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 .
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.
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Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-12, 16 and 17 of U.S. Patent No. 12437425 in view of Tasutomi (US 2019/0141231).
In regard to claim 1, U.S. Patent No. 12437425 teach all the elements of claim 1 (column 13 lines 52-67) except outputting the indication of whether the affine transformation exists, wherein the indication has a first value if the affine transformation exists and a second value if the affine transformation does not exist, wherein the first value and the second value are different from each other.
Yasutomi teaches wherein the indication has a first value if the affine transformation exists and a second value if the affine transformation does not exist, wherein the first value and the second value are different from each other (element S708 and paragraph 73).
The two are analogous art because they both deal with the same field of invention of fingerprint detection.
Before the effective filing date it would have been obvious to one of ordinary skill in the art to provide the apparatus of U.S. Patent No. 12437425 with the affine transformation calculation of Yasutomi. The rationale is as follows: Before the effective filing date it would have been obvious to provide the apparatus of U.S. Patent No. 12437425 with the affine transformation calculation of Yasutomi because it would prevent errors in image combination and would allow the selection of other images to complete the combination.
The following claims correspond as follows:
Application No. 19/267,496
U.S. Patent No. 12437425
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 7
Claim 5
Claim 8
Claim 6
Claim 9
Claim 7
Claim 10
Claim 8
Claim 11
Claim 9
Claims 12 and 17
Claim 10
Claim 9
Claim 11
Claim 16
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 9 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.
Regarding claim 9, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim(s) 1-3, 6, 7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thiebot et al. (US 2024/0070249) in view of Yasutomi (US 2019/0141231).
In regard to claim 1, Thiebot et al. teach a computer-implemented method for determining an affine transformation for transforming a second image so that features of the second image coincide with corresponding features of a first image, the computer-implemented method comprising: obtaining the second image comprising the features (element 301) and obtaining the first image comprising the corresponding features (element 300); processing the first and second images by a transformation calculator (paragraph 78 and fig. 2), and determining parameters defining the affine transformation (fig. 2 and paragraph 78, affine transformation and determining angles of rotation are parameters); and outputting the affine transformation, comprising outputting a data structure indicative of the parameters defining the affine transformation (fig. 2 element 306 and paragraph 87, Thiebot et al. teach a comparison between the reference image and the candidate image by image rotation. This geometric comparison is “indicative of the parameters defining the affine transformation) but does not teach thereby determining an indication of whether the affine transformation exists, outputting the indication of whether the affine transformation exists, wherein the indication has a first value if the affine transformation exists and a second value if the affine transformation does not exist, wherein the first value and the second value are different from each other.
Yasutomi teaches determining an indication of whether the transformation exists, outputting the indication of whether the transformation exists, wherein the indication has a first value if the affine transformation exists and a second value if the affine transformation does not exist, wherein the first value and the second value are different from each other (element S708 and paragraph 73).
The two are analogous art because they both deal with the same field of invention of fingerprint detection.
Before the effective filing date it would have been obvious to one of ordinary skill in the art to provide the apparatus of Thiebot et al. with the affine transformation calculation of Yasutomi. The rationale is as follows: Before the effective filing date it would have been obvious to provide the apparatus of Thiebot et al. with the affine transformation calculation of Yasutomi because it would prevent errors in image combination and would allow the selection of other images to complete the combination.
In regard to claim 2, Thiebot et al. teach modifying the second image using the affine transformation (paragraph 78, transformation of alignment between these two sets of minutiae, such as affine transformation), thereby obtaining a modified second image and combining at least a portion of the modified second image with at least a portion of the first image to obtain a combined image (fig. 2, element 306 is a combination of 304 I and 305 R).
In regard to claim 3, Thiebot et al. teach wherein the combined image comprises, in an overlapping region of the first image and the modified second image, a portion of the first image and/or a portion of the modified second image (fig. 2 element 306).
In regard to claims 6 and 10, Thiebot et al. teach wherein the first image and the second image are images of an object carrying a biometric characteristic and wherein the features and the corresponding features are biometric features of the biometric characteristic (fig. 2).
In regard to claims 7 and 11, Thiebot et al. teach resizing the image to a target size (fig. 2 element 306 and paragraph 78) but does not teach the resizing step being before the processing step.
Before the effective filing date it would have been obvious to one of ordinary skill in the art to provide the apparatus of Thiebot et al. and Yasutomi with resizing being before processing. The rationale is as follows: Before the effective filing date it would have been obvious to provide the apparatus of Thiebot et al. and Yasutomi with resizing being before processing because the swapping of the order of the operations would have no effect on the final result. Outside a showing of criticality, one of ordinary skill in the art would recognize that the rearrangement of these two operations would not alter the function of the device and the order could be decided based on design requirements.
In regard to claim 9, Tieu et al. teach a computing device comprising a processor and a storage device, the storage device comprising computer-executable instructions that, when executed by the processor, cause the computing device to perform the computer-implemented method of claim 1, wherein, optionally, the computing device is a mobile device comprising an optical sensor for obtaining the first image and/or the second image (paragraph 32).
Allowable Subject Matter
Claims 4, 5 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: In regard to claims 4 and 5, the prior art fails to teach or make obvious the first and second cost functions in combination with the claim’s other features.
In regard to claim 8, the prior art fails to teach or make obvious resizing and determining the frequency of features in combination with the claim’s other features.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH R HALEY whose telephone number is (571)272-0574. The examiner can normally be reached 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amr Awad can be reached on 571-272-7764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R HALEY/Primary Examiner, Art Unit 2623
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