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 .
Assignee
The Examiner notes that the parent has the assignment to Alclear, LLC but the current application is to Secure Identiy, LLC. However, there is no record regarding the changes to assignment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a station in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 (which depends on claim 1) of U.S. Patent No. 12,205,404. Although the claims at issue are not identical, they are not patentably distinct from each other because representative patent system claim 9 requires the additional elements (See the highlighted elements shown in the table below) not required by representative application system claim 1. However, the conflicting claims are not patentably distinct from each other because:
The claims recite common subject matter;
Whereby representative application claim 1 which recite the open-ended transitional phrase "comprising", does not preclude the additional elements recited by representative patent claim 9, and
Whereby the elements of representative application claim 1 is fully anticipated by representative patent claim 9, and anticipation is "the ultimate or epitome of obviousness". (In re Kalm, 154 USPQ 10 (CCPA 1967), also In re Dailey, 178 USPQ 293 (CCPA 1973) and In re Pearson, 181 USPQ 641 (CCPA 1974)).
U.S. Pat. Application No. 18/981,435
U.S. Patent No. 12,205,404
Claim 1. 1. A system, comprising:
Claim 9. A system, comprising:
a server that stores biometric data for a person;
at least one non-transitory storage medium storing instructions; and at least one processor that executes the instructions to: wherein the at least one processor loads the data by communicating with at least one server.
a mobile electronic device that instructs loading of the biometric data for the person from the server to a local gallery in response to information received from the person via an app executing on the mobile electronic device; and
receive an indication from an app executing on a mobile device, the indication provided directly in response to user input and indicating that a person associated with the mobile device has provided the user input to indicate that the person is proximate to a location associated with a station; load data for the person into a local gallery; receive a digital representation of a biometric for the person;
a station that biometrically identifies the person using the local gallery.
perform a biometric identification to determine an identity of the person by comparing the digital representation of the biometric to the local gallery; and initiate processing of a payment for a transaction associated with the station using information associated with the identity of the person.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 15 recites the limitation “ cause biometric data of the person to be copied from a first storage device to a second storage device”, and the specification says nothing about this feature. How is the copying operation carried when copying the biometric data of the person from the first storage device to the second? Thus, was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Since claims 16-20 directly or indirectly depend on claim 15, they are also rejected under35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the same reason set forth above for claim 15.
Notice re prior art available under both pre-AIA and 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 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.
Examiner's Note
Examiner has cited particular columns and line numbers or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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.
Claims 1, 3-11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Metke, et al. (2017/0300678 A1) in view of Rush, et al. (US 10,452,826 B2).
With regard to claim 1, Metke, et al. (hereinafter “Metke”) discloses a system, comprising: a server that stores biometric data, i.e., fingerprint, iris and/or facial, for a person (See for example, paragraph 0025, lines 1-4: server “148”); a mobile electronic device (via second mobile device) that instructs loading of the biometric data for the person, i.e., user 102, from the server to a local gallery, i.e., storage device of the second user device, in response to information biometric data of the user 102 may be conveyed to the service network 140 for storage in the biometric template server 148, or it may be compared to a biometric template downloaded by the mobile device 200 from biometric template server 148 to verify an identity of a user attempting to use the mobile device 200; and paragraphs 0055-0058). While the system of Metke discloses software application (See for example, paragraph 0029), Metke does not expressly call for the above crossed-out limitation. reference image pixels. The problem to be solved by this limitation may therefore be regarded as how to load biometric data of a person from a server in response to information received from a person via a mobile app. Confronted with this mentioned problem the person skilled in the art would look for alternatives in the field of biometric processing. The skilled person would therefore find Rush, et al. disclosing a mobile device (102) and executing a mobile app in order to distribute/receive biometric template data from a trusted circle and/or a mobile app that can receive biometric template data from a remote storage service (108) which can include one or more remote servers (See for example, col. 3, lines 29-47). Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to incorporate the teaching as taught by Rush, et al. into the system of Metke, and to do so would at least allow downloading the biometric template from the server to the mobile device. Therefore, it would have been obvious to combine Metke with Rush, et al. to obtain the invention as specified in claim 1.
With regard to claim 3, the system of claim 1, wherein the information comprises an identifier associated with the person (See for example, paragraph 0047 of Metke).
With regard to claim 4, the system of claim 1, wherein the mobile electronic device: determines an identity of the person using the information; and instructs loading of the biometric data for the person from the server to the local gallery by indicating the identity of the person to the server (See for example, paragraphs 0021, 0030, and 0033 of Metke).
With regard to claim 5, the system of claim 1, wherein the information indicates whether the person has a ticket or other authorization (0023-00255, and 0046 of Metke).
6. The system of claim 1, wherein the biometric data corresponds to at least a portion of a face of the person (See for example, paragraph 0025 of Metke.
7. The system of claim 1, wherein the station determines whether to allow the person access (See for example, paragraph 0065 of Metke).
With regard to claim 8, Metke (as modified by Rush, et al.) discloses a method, comprising: storing biometric data for a person at a first storage device (See for example, paragraph 0025, lines 1-4, implicit: server 148); instructing transmission of the biometric data for the person from the first storage device to a second storage device (implicit: second user device) in response to receiving an identifier from the person, i.e., user identifying input, via an app executing on a mobile electronic device (the argument presented above for claim 1 are not repeated herein, but are incorporated by reference) (See for example, paragraphs 0053-0054); and biometrically identifying the person using the second storage device (See for example, paragraph 0033: The collected biometric data of the user 102 may be conveyed to the service network 140 for storage in the biometric template server 148, or it may be compared to a biometric template downloaded by the mobile device 200 from biometric template server 148 to verify an identity of a user attempting to use the mobile device 200; and paragraphs 0053-0058).
