DETAILED OFFICE 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 .
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 1-3 and 7-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without integration into a practical application or recitation of significantly more.
In the analysis below, the method of independent claim 5 is considered representative of independent claims 1, 6 and 10 since all of the independent claims recite identical steps despite being directed to different statutory matter. Furthermore, each of independent claims 1, 5, 6 and 10 are directed to one of the four statutory categories of eligible subject matter; thus, the claims pass Step 1 of the Subject Matter Eligibility Test (See flowchart in MPEP 2106).
Step 2A, prong 1: Yes
The independent claims are directed to
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When viewed under the broadest most reasonable interpretation, the instant claims are directed to Judicial Exception – an abstract idea belong to the group of mental process. Particularly, steps c), d) and e) can be performed mentally. For example, a person visibly monitoring an image of captured fingerprint can extract/identify certain features (e.g. size, ridges, shape), compare with previously known fingerprints and authenticate a particular user. Reference may be made to the July 2024 PEG and those various limitations drawn to the mental processes grouping(s), to include those of Example 47 claim 2. The claims/limitations in question are recited at a high level of generality and lack any specifics precluding such ‘extracting’, ‘comparing’, ‘authenticating’, etc., from being interpreted under the mental processes grouping practically performed in the mind. As identified in the most recent PEG, even a form of automating that broadly/generically involves the use of a machine learning model, would fail to preclude the limitations in question from being drawn to the mental processes grouping (see guidance with respect to ‘apply it’ consideration of MPEP 2106.05(f)). Hence, the limitations c), d) and e) are interpreted as mental steps. Dependent claims similarly analyzed, and they do not limt in such a manner so as to preclude an interpretation directed to the identified exception.
Additional elements
The additional elements recited in each of the independent claims are capturing units and processing modules.
Step 2A, prong 2: No
The above-identified additional elements do not integrate the judicial exception into a practical application.
The steps of a) and b) of capturing and pre-processing images amount to data gather which is insignificant pre-solution activity which does not integrate the claimed mental process into a practical application (See MPEP 2106.05(g)). Each of the other additional elements (a camera and modules) amounts to merely using a generic computer as a tool to perform the claimed mental process. Implementing an abstract idea on a computer does not integrate a judicial exception into a practical application (See MPEP 2106.05(f)).
Moreover, the additional elements of the claims do not recite an improvement in the functioning of a computer or other technology or technical field, the claimed steps are not performed using a particular machine, the claimed steps do not effect a transformation, and the claims do not apply the judicial exception in any meaningful way beyond generically linking the use of the judicial exception to a particular technological environment (See MPEP 2106.04(d)). Therefore, the analysis under prong two of step 2A of the Subject Matter Eligibility Test does not result in a conclusion of eligibility (See flowchart in MPEP 2106).
Step 2B: No
The pending claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As explained above in Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer. Each of the additional elements are generic computer features which perform generic computer functions that are well-understood, routine, and conventional and do not amount to more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation, and mere implementation on a generic computer does not add significantly more to the claims. Accordingly, the analysis under step 2B of the Subject Matter Eligibility Test does not result in a conclusion of eligibility (See flowchart in MPEP 2106).
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 capturing unit”, “a pre-processing unit”, “an extraction module”, “a comparison module” and “an authentication module” in claim 9.
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.
Claims 2-6 and 10 are 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 2 recites the limitation "the pre-defined quality parameters" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the optical imaging unit" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the step of capturing. However, it is unclear if this capturing is done based on the preview analysis steps or independent of it.
Claim 4 recites the limitation "the processing unit" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the cropped fingerpring image" in line 5. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this cropped fingerprint image is the same as “a coloured fingerprint image” in line 4.
Claim 4 recites the step of forming “a normalized fingerprint image”. It is confusing if there is a difference between this “normalized fingerprint image” and “the touchless fingerprint image”.
Claim 10 recites “but not limited to”. This term is indefinite.
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)(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, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lucas (USP 11373439).
With respect to claim 1, Lucas teaches a method for authenticating a user via contactless fingerprint recognition (fig. 6), the method comprising:
capturing, by an image capturing unit, an image of at least a portion of a hand of the user, such that the captured image of the at least a portion of the hand of the user corresponds to a pre-defined quality parameter (col. 4, lines 49-64 & col. 7, lines 30-33 & the captured image must represent the quality setting set at the camera);
pre-processing, by a pre-processing module, the captured image to form a touchless fingerprint image (performing localized normalization in step 115 of fig. 6);
extracting, by an extraction module, one or more features from the touchless fingerprint image (step 118 of fig. 6);
comparing, by a comparison module, the one or more features extracted from the touchless fingerprint image with one or more pre- stored fingerprint image stored in a database (col. 8, lines 1-21); and
authenticating, an authentication module, the user corresponding to a positive match of the one or more features extracted from the touchless fingerprint image with the features extracted from the pre- stored fingerprint image stored in the database (col. 8, lines 1-21).
Claim 9 is similarly analyzed and rejected as presented in claim 1.
With respect to claim 10, refer to col. 3, lines 7-19 of Lucas.
Claims 1-3 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoyos et al. (USPGPUB 2016/0232401) hereinafter Hoyos.
