PATENT COOPERATION TREATY
`
`PCT/U52018’049289
`
`ADVANCE E-MAIL
`
`From the INTERNATIONAL BUREAU
`
`PCT
`
`NOTIFICATION CONCERNING
`TRANSMITTAL OF COPY OF INTERNATIONAL
`PRELIMINARY REPORT ON PATENTABILITY
`
`
`
`
`(CHAPTER I OF THE PATENT COOPERATION
`HO, Brian 3-
`
`TREATY)
`Dentons US LLP
`.
`P.O. BOX 061080
`
`(PCT R1119 44b15'1(c))
`Wacker Drive Station, Willis Tower
`
`Chicago, Illinois 60606
`
`Date of mailing (day/month/yeafl
`ETATS-UNIS D'AMERIQUE
`
`19 March 2020 (19.03.2020)
`
`Applicant's or agent's file reference
`
`
`IMPORTANT NOTICE
`P34564W02
`
`
`
`
`International application No.
`International filing date (day/month/year)
`Priority date (day/month/year)
`
`
`
`
`
`PCT/U82018/049289
`01 September 2018 (01.09.2018)
`09 September 2017 (09.09.2017)
`
`Applicant
`
`
`APPLE INC.
`
`
`The International Bureau transmits herewith a COpy Of
`Cooperation Treaty)
`
`the international preliminary report on patentability (Chapter I Of
`
`the Patent
`
`Athina Nickitas-Etienne
`
`The International Bureau of WIPO
`34, ehemin des Colomhettes
`1211 Geneva 20, Switzerland
`
`Authorized Officer
`
`Facsimile No. +41 22 338 82 70
`
`Porm PCT/115826 (January 2004)
`
`e-mail: pet.team4@wip0.int
`
`

`

`PATENT COOPERATION TREATY
`
`PCT
`
`INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY
`
`(Chapter I of the Patent Cooperation Treaty)
`
`(PCT Rule 44bis)
`
`Applicant’s or agent’s file reference
`P34564W02
`
`FOR FURTHER ACTION
`
`See item 4 below
`
`International filing date (day/month/year)
`International application No.
`01 September 2018 (01.09.2018)
`PCT/U82018/049289
`International Patent Classification (8th edition unless older edition indicated)
`See relevant information in Form PCT/ISA/237
`
`Priority date (day/month/year)
`09 September 2017 (09.09.2017)
`
`Applicant
`APPLE INC.
`
`This international preliminary report on patentability (Chapter I) is issued by the International Bureau on behalf of the
`International Searching Authority under Rule 44 bis.1(a).
`
`This REPORT consists of a total of 8 sheets, including this cover sheet.
`
`In the attached sheets, any reference to the written opinion of the International Searching Authority should be read as a
`reference to the international preliminary report on patentability (Chapter I) instead.
`
`This report contains indications relating to the following items:
`
`Box \0. I
`
`Basis of the report
`
`Box
`
`Box
`
`. II
`
`.
`
`
`
`
`
`Priority
`
`Non-establishment of opinion with regard to novelty, inventive step and industrial
`applicability
`
`Lack of unity of invention
`
`Reasoned statement under Article 35(2) with regard to novelty, inventive step or
`industrial applicability; citations and explanations supporting such statement
`
`Certain documents cited
`
`Certain defects in the international application
`
`Certain observations on the international application
`
`
`
`The International Bureau will communicate this report to designated Offices in accordance with Rules 44bis.3(c) and 93bis.1
`but not, except where the applicant makes an express request under Article 23(2), before the expiration of 30 months from
`the priority date (Rule 44bis .2).
`
`The International Bureau of WIPO
`34, chemin des Colombettes
`1211 Geneva 20, Switzerland
`Facsimile No. +41 22 338 82 70
`Form PCT/IB/373 (January 2004)
`
`Date of issuance of this report
`10 March 2020 (10.03.2020)
`Authorized officer
`
`Athlna NICKItaS—Etlenne
`e-mail: pct.team4@wipo.int
`
`

