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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/774,218
`
`01/28/2020
`
`Yusaku NAKAMURA
`
`AOYA.10PUSO1ICON
`
`8772
`
`MARKD. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`ISTH FLOOR
`
`CLEVELAND, OH 44115
`
`SATTI, HUMAM M
`
`2422
`
`05/18/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`ipdocket @rennerotto.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/774,218
`Examiner
`HUMAM M SATTI
`
`Applicant(s)
`NAKAMURAetal.
`Art Unit
`AIA (FITF) Status
`2422
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1)C) Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3)0) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-7 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)C2 The specification is objected to by the Examiner.
`11)C) The drawing(s) filed on
`is/are: a)(] accepted or b)(_) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12).) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)1 Some**
`a)D All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210424
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 2
`
`Notice of Pre-AlA orAIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Response to Arguments
`
`2.
`
`Applicant’s arguments, see pages4-8, filed 1/12/2021, with respect to claims 2
`
`and 3 have been fully considered and are persuasive. The rejection of claims 2 and 3
`
`has been withdrawn. Applicant's argumentsfiled 1/12/2021 with respect to the
`
`rejection of claim 1 has been fully considered but it is not persuasive. On pages 5 — 6,
`
`Applicant(s) argue that Wills fails to disclose stopping the infrared illumination and
`
`camera operation and consequently does not teach starting the illumination and image
`
`capturing. Moreover, since Will fails to disclose stopping the illumination and camera,
`
`then the illumination and image capturing are indefinitely on since a user is simply
`
`denied access when authentication fails.
`
`However, examiner respectfully disagrees. To begin with, claim 1 currently recites
`
`a controller that “starts” to drive the emitter and camera and a recitation of “stop” the
`
`emitter and camera is absent from claim 1. Secondly,it is well known and customary to
`
`turn off components such as emitters, cameras, screens, etc... to conserve battery
`
`power and prevent device overheating. Therefore, the indefinite or continuous
`
`operation of the emitter and the camerais invalid. Thirdly, examiner notes that Wills
`
`drives or starts to drive the emitter and the camera based on different criteria or
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 3
`
`conditions such as trigger based on user presenceor user input which is in turn based
`
`on change ofstatus of operation of the authentication device as claimed, (see Fig 3, Fig
`
`4; Para. [0030][. Therefore, the rejection of the claimed limitation of having a controller
`
`to start to drive the emitter and the camera is maintained.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`1.
`
`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 ordinaryskill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`4.
`
`Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Wills (Pub
`
`20150317464) in view of Shear et al (U.S. 9721086).
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 4
`
`Regarding claim 1, Wills (Pub 20150317464
`
`selective infrared filtering for imag:
`
` imaging comprising:
`
`
`a versonal authentication device {
`
`comprising:
`
`am int that emits infrared rays,
`
`(114
`
`mh iu. QO
`
`Land
`
`™~
`
`ory
`mn infrared camera that captures an infrarec’ image
`
`(112 fig 1) No
`
`ae le te
`a status signal outcutter that outputs a signal related
`
`fo @ Status of authentication device or a4
`
`
`status of surroundings of the personal authent
`
`
`
`device,
`
`(hrigger based on user cresence and the like Para.
