DETAILED ACTION
This action is response to communication: response to original application filed on 05/27/2025.
Claims 1-20 are currently pending in this application.
The IDS filed on 05/27/2025 has been accepted.
Examiner’s Interpretation
As per claims 1-13, the claims recite multiple instances for means-plus-function. For example, claim 1 recites “adjust means for causing” and a “controller configured to.” Such limitations invoke 112f. For purposes of examination, such limitations will be interpreted in accordance to the applicant’s specifications. For example, see paragraphs 15, 26, and throughout.
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.
Claims 1-20 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.
As per claims 1-20, the claims recite a security system and a method of performing a multi-factor authentication of a user. However, the claims do not recite more than one authentication factor and it is unclear if there are steps missing in the claims.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12314458 (application 17/469735). Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are anticipated by the claims of the parent patent. All the limitations of the current application are found in the parent patent.
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.
Claim(s) 1, 2, 6, 7, 9, 10, 14, 17, 18, and 20 are rejected under 35 U.S.C. 102(a)(2) as being unpatentable over Silverster et al. US Patent Application Publication 2005/0249381 (Silvester)
As per claim 1, Silvester teaches a security system for a multi-factor authentication of a user, the system comprising: a camera for acquiring identifying information of a user, the camera being concealed from the user prior to occurrence of a triggering event for authentication (paragraph 15 with image capture device with facial recognition; comprises shutter that opens when facial image is being captured); adjustment means for causing the camera to be concealed from or revealed to the user (paragraph 15 with mechanical shutter); a controller configured to: detect the triggering event and thereupon cause the adjustment means to reveal the camera to the user (paragraph 15 with opening shutter when facial image is being captured); acquire images of the identifying information of the user (paragraph 15 for facial image capture); and based on the acquired identifying information, determine whether to authenticate the user (paragraph 17 with authentication based on image).
As per claim 2, Silvester teaches wherein the adjustment means is mechanical (see paragraph 15 with mechanical shutter).
As per claim 6, Silvester teaches wherein the triggering event for authentication further comprises presence of the user (paragraph 15 with opening when facial image is being captured).
As per claim 7, Silvester teaches wherein the triggering event for authentication is determined by a security policy (paragraph 15 and throughout wherein the shutter opens when facial image is to be captured, which is in accordance to the systems security policy).
As per claim 9, Silvester teaches further comprising at least one of an identifying information reader or a user interface for receiving a first authentication factor from the user (paragraph 15 with facial image or fingerprint).
As per claim 10, Silvester teaches wherein the first authentication factor comprises at least one of a personal identification number, a token, a password, a bar code, a quick response code, or a fingerprint (paragraph 15 with fingerprint).
Claim 14 is rejected using the same basis of arguments used to reject claim 1 above.
Claim 17 is rejected using the same basis of arguments used to reject claim 6 above.
Claim 18 is rejected using the same basis of arguments used to reject claim 7 above.
Claim 20 is rejected using the same basis of arguments used to reject claim 9 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.
Claim(s) 3-5, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Silvester as applied above, in view of Carlson et al. US Patent Application Publication 2002/0018277 (Carlson).
As per claim 3, Silvester teaches wherein the adjustment means comprises a shutter and an adjustment mechanism (page 3 with physical shutter). However, Silvester does not explicitly teach controlling relative orientations of the shutter. This would have been obvious. For example, see Carlson (paragraph 120, with shutter having various orientations to provide excellent flexibility)
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Silvester with Carlson. One of ordinary skill in the art would have been motivated to perform such an addition to provide flexibility (paragraph 120).
As per claim 4, Silvester does not explicitly teach wherein the adjustment means is optical. However, this would have been obvious. Silvester already teaches a shutter which can control the lens. However, for a more explicit teaching on an optical switch, see Carlson (abstract and throughout).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Silvester with Carlson. One of ordinary skill in the art would have been motivated to perform such an addition to improve switching (paragraph 5 in Carlson).
As per claim 5, the Silvester combination teaches wherein the adjustment means comprises a barrier having a selectable opacity level and comprising at least one of an electrochromatic material, a photochromatic material, a thermochromic material, suspended particles, polymer-dispersed liquid crystals or metal blinds and (ii) a signal source for setting the opacity level of the barrier (Carlson paragraphs 16-17 with selectable opacity; see paragraph 8, 11 for metal and throughout; see also paragraph 55 with thermochromatic compound; see paragraphs 16-17 for signal source for setting opacity level of barrier).
Claim 15 is rejected using the same basis of arguments used to reject claims 3 above. Further see Silvester paragraph 15 shutter opening and closing in front of camera.
Claim 16 is rejected using the same basis of arguments used to reject claim 5 above.
Claim(s) 8, 13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Silvester as applied above, in view of Levitov US Patent Application Publication 2017/0329946 (Levitov).
As per claim 8, Silvester does not explicitly teach comprising a presence-detection sensor including at least one of an infrared sensor, a heat sensor, a proximity sensor, a pressure sensor, an acoustic sensor, an RF sensor or a motion sensor for detecting the presence of a user. However, utilizing such sensors for detecting a presence of a user is well known in the art. For example, see Levitov (paragraph 18 with detection motion and activiating an image capturing device when motion is detected).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Silvester with Levitov. One of ordinary skill in the art would have been motivated to perform such an addition to provide a biometric identification system that is less resource-intensive.
As per claim 13, Silvester teaches causing the adjustment means to conceal the camera from the user, but does not explicitly performing this action following a predetermined number of unsuccessful authentication attempts. However, disabling a camera following unsuccessful authentication would have been obvious. For example, see Levitov (claim 13 with deactivating image capturing device after person in image is determined not to be an authorized user).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Silvester with Levitov. One of ordinary skill in the art would have been motivated to perform such an addition to provide a biometric identification system that is less resource-intensive.
Claim 19 is rejected using the same basis of arguments used to reject claim 8 above.
Claim(s) 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Silvester as applied above, in view of Enmoto et al. US Patent Application Publication 2015/0207971 (Enmoto).
As per claim 11, Silvester does not explicitly teach wherein the controller is further configured to: determine whether a predetermined time interval has expired and upon determining that the predetermined time interval has expired, cause the adjustment means to conceal the camera from the user. However, this would have been obvious. Silvester already teaches opening the shutter for facial recognition. Thus, it would have been obvious, if not inherent, that the shutter closes after a certain time, as it must open for the next facial recognition. However, for a more explicit teaching on concealing a camera after a predetermined amount of time, see Enomoto (paragraph 68 with closing a camera shutter when certain amount of time has passed).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Silvester with Enomoto. One of ordinary skill in the art would have been motivated to perform such an addition to increase security (paragraph 7).
As per claim 12, Silvester does not explicitly teach upon determining authentication of the user, cause the adjustment means to conceal the camera from the user. However, this would have been obvious. For example, see Enomoto (paragraph 189-191 wherein shutter is closed after determining user is authenticated;
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Silvester with Enomoto. One of ordinary skill in the art would have been motivated to perform such an addition to increase security (paragraph 7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KAI YIN GEE whose telephone number is (571)272-6431. The examiner can normally be reached on Monda-Friday 8:30-5:00 PST Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on (571) 272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON K GEE/Primary Examiner, Art Unit 2495
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