the second device (‘J[ 68, 74),
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 14
`
`Art Unit: 3668
`
`. wherein the enablement signal is provided from the second device
`
`based on acceptance of the indicator of biometric authentication (“the
`
`validator can ensure that the person using the electronic ID card is the
`
`proper person”, 1] 100) and use of the first authentication information
`
`(‘J[ 53) to enable the transaction (‘J[ 17, 37—38, 53, 100. Weiss discloses
`
`the use of both “biometric information”, 1] 53, with “the validator can
`
`ensure that the person using the electronic ID card is the proper
`
`person”, 1] 100).
`
`Weiss does not directly disclose a biometric sensor configured to capture a first biometric
`
`information of the user; and a wireless transceiver and wireless signal.
`
`However, Bolle teaches:
`
`o
`
`a biometric sensor (e. g., “biometric reader” from FIG. 6 and 8) configured to capture
`
`a first biometric information of the user (FIG. 6—8 with associated text; in particular,
`
`FIG. 7, Step 704); and
`
`o
`
`a wireless transceiver and wireless signal (Title, Abstract, FIG. 6 and 8 with
`
`associated text); and
`
`It would have been obvious to one of ordinary skill in the art BEFORE the time of the
`
`invention was made to modify Weiss’ invention by incorporating the wireless technology as
`
`taught by Bolle in order to transmit wirelessly stored biometric for authentication purposes
`
`(Ab stract) .
`
`

`

`Application/Control Number: 15/019,660
`
`Paper No. 20160408 — Page 15
`
`Art Unit: 3668
`
`Nonstatutory Double Patenting Rejection
`
`6.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine
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`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
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`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate
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`where the claims at issue are not identical, but at least one examined application claim is not
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`patentably distinct from the reference claim(s) because the examined application claim is either
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`anticipated by, or would have been obvious over, the reference claim(s). See, e. g., In re Berg,
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`140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d
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`2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
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`Ornnm, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
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`be used to overcome an actual or provisional rejection based on a nonstatutory double patenting
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`ground provided the reference application or patent either is shown to be commonly owned with
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`this application, or claims an invention made as a result of activities undertaken within the scope
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`of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321(b).
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`The USPTO intemet Web site contains terminal disclaimer forms which may be used.
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`Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what
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`form should be used. A web—based eTerminal Disclaimer may be filled out completely online
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`using web—screens. An eTerminal Disclaimer that meets all requirements is auto—processed and
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`

`

`Application/Control Number: 15/019,660
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`Paper No. 20160408 — Page 16
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`Art Unit: 3668
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`approved immediately upon submission. For more information about eTerminal Disclaimers,
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`refer to http://WWW.uspto.gov/patents/process/file/efs/guidance/eTD—info—I.j sp.
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`Claims 1 and 12 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claim 1 of US Pat# 8001055. Although the claims at issue are not identical,
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`they are not patentably distinct from each other because the subject matter is directed to the same
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`inventive concept.
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`Claims 1—12 are provisionally rejected on the ground of nonstatutory double patenting as
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`being unpatentable over preliminary amended claims 21—40 of copending App# 14814740.
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`Although the claims at issue are not identical, they are not patentably distinct from each other
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`because the subject matter is directed to the same inventive concept.
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`This is a provisional nonstatutory double patenting rejection because the patentably
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`indistinct claims have not in fact been patented.
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`

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`Application/Control Number: 15/019,660
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`Paper No. 20160408 — Page 17
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`Art Unit: 3668
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`0 US 20030139984 (“Seigel”): This invention is related to implementing a cashless and
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`clerkless transaction comprises gathering product information, gathering personal
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`information (e. g. a credit card number) and capturing biometric information from the
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`individual seeking to purchase a product. The biometric information is used to
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`authenticate the identity of the individual. Biometric information that is captured
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`during the purchasing process is compared to stored biometric data about the
`customer. After a match is confirmed between the stored biometric data and the
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`captured biometric data the sales transaction Will be permitted.
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`0 US 20030074568 Al (“Kinsella”): This invention is related to biometric devices, and
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`more particularly to stand—alone biometric devices that can be registered to operate
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`with one or more remote computer systems. Even more particularly, the invention is
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`related to biometric devices that internally authenticate the identity of a user using
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`biometric information; once the user is authenticated, the device is allowed to
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`securely interface with a remote computer system. No biometric information about
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`the user need be passed to the remote computer system because the entire biometric
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`authentication process may be done on the device itself.
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`

`

`Application/Control Number: 15/019,660
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`Paper No. 20160408 — Page 18
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`Art Unit: 3668
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`Contact Information
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`For telephonic communications, Primary Examiner Calvin Cheung can normally be
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`reached Monday — Friday, 8:00am. — 5:00pm., EST.
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`Prior to initiating the first e—mail correspondence with any examiner, Applicant shall 1E
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`a written statement With the USPTO in accordance with MPEP § 502.03 II. fl received e—
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`mail messages including e—mail attachments shall be placed into this application’s record.
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`If attempts to reach the Examiner are unsuccessful, Supervisory Patent Examiner (SPE)
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`Fadey S. Jabr’s telephone number is (571) 272—1516. The fax phone number for the organization
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`Where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/CALVIN CHEUNG/
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`Primary Examiner, Art Unit 3668
`Calvin.Cheung @ USPTO .GOV (email)
`571-270-7041 (Office)
`
`