DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see page 1, filed 09/15/2025, with respect to the interpretation of claims 1 and 12 under 35 U.S.C. § 112(f) have been fully considered. The Examiner respectfully notes that claims 14-17 improperly refer to “the method of claim 12” even though independent claim 12 has been amended to recite a system. Applicant further argues, “While Section 112(f) can apply to method claims, it does so through ‘step-plus-function’ language, not by requiring structural limitations. It appears the interpretation is conflating ‘means-plus-function’ (for apparatus claims) with ‘step-plus-function’ (for method claims)”.
The Examiner respectfully disagrees.
It is entirely possible for a method claim to invoke 112(f) claim interpretation without using “step for” or “step-plus-function” claim language construction. As in MPEP 2181, “Therefore, the broadest reasonable interpretation of a claim limitation that invokes 35 U.S.C. 112(f) is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act. As a result, section 112(f) limitations will, in some cases, be afforded a more narrow interpretation than a limitation that is not crafted in "means plus function" format. Structural elements may appear in both product claims and process claims; thus, all claim types should be reviewed for the presence of "means-plus-function" limitations. Rain Computing, Inc. v. Samsung Elecs. Am. Inc., 989 F.3d 1002, 1006, 2021 USPQ2d 284, (Fed. Cir. 2021) ("Applicants are free to invoke § 112 ¶ 6 for a claim term nested in a method claim. We have never held otherwise."). See also Media Rights Technologies, Inc. v. Capital One Financial Corp., 800 F.3d 1366, 1374, 116 USPQ2d 1144 (Fed. Cir. 2015) (holding that the term "compliance mechanism" in a method claim was a means-plus-function term)” (emphasis added).
Respectfully, amended claim 1 still recites limitations that invoke 35 U.S.C. § 112(f) despite being a method claim, as amended claim 1 recites “determining, by the secondary biometric device, whether a locally stored biometric template is saved in the secure storage on the secondary biometric device to compare with the biometric reading; determining, by the secondary biometric device, whether the locally stored biometric template is not locally saved in the secure storage to compare with the biometric reading”, as the secondary biometric device is the generic place holder, coupled with the functional language of making determinations, and the claim does not further recite sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Amended claim 12 will no longer be interpreted under 35 U.S.C. § 112(f) as amended independent claim 12 requires that the primary and secondary biometrically devices comprise a processor and a memory coupled together including instructions that when executed perform the claimed functions.
Applicant's arguments, see pages 2-5, filed 09/15/2025, with respect to the rejection of claims 1-4, 6-12, and 14-19 under 35 U.S.C. § 112(a) have been fully considered but they are not persuasive.
Applicant first argues, “Applicant's specification Pg. 11 para [0032] discloses "a client device 102 having a biometric scanner 104 that can capture a user's biometric input or a biometric reading". The scanner is a typical type, for example, a fingerprint capture device, voice recorder, or iris scanner for the purposes mentioned above that convert biometric reading (e.g. finger print, voice, iris scan) to a biometric template (e.g. vector, matrix) as would be appreciated by those skilled in the art. Techniques to convert a biometric reading into a template are known. For example, a scan of a iris is a pixel image, where the scan is a biometric reading of the eye, which is converted to number vectors or a matrix of values that are recognized each as a type of biometric template. Similarly, a scan of a thumb print is a 2D image with X-Y value pairs (e.g. 32 bit numbers), where the scan is a biometric reading, which are converted to number vectors or a matrix of values that are recognized each as a type of biometric template. Similarly, a voice recording is an analog capture of an acoustic waveform (spoken voice), which is a biometric reading, that is converted from a microphone measuring electrical changes through analog-to- digital electronics, such as sample and hold gates, to a voltage waveform, which is a type of biometric template, that is represented by a 2D signal, for example, X values with an amplitude measure for a sampling period over time; namely an X-Y measurement over time, which are yet another type of biometric template.”.
The Examiner respectfully disagrees.
