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 .
Response to Arguments
Applicant’s remarks filed on 01/27/2026 have been considered.
Regarding claim[s] 1 – 13 under the anticipatory rejection, applicant’s remarks are moot because the new ground of rejection does not rely on all references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Therefore, see the office action below.
The examiner will respond to all other remarks that do not concern the prior art rejections, if any, in the office action.
Response to Amendment
Status of the instant application:
Claim[s] 1, 3, 5 – 13, 15, 16 are pending in the instant application.
Regarding claim[s] 1 – 13 under the anticipatory rejection, applicant’s claim amendments have been considered, therefore, the rejections are withdrawn. However, there are new prior art rejections issued to address applicants newly added claim amendments and claims. See the office action below.
Claim[s] 1 – 13 that were 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distinctly claim the subject matter – applicant’s claim amendments have been considered, therefore, the rejection is withdrawn.
Claims 15, 16 are newly added claims and are addressed in the office action below.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07I and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim[s] 1 – 3, 7 – 11, 13 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim[s] 1 – 3, 7, 9 – 13 of co-pending Application No. 18691551(reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of both the pending application and the reference application are the same or similar in scope and are not distinct in any manner:
An authentication terminal a acquires first biometric information of a user from another apparatus when a distance between own terminal and the user reaches a first distance. The authentication terminal also acquires a second biometric information of the user when the distance between own terminal and the user reaches a second distance. The authentication terminal continues to acquire data for authentication from a terminal possessed by the user, which is necessary to determine whether or not to provide a service to the user. The authentication terminal proceeds to determine that an authentication processing of the user is successful when a result of the matching processing using the first biometric information and the second biometric information is successful and the data for authentication acquired from the terminal is valid.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Also, see the table below for a claim by comparison.
Pending US Application # 18/691519
Co – Pending US Application # 18/691551
1
1
2
2
3
3
7
7
8
9
9
10
10
11
11
12
13
13
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 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 non-obviousness.
Claim(s) 1, 3, 5 – 7, 9 – 11, 13, 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson et al. [US PGPUB # 2013/0090942] in view of Ross et al. [US PAT # 8396265]
As per claim 1. Robinson does teach an authentication terminal [Robinson, paragraph: 0002, The Field of the Invention The present invention is directed generally to a healthcare monitoring system. More specifically, the present invention is directed to a mobile biometric home healthcare monitoring system to improve healthcare and prevent healthcare billing fraud.], comprising:
at least one memory storing a set of instructions [Robinson, paragraph: 0177]; and
at least one processor configured to execute the set of instructions [Robinson, paragraph: 0177] to:
acquire second biometric information of the user by capturing an image of the user by the authentication terminal [Robinson, paragraph: 0009, lines 4 – 13, The method includes the steps of capturing and storing, in a central repository, a first biometric signature received of the healthcare worker. A first geographical location is provided based on the client location (or address). Then, during a visit to the client location, a second biometric signature [i.e. applicant’s… second biometric information] of the healthcare worker is captured and received in the central repository. A second geographical location is then captured and stored in the central repository via a device from which the second biometric signature was captured and received
Where further, of Robinson, at paragraph: 0141, lines 24 – 25, the biometric signature can be an iris scan]; and
determine that an authentication processing of the user is successful in case where a result of a matching processing using the first biometric information and the second biometric information is successful [Robinson, paragraph: 0009, lines 17 – 22, The data is then transmitted to a web server operably connected to the cell phone. The web server then saves the data to the central repository. This is followed by the step of retrieving the first biometric signature and the first geographical location of the first client location from the central repository. Then, the first biometric signature is compared to the second biometric signature to produce a first result and the first geographical location is compared to the second geographical location to produce a second result to verify the eligibility of the healthcare worker in billing insurance provider for services purported to have been rendered].
While Robinson does not clearly teach the claim limitation of: “acquire first biometric information of a user from a terminal of the user in response to the determining that a distance between the authenticator terminal and the terminal of the user is less than a first distance.”
