IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Ex Parte Reexamination of
`
`U.S. Patent No. 8,352,730
`
`Inventor: John J. Giobbi
`
`Assignee: Proxense, LLC
`
`Control No. 90/015,052
`
`Issue Date: Jan. 8, 2013
`
`Confirmation No. 9657
`
`Art Unit: 3992
`
`Examiner: Tarae, Catherine Michelle
`
`Title: BIOMETRIC PERSONAL DATA KEY (PDK) AUTHENTICATION
`
`Mail Stop Ex Parte Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`INTERVIEW AGENDA
`
`
`
`During the Interview scheduled for Tuesday, December 6, 2024, at 10:00 AM, Patent
`
`Owner respectfully requests discussion of the topics presented in this Interview Agenda.
`
`Patent Owner Exhibit 2026, Page 1 of 10
`
`

`

`The Access Message Must Be Separate from the Application Being Accessed
`
`The express language of the claims requires the access message to be something different
`
`than the application being accessed.
`
`Claim 1 recites:
`
`“receiving an access message from the agent allowing the user access to an
`application.”
`
`Likewise, Claim 8 recites:
`
`“receives an access message from the agent allowing the user access to an
`application.”
`
`Similarly, Claim 12 recites:
`
`“receiving an access message from the agent; and
`
`in response to a positive access message, allowing the biometrically verified user
`access to an application.”
`
`Finally, Claim 15 recites:
`
`“receiving an access message from the agent allowing the user to access an
`application.”
`
`Each of the independent claims expressly recites “an access message” and “an
`
`application”. As both terms are first used with the article “an”, neither term provides antecedent
`
`basis for the other. Furthermore, “an application” is not an inherent component of “an access
`
`message” such that an access message necessarily provides antecedent basis for an application.
`
`Accordingly, “an access message” and “an application” are recited in each of the independent
`
`claims as separate and distinct elements.
`
`Additionally, the District Court has construed “access message” to mean “a signal or
`
`notification enabling or announcing access.” The Office Action proposes a similar construction
`
` 2
`
`Patent Owner Exhibit 2026, Page 2 of 10
`
`

`

`of access message – i.e., “a message/notification indicating the user is allowed access, or
`
`otherwise allowing access.” Thus, the District Court and Examiner agree an access message
`
`operates on an application by enabling, allowing, announcing or indicating access. An access
`
`message would not be able to operate on the application if they were one in the same.
`
`Accordingly, the access message must be something separate from the application being
`
`accessed.
`
`
`
`The Access Message is Received Only After Authentication by a Third-Party Trusted Authority
`
`The express language of the claims requires that an access message is received from a
`
`third-party trusted authority only after the third-party trusted authority has authenticated a device
`
`ID.
`
`Claim 1 recites:
`
`“wirelessly sending one or more codes from the plurality of codes and the other
`data values for authentication by an agent that is a third-party trusted authority
`possessing a list of device ID codes uniquely identifying legitimate integrated
`devices, wherein the one or more codes and other data values includes the device
`ID code; and
`
`responsive to authentication of the one or more codes and the other data values by
`the agent, receiving an access message from the agent.”
`
`Likewise, Claim 8 recites:
`
`“wirelessly sends one or more codes from the plurality of codes and the other data
`values for authentication by an agent that is a third-party trusted authority
`possessing a list of device ID codes uniquely identifying legitimate integrated
`devices, wherein the one or more codes and the other data values includes the
`device ID code; and
`
` 3
`
`Patent Owner Exhibit 2026, Page 3 of 10
`
`

`

`responsive to the agent authenticating the one or more codes and the other data
`values, a radio frequency communicator, receives an access message from the
`agent.”
`
`Similarly, Claim 12 recites:
`
`“the device ID code being registered with an agent that is a third-party trusted
`authority possessing a list of device ID codes uniquely identifying legitimate
`integrated devices;
`
`requesting authentication of the one or more codes and the other data values by
`the agent, wherein the authentication determines whether the one or more codes
`and the other data values are-legitimate;
`
`receiving an access message from the agent.”
`
`Finally, Claim 15 recites:
`
`“send the plurality of codes and the other data values to agent for authentication
`to determine whether the one or more codes and the other data values are legitimate,
`wherein the agent is a third-party trusted authority possessing a list of device ID
`codes uniquely identifying legitimate integrated devices, and responsive to the
`device ID code being authenticated, the authentication unit receiving an access
`message from the agent.”
`
`Each of the independent claims recites that receipt of the access message is responsive to
`
`and/or follows the third-party trusted authority authenticating a device ID. Furthermore, each of
`
`the independent claims recites the access message is received from the third-party trusted
`
`authority (i.e., agent). Thus, each of the independent claims recites that the access message is
`
`received from the third-party trusted authority only after the third-party trusted authority has
`
`authenticated a device ID.
`
`
`
` 4
`
`Patent Owner Exhibit 2026, Page 4 of 10
`
`

