UNITED STATES PA TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/015,052
`
`06/08/2022
`
`8352730
`
`02198-00080
`
`9657
`
`12/17/2024
`
`7590
`Hecht Partners LLP
`125 Park Avenue,
`25th Floor
`New York, NY 10017
`
`EXAMINER
`
`TARAE, CATHERINE MICHELLE
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`12/17/2024
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Patent Owner Exhibit 2027, Page 1 of 6
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Quinn Emanuel Urquhart & Sullivan LLP
`c/o James M. Glass
`51 Madison Ave.
`22nd Floor
`New York, NY 10010
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/015,052.
`
`PATENT UNDER REEXAMINATION 8352730.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`Patent Owner Exhibit 2027, Page 2 of 6
`
`

`

`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 2
`
`EX PARTE REEXAMINATION INTERVIEW SUMMARY
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`An interview was held December 10, 2024. The attached agenda was
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`discussed. Overall, the discussion surrounded what the claimed "access message" is
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`and how Ludtke addresses "responsive to authentication ... by the agent, receiving an
`
`access message from the agent allowing the user access to an application ... "
`
`Examiner made the following points during the interview:
`
`1.
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`that Patent Owner's ("PO") arguments regarding the ecoupons and Fig. 16
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`of Ludtke were found persuasive. That is, Fig. 16 does not show the TPCH
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`authenticating prior to the user accessing the ecoupons;
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`2.
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`Examiner's claim interpretation of "access message" utilizes the
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`specification of the '730 Patent as a source for the broadest reasonable interpretation.
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`The '730 Patent at col. 5, lines 23-26 says, "[a]uthentication module 310 can send a
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`message to application 330, or otherwise allow access to the application, responsive to
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`a successful authentication by trusted key authority 320." As such, Examiner has
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`interpreted "access message" to be "a message/notification indicating the user is
`
`allowed access, or otherwise allowing access." That is, an access message can be
`
`either: 1) "a message/notification indicating the user is allowed access" OR 2)
`
`"otherwise allowing access." PO has not refuted this claim interpretation to date.
`
`3.
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`Based on Examiner's claim interpretation of "access message," Ludtke
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`discloses an "access message" and discloses "responsive to authentication ... by the
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`agent, receiving an access message from the agent allowing the user access to an
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`application ... " in the following examples:
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`Patent Owner Exhibit 2027, Page 3 of 6
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`

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`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 3
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`a) "transaction device information is provided to the TPCH 110 that then
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`indicates to the vendor 1 25 and the user 120 approval of the
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`transaction to be performed" (6:41-44). The indication to the vendor
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`and the user of approval by the TPCH of the transaction is the access
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`message (i.e., a message/notification indicating the user is allowed
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`access).
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`b) "TPCH, at step 1520, confirms the transaction and provides the
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`confirmation to the vendor and the user. At step 1525, the vendor
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`completes the transaction without the knowledge of the user" (27: 13-
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`16). The confirmation of the transaction by the TPCH provided to the
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`vendor and the user is the access message (i.e., a
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`message/notification indicating the user is allowed access).
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`c) "Secure distribution of physical (or electronic) content to the user is
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`performed once the transaction is authorized." (29:29-30) The secure
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`distribution of the electronic content to the user after the transaction is
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`authorized is the access message (i.e., otherwise allowing access).
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`PO owner argued that the above examples of confirmation sent to the vendor
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`and user was a receipt for payment and not an access message. Examiner did not find
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`this argument persuasive. Nonethless, it was asked during the interview, why can't a
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`receipt for payment be an access message if it meets the claim interpretation supported
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`by the disclosure of the '730 Patent of, "a message/notification indicating the user is
`
`allowed access, or otherwise allowing access?"
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`Patent Owner Exhibit 2027, Page 4 of 6
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`

`

`Application/Control Number: 90/015,052
`Art Unit: 3992
`
`Page 4
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`PO further asked for clarification as to the user being authenticated vs. the
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`device being authenticated. On pp. 8-10 of the office action, the Examiner addresses
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`the device ID authentication. "The user'' was meant to refer to the device (of the user)
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`ID as authenticating the device ID is authenticating the identity of the user in Ludtke.
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`Lastly, Examiner notes the claims are silent as to where the access message is
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`sent. Were the claims to recite the access message being sent to/received by the
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`application, which is supported by the '730 Patent at col. 5, lines 23-26, the claims
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`would be allowable over Ludtke. An Examiner's Amendment could achieve this.
`
`/C. Michelle Tarae/
`Reexamination Specialist, Art Unit 3992
`
`/JEFFREY D CARLSON/
`Primary Examiner, Art Unit 3992
`
`Patent Owner Exhibit 2027, Page 5 of 6
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`

`

`90/015,052
`Ex Parle Reexamination Interview Summary Examiner
`
`C. Michelle Tarae
`
`8352730
`
`Art Unit
`
`3992
`
`AIA (FITF) Status
`
`No
`
`Control No.
`
`Patent Under Reexamination
`
`All participants (USPTO personnel, patent owner, patent owner's representative):
`
`(1) C. Michelle Tarae
`
`(3) Jeff Carlson (USPTO)
`
`(2) James Zak (PO, Reg. No. 60,190)
`
`(4) Andrew Fischer (USPTO)
`
`Date of Interview: 10 December 2024
`
`Type: a) O Telephonic
`b) ~ Video Conference
`c) O Personal (copy given to: 1) O patent owner
`
`2) O patent owners representative)
`
`e) O No.
`d) ~ Yes
`Exhibit shown or demonstration conducted:
`If Yes, brief description: Mr. Zak presented slides that he indicated he would attach to his interview summary.
`
`Agreement with respect to the claims f) O was reached. g) ~ was not reached. h) O N/A.
`Any other agreement(s) are set forth below under "Description of the general nature of what was agreed to ... "
`
`Claim(s) discussed: J_.
`
`Identification of prior art discussed: Ludtke .
`
`Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
`see attached .
`
`(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the
`claims patentable, if available, must be attached. Also, where no copy of the amendments that would render the
`claims patentable is available, a summary thereof must be attached.)
`
`A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION MUST INCLUDE PATENT OWNER'S
`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. (See MPEP § 2281 ). IF A RESPONSE TO THE
`LAST OFFICE ACTION HAS ALREADY BEEN FILED, THEN PATENT OWNER IS GIVEN ONE MONTH FROM
`THIS INTERVIEW DATE TO PROVIDE THE MANDATORY STATEMENT OF THE SUBSTANCE OF THE
`INTERVIEW
`(37 CFR 1.560(b)). THE REQUIREMENT FOR PATENT OWNERS STATEMENT CAN NOT BE WAIVED.
`EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`/C. Michelle Tarae/
`Reexamination Specialist, Art Unit 399
`
`/JEFFREY D CARLSON/
`Primary Examiner, Art Unit 3992
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Office
`PTOL-474 (Rev. 04-01)
`
`Ex Parte Reexamination Interview Summary
`
`Paper No. 20241212
`
`Patent Owner Exhibit 2027, Page 6 of 6
`
`