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 .
Priority
This application is a Continuation of U.S. application Ser. No. 18/757,651 filed on Jun. 28, 2024, which is a Continuation of U.S. application Ser. No. 17/280,448 filed on Mar. 26, 2021, which issued as U.S. Pat. No. 12,059,249, which is a National Stage Entry of PCT/JP2018/036352 filed on Sep. 28, 2018, the contents of all of which are incorporated herein by reference, in their entirety.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/26/2024 was filed along with the mailing date of the Non-Provisional Patent Application on 09/26/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
DETAILED ACTION
This Office Action is in response to a Non-Provisional Patent Application received on 09/26/2024. In the Application, claims 1-9 have been received for consideration and have been examined.
Specification
Applicant’s submitted specification has been reviewed and found to be in compliance.
Drawings
Applicant’s submitted drawings have been reviewed and found to be in compliance.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 §§ 706.07(e) and 714.13.
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Claims 1-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US12059249B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim discloses similar subject matter which involves an authentication device includes an image acquisition unit, an identification unit, and an authentication unit. The image acquisition unit acquires an image of an eye of a subject. The identification unit identifies the colored pattern of a colored contact lens worn by the subject by comparing a reference image with the image of the eye. The authentication unit identifies the subject, using a feature in a region other than a colored region of the colored pattern in the iris region of the eye.
Claims 1-9 rejected on the ground of nonstatutory double patenting over claims 1-13 of U.S. Patent No. US12059249B2 since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Instant Application # 18/896,992
US Patent No. US12059249B2
1. An authentication device comprising:
a memory configured to store instructions; and
at least one processor configured to execute the instructions to perform:
acquiring an image of an eye of a subject;
identifying a colored pattern of a colored contact lens worn by the subject by comparing a reference image with the image of the eye;
authenticating the subject, using a feature in a region other than a colored region of the colored pattern in an iris region of the eye, wherein the reference image is a colored pattern of one of a plurality of colored contact lens products;
identifying a product worn by the subject from the plurality of colored contact lens products by comparing a colored pattern of each of the plurality of products with the image of the eye, and identifying the colored pattern of the identified product as the colored pattern of the colored contact lens worn by the subject;
determining a maximum radius of the identified colored pattern not including the colored region around a position associated to the center of the pupil;
storing an identifier for identifying an individual associated with an identifier for identifying a product and a feature in a region other than a colored region of a colored pattern of the product in an iris region of the individual; and
identifying the subject by matching the feature in the region extracted by removing the outside of a circle of the maximum radius in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in a storage.
1. An authentication device comprising:
a memory configured to store instructions; and
at least one processor configured to execute the instructions to perform:
acquiring an image of an eye of a subject;
identifying a colored pattern of a colored contact lens worn by the subject by comparing a reference image with the image of the eye;
authenticating the subject, using a feature in a region other than a colored region of the colored pattern in an iris region of the eye, wherein the reference image is a colored pattern of one of a plurality of colored contact lens products;
identifying a product worn by the subject from the plurality of colored contact lens products by comparing a colored pattern of each of the plurality of products with the image of the eye, and identifying the colored pattern of the identified product as the colored pattern of the colored contact lens worn by the subject;
storing an identifier for identifying an individual associated with an identifier for identifying a product and a feature in a region other than a colored region of a colored pattern of the product in an iris region of the individual; and
identifying the subject by matching the feature in the region other than the colored region of the colored pattern of the identified product in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in the storage.
Other Independent and Dependent claims in instant application recite similar concept as mentioned in the patent publication.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in the instant application are anticipated by the claims in US Patent no. US12059249B2.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Claims 1-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US12396660B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim discloses similar subject matter which involves an authentication device includes an image acquisition unit, an identification unit, and an authentication unit. The image acquisition unit acquires an image of an eye of a subject. The identification unit identifies the colored pattern of a colored contact lens worn by the subject by comparing a reference image with the image of the eye. The authentication unit identifies the subject, using a feature in a region other than a colored region of the colored pattern in the iris region of the eye.
Claims 1-9 rejected on the ground of nonstatutory double patenting over claims 1-13 of U.S. Patent No. US12396660B2 since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Instant Application # 18/896,992
US Patent No. US12396660B2
1. An authentication device comprising:
a memory configured to store instructions; and
at least one processor configured to execute the instructions to perform:
acquiring an image of an eye of a subject;
identifying a colored pattern of a colored contact lens worn by the subject by comparing a reference image with the image of the eye;
authenticating the subject, using a feature in a region other than a colored region of the colored pattern in an iris region of the eye, wherein the reference image is a colored pattern of one of a plurality of colored contact lens products;
identifying a product worn by the subject from the plurality of colored contact lens products by comparing a colored pattern of each of the plurality of products with the image of the eye, and identifying the colored pattern of the identified product as the colored pattern of the colored contact lens worn by the subject;
determining a maximum radius of the identified colored pattern not including the colored region around a position associated to the center of the pupil;
storing an identifier for identifying an individual associated with an identifier for identifying a product and a feature in a region other than a colored region of a colored pattern of the product in an iris region of the individual; and
identifying the subject by matching the feature in the region extracted by removing the outside of a circle of the maximum radius in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in a storage.