`

`Access to the Application Occurs Only After Authentication
`
`by the Third-Party Trusted Authority
`
`As detailed above, each of the independent claims requires that the access message
`
`operates on an application by enabling, allowing, announcing, or indicating access. As also
`
`detailed above, each of the independent claims also requires that the access message is received
`
`from the third-party trusted authority only after authentication of a device ID by the third-party
`
`trusted authority. Consequently, each of the independent claims requires that access to the
`
`application is only enabled after authentication by the third-party trusted authority.
`
`
`
`Access to Ludtke’s eCoupons Does Not Occur After Authentication by the TPCH
`
`The Office Action mailed November 25, 2024, equates eCoupons stored within Ludtke’s
`
`transaction device to an application. While eCoupons stored within Ludtke’s transaction device
`
`certainly could be a file, they are not accessed after authentication by the TPCH. Rather, Ludtke
`
`teaches that access to the eCoupons stored on the transaction device occurs after authentication
`
`of the user by the transaction device itself.
`
`Ludtke details the use of eCoupons during purchases in Col. 27, lines 25-43, with
`
`reference to Fig. 16 (reproduced below).
`
` 5
`
`Patent Owner Exhibit 2026, Page 5 of 10
`
`

`

`
`
`“At step 1604, the user activates the transaction device, requesting a payment
`transaction using any eCoupons that might have been collected by the transaction
`device prior to or during shopping. The transaction device requests the user to
`authenticate himself, for example, by fingerprint recognition, step 1605. The user
`presses on the fingerprint recognition pad to continue, step 1606. After verifying
`the user, the transaction device displays the collection of eCoupons that the user
`requested on its display screen, step 1607.
`
`The user hands the transaction device to the clerk, who successively scans the
`eCoupons barcodes into the legacy POS terminal in a manner similar to how paper
`coupons are scanned into the terminal. After each barcode is scanned, the clerk
`presses a “next' button, which indicates to the transaction device that the eCoupon
`was successfully entered. The transaction device then displays a bar code of a next
`eCoupon, and this process continues until all eCoupons have been entered for the
`transaction, step 1608.” Ludtke, 27:25-43 (emphasis added).
`
` 6
`
`Patent Owner Exhibit 2026, Page 6 of 10
`
`

`

`As the above details, “[t]he transaction device requests the user to authenticate himself,”
`
`and “after verifying the user, the transaction device displays the collection of eCoupons that the
`
`user requested on its display screen, step 1607.” Thus, access to the eCoupons only requires
`
`verification of the user by the transaction device. This is further shown in Fig 16, which depicts
`
`access and use of the eCoupons prior to sending information to the TPCH at step 1615.
`
`Accordingly, access to Ludtke’s eCoupons occurs after verification of the user by the device, and
`
`not after authentication by the TPCH.
`
`However, each of the independent claims requires that access to the application occurs
`
`only after authentication by a third-party trusted authority. The Office Action has equated
`
`Ludtke’s TPCH with a third-party trusted authority. But even if the TPCH is a third-party trusted
`
`authority it is not authenticating the transaction device prior to the user being allowed access to
`
`the eCoupons stored on the transaction device. Consequently, the eCoupons are not an
`
`application accessed after verification by the TPCH. Thus, to the extent a TPCH can be
`
`considered a third-party trusted authority (Patent Owner believes it cannot), the eCoupons are not
`
`an application accessed only after authentication by the TPCH. Therefore, the eCoupons are not
`
`an application to which access is enabled only after authentication by a third-party trusted
`
`authority as require by each of the independent claims. As such, eCoupons are not applications as
`
`recited in each of the independent claims.
`
`
`
`Electronic Distribution of a Digital Product by the TPCH Is Not
`
`An Access Message Separate from the Application
`
`The Office Action contends that the electronic distribution of a purchased digital product
`
`by the TPCH is an application to which access is enabled by receipt of an access message. Each
`
` 7
`
`Patent Owner Exhibit 2026, Page 7 of 10
`
`

