DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Claims 1-9 were previously pending. Claim 1 was amended, claims 2 and 8-9 were canceled, and new claim 10 was added in the reply filed December 23, 2025. Claims 1, 3-7, and 10 are currently pending.
Response to Arguments
Applicant's amendments overcome the objection to the Specification and it is withdrawn.
Applicant's amendments overcome the rejection made under § 112(a) and it is withdrawn.
Applicant's arguments filed with respect to the rejections made under § 103(a) have been fully considered but are moot in view of the new grounds of rejection.
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 pre-AIA 35 U.S.C. 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, 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 invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 3-5 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lane, U.S. Pat. No. 5,623,552 (Reference A of the PTO-892 part of paper no. 20240422) in view of Borracci, U.S. Pat. Pub. No. 2008/0164325 (Reference B of the PTO-892 part of paper no. 20240422), Bonalle, et al., U.S. Pat. Pub. No. 2006/0016875 (Reference D of the PTO-892 part of paper no. 20240422), Musgrave, U.S. Pat. No. 6,202,151 (Reference E of the PTO-892 part of paper no. 20240422), and Markovic, Data Protection Techniques, Cryptographic Protocols and PKI systems in Modern Computer Networks, 14th International Workshop on Systems, Signals and Image Processing, IEEE, 2007, pgs. 13-24 (Reference U of the attached PTO-892).
As per claim 1, Lane teaches a portable device comprising:
a sensor configured to acquire a biometric pattern from a user who attempts to access the portable device (col. 5, lines 6-13); and
an integrated circuit (IC) chip (col. 5, lines 17-19) configured to:
store first biometric information of a registered user who has been registered to be authorized to use the portable device (col. 5, lines 9-10, 37-43);
determine whether the biometric pattern is matched with the first biometric information (col. 5, lines 37-43);
transmit authentication information to the remote server or terminal when the biometric pattern is matched with the first biometric information, and not transmit authentication information when the biometric pattern is not matched with the first biometric information or when the biometric pattern is not matched with the second biometric information (col. 3, lines, 18-25; col. 8, lines 61-68; col. 9, lines 22-32, 53-54).
Lane does not explicitly teach the user is specifically a subscriber; which is taught by Borracci (¶ 0073). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Borracci—namely, to offer an expansive list of possible services that can be accessed with the smartcard. Moreover, this is merely a combination of old elements in the art of portable card services. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results. Even if Lane's description of a memory is not construed to teach an IC chip, this is also taught by Borracci (¶ 0160). It would have been prima facie obvious to incorporate this element because it merely a substation of one type of chip for another, where both perform the same function and would yield the same results.
While Borracci teaches the user is specifically a subscriber (see above), the references do not explicitly teach to store second biometric information that corresponds to the registered user and to also use it for matching in order to reach an authentication decision; which is taught by Bonalle (¶ 0256). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Bonalle—namely, to increase security by matching multiple biometrics (i.e., more than one fingerprint). Moreover, this is merely a combination of old elements in the art of portable card services. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Although the references together teach the first biometric information and the second biometric information (see above), they do not explicitly teach to store a public key certificate in which the biometric information are inserted in an encoded manner which is used to determine the match. However, this is taught by Musgrave (col. 5, lines 10-67; col. 6, lines 53-58; see also col. 1, lines 30-38—types of services (i.e., subscriber), col. 6—lines 55-56—registration). It would have been prima facie obvious to one having ordinary skill in the art to incorporate this feature for the same reason it is useful in Musgrave—namely, to provide added security (see Musgrave cols. 2-3). Both the primary references and Musgrave deal with processing secure transactions, and one skilled in the art would have recognized that using this public key certificate insertion technique of Musgrave would improve the smartcard of the primary references due to their similar purposes and functions—specifically, by providing added data security (see Musgrave cols. 2-3). Based upon the level of skill displayed in the references, modifying the system in such a manner could have been implemented through routine engineering producing predictable results. More specifically, one of ordinary skill in the field of securing transactions in data processing devices would have recognized that the smartcard processor of Lane in view of Borracci could be programmed to store the biometric data in Musgrave's public key certificate and use it for matching, and that the already-present memories would be able to store it.