`

`PATENT COOPERATION TREATY
`
`From the
`INTERNATIONAL SEARCHING AUTHORITY
`
`To:
`
`PCT
`
`see form PCT/ISA/220
`
`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`(PCT Rule 43bis.1)
`
`
`
`
`Date of mailing
`see form PCT/ISA210 (second sheet)
`(day/monthyear)
`
`
`
`
`Applicant's or agent's file reference
`see form PCT/ISA/220
`
`FOR FURTHER ACTION
`See paragraph 2 below
`
`International application No.
`PCT/US2018/049289
`
`International filing date (day/inonthA/ear)
`01.09.2018
`
`Priority date (day/InonthA/ear)
`09.09.2017
`
`
`
`
`
`International Patent Classification (IPC) or both national classification and IPC
`INV. G06K9/00
`
`
`Applicant
`APPLE INC.
`
`This opinion contains indications relating to the following items:
`
`Box No.
`
`Box No.
`
`I
`
`II
`
`Basis of the opinion
`
`Priority
`
`EDIEIIIIZ Box No. V
`EDD Box No. V|l| Certain observations on the international application
`
`Box No.
`
`III
`
`Non-establishment of opinion with regard to novelty, inventive step and industrial applicability
`
`Box No. IV
`
`Box No. V|
`
`Lack of unity of invention
`Reasoned statement under Rule 43bis.1(a)(i) with regard to novelty, inventive step and industrial
`applicability; citations and explanations supporting such statement
`Certain documents cited
`
`Box No. V|I
`
`Certain defects in the international application
`
`FURTHER ACTION
`
`If a demand for international preliminary examination is made, this opinion will usually be considered to be a
`written opinion of the International Preliminary Examining Authority ("IPEA”) except that this does not apply where
`the applicant chooses an Authority other than this one to be the IPEA and the chosen IPEA has notifed the
`International Bureau under Rule 66.1 bis(b) that written opinions of this International Searching Authority
`will not be so considered.
`
`If this opinion is, as provided above, considered to be a written opinion of the IPEA, the applicant is invited to
`submit to the IPEA a written reply together, where appropriate, with amendments, before the expiration of 3 months
`from the date of mailing of Form PCT/ISA/220 or before the expiration of 22 months from the priority date,
`whichever expires later.
`
`For further options, see Form PCT/lSA/220.
`
` Name and mailing address of the ISA:
`
`
`
`
`Date of completion of
`this opinion
`see form
`PCT/'SA’ZIO
`
`Authorized Officer
`
`Meurisse, Wim
`Telephone No. +31 70 340-0
`
`\
`I
`45““ Pam-m,”
`g,
`.9;
`- 0 g
`)
`3=
`9':
`we
`”Dam: angio‘
`
`
`
`—
`9) European Patent Office
`)
`PB. 5818 Patentlaan 2
`_ NL-2280 HV Rijswijk - Pays Bas
`Tel. +31 70 340 - 2040
`Fax: +31 70 340 - 3016
`
`Form PCT/ISA/237 (Cover Sheet) (January 2015)
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US2018/049289
`
`Box No. | Basis of the opinion
`
`1. With regard to the language, this opinion has been established on the basis of:
`
`IZI
`
`III
`
`2.
`
`III
`
`3.
`
`III
`
`the international application in the language in which it was filed.
`
`a translation of the international application into , which is the language of a translation furnished for the
`purposes of international search (Rules 12.3(a) and 23.1 (b)).
`
`This opinion has been established taking into account the rectification of an obvious mistake authorized
`by or notified to this Authority under Rule 91 (Rule 43bis.1(a))
`
`With regard to any nucleotide and/or amino acid sequence disclosed in the international application, this
`opinion has been established on the basis of a sequence listing:
`
`a.
`
`III
`
`forming part of the international application as filed:
`
`III
`
`in the form of an Annex C/ST.25 text file.
`
`III on paper or in the form of an image file.
`
`b.
`
`III furnished together with the international application under PCT Rule 13ter.1(a) for the purposes of
`international search only in the form of an Annex C/ST.25 text file.
`
`0.
`
`III furnished subsequent to the international filing date for the purposes of international search only:
`
`III
`
`in the form of an Annex C/ST.25 text file (Rule 13ter.1(a)).
`
`III on paper or in the form of an image file (Rule 13fer.1 (b) and Administrative Instructions, Section
`713).
`
`4.
`
`III
`
`In addition, in the case that more than one version or copy of a sequence listing has been filed or furnished,
`the required statements that the information in the subsequent or additional copies is identical to that
`forming part of the application as filed or does not go beyond the application as filed, as appropriate, were
`furnished.
`
`5. Additional comments:
`
`Form PCT/ISA/237 (January 2015)
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US2018/049289
`
`Box No. Ill Non-establishment of opinion with regard to novelty, inventive step and industrial
`applicability
`
`The questions whether the claimed invention appears to be novel, to involve an inventive step (to be non
`obvious), or to be industrially applicable have not been examined in respect of
`
`III
`
`IZI
`
`the entire international application
`
`claims Nos. 21-488
`
`because:
`
`III
`
`IZI
`
`III
`
`IZI
`
`III
`
`the said international application, or the said claims Nos.
`not require an international search (specify):
`
`relate to the following subject matter which does
`
`the description, claims or drawings (indicate particular elements below) or said claims Nos. 21 -488 are so
`unclear that no meaningful opinion could be formed (specify):
`
`see separate sheet
`
`the claims, or said claims Nos. are so inadequately supported by the description that no meaningful opinion
`could be formed (specify):
`
`no international search report has been established for the whole application or for said claims Nos. 21-488
`
`a meaningful opinion could not be formed without the sequence listing; the applicant did not, within the
`prescribed time limit:
`
`El furnish a sequence listing in the form of an Annex ClST.25 text file, and such listing was not available
`to the International Searching Authority in the form and manner acceptable to it; or the sequence listing
`furnished did not comply with the standard provided for in Annex C of the Administrative Instructions.
`
`III furnish a sequence listing on paper or in the form of an image file complying with the standard provided
`for in Annex C of the Administrative Instructions, and such listing was not available to the International
`Searching Authority in the form and manner acceptable to it; or the sequence listing furnished did not
`comply with the standard provided for in Annex C of the Administrative Instructions.
`
`III pay the required late furnishing fee for the furnishing of a sequence listing in response to an
`invitation under Rule 13ter.1(a) or (b).
`
`IZI See Supplemental Box for further details
`
`Form PCT/ISA/237 (January 2015)
`
`