Claim 9 is rejected the same as claim 7 except claim 9 is a method claim. Thus, argument similar to that presented above for claim 7 is applicable to claim 9.
With regard to claim 10, the method of claim 8, further comprising: determining an identity of the person using the identifier; and instructing transmission of the biometric data for the person from the first storage device to the second storage device by indicating the identity of the person (See for example, paragraphs 0021, 0030, and 0033 of Metke).
Claim 11 is rejected the same as claim 3 except claim 11 is a method claim. Thus, argument similar to that presented above for claim 3 is applicable to claim 11.
With regard to claim 13, the method of claim 8, wherein the second storage device is located more proximate to the person than the first storage device (See for example, Fig. 1 of Metke, wherein the second user device 106 is located more proximate to the user than biometric template server 148, i.e., server user 102, i.e., first storage device).
With regard to claim 14, the method of claim 8, wherein: the first storage device stores information for more people, i.e., server 148 at least stores each user authorized to use a shared device, such as mobile devices 104 and 106, than the second storage device; and the information includes the biometric data for the person (See for example, paragraphs 0025 and 0051-0052 of Metke ).
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Metke in view of Rush, et al. as applied to claims 1, 3-11, and 13-14 above, and further in view of Valenti, et al. (US 10,659,458 B2).
With regard to claim 2, Metke (as modified by Rush, et al.) discloses all of the claimed subject matter as already addressed above in paragraph 14, and incorporated herein by reference. Metke (as modified by Rush, et al.) does not expressly call for wherein the information is associated with a flight. However, Valenti, et al. (See for example, col. 5, lines 55-66) teach this feature. Metke (as modified by Rush, et al.) and Valenti, et al. are combinable because they are from the same field of endeavor, performing biometric registration and authentication of a user to provide access to a secure network based on an enhanced authentication and biometric registration performed with a user device (See for example, col. 1, lines 9-13). Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to incorporate the teaching as taught by Valenti, et al. into the system of Metke (as modified by Rush, et al.) so that it may allow for the purchase of airline tickets as well as providing information on flights. Therefore, it would have been obvious to combine Metke (as modified by Rush, et al.) with Valenti, et al. to obtain the invention as specified in claim 2.
Claim 12 is rejected the same as claim 2 except claim 12 is a method claim. Thus, argument similar to that presented above for claim 2 is applicable to claim 12.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Metke in view of Rush, et al. as applied to claims 1, 3-11, and 13-14 above, and further in view of Sheets, et al. (US 10,846,699 B2).
With regard to claim 15, Metke (as modified by Rush, et al.) discloses all of the claimed subject matter as already addressed above in paragraph 14, and incorporated herein by reference. More particularly, claim 8 encompasses the limitation of this claim except claim 15. Thus, argument similar to that presented above for claim 8 is applicable to claim 15. Metke (as modified by Rush, et al.) further discloses at least one non-transitory storage medium storing instructions; and at least one processor (See for example, Figs. 2-4 and the associated text). :Claim 15 distinguishes from claim 8 only in that it recites causing biometric data of the person to be copied from a first storage device to a second storage device. However, Sheets, et al. (See for example, col. 16, lines 57-59) teach this feature. Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to incorporate the teaching as taught by Sheets, et al. into the system of Metke (as modified by Rush, et al.), if for no other reason than to simply copy biometric data of a user from one storage device to another. Therefore, it would have been obvious to combine Metke (as modified by Rush, et al.) with Sheets, et al. to obtain the invention as specified in claim 15.
With regard to claim 16, the system of claim 15, wherein the second storage device is faster to access for the biometric identification of the person than the first storage device. This feature is considered inherent because while the server 148 of Metke stores more biometric data and generally requires more processing time, than mobile device 104 or 106 store less biometric data, and as a result minimizes processing time, and thus faster to access the biometric identification of the user (See for example, Figs. 1 and 5 and the associated text).
With regard to claim 17, the system of claim 15, wherein the identifier is received from the person (See for example, paragraph 0025 and 0047of Metke).
With regard to claim 18, the system of claim 17, wherein the identifier is received from the person via an additional mobile electronic device (See for example, mobile device 106 and the associated text of Metke).
With regard to claim 19, the system of claim 15, wherein the mobile electronic device includes at least one of the at least one non-transitory storage medium or the at least one processor (See for example, Fig. 2 and the associated text).
With regard to claim 20, the system of claim 15, wherein at least one of the at least one non-transitory storage medium or the at least one processor are incorporated into an additional electronic device that communicates with the mobile electronic device (See mobile device 106; and Fig. 2 and the associated text of Metke).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Application Publication No. 2017/0255942 (See for example, Figs. 1-2 , 7 and 16 and the associated text) .
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL G MARIAM whose telephone number is (571)272-7394. The examiner can normally be reached M-F 7:30-5:00 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, Mathew Bella can be reached at (571)272-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL G MARIAM/ Primary Examiner, Art Unit 2675
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