www.uspto.gov
`
`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
`
`09/17/2020
`
`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
`CJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) 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*
`) © Claim(s) ___ is/are pending in the application.
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`1) Claim(s)__ is/are allowed.
`Claim(s) 1-7 is/are rejected.
`S)
`LJ Claim(s)__is/are objectedto.
`OO 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://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11)€2) 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:
`c)Z) None ofthe:
`b)(™) Some**
`a) All
`1.4) Certified copies of the priority documents have been received.
`2..) Certified copies of the priority documents have been received in Application No.
`3.1.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`4/3/2020;1/28/2020.
`
`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 20200909
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 2
`
`Notice of Pre-AlA or AIA 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.
`
`2.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`Claim Interpretation
`
`(f) Element in Claim for a Combination. — An element ina 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-AlA 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.
`
`3.
`
`The claims in this application are given their broadest reasonable interpretation using
`
`the plain meaning of the claim languagein 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-AlA 35 U.S.C. 112, sixth paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection |, claim limitations that meet the following
`
`three-prongtest will be interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112,sixth
`
`paragraph:
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 3
`
`(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 languagecreatesa
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
`
`interpreted under 35 U.S.C. 112(f) or pre-AlA 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-AlA 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-AlA 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-AlA 35 U.S.C. 112, sixth paragraph, except as
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 4
`
`otherwiseindicated 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.
`
`4.
`
`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-AlA 35 U.S.C. 112,
`
`sixth paragraph, becausethe 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:
`
`“status signal outputter” in claims 1-7.
`
`Becausethis/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
`
`pre-AlA 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-AlA 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-AlA
`
`35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 103
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 5
`
`5.
`
`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.
`
`6.
`
`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 obviousnessor
`
`nonobviousness.
`
`7.
`
`Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Wills (Pub
`
`20150317464) in view of Kawamae (Pub 20190163964).
`
`Regarding claim 1, Wills (Pub
`
`N O150 a 1 ~J
`
`464
`
`\
`}
`
`Fare bona
`GALS Ke AYO
`
`selective infrared filtering for imaging based user
`
`authentication and visible light imaging comprising
`
`oy
`a personal authentication device {(10G fig 1} comprising:
`
`an infrared ray emitter that emits infrared rays,
`
`‘
`(114 fig
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 6
`
`an infrared camera that captures an infrared image,
`
`(112
`
` rt b W fF+
`
`a status signal cutputter
`
`that outputs & signal related to
`
`
`
`surroundings of
`
`based on user presence and the like Para.
`
`[0030] 20150317464);
`
`
`
`and a controller, wherein the controller
`
`
`
`or not there is a predetermined change in the status of the
`
`personal
`
`
`ication device or the status of the surrour
`
`
`
`
`
`output
`
`
`of the personal authentication device based on a
`
`
` From the status signal cutputter, and when there is the
`
`emither and the infrared camera, and face authentication process
`
` captures by the camera,
`
`
`(Par.
`
`[OO30]
`
`predetermined change l.e. authentication evenh and drive i.e.
`
`switching to TR mode}.
`
`However,
`
`@& three- dimensional face authentication process
`
`based on ced image capt by the infrared
`
`
`
`
`
`In @ Simiiar field of andeavor, Kawamae
`
`discloses imaging
`
`apparatus and
`
`
`
`system compri
`
`
`
`
`
`y the infrared camera,
`
`(Para.
`
`[OL94i[O2001). Therefore, Lt
`
`
`
`
`
`predetermined change,
`
`
`the controller drives the in
`
`
`
`
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 7
`
`would have been obvious to one of ordinary skiil in the art
` + eo
`
`Naroar
`at tL
`
`
`e the effective filing date of the invention to modify
`
`
`Wills by incoroorating the teachings of Kawamae
`
`
`
`for the common
`
`purpose of accurately and easily detecting
`
`Au C
`
`oO
`
`9. ny a LL wo
`
`and
`
`
`
`8.
`
`Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wills in view of
`
`Kawamae in view of Lee (Pub 20180032815).
`
`Regarding claim 2, Wills discloses an infrared ray emitter and an infrared camera, see
`
`claim 1. However, stopping driving the infrared ray camera and the infrared camera is not
`
`explicitly disclosed.
`
`Ina similar field of endeavor, Lee discloses electronic device and methodfor iris
`
`authentication thereof comprising wherein the controller stops driving the
`ee
`infrared ray emitter and the infrared camera when the three-
`
`dimensional face authentication is not successful even after a
`
`predetermined time elapses since the infrared ray emitter and
`
`the infrared camera are driven, Lee electronic device and method
`
`
`
`for iris authentication thereof,
`
`
`{320-3
`FIG 3). Therefore, Lt
`
`would have been obvious to one of ordinary skiil in the art
`
`
`before the effective Filing date of
`
`ke
`the invention to mooir
`
`mo
`
`
`
`
`Wills oy incorporating the teachings of Lee for the common
`
`purpose of conserving device power consumption.