`

`WRITTEN OPINION OF THE
`INTERNATIONAL SEARCHING AUTHORITY
`
`International application No.
`PCT/US2018/049289
`
`Box No. V Reasoned statement under Rule 43bis.1(a)(i) with regard to novelty, inventive step or
`industrial applicability; citations and explanations supporting such statement
`
`1. Statement
`
`Novelty (N)
`
`Inventive step (IS)
`
`Industrial applicability (IA)
`
`2. Citations and explanations
`
`see separate sheet
`
`Yes: Claims
`No:
`Claims
`
`2—14
`1,15-20
`
`Yes: Claims
`No:
`Claims
`
`Yes: Claims
`No:
`Claims
`
`1-20
`
`1—20
`
`Box No. VIII Certain observations on the international application
`
`The following observations on the clarity of the claims, description, and drawings or on the question whether the
`claims are fully supported by the description, are made:
`
`see separate sheet
`
`Form PCT/ISA/237 (January 2015)
`
`

`

`WRITTEN OPINION OF THE
`
`INTERNATIONAL SEARCHING
`
`International application No.
`
`AUTHORITY (SEPARATE SHEET)
`
`PCT/U82018/O49289
`
`MM
`
`Non-establishment of opinion with regard to novelty, inventive step and
`
`industrial applicability
`
`In view of the (large) number of independent claims (16 sets of 7 independent claims)
`
`and also in view of the wording of the claims presently on file, which render it difficult,
`
`if not impossible, to determine the matter for which protection is sought, the present
`
`application fails to comply with the clarity and conciseness requirements of Article 6
`
`PCT (see also Rule 6.1 (a) PCT) to such an extent that a meaningful complete search
`
`is impossible.
`
`In the present case and prima facie, the claimed subject-matter is drafted in such a
`
`way that it simply precludes the complete detailed analysis necessary to come to a
`
`firm conclusion regarding to the essential technical features of the invention and also
`
`the unity of the present application.
`
`At least some of the independent claims differ from independent claim 1, in that they
`
`are drafted by means of removing features and/or adding features, thus lacking
`
`conciseness and clarity about the subject-matter to be searched. Prima facie, there
`
`also appears to be a complete lack of corresponding essential features which are
`
`defined in the 16 sets of 7 independent claims, since some sets of claims appear to
`
`define different unrelated aspects of the capturing of biometric information and other
`
`sets define different unrelated aspects of GUI specific interaction with applications.
`
`Consequently, the search has been carried out for those parts of the application
`
`which do appear to be clear (and concise), namely independent claims 1 and 15-20,
`
`and dependent claims 2—14.
`
`Re Item V
`
`Reasoned statement with regard to novelty, inventive step or industrial
`
`applicability; citations and explanations supporting such statement
`
`Reference is made to the following documents:
`
`D1
`
`D2
`
`EP 3 076 334 A1 (FUJITSU LTD [JP]) 5 October 2016 (2016-10—05)
`
`us 2016/294557 A1 (BALDWIN TAYLOR D [US] ET AL) 6 October 2016
`
`(2016-10-06)
`
`The present application does not meet the criteria of Article 33(2) PCT, because the
`
`subject-matter of claim 1
`
`is not new.
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 1) (EPO-April 2005)
`
`

