DETAILED ACTION
Notice of Pre-AIA or AIA Status.
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-16 filed on 12/20/2023 are pending and being examined. Claims 1, 7, and 12 are independent form.
Priority
3. This application is a CON of 18/229,472 filed on 08/02/2023.
Nonstatutory Double Patenting
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of Co-pending Application No. 18/543,052. Although the claims at issue are not identical, they are not patentably distinct from each other because the respective claims between the instant application and Co-pending Application No 18/543,052 describe the same invention. The examiner has explained in detail how claim 1 of the instance application is unpatentable over claim 1 of Co-pending Application No. 18/543,052 in the following table. The examiner shall not detail the minor difference and the mapping between each of the instant application claims and its corresponding patented claims in Co-pending Application No. 18/543,052. However, should applicant request such a detailed breakdown, the examiner will be happy to oblige in subsequent Office Action.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant application 18/390,172
Co-pending Application No. 18/543,052 (052’)
The examiner’s explanation
1. An image acquisition apparatus comprising: at least one memory configured to store instructions; and at least one processor configured to execute the instructions to:
[1] output content from an output unit;
[2] acquire an image for authentication of a subject person when the subject person faces to the output unit; and
[3] cause the output unit to output the content until [3-1] the authentication of the subject person is successful and [3-2] a process for managing historical information about the subject person is prepared to be performed.
1. An image acquisition apparatus comprising: at least one memory configured to store instructions; and at least one processor configured to execute the instructions to:
[a] output content from an output unit;
[b] acquire an image for authentication of a subject person when the subject person faces to the output unit;
[c] cause the output unit to output the content until the authentication of the subject person is successful or a process related to the authentication of the subject person is ended; and
[d] inform a communication apparatus that the authentication of the subject person is successful after the process related to authentication is ended.
[1] is interpreted as a 102 limitation disclosed by [a] of 052’.
[2] is interpreted as a 102 limitation disclosed by [b] of 052’.
[3-1] is interpreted as a 102 limitation disclosed by [c] of 052’, and [3-2] is interpreted as a 103 limitation taught by [d] of 052’. Therefore, element [3] of the instant application is interpreted as a 103 limitation taught by [c] and [d] of the co-pending application.
Claim Rejections - 35 USC § 101
6. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
7. Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to non-statutory subject matter (an abstract idea without significantly more).
7-1. Regarding independent claim 1, the claim recites an image acquisition apparatus comprising: at least one memory configured to store instructions; and at least one processor configured to execute the instructions to:
[1] output content from an output unit;
[2] acquire an image for authentication of a subject person when the subject person faces to the output unit; and
[3] cause the output unit to output the content until the authentication of the subject person is successful and a process for managing historical information about the subject person is prepared to be performed.
Step 1:
With regard to step (1), claim 1, is directed to an image acquisition apparatus comprising at least one memory configured to store instructions and at least one processor configured to execute the instructions. The claim 1 therefore is one of statutory categories of invention, i.e., a machine and/or manufacture.
Step 2A-1:
With regard to 2A-1, The elements recited in claim 1, as drafted, under their broadest reasonable interpretation, encompass a process(es) which is/are directed to organizing human activity, can be practically performed in human mind, or falls within mathematical concepts. For example, “output[in] content from an output unit” in step [1] in the context of this claim, can be performed by a human who, for example, can show the content displayed on a paper. Similarly, each of the “acquir[ing] an image for authentication of a subject person [...]” in step [2] and the “caus[ing] the output unit to output the content until the authentication of the subject person is successful and a process for [..]” in step [3], can be performed by a human. Similarly, “authentication of a subject person” in the context of the claim, encompasses mental observation, evaluations, judgments, and/or opinions that “can be performed in human mind, or by a human using a pen and paper”, therefore the limitation falls within the “mental processes” grouping of abstract ideas. Claim 1 therefore recites an abstract idea. If a claim limitation is directed to organizing human activity, can be practically performed in human mind, or falls within mathematical concepts, then the claim recites an abstract idea. See MPEP 2106.04(a)(2).
