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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 March 2025 is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “provided that the group of results has a number of results less than a predefined number, adjusting the group of results in the mask so as to indicate that none of the adjacent pixels show a finger within sight of the fingerprint sensor” of claim 5, and “adjusting in the mask so that the supplementary results indicate that the supplementary pixels show a finger within sight of the fingerprint sensor” of claim 6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 8-10 are objected to because of the following informalities:
Claim 8 recites “The computer program product” which lacks antecedent basis in the claim. The claim should be amended to recite “A computer program product…”
Claim 9 recites “The method…” which lacks antecedent basis in the claim. The claim should be amended to recite “A method...”
Claim 10 recites “The device” which lacks antecedent basis in the claim. The claim should be amended to recite “A device…”
Appropriate correction is required.
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:
“an image processing module that is configured to…” in claim 10 (No detailed disclosure: page 5, lines 8-12 recite generic processing modules, and thus the limitation is a computer-implemented means-plus-function limitation, which requires an algorithm, however, no algorithm is disclosed.).
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “an image processing module that is configured to…” in claim 10 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Specifically, page 5, lines 8-12 recite generic processing modules [FPGA or ASIC or generically “processor”], and thus the limitation is a computer-implemented means-plus-function limitation, which requires an algorithm, however, no algorithm is disclosed. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-4 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nilsson (US 9,934,421).
Regarding claim 1, Nilsson discloses a method for processing an image acquired by a fingerprint sensor, the method comprising the following steps implemented for at least one pixel of the image:
determining a ridge value associated with the pixel and a valley value associated with the pixel (Figures 9a-b show determined ridges and valleys), wherein:
the ridge value is a maximum pixel value of the image in a predefined vicinity of the pixel (Figures 9a-b, ridge, which is a maximum.);
the valley value being a minimum pixel value of the image in a predefined vicinity of the pixel (Figures 9a-b, valley, which is a minimum.);
calculating a normalized dynamic range associated with the pixel as a ratio (Figure 9b and column 15, lines 59 to column 16, lines 20) between:
a difference between the ridge value associated with the pixel and the valley value associated with the pixel (Figure 9b and column 15, lines 59 to column 16, lines 20: “A difference between the normalized average valley signal level and the normalized average ridge signal level”), and
a reference value that is a linear combination of the ridge value associated with the pixel and the valley value associated with the pixel (In the instant application’s specification, on page 7, lines 15-20, it is explained that the “reference value” is a linear combination of the ridge value associated with the pixel and the valley value associated with the pixel, however, says one of the values is 0 and one of the values is 1, and thus the reference value is merely 1 in the instant application. Thus, in the prior art, there is clearly a reference value of 1, since dividing by 1 results in the normalized dynamic range being just the difference between the ridge value associated with the pixel and the valley value associated with the pixel, which is taught by Nilsson: column 15, lines 59 to column 16, lines 20.);
comparing the normalized dynamic range associated with the pixel and a dynamic range threshold (Figure 9b, “compare”, see column 15, lines 59 to column 16, lines 20: “The difference (e.g. subtraction) may for example be compared to a threshold value…”);
generating a result associated with the pixel, the result associated with the pixel indicating that the pixel shows a finger within sight of the fingerprint sensor only if the normalized dynamic range is above the dynamic range threshold (Column 15, lines 59 to column 16, lines 20: “Alternatively or additionally, the comparisons should agree (within an error margin) for the different wavelengths for determining the presence of a live finger without a spoof (i.e. that the first image matches the optical image). If the comparisons do not agree, this is indicative of the presence of a spoof…” Thus, regardless if it is above or below the threshold a determination that a finger is present is determined, whether it’s a real finger or a spoofed finger [the claim language does not differentiate that the “finger within sight” is real or not.].).
Regarding claim 2, Nilsson discloses the method according to claim1, wherein the reference value is proportional to the ridge value associated with the pixel or proportional to the valley value associated with the pixel (Column 15, lines 26-58, the average is proportional, so the “reference” is also proportional [especially since the reference value is 1 as explained in the rejection of claim 1.].).
Regarding claim 3, Nilsson discloses the method according to claim1, moreover comprising:
comparing the ridge value associated with the pixel or the valley value associated with the pixel with a value threshold (Column 15, lines 59-67 and column 16, lines 21-38.),
wherein the result associated with the pixel indicates that the pixel shows a fingerprint only if the following conditions are met:
the normalized dynamic range is above the dynamic range threshold (Column 15, lines 59 to column 16, line 38. See also the explanation in claim 1.), and
the ridge value or the valley value is above the value threshold (Column 15, lines 59 to column 16, line 38. See also the explanation in claim 1.).
Regarding claim 4, Nilsson discloses the method according to claim1, comprising:
identifying an area of interest in the image showing a candidate object likely to be a fingerprint (Figure 9a),
repeating the steps of determining, calculating comparing and generating a result for each pixel of the area of interest so as to generate a mask comprising a plurality of results that are respectively associated with the pixels of the area of interest (Figure 9a shows the entire image for all of the pixels, the “mask” is the entire image of the fingerprint, just as shown in Figure 4 of the instant application.),
generating a consolidated result associated with the area of interest from the mask, wherein the consolidated result indicates that the candidate object is a fingerprint only if the plurality of results that are respectively associated with the pixels of the area of interest comprises a majority of results indicating pixels showing a finger within sight of the fingerprint sensor (Figures 9a-b and column 15, lines 59 to column 16, lines 20, and see the explanation in claim 1, and further clearly all of the pixels are used since the entire image is formed in Figure 9a.).