1. An authentication device comprising:
a memory configured to store instructions; and
at least one processor configured to execute the instructions to perform:
acquiring an image of an eye of a subject;
identifying a colored pattern of a colored contact lens worn by the subject by comparing a reference image with the image of the eye;
authenticating the subject, using a feature in a region other than a colored region of the colored pattern in an iris region of the eye, wherein the reference image is a colored pattern of one of a plurality of colored contact lens products;
identifying a product worn by the subject from the plurality of colored contact lens products by comparing a colored pattern of each of the plurality of products with the image of the eye, and identifying the colored pattern of the identified product as the colored pattern of the colored contact lens worn by the subject;
storing an identifier for identifying an individual associated with an identifier for identifying a product and a feature in a region other than a colored region of a colored pattern of the product in an iris region of the individual; and
identifying the subject by matching the feature in the region other than the colored region of the colored pattern of the identified product in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in the storage.
Other Independent and Dependent claims in instant application recite similar concept as mentioned in the patent publication.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in the instant application are anticipated by the claims in US Patent no. US12396660B2.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
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.
Claims 1-2, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshikawa et al., (US20180218212A1) in view of Inoue et al., (US20200089951A1) in view of Shi et al., (CN101059837A) and further in view of Storm et al., (US20200097704A1).
Regarding claim 1, Yoshikawa discloses:
An authentication device comprising:
a memory configured to store instructions; and
at least one processor configured to execute the instructions to perform:
acquiring an image of an eye of a subject (FIG. 12; [0131] In Step S1000, the acquisition unit 120 of the smartphone 100 acquires a captured image captured by the image capturing unit 110);
identifying a colored pattern of a colored contact lens worn by the subject by comparing a reference image with the image of the eye ([0103] For example, the device according to the embodiment of the present disclosure analyzes a captured image, recognizes that, for example, a pattern of a region in which the iris is considered to be located is uniform (or repetition of a predetermined pattern), and therefore determines that the user wears a color contact lens; FIG. 12; [0131] In Step S1000, the acquisition unit 120 of the smartphone 100 acquires a captured image captured by the image capturing unit 110).
authenticating the subject, using a feature in a region other than a colored region of the colored pattern in an iris region of the eye, wherein the reference image is a colored pattern of one of a plurality of colored contact lens products ([0120] The authentication unit 130 performs iris authentication. More specifically, the authentication unit 130 extracts a feature value of the iris on the basis of the captured image of the iris provided from the iris acquisition unit 123, compares the feature value with feature values of irises of various users registered in advance, and therefore specifies a target user; [0132] In Step S1012, the authentication unit 130 extracts a feature value of the iris on the basis of the captured image of the iris. In Step S1016, the authentication unit 130 performs processing for specifying a target user (i.e., the authentication unit 130 performs authentication processing) by comparing the feature value with feature values of irises of various users registered in advance);
storing an identifier for identifying an individual associated with an identifier for identifying a product and a feature in a region other than a colored region of a colored pattern of the product in an iris region of the individual ([0113] The user state acquisition unit 121 acquires information regarding a state of the user as described above. The information has arbitrary content. For example, the user state acquisition unit 121 may acquire information regarding a body of the user (or an object attached to the body) such as a direction of a face, a degree of opening of the eye, a state of an eyelid, a state of eyelashes, a direction of a line of sight, strength of a movement of the body (including eye), and whether or not a contact lens (including a color contact lens) is worn).
Yoshikawa fails to disclose:
identifying a product worn by the subject from the plurality of colored contact lens products by comparing a colored pattern of each of the plurality of products with the image of the eye, and identifying the colored pattern of the identified product as the colored pattern of the colored contact lens worn by the subject;
determining a maximum radius of the identified colored pattern not including the colored region around a position associated to the center of the pupil;
identifying the subject by matching the feature in the region extracted by removing the outside of a circle of the maximum radius in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in a storage.
However, Inoue discloses:
identifying a product worn (i.e., identifying colored contact lens) by the subject from the plurality of colored contact lens products by comparing a colored pattern of each of the plurality of products with the image of the eye ([0038] step S100, based on the image including the user's eye, the iris recognition system 10 determines whether or not the user's eye wears a colored contact lens; [0040] discloses when matching is performed with a colored contact lens being worn, the pattern of the iris at registration and the pattern of the iris at the matching are not matched. Thus, in step S100, prior to the iris matching, determination as to whether or not a colored contact lens is worn is performed based on an image including the user's eye), and
identifying the colored pattern of the identified product as the colored pattern of the colored contact lens worn by the subject ([0040] When a user wears a colored contact lens, a change in the pattern or the like of an iris may affect the accuracy of iris matching. Usually, registration of an iris image is performed without a colored contact lens being worn. This is because, when matching is performed with a colored contact lens being worn, the pattern of the iris at registration and the pattern of the iris at the matching are not matched. Thus, in step S100, prior to the iris matching, determination as to whether or not a colored contact lens is worn is performed based on an image including the user's eye. The content of the subsequent process can be made more suitable based on whether or not a colored contact lens is worn; [0041] In step S200, the iris recognition system 10 performs a process for improving matching accuracy. This process is performed for reducing deterioration in accuracy of iris matching due to the colored contact lens if it is determined that a colored contact lens is worn mainly in step S100; [0042] In step S300, the iris recognition system 10 matches an image including the user's iris captured at the matching against an image including a user's iris registered in advance. In the matching process in this step, the content of the process can be changed in accordance with the result of determination in step S100 as to whether or not a colored contact lens is worn. If a colored contact lens is worn, the iris recognition system 10 performs matching of the iris by using a feature amount extracted from a region which excludes a predetermined range including the outer circumference of the iris out of the region of the iris included in the image).