Applicant’s argument that “the scanner is a typical type” followed by examples is unpersuasive because these recited elements and support are entirely missing from the originally filed disclosure. Furthermore, Applicant’s vast list of examples of techniques to convert biometric readings to a biometric template is further evidence that the originally filed disclosure is deficient in being commensurate with the full scope of the claims. Admitting on the record that capturing a biometric reading and converting a biometric reading into a template are known does not cure the deficiency of the originally filed disclosure in supporting the full scope of the claimed functions. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015). The Examiner appreciates and has considered Applicant’s provided information and examples, but none of this information or proposed algorithms could have possibly been gleaned from the originally filed disclosure by one of ordinary skill in the art.
Similarly, Applicant providing the example of a programmed “Fingerprint” structure, followed by an admission that determining whether the biometric template is in storage is known (including a discussion of memory flags that is unmoored from the originally filed disclosure) does not cure the written description rejection regarding the determination limitation because the limitation invokes 112(f), but the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The structure described in the specification does not perform the entire function in the claim and the structure is not clearly linked to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph (and therefore causes the limitation to be further rejected under 112(a)). When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a). See MPEP § 2163.03, subsection VI. Applicant amending the claims to recite “saved” does not cure the previous deficiency found with regard to the claimed determination limitation.
Applicant’s arguments, see pages 4-5, filed 09/15/2025, with respect to the rejection of claims 1-4, 6-12, and 14-19 under 35 U.S.C. § 112(b) have been fully considered.
The Examiner thanks the Applicant clarifying the claims by removing the duplicate claim limitations from independent claims 1 and 12, clarifying that there are two distinct devices in independent claims 1 and 12, amending claim 1 to clearly be a method claim and claim 12 to clearly be a system claim, and curing the prior raised antecedent basis issues in claims 3-4. These rejections have been withdrawn.
However, independent claim 1 still contains an invocation of § 112(f) that the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function and will be rejected below.
Applicant's arguments, see pages 5-7, filed 09/15/2025, with respect to the rejection of claims 1-4, 6-12, and 14-19 under 35 U.S.C. § 103 have been fully considered but they are not persuasive.
Applicant first attests that neither of the previously presented Griffin or Andersson references contain a password based key derivation function, and prompting the user to enter a password to generate a key.
The Examiner respectfully disagrees.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “a key diversity function”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, Griffin discloses a password based key derivation function and will be presented in the rejection below.
Applicant next attests that the claimed invention is distinguishable from the prior art because the claimed invention requires an ordered determination.
The Examiner respectfully disagrees.
The claims do not require any such ordered determination, and no order is specified in the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “ordered determination steps”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“capturing, on the secondary biometric device, a biometric reading from a user of a primary biometric device; converting, on the secondary biometric device, the biometric reading to a biometric template; … determining, by the secondary biometric device, whether a locally stored biometric template is saved in the secure storage on the secondary biometric device to compare with the biometric reading; determining, by the secondary biometric device, whether the locally stored biometric template is not locally saved in the secure storage to compare with the biometric reading” in claim 1. The secondary biometric device is a generic place holder, coupled with the functional language of capturing, converting, and making determinations, and the claim does not further recite sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1 and 12 are objected to because of the following informalities:
The last line of independent claim 1 contains a typo. “biometric template,.” should read “biometric template.”; with the comma (‘,’) omitted.
The last line of independent claim 12 contains a typo. “biometric template;.” should read “biometric template.”; with the semi-colon (‘;’) omitted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 6-8, 12, and 14-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 12 recite “converting, on the secondary biometric device, the biometric reading to a biometric template” and claims 7-8 recite “converting the biometric reading to a template of the biometric reading”. The claim(s) contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor at the time the application was effectively filed, had possession of the claimed invention. There is no disclosure of how a conversion process would be implemented, what type of method/algorithms would be used to convert the biometric reading to a biometric template, or what effects would be achieved by such a process of converting. As such, there is no indication in the originally filed disclosure that the inventors had possession of a method of authenticating a biometrically protected device without prior enrollment including a step of converting, on the biometric device, a biometric reading into a biometric template.