Regarding claim 7, Nilsson discloses the method according to claim1, wherein the fingerprint sensor is a contact-based sensor (Figure 2), preferably a line-of-sight contact-based sensor (This limitation is merely listed as a preference, and thus is not required.).
Regarding claim 8, The computer program product comprising program code instructions for carrying out the steps of the method according to claim 1 when this program is executed by an image processing module (Column 16, line 57 to column 17, line 20.).
Regarding claim 9, The method readable by an image processing module, storing instructions that are executable by an image processing module for carrying out the steps of the method according to claim 1 (Column 16, line 57 to column 17, line 20.).
Regarding claim 9, The device (Figures 1-2) comprising:
a fingerprint sensor (Figure 2),
an image processing module that is configured to process an image acquired by the fingerprint sensor (Column 16, lines 42-56), using the method according to claim 1 (See the rejection of claim 1 above.).
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.
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Nilsson (US 9,934,421) in view of Ding et al. (US 2021/0004559).
Regarding claim 5, Nilsson discloses the method according to claim1,
repeating the steps of determining, calculating, comparing and generating a result for different pixels of the image so as to generate a mask comprising a plurality of results that are respectively associated with the different pixels (Figure 9a shows the entire image for all of the pixels, the “mask” is the entire image of the fingerprint, just as shown in Figure 4 of the instant application.),
in the mask, identifying a group of results that are respectively associated with adjacent pixels of the image, the group of results indicating that the adjacent pixels associated therewith all show a finger within sight of the fingerprint sensor (Figure 9a-b show that all of the pixels show a finger within sight of the fingerprint sensor. See also the explanation of claim 1.).
Nilsson fails to teach provided that the group of results has a number of results less than a predefined number, adjusting the group of results in the mask so as to indicate that none of the adjacent pixels show a finger within sight of the fingerprint sensor.
Ding et al. discloses a method wherein provided that a group of results has a number of results less than a predefined number, adjusting the group of results in the mask so as to indicate that none of the adjacent pixels show a finger within sight of the fingerprint sensor (Figure 6, IFM is an adjustment to a captured image with a black mask which is in an area of pixels which do not have a finger, i.e. the number of results less than a predefined number.).
Hence the prior art includes each element claimed although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of the actual combination of the elements in a single prior art reference. In combination Nilsson performs the same function as it does separately of providing a fingerprint image to determine a live or spoof finger, and Ding et al. performs the same function as it does separately of providing a black mask for background pixels.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention could have combined the elements as claimed by known methods, and that in combination, each element merely performed the same function as it does separately. The results of the combination would have been predictable and resulted in providing a black mask for background pixels of the fingerprint image.
Therefore, the claimed subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 6, Nilsson discloses the method according to claim1, comprising:
repeating the steps of determining, calculating, comparing and generating a result for different pixels of the image so as to generate a mask comprising a plurality of results that are respectively associated with the different pixels (Figure 9a shows the entire image for all of the pixels, the “mask” is the entire image of the fingerprint, just as shown in Figure 4 of the instant application.),
in the mask, identifying a group of results that are respectively associated with adjacent pixels of the image, the group of results indicating that the adjacent pixels associated therewith all show a finger within sight of the fingerprint sensor (Figure 9a-b show that all of the pixels show a finger within sight of the fingerprint sensor. See also the explanation of claim 1.).
Nilsson fails to teach provided that the group of results has a number of results greater than a predefined number, identifying, in the mask, supplementary results that are respectively associated with supplementary pixels of the image forming an area of the image of predefined shape, for example ovoid, with the adjacent pixels;
adjusting in the mask so that the supplementary results indicate that the supplementary pixels show a finger within sight of the fingerprint sensor.
Ding et al. discloses a method wherein provided that a group of results has a number of results greater than a predefined number, identifying, in the mask, supplementary results that are respectively associated with supplementary pixels of the image forming an area of the image of predefined shape, for example ovoid, with the adjacent pixels (Figure 6 shows that the areas inside of the mask form an “ovoid” shape indicating the fingers for pixels having a number of results greater than a predefined number.);
adjusting in the mask so that the supplementary results indicate that the supplementary pixels show a finger within sight of the fingerprint sensor (Figure 6 shows that the mask is “adjusted” to show the fingers that are within sight of the fingerprint sensor.).
Hence the prior art includes each element claimed although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of the actual combination of the elements in a single prior art reference. In combination Nilsson performs the same function as it does separately of providing a fingerprint image to determine a live or spoof finger, and Ding et al. performs the same function as it does separately of providing a black mask for background pixels.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention could have combined the elements as claimed by known methods, and that in combination, each element merely performed the same function as it does separately. The results of the combination would have been predictable and resulted in providing a black mask for background pixels of the fingerprint image.
Therefore, the claimed subject matter would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention.
Conclusion
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/STEPHEN G SHERMAN/Primary Examiner, Art Unit 2621
11 February 2026