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 .
Status of Claims
Claims 8 and 9 have been added; therefore, Claims 1-9 are currently pending in application 18/899,257.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9/29/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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.
Claim 6 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea.
Claim 6 is directed to a judicial exception (i.e., abstract idea), without providing a practical application, and without providing significantly more.
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP §2106.03. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner note: The Office’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Regarding Step 1,
Claim 6 is directed toward a process (method). Thus, all claims fall within one of the four statutory categories as required by Step 1.
Regarding Step 2A [prong 1],
Claim 6 is directed toward the judicial exception of an abstract idea. Independent claim 6 are directed specifically to the abstract idea of identity verification, immigration/border screening.
Regarding independent claim 6, the underlined limitations emphasized below correspond to the abstract ideas of the claimed invention:
A method comprising:
acquiring, by an examination terminal, after a user traveling from a first country to a second country completes a departure examination of the first country and before the user starts boarding for the second country, biometric information on the user; [Method of organizing human activity (Verifying identity / collecting credentials) - Collecting and Gathering data]
providing, by the examination terminal to a server, the biometric information for an immigration examination of the second country; [Method of organizing human activity - Data transmission]
performing, by the server, the immigration examination of the second country based on the biometric information; [Method of organizing human activity - Applying legal/administrative rules]
receiving, by the examination terminal from the server, a result of the immigration examination; and controlling the gate that controls entry of the user into the second country according to the result of the immigration examination. [Method of organizing human activity - Permitting/denying physical entry access (Gate could be human operated)]
As the underlined claim limitations above demonstrate, independent claim 6 is directed to the abstract idea of Certain methods of organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) - risk mitigation and commercial interaction monitoring; managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)).
Regarding Step 2A [prong 2],
Claim 6 fails to integrate the recited judicial exception into any practical application. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “terminal”, and a “server”. However, these limitations are not enough to qualify as “practical application” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of an abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide practical application for an abstract idea (MPEP 2106.05 (f) & (h)). The claimed elements use generic hardware components operating in their standard, expected capacity (e.g., a terminal collecting data, a server processing data and transmitting a result). The claims do not amount to "practical application" for the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
The relevant question under Step 2A [prong 2] is not whether the claimed invention itself is a practical application, instead, the question is whether the claimed invention includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application by imposing a meaningful limit on the judicial exception. This is not the case with Applicant’s claimed invention. The claimed steps/ elements do not improve the underlying functioning of the terminal, the network, or the biometric processing itself. Instead, they merely automate the data transmission of an existing immigration workflow; the generic components are used exactly as expected to execute the abstract administrative task. Automating the recited claimed features as a combination of computer instructions implemented by computer hardware and/or software elements as recited above does not qualify an otherwise unpatentable abstract idea as patent eligible. Examples where the Courts have found selecting a particular data source or type of data to be manipulated to be insignificant extra-solution activity include selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); Applicant’s limitations as recited above do nothing more than supplement the abstract idea using additional hardware/software computer components as a tool to perform the abstract idea and generally link the use of the abstract idea to a technological environment, which is not sufficient to integrate the judicial exception into a practical application under Prong 2 since they do not impose any meaningful limits. Therefore, the additional elements recited in the claimed invention individually, and in combination fail to integrate the recited judicial exception into any practical application.
Regarding Step 2B,
Claim 6 fails to amount to “significantly more” than an abstract idea. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “terminal”, and a “server”. However, these limitations are not enough to qualify as “significantly more” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of Abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide significantly more to an abstract idea (MPEP 2106.05(f) & (h)). Collecting data (acquiring biometrics), sending data over a network (providing to a server), checking data against a database (performing immigration examination), returning a result (receiving from server), and actuating a mechanism based on the result (controlling a gate) are highly conventional, routine computerized activities. The claims do not amount to "significantly more" than the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Therefore, since there are no limitations in the claim 6 that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, and looking at the limitations as a combination and as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Looked at as a whole, the combination simply follows the natural chronological order of an automated check-in and access system. It does not introduce any non-conventional steps or specialized hardware that would lift it to an inventive concept. Therefore, claim 6 is rejected under 35 USC § 101 as being directed to non-statutory subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogihara et al. (US 2003/0107472 A1).