It would have been obvious to an ordinary skill in the art before the effective filing date of the claimed invention to modify the biometric authentication unit of Yoshikawa and include iris recognition system in order to determine if the person is wearing colored contact lens, as disclosed by Inoue.
The motivation to combine teachings of iris recognition system into the biometric authentication unit is to enhance biometric user authentication even when the person is wearing colored contact lens.
The combination of Yoshikawa and Inoue fails to disclose:
determining a maximum radius of the identified colored pattern not including the colored region around a position associated to the center of the pupil;
identifying the subject by matching the feature in the region extracted by removing the outside of a circle of the maximum radius in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in a storage.
However, Shi discloses:
determining a maximum radius of the identified colored pattern not including the colored region around a position associated to the center of the pupil (Page # 3, The described first step is meant: determine circle parameter in the iris earlier, determine the zone at cylindrical place then, utilize method of geometry to locate the iris cylindrical fast again. Specifically realize by following three steps: 1. determine circle parameter in the iris: according to the intensity profile characteristics of iris image, the gray-scale value of pupil is smaller and distribution is more even, and therefore available Gray Projection method is determined the central coordinate of circle of circle in the iris; 2. the edge extraction of iris cylindrical: at first, central coordinate of circle according to circle in the iris of determining, (iris radius that collects has individual approximate range in conjunction with priori, occurrence depends on different collecting devices) can determine iris cylindrical place approximate range).
It would have been obvious to an ordinary skill in the art before the effective filing date of the claimed invention to modify Yoshikawa in view of Inoue and include identification method of determining radius of the identified colored pattern of the contact lens, as disclosed by Shi.
The motivation to determine radius of identifying colored pattern of the contact lens is to detect differences in the contact lens for false-proof detection of the contact lens.
The combination of Yoshikawa, Inoue and Shi fails to disclose:
identifying the subject by matching the feature in the region extracted by removing the outside of a circle of the maximum radius in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in a storage.
However, Storm discloses:
identifying the subject by matching the feature (i.e., vasculature underlying the sclera of the eye) in the region extracted by removing the outside of a circle of the maximum radius in the iris region of the subject against a feature in a region other than the colored region of the colored pattern of the identified product in the iris region of the individual stored in a storage ([0036] In some implementations, the images captured using the camera 105 can be processed by the biometric authentication system to identify/authenticate the user. In some implementations, the biometric authentication system may extract from the images, various features, such as features derived from the face, iris, vasculature underlying the sclera of the eye, or the periocular region, and so forth, to identify/authenticate a particular user based on matching the extracted features to that of one or more template images stored for the user during an enrollment process).
It would have been obvious to an ordinary skill in the art before the effective filing date of the claimed invention to modify Yoshikawa in view of Inoue and further in view of Shi and include a system which can authenticate the user based on the features of the sclera of the eye, as disclosed by Storm.
The motivation to authenticate the user based on biometric feature such as features of the sclera of the eye is enhance the authentication and identification of the users based on a set of recognizable and verifiable data, which are unique and specific to them.
Claim 8 is a method claim and recites the similar subject matter as claim 1 and therefore rejected under similar grounds of rejection.
Claim 9 is a non-transitory computer-readable recording medium claim and recites the similar subject matter as claim 1 and therefore rejected under similar grounds of rejection.
Regarding claim 2, the combination of Yoshikawa, Inoue, Shi and Storm discloses:
The authentication device according to claim 1, wherein:
the at least one processor is further configured to execute the instructions to perform:
transmitting, to an analysis device, an identifier for identifying the identified product and an identifier for identifying an individual identified as the subject (Yoshikawa: [0131-0132]),
wherein the analysis device performs analytical processing on an individual wearing a product, using the identifier of the product and the identifier of the individual received from the authentication device (Inoue: [0041-0042]).
It would have been obvious to an ordinary skill in the art before the effective filing date of the claimed invention to modify the biometric authentication unit of Yoshikawa in view of Shi and further in view of Storm and include iris recognition system in order to determine if the person is wearing colored contact lens, as disclosed by Inoue.
The motivation to combine teachings of iris recognition system into the biometric authentication unit is to enhance biometric user authentication even when the person is wearing colored contact lens.
Allowable Subject Matter
Claims 3-7 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
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/SYED M AHSAN/Primary Examiner, Art Unit 2491