It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015).
Independent claim 1 recites “capturing, on the secondary biometric device, a biometric reading from a user of a primary biometric device; converting, on the secondary biometric device, the biometric reading to a biometric template; … determining, by the secondary biometric device, whether a locally stored biometric template is saved in the secure storage on the secondary biometric device to compare with the biometric reading; determining, by the secondary biometric device, whether the locally stored biometric template is not locally saved in the secure storage to compare with the biometric reading” which are found to invoke 35 U.S.C. 112(f) and found to be indefinite under 35 U.S.C. 112(b). When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under section 112(a). See MPEP § 2163.03, subsection VI.
The dependent claims fall together accordingly.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The 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 U.S.C. 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.
Claims 1-2, 6-8, 12 and 14-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “capturing, on the secondary biometric device, a biometric reading from a user of a primary biometric device; converting, on the secondary biometric device, the biometric reading to a biometric template; … determining, by the secondary biometric device, whether a locally stored biometric template is saved in the secure storage on the secondary biometric device to compare with the biometric reading; determining, by the secondary biometric device, whether the locally stored biometric template is not locally saved in the secure storage to compare with the biometric reading” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The structure described in the specification does not perform the entire function in the claim and the structure is not clearly linked to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Independent claims 1 and 12 recite the limitation “in the secure storage of the biometrically protected device”. There is insufficient antecedent basis for this claim limitation.
Dependent claims 14-17 recite “the method of claim 12”, however, independent claim 12 recites a system. There is insufficient antecedent basis for the method limitations.
Dependent claims fall together accordingly.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2, 6-8, 12, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Griffin; Phillip H. (US Patent No. US 11,139,964 B1) hereinafter Griffin in view of Andersson et. al. (US Publication No. US 2020/0366488 A1) hereinafter Andersson.
Regarding Claims 1 and 12:
Claim 1. Griffin discloses a method of authenticating a secondary biometrically protected device without prior enrollment of a biometric reading thereon, the method comprising steps of ((Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36)): capturing, on the secondary biometric device, a biometric reading from a user of a primary biometric device (Griffin Col. 7 line 63 through Col. 8 line 14; Col. 16 lines 37-54); converting, on the secondary biometric device, the biometric reading to a biometric template (Griffin Col. 5 lines 4-13 “Expanding generally on the use of the ECM for subsequent biometric authentication (e.g., biometric authentication portability) and enrollment, as a user may provide a new biometric and a biometric associated with a biometric reference template identifier in the user's ECM to enroll the new biometric as part of their ECM profile. The BABE processing system will authenticate the user and generate, associate, and securely transmit an updated ECM and/or biometric reference template identifier coupled to a URI for storage in the user's ECM.”; Col. 7 line 63 through Col. 8 line 14; Col. 16 lines 37-54); performing a new enrollment of the primary biometrically protected device (Griffin Fig. 3 ECM circuit 340 stores and facilities biometric template identifiers; Col. 19 line 52 through Col. 20 line 11 “The ECM circuit 340 facilitates the retrieval and transmission of the proper biometric type and information of the user during subsequent authentication attempts with the BABE processing computing system 302 and/or the relying party computing system 306.”) … wherein the new enrollment on the primary biometrically protected device comprises: prompting the user to enter a secret password that is then used to generate a key by way of a password based key derivation function on the primary biometrically protected device (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation; Col. 7 line 49-62 password authenticated key exchange protocol enumerated as an example; Col. 10 line 65 through Col. 11 line 7); using the key to encrypt the biometric template to produce the encrypted biometric template (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation; Col. 7 line 49-62 password authenticated key exchange protocol enumerated as an example; Col. 10 line 65 through Col. 11 line 7); deleting the password and the key from the primary biometric device (Griffin Col. 17 line 16-20 contemplates discarding the initial enrollment-stage data, which could include the password provided to symmetrically encrypt); and uploading