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`, __ _____., .......... ·-:·· ... ·----- .. - ,.
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`APPLICATION NO.
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`FILING DATE
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`UNITED STATES ... c:!PARTMENT OF COMMERCE
`Patent and Trademark Office
`Addreea: COMMISSIONER OF PATENTS AND TRADEMARKS
`Washington, O.C. 20231
`
`FIRST NAMED INVENTOR
`
`ATTORNEY· DOCKET NO.·
`
`.i I
`
`EXAMINER
`Hu.r,,.L
`
`'ART UNIT
`
`A\PER . NUMBER
`
`DATE MAILED:
`
`Please find below and/or attached an Office communication concerning this appllcatlon or
`proceeding.
`·
`
`COmmluloner of. Patents ind Tl'ldt~s
`
`PTO·eOO (Rev. 2/911)
`
`1· File Copy
`
`IPR2017-00430
`UNIFIED EX1025
`
`

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`Application No.
`
`Appllcant(s)
`
`Office Action Summary
`
`Examiner
`
`Group Art Unit
`
`-The MAILING DATE of this communication appears on the cover sheet beneath the correspondence addf9Ss-
`
`Period for Response
`
`A SHORTENED STATUTOR'( PERIOD FOR RESPONSE IS SET TO EXPIRE -t:l..U£=-MONTH(S) FROM THE
`MAILING DATE Of THIS COMMUNICATION.
`
`• Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a response be timely filed after SIX (6) MONTHS
`from the mailing date of this communication.
`• If the period for·response specified above is less lhan thirty (30) days, a response within ihe statutory minimum of thirty (30) days Will be considered timely.
`• If NO period for response Is specified above, such period shall, by default, expire SIX (6) MONTHS from the mailing date of this communication .
`· Failure to respond within the set or extended period for response will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`
`Status
`
`~sponslve to communlcation(s) filed on _
`
`Q
`.... O._.J __ ~-'-__..·.__"""g-+'--'--l ..... 1~<'/'-t>l~'---''-------------
`
`7
`
`O This action is FINAL.
`0 Since this application Is in condition for allowance except for formal matters, prosecution aa to the merits Is closed in
`accordance with the practice under Ex parte Quayle, 1935 C.D. 1 1; 453 O.G. 213.
`
`..,
`Dlapos.!9on of Claims
`:J tJ
`~laim(s)
`I -
`Of the above claim(s)- -- - - - -- - - - - -- --
`
`is/are pending In the application.
`
`-
`
`- - - - - is/are withdrawn from consideration.
`
`o c1a1m(s)---- -- -- - - - -- - - - -- - - - -- - - - is/ar~;rwed4
`'t7 11; I 7) .J 1--.) 3 /) 2 g) zf?> 3~s/~re rejec~d. -~b
`I Y..)
`o Claim(s)
`{1 1 ;
`~I 7 a:...A,. I?>
`-
`-- is/are objected to.
`0 Clalm(s)
`z.o
`!"'., 1q ,?.l- '2J a. ... el .~·1
`.<.; 71 ~r · ; 4
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`• -z,~_j .J...e,A o · );tare sub1ect to restriction or election
`13" Claim(s)
`/
`)
`/
`requirement.
`/
`
`Application Papers
`
`0 See the attached Notice of Draftsperson's Patent Drawing Review, PT0-948.
`O The proposed drawing correction, filed on.__
`is LI approved CJ disapproved.
`0 The drawlng(s) filed on
`is/are objected to by the Examiner.
`0 The specification is objected to by the Examiner.
`0 The oath or declaration is objected to by the Examiner.
`
`Priority under 35U.S.C.§119 (a)·(d)
`
`0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 11 9(a)·(d).
`Ll All 0 Some• 0 None of the CERTIFIED copies of the priority documents have been ·
`0 received.
`0 received in Appllcatlon No. (Series Code/Serial Number) ____ .. ,,. ___ ______ _ _
`0 received in this national stage application from the International Bureau (PCT Rule 1 7.2(a)).
`
`*Certified copies not received: _ __________ __ ... _ ___________ _ _
`, S-- ,~ d
`·
`Attach,ent(a)
`~formation Disclosure Statement(s), PT0-1449, Paper No(s ). -~--..... _
`( D Interview Summary, PT0-413
`. ~otlce of References Cited, PT0-892
`0 Notice of Informal Patent Application, PT0· 152
`0 Other ____________ _ _
`O Notice of Draftsperson's Patent Drawing Review, PT0-948
`
`U. S. Patent and Trademark·Otf1ce
`PT0-326 (Riv. 3.971
`
`Office Action Summary
`
`-U.S. GPO: 1997-41'f·381/62710
`
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`Appllcation/Control Number: 08/869,305
`Art Unit: 2785
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`Page 2
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`This application contains claims directed to the following patentably distinct species of the
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`claimed invention: first. second. third. fourth species of target means.
