DETAILED ACTION
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 .
Election/Restrictions
This action is in response to the restriction requirement filed June 23, 2026. Applicant elected the invention of Group I, claims 1-7, without traverse. Groups II and III, claims 8-20, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 1-7 are examined on the merits below.
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.
Claims 2-7 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2-7 each recite “the computing device,” which lacks antecedent basis. Claim 1 recites “a client device” but does not recite a “computing device,” do it is unclear whether “the computing device” is the client device or another device. Claim 5 further recites “the authorized service,” which lacks antecedent basis, no authorization service was previously recited.
Claim Rejections - 35 USC § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Glass (US 2002/0056043 A1, hereinafter “Glass”) in view of Abd El-Latif et al., “Efficient Quantum Information Hiding for Remote Medical Image Sharing,” (hereinafter “Abd El-Latif”) further in view of Levine et al. (US 7,185,200 B1, hereinafter “Levine”).
Claim 1.
Glass discloses a system, comprising: a client device comprising a processor and a memory; and
machine-readable instructions stored in the memory (Glass: “The client system 1 consists of a personal computer 2 which is labeled as a Host Computer in the diagram. The host computer 2 can be any commercially available personal computer or business computer, or embedded processor which has sufficient memory to hold the biometric image file” ¶ 31) that, when executed by the processor, cause the client device to at least (Glass: the client executes software to carry out the recited operations including “network communications hardware and software to allow the biometric image file to be transferred to the authentication server,” ¶31, and “The security function will be in effect only after system software is loaded and enabled,” ¶33):
obtain a biometric identifier of a user of the client device (Glass: "The camera accepts the
token, captures an image, and uses a digital signature algorithm which takes the image, token, and the camera's secret key as parameters," ¶ 45);
encrypt a previously shared watermark with a shared key to generate an encrypted watermark (Glass: "a token generator in the authentication server which sends a token to the camera or
other sensor," ¶ 15, is the previously shared watermark, and Glass encrypts it with a shared key before transmission: "include an encryption scheme so that after the code ... both the data and code are encrypted" prior to transmission, and "The server would then decrypt the encrypted data package," ¶ 49));
submit the biometric identifier and the encrypted watermark to a quantum watermarking service (Glass: the client sends the image and the encrypted data package over the network, ¶¶ 45 and 49; the watermarking service is taught by Levine and its quantum nature by Abd
El-Latif, below);
receive a quantum watermarked biometric identifier from the quantum watermarking service (taught by Levine and Abd El-Latif, below); and
submit the quantum watermarked biometric identifier to a protected service for access to the protected service (Glass: the client "requests access to a resource protected by the server computer 10," ¶ 44, and upon passing biometric identification is "provided access to the secured resource which is shown as box 17," ¶ 45).
Glass discloses each limitation of claim 1 except that (i) the watermark embedding is
performed by a separate watermarking service to which the client submits the biometric
identifier and the encrypted watermark and from which the client receives the watermarked biometric identifier, and (ii) the watermarking is quantum. Glass embeds the encrypted watermark at the client using a classical technique (Glass: ¶ 37).
However, Levine teaches a server-side watermarking service to which a client submits a
product to be watermarked and from which the client receives the watermarked product
(Levine: a "server process 140 which receives digital product 122 and the watermark basis signal prepared by publisher process 120," (C4:L4-5) and "Server process 140 sends the watermarked digital product to the request client computer system" (C4:L16-18)).
Further, Abd El-Latif teaches that such watermarking may be quantum, embedding an
encrypted watermark into a quantum-represented carrier image (Abd El-Latif: "a quantum image watermarking approach is presented to hide a quantum watermark gray image into a quantum carrier image," Abstract, where the watermark image is "scrambled by utilizing Arnold's cat map" and "is then embedded into the quantum carrier image," Abstract).
It would have been obvious before the effective filing date of the claimed invention to
modify Glass so that the encrypted watermark is embedded into the biometric identifier by a separate watermarking service, as taught by Levine, and to make that watermarking quantum, as taught by Abd El-Latif. Because quantum watermarking requires a quantum computing device that Glass's classical client (personal computer 2, ¶ 31) does not possess, a person of ordinary skill would perform the quantum watermarking at a separate quantum-capable service, submitting the biometric identifier and the encrypted watermark to that service and receiving the quantum watermarked biometric identifier in return, using the server-side watermarking service model of Levine in which the watermarked product is returned to the requesting client. The motivation to use quantum watermarking is the higher security and embedding capacity of quantum information hiding (Abd El-Latif). Because the watermark is encrypted at the client before submission (Glass ,¶ 49), the shared key never leaves the client and Glass's principle of maintaining key secrecy is preserved, with a reasonable expectation of success because server-side watermarking (Levine) and quantum image watermarking (Abd El-Latif) were each established techniques (MPEP 2143(A), (G)).
Claim 2.
Glass discloses wherein the biometric identifier is an image of a fingerprint (Glass: "obtaining and analyzing an image of a fingerprint," ¶ 4) and the machine-readable instructions that cause the client device to obtain the biometric identifier further cause the computing device to obtain the image of the fingerprint using a fingerprint reader of the client device (Glass: "camera 6 with associated optics or other sensor for collecting the biometric data," ¶ 31). To the extent Glass does not use the term “fingerprint reader,” the Examiner takes Official Notice that a fingerprint reader is a well-known sensor for capturing an image of a fingerprint (MPEP 2144.03).
Claim 3.
Glass discloses obtaining the biometric identifier further cause the computing device to obtain the image of the face using a camera of the client device (Glass: "camera 6 with associated optics or other sensor for collecting the biometric data,"¶ 31). Glass does not state the biometric identifier is an image of a face. The Examiner takes Official Notice that capturing an image of a user's face with a camera is a well-known biometric (MPEP 2144.03), and it would have been obvious to apply the system of Glass to a facial image as a selection of a known
biometric modality with a predictable result.
Claim 5.
Glass discloses obtaining the shared key and the previously shared watermark from the authorization service (Glass: “a token generator in the authentication server which sends a token to the camera or other sensor,” ¶ 15, and the authentication server “could send an new encrypted key to the client,” ¶ 35).
Claim 6.
The system of claim 1, wherein the machine-readable instructions further cause the computing device to at least discard the shared key subsequent to receipt of the quantum watermarked biometric identifier (Glass: "images are guaranteed to be valid only for one" transaction and "cannot be reused," ¶ 38).
Claim 7.
The system of claim 1, wherein the machine-readable instructions further cause the computing device to at least discard the shared watermark subsequent to receipt of the quantum watermarked biometric identifier (Glass: the token "is never re-used," ¶ 35, and "images are guaranteed to be valid only for one" transaction, ¶ 38).
Allowable Subject Matter
Claims 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ross Varndell whose telephone number is (571)270-1922. The examiner can normally be reached M-F, 9-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, O’Neal Mistry can be reached at (313)446-4912. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ross Varndell/Primary Examiner, Art Unit 2674
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