As per independent Claims 1 and 6-7, Ogihara discloses a system comprising (A method comprising; A gate apparatus comprising): A distributed system comprising: an examination terminal; a server; and a gate configured to control entry of a user traveling from a first country to a second country into the second country (See at least Figs.1, 5, 7-8, and 13; Para 0036-0045, Check-in (111 and 130-132) , Obtain Biometrics/ Photo (112), Emigration Gate (114)); the examination terminal comprising: a memory configured to store instructions; and one or more processors configured to execute the instructions (See at least Figs.1 and 13, Hardware and software used to process identification data; and Para 0039-0041) to:
acquire, after the user completes a departure examination of the first country and before the user starts boarding for the second country, biometric information on the user (See at least Figs.1, 5, 7-8, and 13; Para 0036-0045, Check-in (111 and 130-132) , Obtain Biometrics/ Photo (112), Emigration Gate (114)) (See also Para 0010, 0039-0040, Face Photograph);
provide, to the server, the biometric information for* an immigration examination of the second country (See at least Figs.1 and 7-13, Para 0047-0052, Arrival system (immigration reception system/ immigration receiving apparatus) matches Passenger to Emigration data and provides to Passenger specific data to immigration officials, Passenger is directed to immigrant-only control lane (630)); and
receive, from the server, a result of the immigration examination, the server is configured to perform the immigration examination of the second country based on the biometric information provided by the examination terminal and to provide the result of the immigration examination to the examination terminal (See at least Figs.1 and Figs.9-10, and Para 0036, “The emigration control-series (inspection) system is arranged by various sorts of electronic appliances installed on the side of a departure airport 100.”; Para 0050-0053), and
control the gate according to the result of the immigration examination (See at least Fig.1, and Para 0036, “The emigration control-series (inspection) system is arranged by various sorts of electronic appliances installed on the side of a departure airport 100.”).
*Please note:
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
“For”
See e.g. In re Collier, 158 USPQ 266, 267 (CCPA 1968)(where the court interpreted the claimed phrase “a connector member for engaging shield means” and held that the shield means was not a positive element of the claim since “[t]here is no positive inclusion of ‘shield means’ in what is apparently intended to be a claim to structure consisting of a combination of elements.”
b. “-Able”
See e.g. In re Collier, 158 USPQ 266, 267-68 (CCPA 1968)(where the court interpreted the claimed phrase “said ferrule-forming member being crimpable onto said shield means” and held that the shield means was not a positive element of the claim since “[t]here is no positive inclusion of ‘shield means’ in what is apparently intended to be a claim to structure consisting of a combination of elements.... “[t]he ferrule or connector member is crimpable but not required, structurally, to be crimped .... These cannot be regarded as structural limitations and therefore not as positive limitations in a claim directed to structure. They cannot therefore be relied on to distinguish from the prior art.”)
Functional recitation(s) have been considered but given less patentable weight because they fail to add any steps and are thereby regarded as intended use language. A recitation of the intended use of the claimed invention must result in additional steps. See Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1375-76, 58 USPQ2d 1508, 1513 (Fed. Cir. 2001) (Where the language in method claims states only a purpose and intended result, the expression does not result in a manipulative difference in the steps of the claim.).
As per Claim 2, Ogihara discloses wherein the one or more processors are further configured to execute the instructions to acquire multiple types of the biometric information on the user in parallel (See at least Fig.1, Para 0039-0040; and Para 0054, “Alternatively, as another identification method, such an ecological identification as a finger print, a vein, and a retina may be carried out.”, Information is all gathered during the same emigration/ immigration process).
As per Claim 3, Ogihara discloses wherein the one or more processors are further configured to execute the instructions to: acquire an image of status of acquisition of the biometric information on the user; and determine whether or not the user is impersonated based on an analysis result of the image (See at least Fig.5, and Para 0039-0040 and 0057).
As per Claim 4, Ogihara discloses wherein the one or more processors are further configured to execute the instructions to notify the user that the immigration examination is completed or
As per Claim 5, Ogihara discloses wherein the one or more processors are further configured to execute the instructions to notify the user of a result of the immigration examination (See at least Figs.1 and 9; Para 0039-0040 and 0050, Traveler Prompt).
As per new Claim 8 Ogihara discloses wherein the server is further configured to perform biometric authentication of the user using the biometric information on the user, and wherein opening and closing of the gate are controlled based on a result of the biometric authentication and the result of the immigration examination (See at least Para 0016-0017 and 0047-0048, Immigration apparatus with photographing apparatus for capturing facial data).
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.
Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over Ogihara et al. (US 2003/0107472 A1) in view of Takata et al. (US 2013/0013527 A1).
As per new Claim 9, while Ogihara does disclose wherein the server is configured to verify and compare user identity data, and to generate the result of the immigration examination based on a result of the verification (See 102 rejection above); Ogihara fails to expressly discloses wherein the server is further configured to compare, after identity verification of the user is successful, information that identifies the user with a list of persons under surveillance, and to generate the result of the immigration examination based on a result of the comparison.