the encrypted biometric template to the server for storage (Griffin Col. 17 lines 16-28 securely stored template in the database); … wherein upon said determining that the locally stored biometric template is saved in the secure storage on the secondary biometric device; retrieving the locally stored biometric template in the secure storage (Griffin Fig. 2 208 retrieve associated template; Col. 14 lines 33-44; and Col. 19 lines 52-66 “The ECM circuit 340 securely stores and facilitates the use of the biometric reference template identifiers and associated URIs for the user that are enrolled with the BABE processing system 300. The ECM circuit 340 contains one or more unique biometric reference template identifiers associated with the identity of the enrolled user (e.g., user identifier). Each biometric reference template identifiers are to a URI of the BSP who can match the user's biometric samples of a given. In some arrangements, the BSP is associated with the BABE processing computing system 302. The ECM circuit 340 facilitates the retrieval and transmission of the proper biometric type and information of the user during subsequent authentication attempts with the BABE processing computing system 302 and/or the relying party computing system 306” template may be stored locally); comparing the biometric template with the locally stored biometric template; and authenticating the biometric reading upon the secondary biometric device determining that the biometric template matches the locally stored biometric template responsive to said comparing (Griffin Fig. 2 210 matching and comparing; Col. 14 lines 45-59); otherwise, upon said determining that the locally stored biometric template is not locally saved in the secure storage of the biometrically protected device; prompting the user to enter the secret password that was used during the new enrollment of the primary biometric device (Griffin Fig. 1 enrollment process described, Col. 4 line 54 through Col. 5 line 3 BSP handling initial identity verification and enrollment; Col. 5 lines 4-13 “Expanding generally on the use of the ECM for subsequent biometric authentication (e.g., biometric authentication portability) and enrollment, as a user may provide a new biometric and a biometric associated with a biometric reference template identifier in the user's ECM to enroll the new biometric as part of their ECM profile. The BABE processing system will authenticate the user and generate, associate, and securely transmit an updated ECM and/or biometric reference template identifier coupled to a URI for storage in the user's ECM.”), generating the key from said secret password by way of the password based key derivation function on the secondary biometrically protected device (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation; Col. 7 line 49-62 password authenticated key exchange protocol enumerated as an example; Col. 9 lines 25-36 “The BABE processing system retrieves the shared secret password associated with the user identifier and generates a symmetric key using the stored password/shared secret, for the user identifier on file. The key is generated using an agreed upon commutative encryption algorithm, for example, the D-H protocol, based on the user secret. The generated cryptographic key is then used to decrypt the message and retrieve the biometric enrollment sample(s). In some arrangements, the second authentication factor retrieved from the encrypted message is authenticated against the second authentication factor established at initial enrollment at 102.”; Col. 10 line 65 through Col. 11 line 7); decrypting, on the secondary biometric device, the encrypted biometric template obtained from the server using the key in response to the secret password provided by the user on the secondary biometrically protected device to provide a decrypted biometric template (Griffin Col. 13 line 53 through Col. 14 line 13 receive encrypted request and password); storing the decrypted biometric template as the locally stored biometric template in the secure storage on the secondary biometric device (Griffin Col. 5 line 9-13 newly updated templates stored in user device for further authentications; Col. 14 lines 33-44 retrieve stored biometric template; Col. 17 lines 6-28 raw biometric data is processed into a template and stored securely onto a server/database; Col. 6 lines 20-23 and Col. 3 line 61 through Col. 4 line 4 biometric reference templates may be stored in an encrypted format); and authenticating the biometric reading when the decrypted biometric template matches the biometric template, (Griffin Fig. 2 210 matching and comparing; Col. 14 lines 45-59).
Griffin does not explicitly disclose upon determining that the biometric template is neither stored locally on a secure storage on the secondary biometric device nor as an encrypted biometric template on a server, … determining, by the secondary biometric device, whether a locally stored biometric template is saved in the secure storage on the secondary biometric device to compare with the biometric reading; determining, by the secondary biometric device, whether the locally stored biometric template is not locally saved in the secure storage to compare with the biometric reading.