`
`Applicant is required under 35 U.S.C. 121 to elect a single ctisclosed species for prosecution on
`
`the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
`
`Currently, lhe target means is generic.
`
`Appl.icant is advised that a response to this requirement must include an identification of the
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`species that is elected consonant with this requirement, and a listing of all claims readable thereon,
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`including any claims subsequently added. An argument that 'a claim is allowable or that all claims are
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`generic is considered nonresponsive unless accompanied by an election.
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`Upon the allowance of a generic claim, applicant will be entitled to consiQeration of claims to
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`additional species which are written in dependent fonn or othenvise include all the limitations of an
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`allowed generic claim as provided by 37 CPR 1.141. If claims are added after the election, applicant
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`must inclicate which are readable upon the elected species. MPEP § 809.02(a).
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`Should applicant traverse on the ground that the species are not patentably distinct, applicant
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`should submit evidence or identify such evidence now of record showin2 the species to be obvious
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`variants or clearly admit on the record that this is tbe case. In either instance, if the examiner finds one of
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`the inventions unpatentable over the prior art , the evidence or admission may be used in a rejection
`
`under 35 U.S.C. 103(a) of the other invention.
`
`2.
`
`Dur~ng a telephone conversation with Mr. Vavid R. Graham (Reg. No. 36160) on November
`
`6, 1998, a provisional election was made with traverse to prosecute the invention of the first species,
`
`claims 1, 4, 6, 7, 8, 11, 13, 14, 17, 24-26, 28, 29, 30, 31 and 32. Affinnation of this election must be
`
`made by applicant in responding to this Office action. Claims 2, 3, 5, 20, 9, 10, 12, 15, 16, 18, 19-20, 21-
`
`

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`Application/Control Number~ 08/869,305
`Art Unit: 2785
`
`Page 3
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`23 and 27 are withdrawn from further consideration by the examiner, 3 7 CPR 1.142(b), as being drawn to
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`a non-elected invention.
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`3.
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`Applicant is reminded that upon the canceUation of claims to a non-elected invention, the
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`iuventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named
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`inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of
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`inventorship must be accompanied by a diligently-filed peti~ion under 37 CFR 1.48(b) and by the fee
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`required under 37 CFR l.17(h).
`
`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S .C. 102 that fonn the basis
`
`for the rejections under this section made in this Office action:
`
`A person sba.11 be entitled to a patent unless -·
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`(e) the invention was described in a patent granted on an application for patent hy another filed in the United States before
`the invention thereof by che applicant for parenr, or on an international application hy another who has fulfilled the
`requirements of paragraphs (1), (2), and (4) of section 371 (c) of this tille before lhe invention thereof by lhe applicant for
`patent.
`
`5.
`
`Claims 24-26 are rejected under 35 U.S.C. 102(e) as being anticipated by Novis et al (5,770,849
`
`hereinafter Novis).
`
`a.
`
`As per claim 24:
`
`Novis teaches a peripheral device [10]. comprising:
`
`(1)
`
`security means [86] fur ensbl:int one er mere seettrity 6l'ertttio1~~ t6 be
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`performed en aats ;
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`(2)
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`a biometric device rl4 (col. 3, lines 36-44; col. 9, lines 28-3G]tfor
`
`reeeh·isg i:F<fffit dttttt retttt•rl:it1t a f'hysieal eharaeteristie ef a riersefl: b!t8ed
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`ttpefl: ft physiea:l i:itteraettett of the f'ersen with the peripheral devi:ce;
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`Application/Control Numbe.r: 08/869,305
`An Unit: 2785
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`Page 4
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`(3)
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`means 1.161 for enablin~ communication between
`
`(a)
`
`(h)
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`the security means [86] and
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`the biometric device [14),
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`(which communication is for transferring captured user characteristic
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`from biometric 14 to the security means 86 for authentication thereat
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`(col. 9, tines 26-37] ; and
`
`(4)
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`means [95) for enabling communication with a host computing device
`
`[96].
`
`b.
`
`As per claim 25 or 26:
`
`Novis teaches that his biometric device comprises either:
`
`(1)
`
`a fingerprint scanning device [in order to input biometric identifier such
`
`as a finger print (col. 3, lines 37-40)] or
`
`(2)
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`a retinal scannin.11: device [in order to input biometric identifier such as a ·
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`retinal scan (col. 3, lines 37-40)).
`
`6.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`(a) A patem may not be obtainw though the invention is not identically disclosed or describe{{ as set forth in seclion 102 of
`this title, if the diffcrenetis between the subject matter sought to be patented nnd the prior art are such thal the ~ubject matter
`as a whole would have been obvious at the time the invention was made to a person having ordinary skill in lhe on lo which
`said subject m11tter pertains. Patentability shall not be negatived by the manner in which the invenlion was made.
