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 continuation Non-Provisional Patent Application received on 09/26/2024. In the application, claims 1-3 have been received for consideration and have been examined.
Specification
Applicant’s submitted specification has been reviewed and has been accepted.
Drawings
Applicant’s submitted drawings have been reviewed and have been accepted.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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 eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3 are rejected on the ground of nonstatutory double patenting over claims 1, 12, and 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.
Although the claims at issue are not identical, they are not patentably distinct from each other because instant independent claims do not recite following limitations from the identified patented application:
“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”.
Claims 1-3 recite similar limitations as claims of US Patent No. US12396660B2 as follows:
Instant Application # 18/896,998
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 images of both eyes of a subject;
identifying a colored pattern of a colored contact lens worn by the subject by comparing an image of one eye of both eyes of the subject with the image of the other 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 colored pattern of the colored contact lens worn by the subject by performing image matching between the image of one eye and the image of the other eye while rotating the image of one eye by a predetermined angle;
storing an identifier for identifying an individual associated with a feature 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 identified colored pattern in the iris region of the subject against a feature in a region other than the colored region of the identified.
1. An authentication device comprising:
a memory storing 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 performing image matching between a colored pattern of each of the plurality of products and the image of the eye while rotating the colored pattern of the plurality of products by a predetermined angle, 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 a storage.
The table above shows that claim 1 of instant continuation application recite similar limitations as a device and recite broader limitations as compared to the patented claims.
Other independent claims 2, and 3 recites similar subject matter as claims 12, and 13 and therefore are rejected under the same rationale.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yoshikawa et al., US20180218212A1
Storm et al., US20200097704A1
Inoue et al., US20200089951A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED M AHSAN whose telephone number is (571)272-5018. The examiner can normally be reached 8:30 AM - 6:00 PM.
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, Ashok B. Patel can be reached on 571-272-3972. 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. Visit 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.
/SYED M AHSAN/ Primary Examiner, Art Unit 2491