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 1-7 filed and preliminary amended on 10/24/2024 are pending and being examined. Claims 1, 6, and 7 are independent form.
Priority
3. This application is a 371 of PCT/JP2022/035974 filed on 09/27/2022.
Claim Rejections - 35 USC § 101
4. 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.
5. Claims 1-7 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).
5-1. Regarding independent claim 1, the claim recites an information processing system comprising at least one memory and at least one processor to execute the instructions to:
[1] acquire an eye image including an eye of a target person;
[2] determine whether or not the eye image is an image suitable for registration;
[3] detect an opening degree of the eye of the target person in the eye image in a case where it is determined that the eye image is not suitable for registration; and
[4] output guide information for encouraging the target person to open the eye with a finger, based on the opening degree of the eye.
Step 1:
With regard to step (1), claim 1, is directed to an information processing system comprising at least one memory and at least one processor. 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, “determin[ing] whether or not the eye image is an image suitable for registration” in step [2] in the context of this claim, encompasses mental observation, evaluations, judgments, and/or opinions, therefore the limitation falls within the “mental processes” grouping of abstract ideas. Likewise, “detect[ing] an opening degree of the eye of the target person in the eye image in a case where it is determined that the eye image is not suitable for registration” in step [3], “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 eye image including an eye of a target person in step [1] and “output[ing] guide information for encouraging the target person to open the eye with a finger” in step [4] under their broadest reasonable interpretation, are mere data gathering recited at a high level of generality, and thus are insignificant extra-solution activity. Similarly, “at least one memory and at least one processor” are recited at high level of generality and amount to no more than mere instruction to apply the exception using a generic computer. Therefore, the claim as a whole does not integrate the judicial exception into a practical application.
Step 2B:
As explained above, the information processing system 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]” in step [1] and “output[ing]” in step [4]were 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.
5-2. Regarding dependent claims 2-5, they are dependent from claim 1 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.
5-3. Regarding independent claims 6 and 7, the claims recite a method (claim 6) and a non-transitory storage medium (claim 7) and each of which is analogous to apparatus claim 1, grounds of rejection analogous to those applied to claim 1 are applicable to claims 6 and 7. 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.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-7 are 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.
7-1. Regarding claim 1, the claim recites “determine whether or not the eye image is an image suitable for registration” in lines 6-7. However, the expression “whether or not the eye image is an image suitable for registration” is not clear, as it is not clear which technical features an image must include to be suitable for registration. There are a huge number of features/pixels in an image each of which may be suitable for registration. However, in light of applicant’s specification, the suitability of an image for registration is linked to its quality, see paragraph [0024] of the specification. The examiner suggests amending the claim to determine whether or not the eye image is an image suitable for registration on the basis of the score indicating quality of the eye image.
7-2. Regarding independent claims 6, 7, each of them faces the same issue set forth in the rejection of independent claim 1, and thus, is rejected as being indefinite under 35 U.S.C. 112(b).
7-3. The remaining claims are dependent from claim 1, respectively, therefore, are rejected as being indefinite under 35 U.S.C. 112(b).
Claim Rejections - 35 USC § 103
8. 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.
9. 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.
10. Claim 1, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa et al (US2018/0218212, hereinafter “Yoshikawa”).
Regarding claim 1, Yoshikawa discloses an information processing system comprising: at least one memory that is configured to store instructions; and at least one processor (the electronic device for realizing an environment for acquiring biological information suitable for the biometric authentication; see Abstract) that is configured to execute the instructions to:
acquire an eye image including an eye of a target person (see 110 of fig.11 and para.111: “the image capturing unit 110 is provided in the vicinity of the display of the smartphone 100 and can capture an image of the eye of the user”);
determine whether or not the eye image is an image suitable for registration (see 140 of fig.11 and para.112: “the determination unit 140 described below can determine whether or not a favorable iris has been acquired (or whether or not there is a high possibility that a favorable iris is acquired) [in the captured eye image]”);
detect an opening degree of the eye of the target person in the eye image in a case where it is determined that the eye image is not suitable for registration (this feature is implicitly disclosed by Yoshikawa: see par.128, “the communication unit 170 may receive the information regarding a state of the user”; see par.169, “[wherein] the information regarding a state of the target user indicates at least one of information regarding a degree of opening of the eye”, see para.72, “In a case where the smartphone 100 according to the embodiment of the present disclosure determines that a favorable iris has not been acquired because image capturing processing has been performed in a state in which the eye of the user has been a half-open eye”); and
output guide information for encouraging the target person to open the eye with a finger, based on the opening degree of the eye (see par.72: “the smartphone 100 may display various kinds of messages on the display to prompt the user to perform predetermined behavior. For example, the smartphone 100 may display a message such as “Your eye is narrow. Please open your eye wide.” on the display to prompt the user to open the eye wide”).