`
`
`[OO03Gi, see controller 302 signaling 334 to controlier 314
`
`£o capture images and
`
`IR
`
`
`
`2aSEG on user
`
`input,
`
`i
`user presence, etc Fig.3}
`
`and a rteeller fconti
`
`wherein the whether
`
`goredetermined change in the status of the personal
`
`“a
`-
`PER
`lestpaocies
`at Ne
`ayes
`
`authentication cevice (the PLrOcessat
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`
`operation of the user device 190 in order to detect a user
`
`authentication event, paragraphs OQO32-37; Fig.4, Steps 404-
`
`420)
`
`or,
`
`the status of the surround:
`
`of the personal
`
`authentication device based on @ Signal cutput
`
`
`from the
`
`it
`status Signal cutputter, and when
`
`20
`ther 2 is the
`
`oredetermined change,
`
`
`the controller dri
`
`=16
`
` Me &
`
`an
`rand the infrared camera
`
`authenticat is
`
`
`orocess based on the
`
`r cyao
` age caphur
`
`py the camera,
`
`(see Fig 4 and fig 5
`
`POS],
`
`see
`
`controile
`
`eapturi
`
`ng
`
`~
`me ama
`A AACASE
`
`illumination based on authent
`
`ication
`
`event,
`
`iysuch
`
`ag
`
`wa
`
`Mm
`
`instruction and/or detecting
`
`However, starting te drive an
`
`tter 1
`
`and a@ camers and
`
`63
`a
`three- Gimensional
`
`face authent
`
`Lo
`Pcation
`
`on85
`process based on
`
`the infrared image captured by
`
`the
`
`infrared camera are not
`
`explicitly
`
`oi
`
`sclo
`
`aanwe *
`
`In @ Similar field of endeavor,
`
`Shear Giscicses methods
`
`and systems for secure and reliable
`orKe mputing
`
`ad
`
`Mmorising starting te dar
`
`identity
`
`ive
`
`an
`
`amitter and
`
`oy
`ao
`
`camera,
`
`(step 1
`
`step 3 Fig 4) and
`
`a three
`
` dimens:
`
`face authentication process based
`
`on
`
`the infrared image
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`wee
`<4
`ane od
`Fog oan ey
`4
`oy ey
`wane ch
`obser
`captured by the infrared camera,
`
`/
`fool. 36 line 64).
`
`Page 6
`
`Therefore, it would have been obvious to one of ordinary
`
`Skill
`
`
`in the art before the effective filing date of the
`
`invention to modify Wills by incorporating the teachings of
`
`Shear for the common purpose of accurately identifying a
`,
`Ying
`
`5.
`
`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wills in view
`
`of Shear in viewof Zhao (Pub 20170154205).
`
`Regarding claim 2, Wills discloses an infrared ray emitter and an infrared camera,
`
`see
`
`claim 1; Shear discloses 3D authentication, see also claim 1. However, stopping driving
`
`the ray camera and the camerais not explicitly disclosed.
`
`In a similar field of endeavor, Zhao discloses method and apparatus for closing a
`
`terminal comprising wherein the controller stops driving the
`
`ray emitter and the camera when the three-dimensional
`
`face authentication is nok successful even after 4
`
`¢
`hime e@lapses
`
`oH a 3 QO wD
`
`y
`
`@ -
`
`rarea ray
`
`emitter and the infrared camera are driven, Lee
`
`electronic device and method for iris authentication
`
`thereof,
`
`(Para.
`
`[0043] unsuccessful
`
`i.e.
`
`no presence,
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 7
`
`then close
`
`a
`
` fter timer reaches preset time). Therefore,
`
`
`
`
`it would nave been obvious to one of ordinary skill in
`
`the art before the effective filing date of the
`
`
`invention te modify Wilis by incorporating the
`
`C
`teachings of Zhao for the common purposfe Of conserving
`
`
`
`6.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wills in view
`
`of Shear in view of Zhao in view of Taniguchi (Pub 20060115120).
`
`Regarding claim 3, Wills discloses an infrared ray emitter and an infrared camera
`
`while
`
`Shear discloses 3D authentication, see claim 1. However, stopping driving the ray
`
`camera and the camera based on temperatureis not explicitly disclosed.
`
`In a similar field of endeavor, Taniguchi discloses vehicle surrounding monitoring
`
`appratus wierein the controller stops driving the infrared ray
`
`emitter and the infrared camera when a temperature of a
`
`predetermined part of a device is equal
`
`to a predetermined
`
`J63. Therefore,
`
`it would nave
`
`KAN AS.
`oeen obvious te one of ordinary skili an the art berore the
`
`
`
`fective filing date of the invention to modify Wiiis
`
`oy
`
`Sy
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 8
`
`ae
`
`incorporating the teachings of Tanigucni for the common
`
`curpose of allowing proper control and optimum cperation of
`
`the image pickup device when it reaches & certain
`
`temperature.
`
`7.
`
`Claims 4 - 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wills in
`
`view of Shear in view of Matsuoka (U.S. 8261090).
`
`Regarding claim 4, Wills discloses a status signal outputter, see claim 1. However,
`
`periodically capturing a visible light and a predetermined changeare not disclosed.
