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 .
Drawings
The drawings as submitted by Applicant on 10/25/2024 has been accepted.
Election/Restrictions
Claims 1-14 have been elected by Applicant without traverse
Disposition of Claims
Claims 1-20 are pending in the instant application. No claims have been amended. No claims have been cancelled. No claims have been added. Claims 15-20 have been withdrawn herein. Claims 1-14 are rejected herein. The rejection of the pending claims is hereby made non-final.
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.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zuckerman et al (US 2023/0385587).
Regarding claim 1, the prior art discloses a fingerprint enrollment method of a fingerprint smart card configured to communicate with a server and to enroll fingerprint information through a point of sale (POS) terminal (see at least paragraph [0022] to Zuckerman et al), the method comprising: determining whether the fingerprint information is enrolled in the fingerprint smart card; performing a first authentication based on a user authenticator corresponding to the fingerprint smart card (see at least paragraph [0065] to Zuckerman et al), in response to determining the fingerprint information is not enrolled in the fingerprint smart card; receiving the fingerprint information, in response to the first authentication being successfully completed (see at least paragraph [0064] to Zuckerman et al); performing a second authentication based on the server and a personal identification number (PIN) code corresponding to the fingerprint smart card (see at least paragraph [0064] to Zuckerman et al); storing the fingerprint information in the fingerprint smart card, in response to the second authentication being successfully completed (see at least paragraph [0031], to Zuckerman et al); and omitting the first authentication and the second authentication, in response to determining the fingerprint information is enrolled in the fingerprint smart card (see at least paragraph [0063] to Zuckerman et al, wherein it is possible to adapt the predefined backend server condition to be based on a sequence of previously successfully authenticated individual transactions using the smart card, but not using the fingerprint sensing system for authenticating the transaction).
Regarding claim 2, the prior art discloses the fingerprint enrollment method of claim 1, wherein the fingerprint smart card includes a storage, and wherein the user authenticator includes an N digit code, N being a positive integer, and wherein the N digit code is stored in the storage (see at least paragraph [0038] to Zuckerman et al, wherein code for extracting, using the processing circuitry, present fingerprint features from the present fingerprint representation, forming a present set of fingerprint features, code for amending, using the processing circuitry, a fingerprint template stored).
Regarding claim 3, the prior art discloses the fingerprint enrollment method of claim 2, wherein the performing the first authentication includes: receiving an input digit code; determining that the first authentication is successfully completed in response to the input digit code matching the N digit code; and determining that the first authentication fails in response to the input digit code not matching the N digit code (see at least paragraph [0065] to Zuckerman et al, wherein define the predefined backend server condition to include the successful authentication of a plurality of individual transactions using the users PIN code. The backend server (or possibly the POS terminal 2020) may log the validity of PIN codes entered by the user).
Regarding claim 4, the prior art discloses the fingerprint enrollment method of claim 1, wherein the user authenticator includes user information associated with a user authorized to use the fingerprint smart card, and the user information is stored in the server (see at least paragraph [00354] to Zuckerman et al, wherein the operator of the backend server may be in control of the fingerprint authentication using the smart card).
Regarding claim 5, the prior art discloses the fingerprint enrollment method of claim 4, wherein the performing the first authentication includes: establishing communication between the POS terminal and a credit card different from the fingerprint smart card (see at least paragraph [0022] to Zuckerman et al, wherein the contactless interface the smart card may further comprises a wireless transceiver for wireless communication with an electronic transaction terminal, such as for example the above-mentioned POS terminal); obtaining credit card information for the credit card (see at least paragraph [0024] to Zuckerman et al, wherein wireless functionality could possibly be limited to use only once the user has enrolled his fingerprint with the smart card, for example for payment purposes as is known within the technical area of the present disclosure); determining that the first authentication is successfully completed in response to the credit card information corresponding with the user information; and determining that the first authentication fails in response to the credit card information not corresponding with the user information (see at least paragraph [0034] to Zuckerman et al, wherein it may be demanded that the PIN code has been correctly entered in relation to a number of subsequent individual transaction).