As explained above, the each of the features recited by claim 1 is disclosed explicitly or implicitly by the electronic device in Yoshikawa. Therefore, 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 combine the teachings of Yoshikawa as the claimed information processing system recited by claim 1. Suggestion or motivation for doing so would have been to realize an environment for acquiring biological information suitable for the biometric authentication and perform control corresponding to the biometric authentication as taught by Yoshikawa, see Abstract. Therefore, the claim is unpatentable over Yoshikawa.
Regarding claims 6, 7, each of them is an inherent variation of claim 1, thus it is interpreted and rejected for the reasons set forth in the rejection of claim 1.
11. Claim 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa in view of Konishi et al (JP2020044199, hereinafter “Konishi”). A machine translated English version (JP2020044199-Eng) of document JP2020044199 is provided by the examiner with this office action.
Regarding claim 2, Yoshikawa discloses the claimed invention except for detecting an eyelid overlapping an iris of the target person. However, in the same field of endeavor, that is, in the field of acquiring eye’s image for eye examination, Konishi teaches: detect an eyelid overlapping an iris of the target person (see fig.5 and page 11, lines 29-33: “FIG. 5B shows the eyelid open state of the eye E to be examined with the eyelid droop, in which the upper eyelid is insufficiently opened and the iris and pupil are hidden by the upper eyelid.”). 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 incorporate the teachings of Konishi into the teachings of Yoshikawa. Suggestion or motivation for doing so would have been to detect the open eyelid state of the eye to be inspected as taught by Konishi, see Abstract. Therefore, the claim is unpatentable over Yoshikawa in view of Konishi.
Regarding claim 3, the combination of Yoshikawa and Konishi discloses the information processing system according to claim 2, wherein the at least one processor that is configured to execute the instructions to change an aspect of the predetermined highlighting depending on strength of a force required to open the eye with the finger (Konishi, see pg.14, lines 25-29: “For example, in the case of eyelid droop, the examiner pushes up the eyelid of the eye E to be examined with a finger to open the eyelid. Alternatively, when it is determined that the eyelid is drooping due to blinking, the”).
Regarding claim 4, the combination of Yoshikawa and Konishi discloses, wherein the at least one processor that is configured to execute the instructions to: acquire an open eye image including the eye opened with the finger after the guide information is outputted (Konishi, see pg.14, lines 25-29); determine whether or not quality of an iris of the target person in the open eye image is greater than or equal to predetermined quality; and output second guide information for improving the quality of the iris, in a case where the quality of the iris is less than the predetermined quality (Yoshikawa, see, in “Case Where Image Capturing Processing is Performed in State in Which Iris is Shifted”, disclosed in para.78—par.88; in “Case Where Image Capturing Processing is Performed in State in Which Iris is Blurred”, disclosed in par.85).
12. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa in view of Tussy (US20190311102, hereinafter “Tussy”).
Regarding claim 5, Yoshikawa does not explicitly disclose the claimed invention. However, in the same field of endeavor, Tussy teaches: identify with which of a right hand and a left hand the target person holds a terminal for capturing the eye image; and
output the guide information for opening the eye with a finger of a hand that is opposite to a hand holding the terminal (see para.200, wherein the system comprises an identification unit that identifies with which of a right hand and a left hand the target user holds a terminal for capturing the eye image.). 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 incorporate the teachings of Tussy into the teachings of Yoshikawa. Suggestion or motivation for doing so would have been to enroll and authenticating a user in an authentication system as taught by Tussy, see Abstract. Therefore, the claim is unpatentable over Yoshikawa in view of Tussy.
Conclusion
13. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, HENOK SHIFERAW can be reached on (571)272-4637. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit https://patentcenter.uspto.gov; https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center, and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUIPING LI/Primary Examiner, Ph.D., Art Unit 2676
Prosecution Insights