However, Ross does teach the claim limitation of: “acquire first biometric information of a user from a terminal of the user in response to the determining that a distance between the authenticator terminal and the terminal of the user is less than a first distance [col. 1, lines 36 – 46, The operations further include detecting, by the computing device, whether a distance between the computing device and an object represented by at least a portion of the image is less than a threshold distance, and, when the detected distance is less than a threshold distance, denying authentication to the user with respect to accessing one or more functionalities controlled by the computing device, where the authentication is denied independent of performing facial recognition based at least in part on the captured image.].”
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to combine the teachings of Robinson and Ross in order for the comparison of the first and second biometric information obtained for comparison and authentication of the healthcare provider to insurance services of Robinson to include denying access to health insurance before authentication of Ross. This would allow for the insurance service to determine whether the requesting healthcare provider is authenticated to have proven care was provided by the requesting healthcare provider. See col. 1, lines 47 – 58 of Ross.
As per claim 3. Robinson does teach the authentication terminal according to claim 1, wherein the at least one processor is further configured to execute the set of instructions to perform the matching processing using the first biometric information and the second biometric information [Robinson, paragraph: 0009, lines 17 – 22, The data is then transmitted to a web server operably connected to the cell phone. The web server then saves the data to the central repository. This is followed by the step of retrieving the first biometric signature and the first geographical location of the first client location from the central repository. Then, the first biometric signature is compared to the second biometric signature to produce a first result and the first geographical location is compared to the second geographical location to produce a second result to verify the eligibility of the healthcare worker in billing insurance provider for services purported to have been rendered].
As per claim 5. Robinson does teach the authentication terminal according to claim 1, wherein the at least one processor is further configured to execute the set of instructions to output messages according to the result of the authentication processing [Robinson, paragraph: 0146, The agency can then use the encounter record [i.e. applicant’s output messages] to determine whether the healthcare worker is eligible in collecting a payment for the time period in which services is purported to have been rendered. If the first flag [i.e. same as the encounter record] indicates a match for both the biometric signature and geographical location comparisons, the payment claim for the time period after step (d) is allowed.].
As per claim 6. Robinson does teach the authentication terminal according to claim 1, wherein the at least one processor is further configured to execute the set of instructions to acquire the first biometric information from a server apparatus that stores the first biometric information of the user instead of from the terminal of the user [Robinson, Figure # 1, and paragraph: 0143, (c) Step 120--The first biometric signature and the first geographical location of the first client location are retrieved from the central repository 4;].
As per claim 7. Robinson does teach the authentication terminal according to claim 1, wherein the at least one processor is further configured to execute the set of instructions to communicate the terminal of the user using short-range wireless communication [Robinson, paragraph: 0009, lines 13 – 17, In the present embodiment, the data including second biometric signature and the geographical signature are captured using a proxy mobile device [i.e. applicant’s control unit] and transmitted to a cell phone [i.e. applicant’s terminal] via short range wireless communication.].
As per system claim 9 that includes the same or similar claim limitations as authentication terminal claim 1 and is similarly rejected.
***Applicant’s recited “terminal – user,” “authentication terminal,” is taught by the prior art of Robinson at Figure # 5, device # 31 [i.e. applicant’s terminal - user], (webserver # 54 + central repository #4) [i.e. applicant’s authentication terminal]
***Applicant’s recited “memory,” “instructions,” and “processor” is taught by the prior art of Robinson at paragraph: 0177.
As per claim 10. Robinson does teach the system according to claim 9, wherein the terminal transmits the first biometric information to the authentication terminal in a case where the terminal starts communication with the authentication terminal using of a short-range wireless communication [Robinson, paragraph: 0009, lines 13 – 17, In the present embodiment, the data including second biometric signature and the geographical signature are captured using a proxy mobile device and transmitted to a cell phone via short range wireless communication.].
As per claim 11. Robinson does teach the system according to claim 10, wherein the terminal prompts the user to enable the short-range wireless communication in a case where a distance between the terminal and the authentication terminal reaches a third distance [Robinson, Figure # 1D, and paragraph: 0162, In this exception condition, the client and the healthcare worker have moved from the client's home 28 to a second client location [i.e. applicant’s…he terminal and authentication terminal reaches a third distance]. In such an aspect, the following process as depicted in FIG. 1D may occur:. Where further of Robinson, Figure 3 5, and at a paragraph: 0188, The cell phone 166 may receive a software update via the internet 10 from the web server 54 and passes it along via short range wireless communication to device 31. In this instance, steps 120, 122 and 124 of FIG. 1A are executed by an application running in the web server 54].