Andersson teaches upon determining that the biometric template is neither stored locally on a secure storage on the secondary biometric device nor as an encrypted biometric template on a server (Andersson Fig. 3b; [0054] “The encrypted biometric template is kept in a storage medium which may, for example, be comprised in the authenticating device, or in a cloud-based server external to the authenticating device, or in a combination of both”; [0097-0100] match result may return negative), … determining, by the secondary biometric device, whether a locally stored biometric template is saved in the secure storage on the secondary biometric device to compare with the biometric reading (Andersson Fig. 3b biometric template data stored on local password-protected flash memory; [0054] “The encrypted biometric template is kept in a storage medium which may, for example, be comprised in the authenticating device, or in a cloud-based server external to the authenticating device, or in a combination of both”); determining, by the secondary biometric device, whether the locally stored biometric template is not locally saved in the secure storage to compare with the biometric reading (Andersson Fig. 3b; [0054]; [0097-0100] match result may return negative).
It would have been obvious to one having ordinary skill in the art before the time the invention was effectively filed to combine the biometric authentication disclosed by Griffin with the potential for already-locally stored biometric templates as taught by Andersson.
The motivation for this combination would be to avoid repeated enrollments of users if a local biometric template already matches the sample taken from the user which is recognized as important by Andersson (Andersson [0057] “The feature above provides for that the same encrypted biometric template may be used by several authenticating devices and enrolment is simplified since, once enrolled on one authenticating device, the encrypted biometric template(s) associated with the enrolled user can be securely transferred to other authenticating devices. This advantage becomes particularly prominent in the context of the multitude of devices for the Internet of Things (IoT-devices)”; [0127]).
Claim 12 recites substantially the same content and is therefore rejected under the same rationales. Griffin further discloses a system for authenticating a biometrically protected device, the system comprising a primary biometrically protected device: and a secondary biometrically protected device without prior enrollment thereon, each comprising one or more processors and memory coupled to the one or more processors, wherein the memory includes computer instructions which when executed by the one or more processors causes the one or more processors to perform operations of the respective biometrically protected device (Griffin Col. 16 lines 23-36; Col. 18 lines 45-54; Col. 22 lines 30-56; ).
Regarding Claim 2:
The combination of Griffin and Andersson further teaches the method of claim 1 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the method further comprises comparing the biometric template of the biometric reading with the decrypted biometric template (Griffin Fig. 2 step 210, Col. 14 lines 45-59).
Regarding Claim 6:
The combination of Griffin and Andersson further teaches the method of claim 1 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the step of performing the new enrollment comprises storing the biometric template of the biometric reading on the secure storage (Griffin Fig. 3 ECM circuit 340 stores and facilities biometric template identifiers; Col. 19 line 52 through Col. 20 line 11 “The ECM circuit 340 facilitates the retrieval and transmission of the proper biometric type and information of the user during subsequent authentication attempts with the BABE processing computing system 302 and/or the relying party computing system 306.”), encrypting the template of the biometric reading to provide the encrypted biometric template (Griffin Col. 16 line 55 through Col. 17 line 2 biometric sample is securely stored and enrollment circuit facilities generation of the ECM; Col. 17 lines 16-28 securely stored template in the database), and uploading the encrypted biometric template to the server for storage (Griffin Col. 17 lines 16-28 securely stored template in the database).
Regarding Claim 7:
The combination of Griffin and Andersson further teaches the method of claim 1 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the step of performing the new enrollment comprises converting the biometric reading to a template of the biometric reading (Griffin Fig. 1 step 118, Col. 9 lines 37-49), receiving the secret password to generate the key (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation), using the key to encrypt the template of the biometric reading to provide the encrypted biometric template (Griffin Col. 8 lines 50-67 encryption of biometrics; Col. 10 lines 5-17 encrypted ECM transmitted), and uploading the encrypted biometric template to the server for storage (Griffin Col. 17 lines 16-28 securely stored template in the database).
