DETAILED ACTION
This office action is in response to an amendment filed on 12/23/2024. The notice of allowance set forth and mailed on 01/24/2025 is withdrawn and the prosecution of this application is reopened due to the indefiniteness language that has been found upon further review of the amended claim. In particular, the indefinite language was introduced when the claims were amended on December 23, 2024. Thus, this office action is in response to the amendment filed on 12/23/2024. On amendment filed on December 23/2024 independent claim 1 is amended and new claims 2-27 are added.
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 .
` Interview Summary
On May 13, 2025 applicant’s representative John R. Mattingly, Reg. No. 30,293 and examiner conducted telephone interview and email exchange. The summary of the interview is attached.
Response to Arguments
4. Applicant’s arguments filed on December 23, 2024 with respect to claim(s) 1 and the new claims 2-27 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
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.
Amended claim 1 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The amendment made to independent claim 1 introduces two limitations that define the conduction under which the information processing device executes a lock operation. The first limitation that is on the first paragraph of page 3/14, lines 1-4, states that first processing device executes a lock operation, “in response to receiving information indicating that the another information processing device cannot acquire the dynamic biometric information or that the user is in a sleep state via communication with the wireless first communication interface”
This limitation explicitly requires locking when the user is in a sleep state.
However, the amended claim limitation, later introduces another limitation [as shown on page 3/14, second paragraph, lines 5-8], that the information processing device is configured to execute the lock operation….”in response to information indicating that the user is in a predetermined state even when the user is not in the sleep state.
These two limitations when read together, require the device to execute the lock operation both when the user is in a sleep state and also when the user is not in a sleep state.
The two conditions (sleep state vs not sleep state) are mutually exclusive and collectively exhaustive. Therefore, the claim requires the lock operation to be executed regardless of the user’s state, which renders the conditional nature of the earlier limitation meaningless. A person of ordinary skill in the art cannot ascertain under what circumstances the lock operation is intended to occur, because the claim language encompasses all possible user states while presenting them as conditional triggers.
The internal logical contradictions between these two limitations results in the claim being unclear and indefinite and it is impossible to determine the scope or the metes and bounds of the claimed locking behavior. Accordingly, the amended claim 1, fails to particularly point out
and distinctly claim the subject matter which is regarded as the invention and thus rejected under 35 U.S.C. 112(b).
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.
Amended claim 1 is also 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. Based on a thorough review of the entire disclosure and text search for the following amended claim limitation [page 3/14, lines 1-8]: “in response to receiving information indicating that the another information processing device cannot acquire the dynamic biometric information or that the user is in a sleep state via communication with the wireless first communication interface, executes a lock operation to lock the information processing device, and wherein the information processing device is configured to execute the lock operation to lock the information processing device in response to information indicating that the user is in a predetermined state even when the user is not in the sleep state”, there is no readily apparent support in the disclosure that explain as to how the two limitations which requires the processing device to execute the lock operation is accomplished. In particular when the user is both in a sleep state and also when the user is not in a sleep state. There is no readily apparent support in the specification as to how the two conditions (sleep state vs not sleep state) which are mutually exclusive are executed. In other words, the specification doesn’t support the amended claim limitation recited in claim 1, which is shown above [and shown on page 3/14, lines 1-8] that requires the lock operation to be executed with the corresponding user’s states.
Election/Restrictions
Applicant’s arguments filed on December 23, 2024 with respect to claim(s) 15-27 have been considered but are not persuasive because the newly-submitted claims 15-27 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons.
Original claim 1 was directed to a “device” whereas newly submitted claims 15-27 are directed to a “method” and as such are directed to a different statutory category of invention as defined by 35 U.S.C. § 101.
Since Applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 15-27 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Applicant’s arguments filed on December 23, 2024 with respect to claim(s) 2-14 have also been considered but are not persuasive because the newly-submitted claims 2-14 are directed to an invention that is independent or distinct from the invention originally claimed (claim 1) for the following reasons.
New claims 2-14 as it recited in new independent claim 2 is directed to a system, comprising: a first information processing device including: a dynamic biometric information acquisition sensor that acquires dynamic biometric information from a body of a user; and a first communication interface that transmits the acquired dynamic biometric information; and a second information processing device including: a static biometric information acquisition sensor that acquires static biometric information; a processor that performs user authentication based on the acquired static biometric information and obtains an authentication result; a second communication interface that performs communication relating to the authentication result with the first communication interface and receives the dynamic biometric information transmitted from the first communication interface; and a display screen, wherein the first information processing device is configured to: acquire the dynamic biometric information from the dynamic biometric information acquisition sensor after unlocking, and maintain an unlocked state during a condition that the dynamic biometric information can be acquired, wherein the second information processing device is configured to: receive the dynamic biometric information via communication between the first communication interface and the second communication interface ,display information based on a state of the user that is determined using the received dynamic biometric information, and in response to receiving information indicating that the first information processing device cannot acquire the dynamic biometric information or that the user is in the sleep state via communication between the first communication interface and the second communication interface, execute a lock operation to lock the second information processing device, classified in class G06F21, and subclass 316.
Original Claim 1 is directed to an information processing device, comprising: a static biometric information acquisition sensor that acquires static biometric information; a processor that performs user authentication based on the acquired static biometric information and obtains an authentication result; a wireless communication interface that: performs communication relating to the authentication result with another information processing device; and receives dynamic biometric information from the another information processing device; a display screen that displays information based on a state of the user that is determined using the received dynamic biometric information; and wherein, upon determining that the user is in a state matching a predetermined criteria based on information by the another information processing device, the information processing device automatically transmits a position information to a predetermined address, the position information denoting a position where the determining is made, classified in class G06F21, and subclass 32.
9a. The inventions are distinct, each from the other because of the following reasons:
The inventions in Group I and II are related as sub combinations disclosed as usable together in a single combination. The sub combinations are distinct from each other if they are shown to be separately usable.
The limitation and the specific sequence of steps recited in new claims 2-14 or sub-combination I is particularly used for user authentication by observing the pattern of computer usage, e.g. typical user behavior.
However, unlike group I, sub-combination II (Original claim 1) is used for a general authentication using biometric data.
Since, these inventions are distinct for the reasons given above and have acquired a separate status in the art as shown by their different classification, restriction for examination purposes as indicated is proper.
9b. Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Since applicant has received an action on the merits for the originally presented Group II (Original claim 1) invention, this invention has been constructively (and explicitly) elected by original presentation for prosecution on the merits. Accordingly, claims 2-14 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Conclusion
10. THIS ACTION IS MADE FINAL. 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 extension fee 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 SAMSON B LEMMA whose telephone number is 571-272-3806. The examiner can normally be reached on M-F 8am-10pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Yin-Chen Shaw can be reached on 571-272-8593. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMSON B LEMMA/Primary Examiner, Art Unit 2498