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 .
DETAILED ACTION
In view of the Appeal Brief filed on 3/16/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Jeffrey Nickerson/Supervisory Patent Examiner, Art Unit 2432
Response to Arguments
This Office action is in response to the Appeal Brief filed on 3/16/2026 with claims 1-3, 5-7, and 9-22. Claims 1, 6, and 10 are independent.
Applicant’s arguments, see App.Br, pages 12-16, filed on 3/16/2026, with respect to the rejection of claim 1 under 35 USC 103 have been fully considered and are persuasive in so far as the cited art of record does not disclose a “secure interface” coupling the processor and the TEE. However, a TEE physically separate and connected to a processor and other computing elements via a secure interface is a well-known and commonly used architecture in computer security systems. See for example, newly cited art, Reese (US 20200167775 A1) teaches a secure processing computing device that includes a trusted execution environment (TEE) wherein the TEE is physically separate from a processor and connected to the processor via a secure interface (Reese: Figs. 2, 5, ¶92, ¶96, TEE 115 physically separate from processor 210 and connected to the processor 210 via a secure interface). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device such that to include a TEE connected via a secure interface to a processor, as taught by Reese. The motivation for doing so would have been to protect sensitive information and increase security.
As regards to Applicant’s arguments TEE utilizing hashed image or storing hashed image, it is noted the rejection cites Arjona for teaching the hashing of fingerprint data and providing the data for performing authentication matching. It is further noted that Tonoyan is cited for providing a trusted environment (TEE) that receives hashed biometric data and securely performs authentication matching against a stored hashed enrollment data (Fig. 1-5, 8, element 814, ¶49, ¶57, ¶72-¶76). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device to use a trusted execution environment (TEE) to determine a result of the fingerprint authentication, as taught by Tonoyan. The motivation for doing so would have been to provide a more secure execution environment. Furthermore, the prior art collectively includes each element claimed (though not all in the same reference). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As regards claim 21, Contrary to Applicant’s arguments, Russo et al combination teaches a TEE and application processor to be physically separate. (Tonoyan: Fig. 8, element 816 connecting 810 and TEE 814. See also, Reese: Figs. 2, 5, ¶92, ¶96, TEE 115 physically separate from processor 210 and connected to the processor 210 via a secure interface)
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 5-7, 9, 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Russo (US 2013/0272586 A1) in view of Arjona et al. (“A PUF- and Biometric-Based Lightweight Hardware Solution to Increase Security at Sensor Nodes”) in view of Tonoyan (US 2016/0321441 A1) in view of Reese (US 20200167775 A1).
Regarding claims 1 and 6, Russo discloses a device and corresponding computer product, the device comprising:
an image sensor (i.e., optical sensor) to capture an image of a fingerprint of a user for the fingerprint authentication (Fig. 2, element 202; paragraphs [0032], [0071]-[0081]); and
a readout integrated circuit (ROIC) coupled to the image sensor (Fig. 2, elements 254; par. [0033]).
Russo does not disclose that the ROIC to utilize a hash function to perform hashing of the image, wherein the hash function is unique to the device. Arjona discloses hashing biometric data wherein the hash function is unique to a device (i.e., Biohashing biometric template using a PUF response) (page 3, 3rd paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device such that the ROIC to utilize a hash function to perform hashing of the image, wherein the hash function is unique to the device, as taught by Arjona. The motivation for doing so would have been to protect sensitive information and increase security.
Russo et al in combination with Tonoyan teaches: a chip comprising: a trusted execution environment (TEE); and (Tonoyan: Fig. 8, element 804 and TEE 814)
In analogous art, Tonoyan (Fig. 1-5, 8, element 814, ¶49, ¶57, ¶72-¶76) discloses using a trusted execution environment (TEE) to determine a result of the fingerprint authentication wherein the TEE protects the biometric sensitive data and securely performs the biometric authentication). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device to use a trusted execution environment (TEE) to determine a result of the fingerprint authentication, as taught by Tonoyan. The motivation for doing so would have been to provide a more secure execution environment.
However, Russo et al do not but in analogous art, an applications processor coupled via a secure interface with the TEE.
In analogous art, Reese (US 20200167775 A1) teaches a secure processing computing device that includes a trusted execution environment (TEE) wherein the TEE is physically separate from a processor and connected to the processor via a secure interface (Reese: Figs. 2, 5, ¶92, ¶96, TEE 115 physically separate from processor 210 and connected to the processor 210 via a secure interface). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device such that to include a TEE connected via a secure interface to a processor, as taught by Reese. The motivation for doing so would have been to protect sensitive information and increase security
Russo et al combination further teaches: wherein the hashing of the image via the ROIC is to produce a hashed image of the fingerprint (Arjona: hashing biometric data wherein the hash function is unique to a device (i.e., Biohashing biometric template using a PUF response) (page 3, 3rd paragraph), wherein the ROIC is to provide the hashed image to a trusted execution environment (TEE), and wherein the TEE is to utilize the hashed image as a control image for authentication of subsequent hashed images of fingerprints provided by the ROIC (Tonoyan (Fig. 8, element 814, ¶72-¶76) discloses using a trusted execution environment (TEE) to determine a result of the fingerprint authentication wherein the TEE protects the biometric sensitive data and securely performs the biometric authentication).