Regarding Claim 8:
The combination of Griffin and Andersson further teaches the method of claim 1 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the step of performing the new enrollment comprises converting the biometric reading to a template of the biometric reading (Griffin Fig. 1 step 118, Col. 9 lines 37-49), receiving the secret password to generate the key (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation), using the key to encrypt the template of the biometric reading to provide the encrypted biometric template (Griffin Col. 8 lines 50-67 encryption of biometrics; Col. 10 lines 5-17 encrypted ECM transmitted), deleting the password and key (Griffin Col. 17 line 16-20 contemplates discarding the initial enrolment-stage data, which could include the password provided to symmetrically encrypt), and uploading the encrypted biometric template to the server for storage at the server (Griffin Col. 17 lines 16-28 securely stored template in the database).
Regarding Claim 14:
The combination of Griffin and Andersson further teaches the method of claim 12 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the step of performing the new enrollment comprises storing the biometric template of the biometric reading on the secure storage (Griffin Fig. 3 ECM circuit 340 stores and facilities biometric template identifiers; Col. 19 line 52 through Col. 20 line 11 “The ECM circuit 340 facilitates the retrieval and transmission of the proper biometric type and information of the user during subsequent authentication attempts with the BABE processing computing system 302 and/or the relying party computing system 306.”), encrypting the biometric template of the biometric reading to provide the encrypted biometric template (Griffin Col. 16 line 55 through Col. 17 line 2 biometric sample is securely stored and enrollment circuit facilities generation of the ECM; Col. 17 lines 16-28 securely stored template in the database), and uploading the encrypted biometric template to the server for storage (Griffin Col. 17 lines 16-28 securely stored template in the database).
Regarding Claim 15:
The combination of Griffin and Andersson further teaches the method of claim 12 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the step of performing the new enrollment comprises receiving the secret password to generate the key (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation), using the key to encrypt the template of the biometric reading to provide the encrypted biometric template (Griffin Col. 8 lines 50-67 encryption of biometrics; Col. 10 lines 5-17 encrypted ECM transmitted), and uploading the encrypted biometric template to the server for storage (Griffin Col. 17 lines 16-28 securely stored template in the database).
Regarding Claim 16:
Griffin further discloses the method of claim 12 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the step of performing the new enrollment comprises receiving the secret password to generate the key (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation), using the key to encrypt the template of the biometric reading to provide the encrypted biometric template (Griffin Col. 8 lines 50-67 encryption of biometrics; Col. 10 lines 5-17 encrypted ECM transmitted), deleting the password and key (Griffin Col. 17 line 16-20 contemplates discarding the initial enrollment-stage data, which could include the password provided to symmetrically encrypt), and uploading the encrypted biometric template to the server for storage at the server (Griffin Col. 17 lines 16-28 securely stored template in the database).
Regarding Claim 17:
Griffin further discloses the method of claim 12 (Griffin Fig. 2, Col. 4 lines 5-22, Col. 16 lines 23-36), wherein the step of performing the new enrollment of the biometric device when the biometric template is neither stored locally on the biometric device nor as the encrypted biometric template on the server (Griffin Fig. 1 enrollment process, Col. 4 line 54 through Col. 5 line 3 BSP handling initial identity verification and enrollment), further comprises receiving the secret password to generate the key (Griffin Fig. 1 step 102 and 104, Col. 7 lines 49-62 password key generation), encrypting the template of the biometric reading using the key to provide the encrypted biometric template (Griffin Col. 8 lines 50-67 encryption of biometrics; Col. 10 lines 5-17 encrypted ECM transmitted), deleting the password and key (Griffin Col. 17 line 16-20 contemplates discarding the initial enrolment-stage data, which could include the password provided to symmetrically encrypt), and uploading the encrypted biometric template to the server for storage at the server (Griffin Col. 17 lines 16-28 securely stored template in the database).
Conclusion
The prior art made of record in the submitted PTO-892 Notice of References Cited and not relied upon is considered pertinent to applicant’s disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.A.L./ Examiner, Art Unit 2496
/JORGE L ORTIZ CRIADO/ Supervisory Patent Examiner, Art Unit 2496