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 .
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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/260,339, filed on January 14, 2021.
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.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) mental processes and/or organized human activities. This judicial exception is not integrated into a practical application because the claims merely recite mental steps that can be performed by a human. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Based on broadest reasonable interpretation of the claims, the method, apparatus, and system are directed to receiving a request from a user (e.g., for opening a bank account) and performing ID verification process using captured images, face image verification, and character analysis. The claims further recite instructing the user to perform certain actions and displaying information to the user. All of the recited steps can be performed by humans by e.g., looking at the person, asking the person to present a photo ID, comparing the person’s face with a photo ID, reading the information on a photo ID (e.g., name, address, DOB, etc.), and verifying the information. Further see below:
Step 1: The claims fall within a statutory category (method, apparatus, and system).
Step 2A (prong one): The claims recite a judicial exception. The claims are directed to mental processes and/or organized human activity of acquiring an image of a face and ID verification document (i.e., looking at a person’s face and comparing the face to an ID).
Step 2A (prong two): The claims as a whole do not integrate the judicial exception into a practical application because all of the processes can be performed in a human brain. Using a generic computer to perform a mental process is not considered to be practically applied.
Step 2B: The claims as whole do not amount to significantly more than the recited judicial exception because mental processes performed on a generic computer are considered to be mere instructions to apply the abstract ideas.
Conclusion: The claims are ineligible.
Claim Rejections - 35 USC § 102
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)(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.
Claim(s) 1-3, 5-8, and 10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pointner et al. (US 2019/0238533 A1), hereinafter referred to as Pointner.
Regarding claim 1, Pointner teaches an information processing method for verifying a user by using a first information processing apparatus which the user uses (Pointner Abstract: “Computer systems and methods are provided for receiving a first authentication request that includes an image of an identification document”; Pointner ¶¶0003: “for identification and verification of remote users and/or devices”), comprising:
controlling the first information processing apparatus to start one or more processes for capturing images by using a camera connected to the first information processing apparatus in response to receiving a request from the user (Pointner Fig. 7A-8: 700, 800; Pointner ¶¶0033: “the authentication system receives an authentication request (e.g., from a user device 156 that captures an image of a user or from a requesting device 154 that receives an image from user device 156)”);
acquiring first information of a face of the user and second information of a face image included in an identity verification document based on the image captured by the camera during the one or more processes (Pointner Fig. 3 & ¶¶0050: “Reference image 300 is, for example, an image of an identification document 302 that includes a facial image 304 of a user 124”; Pointner ¶¶0037: “text recognition module 138 detects and/or analyzes one or more fields of text in reference image 300”; Pointner ¶¶0092: “one or more facial features (e.g., one or more parts of one or both eyes 1156, such as pupils, retinas, and/or irises 1154) of the user 124 are tracked”);
verifying the user based on the first and second information (Pointner ¶¶0003: “for identification and verification of remote users and/or devices”; Pointner Fig. 8: 814); and
sending a user information included in the identity verification document to a second information processing apparatus which is different from the first information processing apparatus, when the user is successfully verified (Pointner ¶¶0003 discussed above teaches that the system is for verifying a remove user/device; Pointner Fig. 8: 814; Pointner ¶¶0031: “the I/O subsystem 108 communicatively couples the computing system 100 to one or more devices, such as a local authentication database 142, a remote authentication database 152, a requesting device 154, a user device 156, and/or a validation device(s) 200 via a communications network 150 and/or via a wired and/or wireless connection. In some embodiments, the communications network 150 is the Internet.”; Pointner ¶¶0036: “server 100 transmits identification information 126, reference image 300, and/or authentication image 350 to validation device 200”; Pointner ¶¶0087: “At 814, the device transmits authentication success information to the requesting device. For example, authentication success information includes information indicating that the authentication analysis was successful and/or information that indicates the results of the validity analysis of 802-804 and/or the similarity analysis of 808-810”).
Regarding claim 6, Pointner teaches an information processing apparatus comprising:
a camera configured to capture an image (Pointner ¶¶0033: “User device 156 is, for example, a device that includes and/or is connected to a camera, such as a personal computer or mobile device”);
a hardware memory configured to store instructions (Pointner ¶¶0005: “a system includes one or more processors, memory, and one or more programs”; Pointner ¶¶0042: “the memory 202 stores one or more programs (e.g., sets of instructions) and/or data structures, collectively referred to as ‘modules’ herein”); and
a processor configured to execute the instructions to perform the processes (Pointner ¶¶0005 discussed above; Pointner Abstract: “Computer systems and methods are provided …”) described in claim 1.
Therefore, claim 6 is rejected using the same rationale as applied to claim 1 discussed above.
Regarding claims 2 and 7, Pointner teaches the information processing method and apparatus according to claims 1 and 6, wherein said user information includes characters described in the identity verification document (Pointner Fig. 3A & ¶¶0037: “text recognition module 138 detects and/or analyzes one or more fields of text in reference image 300. For example, text recognition module 138 performs optical character recognition on detected text in reference image 300 … the text includes a number of characters that matches a known number of characters for the identification document type, and/or the text content matches identification information 126b associated with a user 124 of the identification document”).