Regarding claims 2 and 7, Arjona further discloses wherein the ROIC comprises a physically unclonable function (PUF) to produce the hash function (i.e., the PUB response is part of the function) (page 3, 3rd paragraph).
Regarding claim 3, Arjona further discloses that the PUF is to generate a random code (i.e., the PUF response), and wherein the hash function is based on the random code (page 3, 3rd paragraph).
Regarding claim 5, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the ROIC is to: produce a second hashed image of a second fingerprint captured by the image sensor; and provide the second hashed image to the TEE; and wherein the TEE is to perform a comparison of the second hashed image with the control image to determine whether the second hashed image and the control image substantially match. (Russo: Fig. 2; paragraphs [0034], [0071], i.e., processor 266 and persistent memory 274 used to store algorithms 276 and software applications 278 that are used by processor 266 for the various described functions. Russo does not disclose that the execution environment is a trusted execution environment (TEE). In analogous art, Tonoyan (Fig. 8, element 814, ¶72-¶76) discloses using a trusted execution environment (TEE) to determine a result of the fingerprint authentication wherein the TEE protects the biometric sensitive data and securely performs the biometric authentication)
Regarding claim 9, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose one or more non-transitory computer-readable media of claim 6, wherein the instructions, when executed by the device, further cause the device to: capture a second image of a second fingerprint; hash the second image of the second fingerprint with the hash function to produce a second hashed image; provide the second hashed image to the TEE, the TEE to perform a comparison of the second hashed image with the control image to determine whether the second hashed image and the control image are a match; output an indication, from the TEE to the applications processor, of whether the second hashed image substantially matches the control image based on the comparison of the second hashed image with the control image; grant access, by the applications processor, to the device, secured information, or secured applications based on the indication indicating that the second hashed image substantially matches the control image; and prevent access, by the applications processor, to the device, the secured information, or the secured applications based on the indication indicating that the second hashed image does not substantially match the control image (Russo: Fig. 2; paragraphs [0034], [0071], i.e., processor 266 and persistent memory 274 used to store algorithms 276 and software applications 278 that are used by processor 266 for the various described functions. Russo does not disclose that the execution environment is a trusted execution environment (TEE). In analogous art, Tonoyan (Fig. 8, element 814, ¶72-¶76) discloses using a trusted execution environment (TEE) to determine a result of the fingerprint authentication wherein the TEE protects the biometric sensitive data and securely performs the biometric authentication)
Regarding claim 13, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 5, wherein the TEE outputs an indication of whether the second hashed image substantially matches the control image based on the comparison of the second hashed image with the control image. (Russo: ¶9-¶10, ¶36, ¶40. See also, Tonoyan: ¶7-¶9, ¶19-¶20, ¶30-¶32)
Regarding claim 14, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 13, wherein the second hashed image substantially matching the control image is an exact match. (Russo: ¶9-¶10, ¶36, ¶40. See also, Tonoyan: ¶7-¶9, ¶19-¶20, ¶30-¶32)
Regarding claim 15, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 13, wherein the second hashed image substantially matching the control image is within a predefined difference measurement range. (Russo: ¶9-¶10, ¶36, ¶40. See also, Tonoyan: ¶7-¶9, ¶19-¶20, ¶30-¶32)
Regarding claim 16, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 13, wherein the indication is a binary value. (Russo: ¶9-¶10, ¶36, ¶40. See also, Tonoyan: ¶7-¶9, ¶19-¶20, ¶30-¶32)
Regarding claim 17, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 13, wherein the indication is an analog value. (Russo: ¶9-¶10, ¶36, ¶40. See also, Tonoyan: ¶7-¶9, ¶19-¶20, ¶30-¶32)
Regarding claim 18, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 13, wherein the applications processor is configured to grant access to the device, secured information, or secured applications based on the indication indicating that the second hashed image substantially matches the control image. (Russo: ¶9-¶10, ¶36, ¶40. See also, Tonoyan: Fig. 2, 4, ¶7-¶9, ¶19-¶20, ¶30-¶32, ¶54-¶59)
Regarding claim 19, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 13, wherein the applications processor is configured to prevent access to the device, secured information, or secured applications based on the indication indicating that the second hashed image does not substantially match the control image. (Russo: ¶9-¶10, ¶36, ¶40. See also, Tonoyan: Fig. 2, 4, ¶7-¶9, ¶19-¶20, ¶30-¶32, ¶54-¶59)
Regarding claim 20, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose that the device of claim 1, wherein the image of the fingerprint captured by the image sensor is an analog image, and wherein the ROIC is configured to convert the analog image to a digital image. (Russo: ¶9-¶10, ¶33-¶36, ¶40. See also, Tonoyan: Fig. 2, 4, ¶7-¶9, ¶19-¶20, ¶24, ¶30-¶32, ¶54-¶59)
Regarding claim 21, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose the device of claim 1, wherein the TEE and the applications processor are physically separated, separated by a firewall, or both. (Tonoyan: Fig. 8, element 816 connecting 810 and TEE 814. See also, Reese: Figs. 2, 5, ¶92, ¶96, TEE 115 physically separate from processor 210 and connected to the processor 210 via a secure interface)
Regarding claim 22, accordingly the combined teaching of Russo, Arjona, and Tonoyan would disclose the device of claim 1, wherein the hashed image is an irreversibly scrambled version of the image of the fingerprint, wherein the TEE has access to only the irreversibly scrambled version of the image of the fingerprint. (Tonoyan: ¶49, ¶57)
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Russo in view of Arjona and Tonoyan and Reese.