Step 2A-2:
The 2019 PEG defines the phrase "integration into a practical application" to require an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception. In the instant case, the additional elements of “acquir[ing] an image for authentication of a subject person [...]” in step [2] under their broadest reasonable interpretation, is mere data gathering recited at a high level of generality, and thus are insignificant extra-solution activity. Similarly, “at least one memory configured to store instructions; and at least one processor configured to execute the instructions” are recited at high level of generality and amount to no more than mere instruction to apply the exception using generic memories and generic processors. Therefore, the claim as a whole does not integrate the judicial exception into a practical application.
Step 2B:
As explained above, the image acquisition apparatus comprising at least one memory and at least one processor, is at best the equivalent of merely adding the words “apply it” to the judicial exception. The “acquir[ing] an image for authentication of a subject person [...]” in step [2] was considered insignificant extra-solution activity. These conclusions should be reevaluated in Step 2B. The limitations are mere data gathering and/or output recited at high level of generality and amount to receiving (i.e., acquiring), accessing, or transmitting data over a network, which is well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. The limitations remain insignificant extra-solution activity even upon reconsideration. Even when considered in combination, the additional elements present mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept. The claim therefore is ineligible.
7-2. Regarding dependent claims 2-6, they are viewed individually, these additional elements are under its broadest reasonable interpretation, either covers performance of the limitation in the mind or by a human, performing a mathematical algorithm or extra solution activity for data gathering and do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. And, when the claims are viewed as a whole, they do not improve a technology by allowing the technology to perform a function that it previously was not capable of performing; and they do not provide any limitations beyond generally linking the use of the abstract idea to a broad technological environment (i.e., computer-based analysis of generic data). Hence, the claimed invention does not constitute significantly more than the abstract idea, so the claims are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
7-3. Regarding independent claims 7 and 12, the claims recite a method (claim 7) and a non-transitory storage medium (claim 12) and each of which analogous to apparatus claim 1, grounds of rejection analogous to those applied to claim 1 are applicable to claims 7 and 12. Furthermore, the claim is a method that does not recite any additional elements, and according to step 2A-2 does not integrate the abstract idea into a practical application because it does not recite any additional elements that impose any meaningful limits on practicing the abstract idea. The claim recites an abstract idea.
Because the claim fails under (2A), the claim is further evaluated under (2B). The claim herein does not include any additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible.
7-4. Regarding dependent claims 8-11, and 13-16 they are respectively dependent from claim 7 and claim 12 and viewed individually, these additional elements are under its broadest reasonable interpretation, either covers performance of the limitation in the mind, performing a mathematical algorithm or extra solution activity for data gathering and do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. And, when the claims are viewed as a whole, they do not improve a technology by allowing the technology to perform a function that it previously was not capable of performing; and they do not provide any limitations beyond generally linking the use of the abstract idea to a broad technological environment (i.e., computer-based analysis of generic data). Hence, the claimed invention does not constitute significantly more than the abstract idea, so the claims are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Claim Objections
8. Claim 2 is objected to because of the typo. Specifically, “wherein the at least one processor is further configured tos perform changing the content [...]” should be “wherein the at least one processor is further configured [to] perform changing the content [...]” by the examiner’s best understanding.
Claim Rejections - 35 USC § 102
9. 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 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.
10. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
11. Claims 1-5, and 7-16 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Tussy et al (US 20200042685, hereinafter “Tussy”).
Regarding claim 1, Tussy discloses an image acquisition apparatus (the video display of a facial recognition authentication system; see fig.1, figs.12A-B) comprising: at least one memory configured to store instructions; and at least one processor (these hardware related features are inherence in the facial recognition authentication system shown by fig.1, such as mobile phone 112, server 120, camera 114, database 124, and the like) configured to execute the instructions to:
output content from an output unit; acquire an image for authentication of a subject person when the subject person faces to the output unit (see the prompted message: “place your face within the oval” in fig.13A; see para.202, lines 3-9: “once enrollment or authentication is begun as described previously, the system causes the user's mobile device 1310 to display a small oval 1320 on the screen 1315 while the mobile device 1310 is imaging the user. Instructions 1325 displayed on the screen 1315 instruct the user to hold the mobile device 1310 so that his or her face or head appears within in the oval 1320.”);
cause the output unit to output the content until the authentication of the subject person is successful (until the liveness of the user is imaged and validated at step 1218 of fig.12B, at step 1205 of fig.12B, “the various features are tracked through successive images [i.e., the loop of 1205—>A—>1205 or the loop of 1205[Wingdings font/0xE0]B—>1205 in fig.12B] to obtain two-dimensional vectors characterizing the flow or movement of the features. The movement of the features in this example is caused as the user moves the device to fit his/her face within the oval shown in the exemplary screen displays of FIGS. 13A and 13B.” See para.183, lines 1-7) and a process for managing historical information about the subject person is prepared to be performed (see para.252, lines 1-6: “Upon receipt of the notification from the authentication server, such as through a vibration, beep, or other sound on the mobile device, the user may then authenticate his or her identify with the mobile device. The authentication server may also send information concerning the transaction to the user for verification by the user.”).
