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 .
DETAILED ACTION
Priority
The instant patent application claims benefit
Acknowledgment is made that this application is a 371 of PCT/JP2022/045752 filed on 12/12/22, which claims benefit based on application JP 2022-007468 filed in on 1/20/22.
Information Disclosure Statement
The examiner reviewed IDS document(s) on 2/11/25 and 8/22/25, carefully considering the art cited within the document(s).
Claims 9-17 have been examined.
Claim Rejections - 35 USC § 101
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.
Claims 15-16 are directed towards a program, which does not fall within the statutory subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim 9-11, 13-14 and 16-17 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, claim 9 recites a restriction on use lift request means that sends restriction on use lift request including the use permit, the face authentication information and the signature received from the management device to the utilization control device via Near Field Communication that is not sufficiently supported by the specification.
As described below, the disclosure does not provide adequate structure of the claimed means plus function elements (i.e. sends restriction on use lift request including the use permit, the face authentication information and the signature received from the management device to the utilization control device via Near Field Communication).
Similar issue is noted in claims 9-10, 13 and 16 in regard to “face authentication information management means”.
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 9-17 and is 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 pre-AIA the applicant regards as the invention.
Claim 9, 11, 13-14 and 16-17 are rejected because the term “concerned” following the utilization control device, e.g., “in association with the utilization control device concerned” is not understood. It is not clear whether it should be treated as part of the device, whether some additional limitations are missing or whether there is some other intended use of this verb.
Furthermore, it is not clear whether “public key set” in reference to signatures verification in claims 9, 11-12, 14-15 and 17 is a typographical error, or whether indeed the claims require the use of the set of the public key to verify.
Once understood, the claims may be a subject to 112 first and 112 second under means plus function rejection. For the purpose of the expedited prosecution, the “public key set” is treated as “public key of the set”.
Furthermore, claim 9 is drafted in “means plus function” limitation. Specifically, claim limitation “a restriction on use lift request means that sends restriction on use lift request including the use permit, the face authentication information and the signature received from the management device to the utilization control device via Near Field Communication” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Although the specification discusses operation of the user terminal as pertaining to the management device and the utilization control device, the language is pretty much similar to the claim language without clearly identifying correlation of the specific "means” to the disclosed structure, act or materials carrying out “sending restriction on use lift request including the use permit, the face authentication information and the signature received from the management device to the utilization control device via Near Field Communication”. Thus, the examiner is unable to interpret the exact scope of claim limitations under 35 U.S.C. 112, sixth paragraph.
Similar issue is noted in claims 9-10, 13 and 16 in regard to “face authentication information management means”.
The term is essentially recited in the claim language. The closest similar term in the specification is “face authentication authentication information registration” without the term “means”. This being said, it is not clear how this would relate to the claimed language and, in particular the specification fails to provide the structure for this claimed means. Thus, the examiner is left guessing the metes and bounds of the claims.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Appropriate correction/clarification is required.
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.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 13 and 16 are rejected under 35 U.S.C. 103(a) unpatentable over Yasuda (USPUB 2019028129) in view of Ives-Halperin (USPUB 20160080943) and Stallings (William Stallings, “Cryptography and Network Security: Principles and Practice”, 2nd edition ISBN 0-13-869017-0, 1998).
Yasuda teaches management device that sends the use permit to the user terminal (server 50 generates authentication information restricting use of the vehicle 100 and transmits it to the terminal device 40 of the user 30, para 35, 49, etc.).
Although Yasuda is directed towards enforcing authorized use, the reference does not teach the device managing face authentication information and sending the face authentication information. However, such solution would have been obvious to one of ordinary skill in the art at the time the application was filed as illustrated by Ives-Halperin (device sends the biometric credential to be verified against the retrieved user credentials… biometric data includes, but is not limited to iris scan, retinal images, facial images, etc., para 147, 242, 310, 338, 345, 351, etc.) offering the predictable benefit of customization and increased security.
Furthermore, as per the device generating a signature on transmitted data (such as the use permit by using the secret key) would have been old and well known in the art at the time the application was filed as illustrated Stallings (see various discussion regarding digital signature, e.g., Fig. 10.1 with the associated text) offering the predictable benefit of the increased security and non-repudiation.
Lastly, although Stallings discusses the use of the private key of the set that sender manages, Official Notice is taken that having devices managing the set of the public/private keys would have old and well known in the art of network communication (while private key enables non-repudiation, the corresponding public key enables establishing the secure communication) offering the predictable benefit of increased security.
Conclusion
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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Poltorak whose telephone number is (571) 272-3840. The examiner can normally be reached Monday through Thursday from 9:00 a.m. to 5:00 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Pwu can be reached on (571) 272-6798. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/PIOTR POLTORAK/ Primary Examiner, Art Unit 2433
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