With respect to claim 1, Hoyos teaches a method for authenticating a user via contactless fingerprint recognition (figs. 3 & 4a and paragraphs 103 & 147), the method comprising:
capturing, by an image capturing unit, an image of at least a portion of a hand of the user, such that the captured image of the at least a portion of the hand of the user corresponds to a pre-defined quality parameter (paragraph 72 and step 405 in fig. 4a);
pre-processing, by a pre-processing module, the captured image to form a touchless fingerprint image (steps 410~430);
extracting, by an extraction module, one or more features from the touchless fingerprint image (paragraphs 109~111);
comparing, by a comparison module, the one or more features extracted from the touchless fingerprint image with one or more pre- stored fingerprint image stored in a database (paragraphs 111~117); and
authenticating, an authentication module, the user corresponding to a positive match of the one or more features extracted from the touchless fingerprint image with the features extracted from the pre- stored fingerprint image stored in the database (paragraph 117).
With respect to claim 2, Hoyos teaches the method as claimed in claim 1, wherein the step of capturing the image of the at least a portion of the hand of the user comprises:
receiving, by the image capturing unit, a set of preview image(s) of the at least a portion of the hand of the user (paragraph 72 & fig. 4a);
analyzing, by an analyser module, the set of preview image(s) of the at least a portion of the hand of the user, to check if any of the set of preview image(s) conform to the pre-defined quality parameters (paragraph 72 & fig. 4b),
identifying, by the analyser module, the any of the set of preview image(s) as the image to be captured, conforming the pre-defined quality parameters (paragraph 72 & fig. 4b);
capturing, by the Optical Imaging Unit, the at least a portion of the hand of the user (paragraph 72 and step 405 in fig. 4a).
With respect to claim 3, Hoyos teaches the method as claimed in claim 2, wherein the pre-defined quality parameters include: no gap between two corresponding fingers; and a straight posture of the hand of the user, Palmar side facing the image capturing unit thereof (ensuring the right capturing setting for further processing on the fingerprint in paragraph 72).
With respect to claim 7, refer to paragraph 117 of Hoyos.
With respect to claim 8, refer to figs. 6A~6F of Hoyos for comparison.
Claim 9 is similarly analyzed and rejected as presented in claim 1.
With respect to claim 10, refer to paragraph 147 of Hoyos.
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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hoyos in view of Parthe et al. (USP 11721120 which has a provisional filing date of 5/16/2022) hereinafter Parthe.
With respect to claim 4, Hoyos teaches the method of claim 1, but it does not explicitly disclose the normalizing step including cropping, grey-scaled processing, flattening processing, ridge-line processing and enhancing the ridge-line processing.
Parthe, the same field of endeavor of the contactless fingerprint recognition, teaches enhancing the captured image using cropping (step 306 in fig. 3), grey-scaled processing (step 425 in fig. 4), flattening processing (col. 22, lines 12-25), ridge-line processing and enhancing the ridge-line processing (col. 22, lines 54-67).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the system of Hoyos to incorporate the enhancing captured fingerprint image as taught by Parthe.
The suggestion/motivation for doing so would have been to provide an enhanced image for a better authentication process.
With respect to claim 5, Hoyos teaches the method of claim 4, wherein the authentication model for pre-processing may include an Artificial Intelligence (AI) based trained model and/or Machine Learning (ML) based trained model (paragraph 86 of Hoyos).
With respect to claim 6, Hoyos teaches the method of claim 4, wherein the step of preparation of the ridge-line fingerprint image includes a contrast-based enhancement of the flattened fingerprint image, with use of at least one noise amplification reduction technique (paragraphs 109 and 110 of Hoyos).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lucas in view of Lee (USPGPUB 2018/0075277).
With respect to claim 7, Lucas teaches the method as claimed in claim 1, but it does not explicitly disclose that the database contains fingerprint image pertaining to a plurality of fingerprint image from a plurality of authenticated users, such that each of plurality of fingerprint image of each of the authenticated users comprises one or more pre-stored features.
Lee, the same field of endeavor of the contactless fingerprint recognition, teaches having a database for authenticating a user’s fingerprint by comparing it to a plurality of other user fingerprint stored in the database (paragraphs 88 and 90).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the system of Lucas to incorporate the database of Lee.
The suggestion/motivation for doing so would have been to identify/authenticate a person using external database that may potentially have more data point to compare.
With respect to claim 8, Lucas teaches the method as claimed in claim 1, but it does not explicitly disclose that the comparison performed by use of a pixel-wise dense matching of the features.
Lee, the same field of endeavor of the contactless fingerprint recognition, teaches method of using a pixel-wise dense matching of the feature for the comparison (paragraphs 32 & 73-79). It should be noted that the captured/processed pixel image is used for the comparison.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the system of Lucas to incorporate use of density of ridges in the digital fingerprint as taught by Lee. The suggestion/motivation for doing so would have been to provide more accurate comparison features using the ridges of the fingerprint.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAN S PARK whose telephone number is (571)272-7409. The examiner can normally be reached Monday-Friday 8:30am-5:00pm.
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/CHAN S PARK/Supervisory Patent Examiner, Art Unit 2669