Although the references together teach the first biometric information and the second biometric information in the public key certificate (see above), they do not explicitly teach to transmit a tunneling start signal to establish a communication tunnel to a remote server or terminal when the biometric pattern is matched with the first biometric information; generate a one-time password; and to transmit authentication information in combination with the one-time password through the communication tunnel. However, this is taught by Markovic (pg. 16, col. 2 - pg. 17, col. 1). It would have been prima facie obvious to one having ordinary skill in the art to incorporate this feature for the same reason it is useful in Markovic, namely—to further enhance communications security. Moreover, this is merely a combination of old elements in the art of using smart cards for remote access. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 3, Lane in view of Borracci, Bonalle, Musgrave, and Markovic and teaches claim 1 as above. Lane further teaches the sensor is a fingerprint recognition sensor (col. 5, line 8), a vascular recognition sensor, a palm recognition sensor, a voice recognition sensor, an iris recognition sensor, or a combination thereof.
As per claim 4, Lane in view of Borracci, Bonalle, Musgrave, and Markovic teaches claim 1 as above. Bonalle further teaches the remote service or terminal is a server or terminal for managing rental service of a public equipment (¶ 0070). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Bonalle—namely, to facilitate and add security to these types of transactions. Moreover, this is merely a combination of old elements in the art of using smart cards for secured access. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 5, Lane in view of Borracci, Bonalle, Musgrave, and Markovic teaches claim 1 as above. Lane further teaches the portable device is implemented as a smart card (col. 5, lines 6-20).
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lane in view of Borracci, Bonalle, et al., Musgrave, and Markovic as applied to claim 1 above, further in view of Lu, U.S. Pat. Pub. No. 2006/0294023 (Reference C of the PTO-892 part of paper no. 20240422)
As per claim 6, Lane in view of Borracci, Bonalle, Dray, and Gomes teaches claim 1 as above. The references do not explicitly teach the portable device is implemented as a universal serial bus (USB) token or a dongle; which is taught by Lu (¶¶ 0048, 52—USB token). It would have been prima facie obvious to one having ordinary skill in the art to incorporate this element because it is merely a substitution of the device in Lu (including USB token) for the devices disclosed by the primary references (smartcard). Both are shown in the art as means to increase the security of transactions. The only difference is the specific structure of the device itself. Based upon the level of skill displayed in the references, this substitution could be performed by routine engineering producing predictable results.
Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lane in view of Borracci, Bonalle, et al., Musgrave, and Markovic as applied to claim 1 above, further in view of Official Notice considered Admitted Prior Art.
As per claim 7, Lane in view of Borracci, Bonalle, Dray, and Gomes teaches claim 1 as above. The references do not explicitly teach the portable device is implemented as a mobile phone. Official Notice is taken that mobile phones are well-known devices that have the required storage and processing capabilities. This finding has not been challenged and is considered admitted prior art. It would have been prima facie obvious to incorporate this element because one of ordinary skill in the art would have recognized that a substitution of a mobile phone for the portable electronic devices disclosed by the primary references (e.g., smartcard) could be performed by routine engineering producing predictable results.
Claim 10 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lane in view of Borracci, Bonalle, et al., Musgrave, and Markovic as applied to claim 1 above, further in view of Zingher, et al., U.S. Pat. Pub. No. 2002/0038818 (Reference A of the attached PTO-892).
As per claim 10, Lane in view of Borracci, Bonalle, Dray, and Gomes teaches claim 1 as above. Although the references together teach that the signal is a tunneling start signal (see above), they do not explicitly teach when the biometric pattern is not matched with the first biometric information or when the biometric pattern is not matched with the second biometric information, the IC chip configured to transmit an alternative signal to a different target terminal, and wherein the different target terminal is an emergency management server. However, this is taught by Zingher (¶¶ 0011-12, 40, see also ¶ 0038—IC chip). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Zingher—namely, to discreetly notify authorities that a crime is being committed (¶ 0010). Moreover, this is merely a combination of old elements in the art of using smart cards for secured access. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Tam, U.S. Pat. Pub. No. 2001/0054154 (Reference B of the attached PTO-892) relates to a portable device comprising sensor and IC chip.
Zingher, et al., U.S. Pat. Pub. No. 2002/0170954 (Reference C of the attached PTO-892) relates to a portable device comprising sensor and IC chip.
Burke, et al., U.S. Pat. Pub. No. 2009/0282258 (Reference D of the attached PTO-892) relates to a portable device comprising sensor and IC chip.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628