`
`7.
`
`This applicatfon currently nam~s joint inventors. In considering patentability of the claims under
`
`35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly
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`owned at the time any inventions covered therein were made absent any evidence to the contrnry.
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`Application/Control Number: 08/869,305
`Art Unit: 2785
`
`Page 5
`
`Applicant is advised of the obligation under 37 CPR 1.56 to point out the inventor and invention dates of
`
`each claim that was not commonly owned at the time a later invention was made in order for the
`
`examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. l02(t) or (g) prior art
`
`under 35 :U.S.C. 103(a).
`
`8.
`
`Claims 1, 8, and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Novis et al
`
`(5,770,849 her
`
`a.
`
`As uer claims 1. 8. and T4:
`
`i.
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`Novis teaches a periphernl device , comprising:
`
`(1)
`
`security means [861 for enabling one or more security operations to be
`
`perfoimed on data;
`
`(2)
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`tarl!et means [14 (col. 3, lines 36-44, col. 9, lines 28-30) for capturing
`
`biometric input] for enabling a defined interaction with a host computing
`
`device;
`
`(3)
`
`means [16] for enabling communication between
`
`(a)
`
`(b)
`
`the securjty means and
`
`the tarj,!et means ,
`
`[which communication is for transferring captured user characteristic
`
`from biometric 14 to the security means 86 for authentication thereat
`
`(col. 9, Iines 26-37];
`
`(4)
`
`means [95) for enabling corrununication with a host computing device
`
`[96].
`
`ii.
`
`Applican 't s admitted prior art teaches:
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`Application/Control Number: 08/869 ,305
`Art Unit: 2785
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`Page 6
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`(a)
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`[either] the security means (86] and/or the target means (14) to
`
`(b)
`the host computing device [96]
`inHces···oos~i~!~itinstro~fonHfrornJne:n~sr:~om urin··::~e!liice .
`............ P. ........................................................................................ !P. ........ i ........... ..
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`iii.
`
`It would have been obvious to a person of ordinary skill in the art at the time the
`
`invention was made to maitain, (even when the security device 203 and the target
`
`device 202 of applican 't admitted art are implemented in a single unit), the
`
`(a)
`
`[either] the security .means (86] and/or the target means (14) to
`
`the host computing device [96]
`(b)
`mllies'· b.llSei~foiiitiifinstroC:tioll!f-!~im:m~mnst:~om··:··nn··:rn1e.vwe .
`........... P ............................................................................... ~ ..... IL ........... .
`
`iv.
`
`This is because the admitted prior works fine.
`
`b.
`
`As per claim 4. 11 or 17:
`
`Novis teaches that his target means 14 comprises a biometric device [col. 3, lines
`
`41-44].
`
`c.
`
`As n~r claims 32 and 31 :
`
`These claims do not teach or cover more than those which are covered by claims
`
`l, 8 and 14 and thus are similarly rejected with the same rationale applied
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`thereto.
`
`d.
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`Asner !aims 28. 29 and 30:
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`Application/Control Number: 08/869 ,305
`Art Unit: 2785
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`()
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`Page 7
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`Using th.e above rejected claims 1, 8 and 14 with a host computer device would
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`have been obvious to a person of ordinary skill in the art-. This is because
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`peripheral devices are to be use with host device.
`
`9.
`
`Claims 6, 7, and 13 are objected to as they depend on rejected claims.
`
`10.
`
`The prior an made of record and not relied upon is considered pertinent to applicant's disclosure.
`
`11.
`
`Any response to this action should be mailed to:
`
`Commissioner of Patents and Trademarks
`Washington, D.C. 20231
`
`or faxed to:
`
`. ;
`
`(703) 308-9051, (for formal communications intended for entry)
`
`Or:
`
`(703)305-9724 (for informal or draft communications, please label
`"PROPOSED" or "DRAFT")
`.
`
`Hand-delivered responses should be brought to Crystal Park Il, 2121 Crystal Drive,
`Arlini!ton. VA., Sixth Floor (Receptionist).
`
`Any inquiry concerning this conununication or earlier communications from the examiner should
`12.
`be directed to Examiner Ly Hua whose telephone number is (703) 305-9684. The examiner can normally
`be reached on Monday to Friday from 9:30 AM to 6:00 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor. Mr. Robert
`W. Beausoliel, Jr., can be reached on (703) 305-9713. The fax phone number for this Group is (703)
`305-9724.
`
`Any inquiry of a general nature or relating to the status of this appJication or proceeding should be
`directed to the Group receptionist whose telephone number .is (703) 305.-390~1
`J~~~lcL-L---·-·
`.
`LYV . HUA
`PATENT EXAMINER
`ART UNIT 2785
`
`L. Hua
`November 20, ·1998