However, the analogous art of Takata discloses wherein the server is further configured to compare, after identity verification of the user is successful, information that identifies the user with a list of persons under surveillance, and to generate the result of the immigration examination based on a result of the comparison (See at least Figs.12-14; Para 0051, “The normal immigration client terminal 60 includes ID information acquisition function 602, immigration history display function 604, ID information watch list matching result display function 606, finger vein & fingerprint & facial biometric information acquisition function 610, biometric information watch list matching result display function 612, embarkation/disembarkation card number acquisition function 616, stamp seal output function 618, and immigration result registration function 620. The simplified immigration client terminal 70 includes ID information acquisition function 602, immigration history display function 604, difference ID information watch list matching result display function 608, finger vein & fingerprint & facial biometric information acquisition function 610, difference biometric information watch list matching result display function 614, and immigration result registration function 620. It is enough that the finger vein & fingerprint & facial biometric information acquisition function 610 can handle at least one type of the biometric information as described above.”; See also Para 0040-0045, and Para 0103).
Therefore, at the time the invention was effectively filed, it would have been obvious for one of ordinary skill in the art to have included wherein the server is further configured to compare, after identity verification of the user is successful, information that identifies the user with a list of persons under surveillance, and to generate the result of the immigration examination based on a result of the comparison, as disclosed by Takata in the system disclosed by Ogihara for the advantage of providing a method/ system of facilitating the gathering and processing of identity verification information and providing user guidance information, with the ability to increase user efficiency and effectiveness by incorporating a variety of identification data (See KSR [127 S Ct. at 1739] “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
Response to Arguments
Applicant’s arguments filed on 9/4/2026, with respect to Claims 1-9, have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the PTO-892 Notice of References Cited. The Examiner suggests the applicant review all of these documents before submitting any amendments.
Boyd et al. (US 2022/0005049 A1) - See at least Para 0052, “For example, in the context of airline travel, a further checkpoint mission (in addition to checking for reservations) can be to prevent people who are identified on a watchlist (i.e., watchlist members) from being admitted as passengers. Such a watchlist can include, for example, people who are fugitives from the law.”
SAI ASAO et al. (JP 2008/021332 A) – See at least Abstract, “Immigration control apparatus 1AA to 1CC in respective countries implement emigration processing on emigrants and immigration processing on immigrants. In the emigration processing, an emigration fingerprinting device 10 stores emigrant information identifying an emigrant, such as the name, and fingerprint information representing the emigrant's fingerprint in a control information storage device 11. In the immigration processing, according to information identifying an immigrant, such as the name, an immigration fingerprint matching device 13 inquires of the immigration control apparatus in another country the fingerprint information about the emigrant who should be the immigrant via a communication network 2. The destination immigration control apparatus retrieves and returns the fingerprint information from the control information storage device 11, and the immigration fingerprint matching device 13 matches the immigrant's fingerprint against the fingerprint represented by the returned fingerprint information to recognize whether or not the immigrant is the very same person with the emigrant.”
上原 一仁 et al. (JP 4409509 B2) – See Tech-Solution, “Completing the primary examination acceptance completion notification section to be transmitted to the primary examination acceptance terminal, and the received passport information and biometric information of the primary examination applicant with the passport information and biometric information of the passport owner registered in the passport information database The primary identity verification unit that executes the primary identity verification process of the primary assessment applicant and the received biometric information of the primary assessment applicant. The blacklist corresponding confirmation unit that executes the blacklist corresponding confirmation process of the primary examination applicant by comparing the passport information with the biometric information or passport information of the blacklist registrant registered in the blacklist database; A primary examination result recording unit that records a primary examination result including a result of a primary identity confirmation process and a result of the blacklist corresponding confirmation process, and a biometric information of the received primary examination applicant in a primary examination result database; The results of the primary examination for the primary examination applicant who could not be verified in the primary identity verification process, or who was disqualified from the primary examination who was confirmed as a blacklist registrant in the blacklist applicable confirmation process.”
Park et al. (WO 2009154424 A2) - See at least Figs. 2-4 Entry/Exit Gate; Pgs. 3-4, “… transmitting the first information to an external server performing a first inspection using the first information; Receiving the first audit result from the external server; Transmitting the biometric information and the second information to an external server performing a second examination using the biometric information and the second information; And receiving notification of the second audit result from the external server.”; and Pg.18, “The biometric information obtained by the biometric information acquisition unit and the biometric information read by the second reader are transmitted to the external server through the communication interface, and the audit result of the entry / exit is notified from the external server through the communication interface. And determining whether or not the immigration holder of the passport is the same as the name holder of the passport based on the biometric information acquired by the biometric information acquisition unit and the biometric information read by the second reader. Device.”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN P OUELLETTE whose telephone number is (571)272-6807. The examiner can normally be reached on M-F 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynda C Jasmin, can be reached at telephone number (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
October 13, 2026
/JONATHAN P OUELLETTE/Primary Examiner, Art Unit 3629
Prosecution Insights