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 8
`
`9.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wills in view of
`
`Kawamae in view of Lee in view of Watanabe (Pub 20140211078).
`
`Regarding claim 3, Wills discloses an infrared ray emitter and an infrared camera, see
`
`claim 1. However, stopping driving the infrared ray camera and the infrared camera is not
`
`explicitly disclosed.
`
`Ina similar field of endeavor, Watanabediscloses image pickup module wherein the
`
`w
`controller stops driving the infrared ray emitter and the
`
`
`infrared camera when a temperature
`
` ©
`
`fo a predetermined part of a2
`
`device 1S equal
`
`to a predetermined temperature or higher,
`
`(Para.
`
`QCbL?
`
`PWM drive i.e. with on/off periods}. Therefore, it woulsAa.
`
`
`have been obvious to one of ordinary skiil
`
`
`
` y Wilis by
`
`effective
`filing date of the invention to modil
`
`in the art be my O by
`
`
`a
`
`hehe
`
`incorporating the teachings of Watanabe for the common purpose
`
`
`of ailowing proper control and optimum operation of the image
`
`pickup device when Lh reaches a certain temperature.
`
`10.
`
`Claims 4 - 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wills in view of
`
`Kawamae 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.
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 9
`
`Ina similar field of endeavor, Matsuoka discloses login to a computing device based on
`
`facialrecognition comprising wherein the status signal outputter is a
`
`4a
`visiole iight camera that periodicaliy captures a visible Light
`
` ined change is that content of the
`
` ble Light
`
`image captured by the visible Light camera changes
`
`Dy a predetermined extent with respect to content of a previous
`
`captured visibie light image,
`
`tcol.
`
`4 Lines 42-62). Therefore,
`
`it would have been obvious to one of ordinary skill
`
`4 £455
`ip,
`3
`+
`tans
`;
`be AF
`Dany
`Li,»
`omes Meee
`FG
`
`
`
`oefore the effective Filing date of
`the invention toa modify
`
`
`Wiils by incorporating the teachings 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, a
`
`predetermined changeis not disclosed.
`
`Ina similar field of endeavor, Matsuoka discloses wherein the status signal
`
`oubkputter iS a visible Light camera that captures a visible
`
`light image,
`
`the controller pverforms face detection process on
`
`the visible Light
`
`image captured by the visible Light camera,
`
`and the predetermined change is that a face is detected in the
`
`= C cn FE oOO.
`
`gy oS a4“ a eetQO D O He
`
`oO or x) FE o cS
`
`f
`
`ct C
`
`OD 3 a O ordinary skill
`
`
`in the art
`
`
`
`Fective Filing date of
`
`the invention
`
`
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 10
`
`Wilils oy incorporating the teachings of Matsuoka for the common
`
`purpose of determining whether to perform authentication.
`
`Regarding ciaim 6, Wills discloses a status signal outputter, see claim 1.
`
`However, a proximity sensor is not disclosed.
`
`In a similarfield of endeavor, Matsuoka discloses wherein the status signal
`
`outputter iS a proximity sensor that detects that an ocoject
`
`Kai
`aperoaches within a predetermined range, and the predetermined
`
`
`
`
`change is that the proximity sensor detects that the object
`
`approaches within the predetermined range,
`
`(i117 fig i}.
`
`Therefore, it would have been obvious to one of ordinary skill
`
`
`an the art before the effective filing date of the invention to
`
`modify Willis by incorporating the teachings of Matsuoka for the
`
`
`
`common purcose of determining whether to perform
`
`aubhenticabtion.
`
`11.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Wills in view of
`
`Kawamae in view of Braun (U.S. 7530143}.
`
`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.
`
`Ina 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 ocutputter is an
`
`,¥
`ye Foe
`RN sy Be pee fet aay
`arc pees
`oa qe
`input device that accepts a user's ur operation, and the
`
`predetermined change is that the input cperation is performed on
`
`Rae inet clecdse
`Che input device,
`
`sr
`rend
`ok
`wrsitiod
`ke Ne 4
`ey
`pate fap 2
`
`(s36 fig 3). Therefore, it would have been
`
`
`Obvious to one of ordinary skill in the art before the effective
`
`filing date of
`
`the invention to medify Wilis by incorporating
`
`the teachings of Braun for the common purpose of providing
`
` henhication means before a user is granted
`
` (Lom Loa access 8 device.
`
`Conclusion
`
`12.
`
`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 interviewsare available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request(AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/774,218
`Art Unit: 2422
`
`Page 12
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Jefferey Harold can be reached on 571-272-7519. The fax phone number for the
`
`organization wherethis 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 more information about the PAIR
`
`system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access
`
`to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
`
`free). If you would like assistance from a USPTO Customer Service Representative or access to
`
`the automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`HUMAM M. SATTI
`
`Examiner
`
`Art Unit 2422
`
`/JEFFEREY F HAROLD/
`Supervisory Patent Examiner, Art Unit 2422
`
`