Regarding claims 2, 8, 13, Tussy discloses, wherein the at least one processor is further configured to perform changing the content according to a predetermined criterion while continuing to cause the output unit to output the content (see para.205: “the device or authentication server generates a series of differently sized ovals within which the user must place his or her face by moving the mobile device held in the user's hand.”).
Regarding claim 3, 9, 14, Tussy discloses, wherein the at least one processor is further configured to perform generating, by processing the image, state information indicating a state of the subject person included in the image, and the predetermined criterion relates to the state information (see para.203: “The display 1315 may also show corresponding instructions 1335 directing the user to “zoom in” on his or her face to fill the oval 1330 with his or her face. The user does this by bringing the mobile device 1310 closer to his or her face in a generally straight line to the user's face (such as shown in FIGS. 7A and 7B) until the user's face fills the oval 1330 or exceeds the oval.”).
Regarding claim 4, 10, 15, Tussy discloses, wherein the at least one processor is further configured to perform: acquiring identification information that is information different from the image and is for identifying the subject person; and causing the output unit to output the content selected by using the identification information (see fig.14 and para.228: “In one embodiment, as shown in FIG. 14, a touchscreen 1410 [for fingers] may be divided up into predetermined regions 1420. For example, there may be nine equal, circular, square, or other shaped regions 1420 on the touchscreen 1410 of the mobile device. During enrollment, the user selects one of the regions 1420 of the screen 1410 to touch to initiate authentication.”).
Regarding claim 5, 11, 16, Tussy discloses, wherein the at least one processor is further configured to perform authentication processing on the subject person by using the image (see 1218 of fig.12B, and para.188: “the liveness or three-dimensionality of the user being imaged and authenticated is validated based on the various checks described above.”).
Regarding claims 7, 12, each of which is an inherent variation of claim 1, thus it is interpreted and rejected for the reasons set forth in the rejection of claim 1.
Claim Rejections - 35 USC § 103
12. 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 of this title, 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.
13. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Tussy.
Regarding claim 6, Tussy does not explicitly disclose using a machine learning model. However, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to know that the facial recognition processing in the method of Tussy could be based on a machine learning model. It is because machine learning is a well-known technique and widely used in the field of face recognition and face authentication in images. In fact, Tussy, Paragraph [0081], clearly teaches “[f]acial recognition processing is known in the art (or is an established process) and as a result, it is not described in detail herein”. In addition, in paragraph [0346], Tussy states: “the verification server and software (machine executable code) running on the verification server compares the one or more of the first image and the second image (captured at different distances) of the user to the photo of the user in the user ID to verify that the user ID photo matches the photos of the user captured at step 2712. This may occur using facial recognition or any other image comparison techniques for determining or matching identity of a user.” It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to use a machine learning model for the validation of liveness of a user and cause the user moving an imaging device to fit his/her face within the oval shown in the exemplary screen displays of FIGS. 13A and 13B. See para.183, lines 1-7. Suggestion or motivation for doing so would have been to fit his/her face within the oval shown in an exemplary screen display as taught by Tussy, cf., figs.13A and 13B and para.183. Therefore, the claim is unpatentable over Tussy.
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIPING LI whose telephone number is (571)270-3376. The examiner can normally be reached 8:30am--5:30pm.
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/RUIPING LI/Primary Examiner, Ph.D., Art Unit 2676