Regarding claim 6, the prior art discloses the fingerprint enrollment method of claim 1, wherein the PIN code is stored in the server (see at least paragraph [0033] to Zuckerman et al, wherein the predefined backend server condition involves authenticating the individual transaction using e.g. a PIN code).
Regarding claim 7, the prior art discloses the fingerprint enrollment method of claim 6, wherein the performing the second authentication includes: receiving an input PIN code; determining that the second authentication is successfully completed in response to the input PIN code matching the PIN code; and determining that the second authentication fails in response to the input PIN code not matching the PIN code (see at least paragraph [0034] to Zuckerman et al, wherein the PIN code authentication of the individual transaction will generally take place before the “fingerprint authentication criterion” has been completed. In line with the present disclosure, it may however also be possible to further dictate the conditions for the predefined backend server condition).
Regarding claim 8, the prior art discloses the fingerprint enrollment method of claim 1, further comprising: performing a fingerprint payment protocol in response to the fingerprint information being enrolled in the fingerprint smart card (see at least paragraph [0010] to Zuckerman et al, wherein fingerprint enrollment for the smart card is that there will not be any need for a specifically purposed electronic device for allowing the user to enroll one of a plurality of fingers with the (new) smart card).
Regarding claim 9, the prior art discloses the fingerprint enrollment method of claim 8, wherein the fingerprint smart card includes a fingerprint sensor, and wherein the performing the fingerprint payment protocol includes: obtaining input fingerprint information using the fingerprint sensor; performing a payment in response to the input fingerprint information matching the fingerprint information, performing a payment; and outputting a payment error in response to the input fingerprint information not matching the fingerprint information (see at least paragraph [0007] to Zuckerman et al).
Regarding claim 10, the prior art discloses the fingerprint enrollment method of claim 9, further comprising: calling a payment protocol stored in the POS terminal; and establishing communication between the POS terminal and the fingerprint smart card, and wherein the payment protocol includes the fingerprint payment protocol (see at least paragraph [0048] to Zuckerman et al, wherein the fingerprint sensor 102 may, for example, be used for authenticating the user when performing a payment/transaction, for example allowing the smart card 100, once the finger of the user has been enrolled, to interact with an electronic transaction terminal, such as POS terminal 202).
Regarding claim 11, the prior art discloses the fingerprint enrollment method of claim 10, wherein the POS terminal and the fingerprint smart card are configured to communicate with each other in a direct contact manner (see at least paragraph [0048] to Zuckerman et al, wherein the smart card 100 may integrate a plurality of contact pads 106 electrically connected to at least the processing circuitry 104, possibly allowing for providing a wired connection with the POS terminal 302 if/when the smart card 100 is inserted in a card slot provided with the POS terminal 302.).
Regarding claim 12, the prior art discloses the fingerprint enrollment method of claim 10, wherein the POS terminal and the fingerprint smart card are configured to communicate with each other in a contactless manner (see at least paragraph [0029] to Zuckerman et al, wherein the smart card is adapted for transition between a fingerprint authentication inactive state and a fingerprint authentication active state, wherein the processing circuitry is adapted to receive an indication that the smart card is in contactless communication with an electronic transaction terminal).
Regarding claim 13, the prior art discloses the fingerprint enrollment method of claim 1, wherein the fingerprint smart card includes a fingerprint sensor, and wherein the fingerprint information is generated by touching a finger to the fingerprint sensor at least twice (see at least paragraph [0027] to Zuckerman et al, wherein the smart card comprising a fingerprint sensing system including a fingerprint sensor configured for capturing a fingerprint representation of a fingerprint pattern of a finger of the user).
Regarding claim 14, the prior art discloses the fingerprint enrollment method of claim 1, wherein the fingerprint smart card includes a storage, and wherein the fingerprint information is stored in the storage (see at least paragraph [0027] to Zuckerman et al, wherein a fingerprint template stored at the smart card to comprise the present set of fingerprint features).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
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, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALIA F CRAWLEY/ Primary Examiner, Art Unit 3627
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