Regarding claims 3 and 8, Pointner teaches the information processing method and apparatus according to claims 1 and 6, further comprising:
instructing the user to perform a predetermined action by using the information processing apparatus (Pointner Fig. 4 & ¶¶0055: “multiple input prompts are displayed in review input region 412 for information regarding multiple parameters that are to be checked”; Pointner Figs. 11-12 & ¶¶0091: “the user interface 1100 displays a prompt (e.g., instructive text 1104) to provide instructions to a user 124 for moving a facial feature to satisfy the liveness criteria”), and
determining that the user is successfully verified, when the instructed predetermined action by the user is detected (Pointner ¶¶0091 discussed above; Pointner ¶¶0092: “a change in the position of the one or more facial features from the first image 1150 to the second image 1250 is determined and compared to a path of movement of the moving target 1102 displayed in the user interface 1100. In this way, a user 124 provides liveness verification by moving one or more facial features (e.g., changing a direction of view of the user's eyes 1156) in accordance with the path of movement of the moving target 1102”).
Regarding claims 5 and 10, Pointner teaches the information processing method and apparatus according to claims 1 and 6, further comprising:
showing the user information to the user by using the first information processing apparatus, before sending the user information to the second information processing apparatus (Pointner Fig. 4 & ¶¶0054: “a validation user interface 222 that can be displayed to facilitate review of authentication information for a first authentication request”).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4, 9, and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pointner et al. (US 2019/0238533 A1), in view of Komminoth (US 2017/0372320 A1), hereinafter referred to as Pointner and Komminoth, respectively.
Regarding claim 11, Pointner teaches an ID verification system comprising:
a camera configured to capture an image (Pointner ¶¶0033 discussed above);
a hardware memory configured to store instructions (Pointner ¶¶0042 discussed above); and
a processor configured to execute the instructions (Pointner Abstract & ¶¶0005 discussed above) to:
start one or more processes for capturing images by using the camera in response to receiving a request from the user (Pointner Fig. 7A-8: 700, 800; Pointner ¶¶0033 discussed above);
acquire first information of a face of the user and second information of a face image included in an identity verification document based on the images captured by the camera during the one or more processes (Pointner Fig. 3 & ¶¶0037, ¶¶0050, ¶¶0092 discussed above);
verify the user based on the first and second information (Pointner Fig. 8 & ¶¶0003 discussed above); and
send a user information included in the identity verification document to an information processing apparatus, when the user is successfully verified (Pointner Fig. 8 & ¶¶0003, ¶¶0031, ¶¶0036, ¶¶0087 discussed above).
However, Pointner does not appear to explicitly teach that the system is for opening an account.
Pertaining to the same field of endeavor, Komminoth teaches that the system is for opening an account (Komminoth ¶¶0012: “Such an authentication can be the basis for a subsequently allowed or denied remote request from the user, such as opening a bank account or requesting official services where the law requires a quasi-personal identification”).
Pointner and Komminoth are considered to be analogous art because they are directed to verifying a user. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the triage engine for document authentication (as taught by Pointner) to verify the ID for opening an account (as taught by Komminoth) because the combination complies with laws for official services (Komminoth ¶¶0012).
Regarding claims 4 and 9, Pointner teaches the information processing method and apparatus according to claims 1 and 6, further comprising:
instructing the user to perform a predetermined action by using the first information processing apparatus (Pointner Figs. 4, 11-12 & ¶¶0055, ¶¶0091 discussed above), and
determining that the user is successfully verified, when the instructed predetermined action by the user is detected (Pointner ¶¶0091-¶¶0092 discussed above).
However, Pointner does not appear to explicitly teach that the predetermined action uses the ID verification document.
Pertaining to the same field of endeavor, Komminoth teaches that the predetermined action uses the ID verification document (Komminoth ¶¶0022: “a user is requested to initially scan his electronic passport, then presents himself in front of a camera to be compared with the biometric information stored on the passport”; Komminoth ¶¶0035: “After uploading the documents the user is filmed in the image acquisition step 13 with said webcam 21 and this information is preferably stored. It is also possible to use the transmitted data to extract image date of the user in a facial data acquisition step 14. The user is either in parallel or later on or earlier requested to hold one or more pages of his identity document in front of the webcam 21 in a document image acquisition step 15”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the triage engine for document authentication (as taught by Pointner) to request the user to scan/hold ID documents using a camera (as taught by Komminoth) because the combination can extract required information for verification from appropriate documents and the face image simultaneously (Komminoth ¶¶0035).
Claim 12 is rejected using the same rationale as applied to claims 2 and 11 discussed above.
Claim 13 is rejected using the same rationale as applied to claims 3 and 11 discussed above.
Claim 14 is rejected using the same rationale as applied to claims 4 and 11 discussed above.
Claim 15 is rejected using the same rationale as applied to claims 5 and 11 discussed above.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US 12,175,794 B2 (S/N: 18/140,212) and claims 1-13 of U.S. Patent No. US 11,670,111 B2 (S/N: 17/260,339). Although the claims at issue are not identical, they are not patentably distinct from each other because both the patents and application are directed to verifying a user via image processing comprising acquiring a (moving) image of the face of the user and verification document, extracting information from the images and prompting the user to perform certain actions to verify and/or authenticate user.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOO J SHIN whose telephone number is (571)272-9753. The examiner can normally be reached M-F; 10-6.
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/Soo Shin/Primary Examiner, Art Unit 2667 571-272-9753
soo.shin@uspto.gov
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