Regarding claim 10, Russo discloses a device comprising:
an execution environment to determine a result of the fingerprint authentication (i.e., processor 266 and persistent memory 274 used to store algorithms 276 and software applications 278 that are used by processor 266 for the various described functions) (Fig. 2; paragraphs [0034], [0071]); and
a readout integrated circuit (ROIC) to provide an image of a fingerprint to the execution environment via an interface for the fingerprint authentication (Fig. 2, elements 254; paragraphs [0032]-[0033]).
Russo does not disclose that the execution environment is a trusted execution environment (TEE). Tonoyan discloses using a trusted execution environment (TEE) to determine a result of the fingerprint authentication (Fig. 8, element 814). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device to use a trusted execution environment (TEE) to determine a result of the fingerprint authentication, as taught by Tonoyan. The motivation for doing so would have been to provide a more secure execution environment.
Russo does not disclose that the ROIC to generate a hash function that is unique to the device and to hash the image using the hash function. Arjona discloses generating a hash function that is unique to the device and hashing the image using the hash function (i.e., generating a PUF response and Biohashing biometric template using the PUF response) (page 3, 3rd paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device such that the ROIC to generate a hash function that is unique to the device and to hash the image using the hash function, as taught by Arjona. The motivation for doing so would have been to protect sensitive information and increase security.
wherein the hashing of the image via the ROIC is to produce a hashed image of the fingerprint, wherein the ROIC is to provide the hashed image to a trusted execution environment (TEE), and wherein the TEE is to utilize the hashed image as a control image for authentication of subsequent hashed images of fingerprints provided by the ROIC. (Russo: Fig. 2; paragraphs [0034], [0071], i.e., processor 266 and persistent memory 274 used to store algorithms 276 and software applications 278 that are used by processor 266 for the various described functions. Russo does not disclose that the execution environment is a trusted execution environment (TEE). In analogous art, Tonoyan (Fig. 8, element 814, ¶72-¶76) discloses using a trusted execution environment (TEE) to determine a result of the fingerprint authentication wherein the TEE protects the biometric sensitive data and securely performs the biometric authentication)
However, Russo et al do not but in analogous art, an applications processor coupled via a secure interface with the TEE.
In analogous art, Reese (US 20200167775 A1) teaches a secure processing computing device that includes a trusted execution environment (TEE) wherein the TEE is physically separate from a processor and connected to the processor via a secure interface (Reese: Figs. 2, 5, ¶92, ¶96, TEE 115 physically separate from processor 210 and connected to the processor 210 via a secure interface). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Russo’s device such that to include a TEE connected via a secure interface to a processor, as taught by Reese. The motivation for doing so would have been to protect sensitive information and increase security.
Regarding claim 11, accordingly the combined teaching of Russo, Arjona, Tonoyan, and Reese would disclose that the ROIC is further to: perform a first hash operation on an image of the fingerprint to produce the hashed image of the fingerprint; perform a second hash operation on an image of a second fingerprint to produce a hashed image of the second fingerprint; and provide the hashed image of the second fingerprint to the TEE; and wherein the TEE is further to: store the hashed image of the fingerprint as a control image for the fingerprint authentication; and generate, based on a comparison of the control image with the hashed image of the second fingerprint, an indication of whether the hashed image of the second fingerprint substantially matches the control image based on the comparison of the hashed image of the second fingerprint with the control image; and wherein the applications processor is further to: grant access to the device, secured information, or secured applications based on the indication indicating that the hashed image of the second fingerprint substantially matches the control image; and prevent access to the device, the secured information, or the secured applications based on the indication indicating that the hashed image of the second fingerprint does not substantially match the control image. (Russo: Fig. 2; paragraphs [0034], [0071], i.e., processor 266 and persistent memory 274 used to store algorithms 276 and software applications 278 that are used by processor 266 for the various described functions. Russo does not disclose that the execution environment is a trusted execution environment (TEE). In analogous art, Tonoyan (Fig. 8, element 814, ¶72-¶76) discloses using a trusted execution environment (TEE) to determine a result of the fingerprint authentication wherein the TEE protects the biometric sensitive data and securely performs the biometric authentication)
Regarding claim 12, Arjona further disclose that to generate the hash function comprises to generate the hash function based on a physically unclonable function (page 3, 3rd paragraph).
Conclusion
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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
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