DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
Request for Continued Examination (RCE)
An RCE under 37 C.F.R. § 1.114, including the fee set forth in § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under § 1.114, and the fee set forth in § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to § 1.114. Applicants’ submission filed on April 2, 2026 has been entered.
Response and Claim Status
The instant Office action is responsive to the response received April 2, 2026 (the “Response”).
In response to the Response, the previous rejections of claims 1–3, 10–12, and 19 under 35 U.S.C. § 103
are WITHDRAWN.
Claims 1, 2, 4–8, 10, 11, 13–17, 19, and 21–24 are currently pending.
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “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 MPEP recites “[d]uring examination, after applying the broadest reasonable interpretation consistent with the specification to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.” MPEP § 2173.02(I) (citing In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) . . . is appropriate.” Id. See also id. § 2173.05(e)(discussing indefiniteness arising for terms lacking proper antecedent basis).
Claims 1, 2, 4–8, 10, 11, 13–17, 19, and 21–24 are rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular,
(i) claim 1, line 14, “the front . . . fingerprint scanner[[s]]” lacks clear antecedent basis.
(ii) claim 1, line 15, “the back display[[s]]” lacks clear antecedent basis.
(iii) claim 1, line 19, “the electronic device is being held from the back side” adds ambiguity to the claim because the Examiner is uncertain as to what holding position is considered being “from the back side.” The Examiner is uncertain whether “from the back side” is when the user is facing the front side of the electronic device or the back side of the electronic device. The Examiner is uncertain whether “from the back side” is when the user is placing fingers on the back side.
(iv) claim 10, line 14, “the electronic device is being held from the front side” adds ambiguity to the claim because the Examiner is uncertain as to what holding position is considered being “from the front side.” The Examiner is uncertain whether “from the front side” is when the user is facing the front side of the electronic device or the back side of the electronic device.
(v) claim 13, line 12, “the back fingerprint scanner” lacks clear antecedent basis.
(vi) claim 19, line 19, “the electronic device is being held from the front side” adds ambiguity to the claim because the Examiner is uncertain as to what holding position is considered being “from the front side.” The Examiner is uncertain whether “from the front side” is when the user is facing the front side of the electronic device or the back side of the electronic device.
(vii) claim 23, line 2, “a front fingerprint scanner” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the front fingerprint scanner introduced in claim 10, lines 3–4 or not.
(vii) claim 23, lines 5–6, “a back display” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the front fingerprint scanner introduced in claim 10, line 10 or not.
Claim Rejections – 35 U.S.C. § 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.
Claims 1, 2, 10, 11, and 19 are rejected under 35 U.S.C. § 103 as being obvious over Sarve et al. (US 2021/0250867 A1; PCT filed Dec. 3, 2018) in view of Breed et al. (US 2017/0300799 A1; PCT filed Oct. 21, 2015), and in further view of Mo et al. (US 2015/0254491 A1; filed Dec. 30, 2014).