`

`of the independent claims, however, requires that the access message be separate from the
`
`application being accessed.
`
`The basic steps of a purchase using Ludtke’s transaction device and TPCH are outlined
`
`by Ludtke in Fig. 15 (reproduced below).
`
`
`
`The process is one in which “the user initiates the transaction” by attempting to use their
`
`privacy card (i.e., transaction device) to make a purchase. Ludtke, 27:9. When making a
`
`purchase, a “POS terminal may collect the necessary information from the transaction device,
`
`e.g., the digital wallet, combine it with the purchase data, and send it to the TPCH.” Ludtke,
`
`23:50-52. Accordingly, the transaction device is a credit card, or surrogate therefore, issued by
`
`the TPCH. As such, “the TPCH maintains secure information linking a user to a particular
`
`transaction card identification and interfaces among the transaction device, vendor and any
`
`financial systems to provide the user authorization to perform and complete a transaction.”
`
` 8
`
`Patent Owner Exhibit 2026, Page 8 of 10
`
`

`

`Ludtke, 11:8-12. Thus, as with any credit card purchase, “Privacy card information is provided
`
`to TPCH, step 1510.” Ludtke, 27:12-13. Upon receipt of the card information, “[t]he TPCH may
`
`then authorize the transaction, store data relevant to the transaction in its records and trigger a
`
`financial transfer to the vendor's account.” Ludtke, 23:52-55. Having processed and authorized
`
`the transaction, “[t]he TPCH, at step 1520, confirms the transaction and provides the
`
`confirmation to the vendor and the user.” Ludtke, 27:13-14. At this point the user has
`
`successfully used his transaction device to provide to the vendor what the vendor has agreed to
`
`accept as payment – i.e., a confirmation message from the TPCH. Thus, the transaction
`
`confirmation message delivered to the vendor by the TPCH is payment for the product being
`
`purchased and not an access message.
`
`Having been paid, “[a]t step 1525 the vendor completes the transaction without
`
`knowledge of the identity of the user.” Ludtke, 27:14-16. A vendor completes a transaction after
`
`receiving payment by delivering the purchased product to the user. “The system described herein
`
`also provides a distribution functionality 150 whereby products purchased via the system are
`
`distributed. In one embodiment, the distribution function 150 is integrated with the TPCH 110
`
`functionality.” Ludtke, 7:30-33 (emphasis added). Thus, the vendor may utilize Ludtke’s TPCH
`
`to deliver the purchased product to the user. In other words, the TPCH may become UPS.
`
`When acting as a distribution system, “the TPCH 110 functions as the middleman of the
`
`distribution channel.” Ludtke, 7:45-46. This implies the TPCH receives the content and then
`
`passes it along to its intended destination. Alternatively, it could deliver it to a POS acting as the
`
`final mile carrier when “POS terminal is used for distribution”. Ludtke, 7:49-50. Accordingly,
`
`“the content may be encrypted at the source and distributed via the system to the POS terminal
`
`wherein the POS terminal subsequently decrypts the distributed material. The POS terminal may
`
` 9
`
`Patent Owner Exhibit 2026, Page 9 of 10
`
`

`

`then pass the data to an appropriate place desired by the user, for example, to a user controlled
`
`device such as PC storage, a digital wallet or a privacy card.” Ludtke, 7:50-56. Regardless of if a
`
`POS is used for the final mile or not, the TPCH is merely a delivery service that delivers paid for
`
`content to the user.
`
`Of course, receipt of the content at the user’s device would announce and enable access,
`
`just like receipt of a physical package from UPS announces and enables access to a purchased
`
`product. But what is announcing and enabling access is receipt of the product itself. Accordingly,
`
`the purchased software or file becomes one in the same with the access message. Each of the
`
`independent claims, however, requires that the access message and the application be separate
`
`and not one in the same. Consequently, Ludtke’s electronic distribution system does not provide
`
`the separate access message and application required by the claims.
`
`
`December 6, 2024
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted by:
`
`/James A. Zak, Esq./
`
`Attorney for Patent Owner
`Proxense, LLC
`Reg. No. 60,190
`
`Hecht Partners LLP
`125 Park Ave. 25th Floor
`New York, NY 10017
`E: jzak@hechtpartners.com
`P: (651) 357-8517
`
` 10
`
`Patent Owner Exhibit 2026, Page 10 of 10
`
`