`
`In a similar field of endeavor, Matsuoka discloses login to a computing device
`
`based on
`
`facialrecognition comprising wnerein the status signal cutoutter is a
`
`visible light camera light image, and the
`
`of the visibie light image captured by the visible light
`
`camera changes by a predetermined extent with respect
`
`te
`
`content of A previous captured visible light
`
`image,
`
`\
`tee hid doe
`(col.
`
`4
`
`lines 42-62). Therefore,
`
`it would have been obvious to one
`
`a
`
`of ordinary skill in the art before the effective filing
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 9
`
`
`
`date of the invention te modify Wilis by incorporating the
`
`ceachings of Matsuoka for the common purpose of determining
`
`whether to perform authentication.
`
`Regarding claim 5, Wills discloses a status signal outputter, see claim 1. However,
`
`predetermined changeis not disclosed.
`
`Ina similar field of endeavor, Matsuoka discloses wherein the status
`
`signal
`
`wo
`outputter 1s & visible light camera that captures a vis
`
`ou Le m
`
`light image,
`
`the controller performs
`
`face detection process
`
`on the visible light image captured by the visible iLignt
`
`camera, and the predetermined change is that 8 face is
`
`detected in the face detection crocess,
`
`(col.
`
`4
`
`lines 42-
`
`62
`
`.
`
`therefore, it would have been obvious
`4
`4
`
`to one of
`
`ordinary
`
`ia
`
`i 5
`
`~! tb
`
`ou rs
`
`¢ o oO o OD
`
`the effective filing date
`
`of the invention to modify Wills by incorporating the
`
`
`
`mheachings of Matsuoka for the common purcose of cetermining
`
`
`whether to perform authentication.
`
`Regarding claim 6, Wills discloses a status signal outputter, see claim 1.
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`However, a proximity sensor is not disclosed.
`
`Page 10
`
`In a similar field of endeavor, Matsuoka discloses wnerein the staty
`
`Signal outputter is 4 proximity sensor that detect
`
`object acoroaches within a predetermined range, and the
`
`oredetermined change is that
`
`the proximity sensor
`
`(Li? fig 1). Therefore, it would have been obvious to one
`
`
`Of ordinary skill in the art before the
`effective Filing
`
`date of the invention to modify Willis by incorporating the
`
`heachings of Matsuoka for the common purcose of determining
`
`whether to perform authentication.
`
`8.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Wills in view
`
`of Shear in view of Braun (U.S. 7530113).
`
`Regarding claim 7, Wills discloses a status signal outputter, see claim 1. However,
`
`an
`
`input device that accepts a user’s operation as a status outputter is not disclosed.
`
`In a similar field of endeavor, Braun discloses security system method for
`
`industrial
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 11
`
`automation system comprising wherein the status signal outputter is
`
`os
`“ry
`feey an
`+e
`y
`4
`spamrnbe
`de NUNS 4
`oy
`dy
`te
`joes “ayer
`~
`QT, AI pur Gevice Tt hat secepts aouser'’s i NUL Operation, ena
`A
`whe eo
`A
`
`bet ms re
`
`ct
`
`Oo oO
`
`BD ct La w) 2
`
`fa
`the predetermined change is
`
`ct uy oy ct
`
`t
`
`D
`
`as >) Mh ey ADpyaeSap aye be ary ey es ‘ + : ey fo ac 2
`
`
`
`
`
`
`
`
`cerformed on the tnput cevice,
`(s36 fig 3). Therefore, it
`
`would have been obvious to one of
`
`
`o
`before the effective filing date of the invention ho modiitv¥
`
`
`
`
`Wilis by incorporating the teachings of Braun for the
`
`
`or
`common purpose of providing accessing or authentication
`
`means before a user is granted authorization to access a
`
`a CAVITE
`MeEevice.
`
`Conclusion
`
`9.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to HJMAM M SATTI whosetelephone number is (571)270-
`
`1709. The examiner can normally be reached on Mon-Fri.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 12
`
`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, John Miller can be reached on (571)272-7353. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR. Status
`
`information for unpublished applications is available through Private PAIR only. For
`
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`1000.
`
`HUMAM M. SATTI
`
`Examiner
`
`Art Unit 2422
`
`/PAULOS M NATNAEL/
`Primary Examiner, Art Unit 2422
`
`