Regarding claim 1, while Sarve teaches an electronic device (fig. 1a, item 100) comprising:
a device housing having a front side and a back side (Figure 1a illustrates item 100 including a device housing having a front side and a back side);
a back fingerprint scanner (fig. 1a, item 102) exposed at the back side of the device housing at a back fingerprint scanner location (Figure 1a illustrates item 102 located at a specific location) that is in an upper portion of the back side when the electronic device is in a vertically upright orientation (Figure 1a illustrates item 100 is a vertically upright orientation) and in a lower portion of the back side when the electronic device is in a vertically upside down orientation (because Figure 1a illustrates item 100 is a vertically upright orientation, positioning item 100 is a vertically upside down orientation places item 102 in the lower portion of the back side);
a front display (fig. 1a, item 106) presented on the front side of the device housing;
a controller (“The device controller (or any other control unit of the present disclosure) may include a microprocessor” at ¶ 92) communicatively coupled to the front and the back fingerprint scanners, the front and the back displays, and which:
in response to determining that a requirement (fig. 6, item S602; ¶ 82) exists for scanning a fingerprint (¶ 44) of a user (Figure 1a illustrates the hand of a user) while the electronic device is being held from the back side (Figure 1a illustrates item 100 being held from the back side):
triggers the back fingerprint scanner to initiate scanning (fig. 6, items S604, S610);
presents a visual indication (fig. 6, item S608; ¶ 83; “a display unit configured to be in a state with relatively high brightness when the device controller is in the at least partly active mode” at ¶ 40) via the front display on an opposite side proximate to a location of back fingerprint scanners (Figure 1a illustrates item 106 on an opposite side proximate to a location of item 102), the visual indication prompting the user to present a finger (fig. 6, items S609, S610; S612; ¶ 84) for capturing a corresponding fingerprint by the back fingerprint scanner (fig. 6, item S610; ¶ 85)(intended use in italics);
receives a fingerprint image (fig. 8, S813; ¶ 87) from the back fingerprint scanner; and
authenticates the user in response to identifying that the received fingerprint image corresponds to a fingerprint of an authorized user (Yes to fig. 8, item S815; ¶ 87), based on stored authentication data,
Sarve does not teach (A) the back fingerprint scanner location being in a lower portion of the back side when the electronic device is in a vertically upright orientation (and thus the back fingerprint scanner location being in an upper portion of the back side when the electronic device is in a vertically upside down orientation); (B) presenting the captured corresponding fingerprint to the front display.
(A)
Breed teaches a back fingerprint scanner (fig. 9, item 902) location being in a lower portion of a back side of an electronic device when the electronic device is in a vertically upright orientation (fig. 9 illustrates a back fingerprint scanner item 902 exposed at the back side of an electronic device 900 at a back fingerprint scanner location that is in a lower portion of the back side when the electronic device is a vertically upright position).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Sarve’s back fingerprint scanner location to be in a lower portion of the back side when the electronic device is in a vertically upright orientation (and thus the back fingerprint scanner location being in an upper portion of the back side when the electronic device is in a vertically upside down orientation) as taught by Breed “to provide a protection mechanism for critical data stored within the device.” Breed ¶ 12. Moreover, “even greater security can be realized by combining these two biometric systems.” Id. ¶ 99.
(B)
Mo teaches presenting a captured corresponding fingerprint (fig. 17) to a front display (fig. 1, item 3; fig. 17, item 10; “displaying the fingerprint image on the display panel 10” at ¶ 160).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Sarve’s captured corresponding fingerprint to be presented to the front display as taught by Mo “thereby improving the efficiency in fingerprint sensing and leading to easier control.” Mo ¶ 103.
Regarding claim 2, Sarve teaches wherein the controller authenticates the user (Yes to fig. 8, item S815; ¶ 87) in response to identifying that an upright version (fig. 1a illustrates the user’s finger in an upright position) of the received fingerprint image (fig. 8, item S813; ¶ 87) corresponds to the fingerprint of the authorized user, based on the authentication data.