`

`WRITTEN OPINION OF THE
`
`INTERNATIONAL SEARCHING
`
`International application No.
`
`AUTHORITY (SEPARATE SHEET)
`
`PCT/U82018/O49289
`
`In view of the clarity objections elaborated in Item Vlll features of "error condition" and
`
`"proximate to the first portion" are read in the broadest possible way viz. an error
`
`condition which temporarily prevents capturing an appropriate image for
`
`authentication, and some portion of the display visible to the user respectively.
`
`Document D1 discloses:
`
`A method, comprising:
`
`at an electronic device with a display and a biometric sensor at a first portion of the
`
`electronic device (§[0005, 0012]):
`
`detecting the existence of an error condition that prevents (§[0028, 0047]) the
`
`biometric sensor from obtaining biometric information about a user of the device;
`
`in response to detecting the existence of the error condition, displaying, on the
`
`display, an error indication (§[0028, 0047, 0048]), wherein the error indication is
`
`displayed at a location (§[0032]) that is proximate to the first portion of the electronic
`
`device, including:
`in accordance with a determination that a user interface of the electronic device is in a
`
`first orientation relative to the biometric sensor (§[0043]), displaying the error
`
`indication at a first location in the user interface that is proximate to the first portion of
`
`the electronic device; and
`
`in accordance with a determination that the user interface of the electronic device is in
`
`a second orientation relative to the biometric sensor, displaying the error indication at
`
`a second location (§[0043]) in the user interface that is proximate to the first portion of
`
`the electronic device, the first orientation being different from the second orientation.
`
`The same reasoning applies, mutatis mutandis, to the subject-matter of the
`
`corresponding independent claims 15-20, which therefore are also considered not
`new.
`
`Dependent claims 2-14 as far as the scope can be clearly understood (the feature of
`
`proximity cannot be clearly determined) is do not contain any features which, in
`
`combination with the features of any claim to which they refer, meet the requirements
`
`of the PCT in respect of novelty and/or inventive step, since the additional features:
`
`- are either known from document D1, or
`
`- are a slight constructional change which comes within the scope of the customary
`
`practice followed by persons skilled in the art, especially as the advantages thus
`
`achieved can be readily contemplated in advance, or
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 2) (EPO-April 2005)
`
`

`

`WRITTEN OPINION OF THE
`
`INTERNATIONAL SEARCHING
`
`International application No.
`
`AUTHORITY (SEPARATE SHEET)
`
`PCT/U82018/O49289
`
`- have already been employed for the same purpose of automated authentication
`
`workflow management and user feedback in a similar method and apparatus (see e.g.
`
`D2 §[0031-0034,0039-0043]), and hence it would be obvious to the person skilled in
`
`the art, namely when the same result is to be achieved, to apply these features with
`
`the corresponding effect.
`
`w C
`
`ertain observations on the international application
`
`The application does not meet the requirements of Article 6 PCT, because claims 1
`and 15-20 are not clear.
`
`Claim 1 (and corresponding claims 15-20)
`
`is not supported by the description as re-
`
`quired by Article 6 PCT, as its scope is broader than justified by the description and
`
`drawings.
`
`Claims 1-20 appear to define embodiments disclosed in §[1194-1223] of the
`
`description related to Figs. 40. However, from these passages in combination with
`
`Figs. 40, it is clear that the scope is limited to the occlusion of an image sensor by a
`
`hand holding the device; and that the location where the error indication is displayed
`
`is somehow determined by the portion of the display that is covered by the hand
`
`holding the device. How this area is determined is not even disclosed. It is also not
`
`disclosed how the location is determined for displaying the error condition. For the
`
`ISA, the only embodiments disclosed related to an image sensor occluded by the
`
`hand holding the mobile device. Any other generalisation of "error condition" is not
`
`supported. The feature of "proximate" to the first portion of the biometric sensor, is
`
`only supported by the figures and it appears to be the closest position possible to the
`
`sensor where the display is not covered by the hand holding the device. The ISA is of
`
`the opinion that the extremely broad and vague definition of claim 1 is not supported;
`
`since, for even the more limited possible embodiments which can be inferred from the
`
`drawings in the absence of technical details in the description, it is not disclosed how
`
`the location is actually determined. It is not even disclosed how the occlusion is
`
`detected viz. by analyzing the image captured or by evaluation of some area covered
`
`by the position of the hand using e.g. a touch sensitive display. Therefore, according
`
`to the ISA there even appears to be a lack of disclosure how such error indication
`
`display procedure is technically performed when the hand holding the device
`
`occludes the image sensor.
`
`Form PCT/ISA/237 (Separate Sheet) (Sheet 3) (EPO-April 2005)
`
`