As per method claim 13, the includes the same or similar claim limitations as authentication terminal claim 1, and is similarly rejected.
As per claim 15. Robinson does teach the authentication terminal according to claim 1, wherein the at least one processor is further configured to execute the set of instructions to:
acquire data for authentication from the terminal of the user, which is necessary to determine whether or not to provide a service to the user []; and
determine that an authentication processing of the user is successful in case where a result of a matching processing using the first biometric information and the second biometric information is successful [Robinson, paragraph: 0146, The agency can then use the encounter record to determine whether the healthcare worker is eligible in collecting a payment for the time period in which services is purported to have been rendered. If the first flag indicates a match for both the biometric signature and geographical location comparisons, the payment claim for the time period after step (d) is allowed.] and the data for authentication acquired from the terminal of the user is valid [Robinson, paragraph: 0146, The agency can then use the encounter record to determine whether the healthcare worker is eligible in collecting a payment for the time period in which services is purported to have been rendered. If the first flag indicates a match for both the biometric signature and geographical location comparisons, the payment claim for the time period after step (d) is allowed.].
As per claim 16. Robinson does teach the authentication terminal according to claim 15, wherein the at least one processor is further configured to execute the set of instructions to specify the data for authentication [Robinson, paragraph: 0009, lines 4 – 13, The method includes the steps of capturing and storing, in a central repository, a first biometric signature received of the healthcare worker.], and request the terminal of the user to provide the specified data for authentication [Robinson, paragraph: 0009, lines 4 – 13, a first biometric signature received of the healthcare worker].
Claim(s) 8, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson et al. [US PGPUB # 2013/0090942] in view of Ross et al. [US PAT # 8396265] as applied in the rejection claim 1 above, further in view of Bhide et al. [US PGPUB # 2022/0309161]
As per claim 8. Robinson and Ross do teach what is taught in the rejection of claim 1 above.
Robinson and Ross do not clearly teach the authentication terminal according to claim 1, wherein the biometric information is a face image or a feature value generated from the face image.
However, Bhide does teach the authentication terminal according to claim 1, wherein the biometric information is a face image or a feature value generated from the face image [paragraph: 0018, In an embodiment, therefore, the user may utilize an authenticator in the form of, for example, a biometric detection device operating within, connected to, or associated with user's mobile device, and register or authenticate with an authentication server. Examples of biometric authentication methods may include, but are not limited to, speech or voice recognition, fingerprint recognition, face recognition, iris detection, etc.].
It would have been obvious to one or ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of Robinson and Bhide in order for the detection of fraud by a healthcare work or patient from health insurance companies thru the use of biometric signature comparison and geolocation comparison of healthcare worker/patient and geolocation of the healthcare workers device of Robinson to include multifactor authentication operations of Bhide. This would allow for the health insurance companies to detect fraud of the healthcare worker/patient thru the use of multiple sets of authentication operations with the healthcare worker/patient. See paragraph: 0003 of Bhide.
As per claim 12. Robinson as modified does teach the system according to claim 9, wherein the at least one processor is further configured to execute the set of instructions to specify the data for authentication and request to provide the specified data for authentication to the terminal [Bhide, paragraph: 0018, In an embodiment, therefore, the user may utilize an authenticator in the form of, for example, a biometric detection device operating within, connected to, or associated with user's mobile device [i.e. applicant’s terminal], and register or authenticate with an authentication server [authentication terminal].], and
wherein the terminal acquires consent from the user to provide the specified data for authentication to the authentication terminal [Bhide, paragraph: 0032, For example, embodiments of the mobile authenticator include a mechanism to receive an input from the user by receiving a gesture that activates a consent button or other user interface (UI) element, receiving a password, receiving a Personal Identification Number (PIN), receiving biometric information via a biometric sensor, such as a fingerprint or iris identifier, or a combination of these.].
Conclusion
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 DANT SHAIFER - HARRIMAN whose telephone number is (571)272-7910. The examiner can normally be reached M - F: 9am to 5pm.
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/DANT B SHAIFER HARRIMAN/ Primary Examiner, Art Unit 2434