Regarding claim 10, while Sarve teaches a method comprising:
identifying an orientation (Sarve at least suggests the user illustrated in fig. 1a needs to identify an orientation of item 100 to properly operate item 100 for its intended purpose) of an electronic device (fig. 1a, item 100) comprising:
(i) a device housing having a front side and a back side (Figure 1a illustrates item 100 including a device housing having a front side and a back side);
(ii) a front fingerprint scanner1 (fig. 1a, item 102) exposed at the front side of the device housing at a front fingerprint scanner location (Figure 1a illustrates item 102 located at a specific location) that is in an upper portion of the front side when the electronic device is in a vertically upright orientation (Figure 1a illustrates item 100 is a vertically upright orientation) and in a lower portion of the front side when the electronic device is in a vertically upside down orientation (because Figure 1a illustrates item 100 is a vertically upright orientation, positioning item 100 is a vertically upside down orientation places item 102 in the lower portion of the back side); and
(iii) a back display (fig. 1a, item 106) presented on the back side of the device housing;
in response to determining that a requirement (fig. 6, item S602; ¶ 82) exists for scanning a fingerprint (¶ 44) of a user (Figure 1a illustrates the hand of a user) while the electronic device is being held from the front side (Figure 1a illustrates item 100 being held from the front side):
in triggering at the front and fingerprint scanner to initiate scanning (fig. 6, items S604, S610);
presenting a visual indication (fig. 6, item S608; ¶ 83; “a display unit configured to be in a state with relatively high brightness when the device controller is in the at least partly active mode” at ¶ 40) via the back display on an opposite side proximate to a location of the front fingerprint scanners (Figure 1a illustrates item 106 on an opposite side proximate to a location of item 102), the visual indication prompting the user to present a finger (fig. 6, items S609, S610; S612; ¶ 84) for capturing of a fingerprint by the front fingerprint scanner (fig. 6, item S610; ¶ 85)(intended use in italics);
receiving a fingerprint image (fig. 8, S813; ¶ 87) from the front fingerprint scanner; and
authenticating the user in response to identifying that the received fingerprint image corresponds to a fingerprint of an authorized user (Yes to fig. 8, item S815; ¶ 87), based on stored authentication data,
Sarve does not teach (A) the front fingerprint scanner location being in a lower portion of the back side when the electronic device is in a vertically upright orientation (and thus the front fingerprint scanner location being in an upper portion of the front side when the electronic device is in a vertically upside down orientation); (B) presenting the captured corresponding fingerprint to the back display.
(A)
Breed teaches a front fingerprint scanner (fig. 9, item 902) location being in a lower portion of a front side of an electronic device when the electronic device is in a vertically upright orientation (fig. 9 illustrates a back fingerprint scanner item 902 exposed at the front side of an electronic device 900 at a front fingerprint scanner location that is in a lower portion of the front side when the electronic device is a vertically upright position).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Sarve’s front fingerprint scanner location to be in a lower portion of the front side when the electronic device is in a vertically upright orientation (and thus the front fingerprint scanner location being in an upper portion of the front side when the electronic device is in a vertically upside down orientation) as taught by Breed “to provide a protection mechanism for critical data stored within the device.” Breed ¶ 12. Moreover, “even greater security can be realized by combining these two biometric systems.” Id. ¶ 99.
(B)
Mo teaches presenting a captured corresponding fingerprint (fig. 17) to a back display (fig. 1, item 3; fig. 17, item 10; “displaying the fingerprint image on the display panel 10” at ¶ 160).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Sarve’s captured corresponding fingerprint to be presented to the back display as taught by Mo “thereby improving the efficiency in fingerprint sensing and leading to easier control.” Mo ¶ 103.
Regarding claim 11, claim 2 recites substantially similar features. Thus, references/arguments equivalent to those present for claim 2 are equally applicable to claim 11.
Regarding claim 19, Sarve teaches a non-tangible computer program product (fig. 1a, item 100) comprising:
a computer readable storage device (fig. 1a, item 100; ¶ 93); and
program code on the computer readable storage device that when executed by a processor (“The device controller (or any other control unit of the present disclosure) may include a microprocessor” at ¶ 92) associated with an electronic device (fig. 1a, item 100), the program code enables the electronic device to provide functionality of the operations according to claim 10. Thus, references/arguments equivalent to those present for claim 10 are equally applicable to claim 19.
Allowable Subject Matter
Claims 4–8, 13–17, and 21–24 would be allowable if rewritten to (1) overcome the rejection under 35 U.S.C. § 112(b) set forth in this Office action; and (2) include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20230262017-A1; US-20210133415-A1; and US-20120075442-A1.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner notes the claims do not indicate a reference point that determines what is considered a front side of the electronic device and a back side of the electronic device. Thus, with respect to claim 1, the Examiner finds a front side of electronic device item 100 being with respect to item 106 (and thus item 102 being a back side of the electronic device item 100). With respect to claims 10 and 19, the Examiner finds a front side of electronic device item 100 being with respect to item 102 (and thus item 106 being a back side of the electronic device item 100).
Prosecution Insights