Byron B. Han et al.

Patent Trials and Appeals Board

Sep 3, 2019

14612214 - (D) (P.T.A.B. Sep. 3, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/612,214 02/02/2015 Byron B. HAN P20857USC1/77770000325201 2097
150004 7590 09/03/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
VU, THANH T
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
dentons_PAIR@firsttofile.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BYRON B. HAN, MATTHEW E. SHEPHERD,
IMRAN CHAUDHRI, GREGORY N. CHRISTIE,
PATRICK L. COFFMAN, CRAIG M. FEDERIGHI,
MATTHEW H. GAMBLE, BRITTANY D. HUGHES,
BRENDAN J. LANGOULANT, CRAIG A. MARCINIAK,
DONALD W. PITSCHEL, DANIEL O. SCHIMPF,
ANDREW R. WHALLEY, CHRISTOPHER R. WHITNEY,
JONATHAN R. DASCOLA, and LAWRENCE Y. YANG
____________

Appeal 2017-010936
Application 14/612,214
Technology Center 2100
____________

Before MAHSHID D. SAADAT, ERIC B. CHEN, and
CARL L. SILVERMAN, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–30, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).

1 An oral hearing was held for this appeal on June 25, 2019.
2 According to Appellants, the real party in interest is Apple, Inc. App.
Br. 4.
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We affirm-in-part.
STATEMENT OF THE CASE
Appellants’ disclosure describes a method for enrolling fingerprints
with a device having fingerprint sensors. Spec. ¶ 2, 6–8.
Exemplary claim 1 under appeal reads as follows:
1. A method, comprising:
at an electronic device with a display and a fingerprint
sensor:
displaying a fingerprint enrollment interface;
detecting on the fingerprint sensor a plurality of separate
and distinct finger gestures performed with a respective finger;
collecting fingerprint information from the plurality of
separate and distinct finger gestures performed with the
respective finger; and
after collecting the fingerprint information from each of
the plurality of separate and distinct finger gestures:
determining, based on fingerprint information collected
for the respective finger, whether the fingerprint information
that has been collected is sufficient to enroll a fingerprint of the
respective finger with the device;
in accordance with a determination that the fingerprint
information that has been collected for the respective finger is
sufficient to enroll the fingerprint of the respective finger,
enrolling the fingerprint of the respective finger with the
device; and
in accordance with a determination that the fingerprint
information that has been collected for the respective finger is
not sufficient to enroll the fingerprint of the respective finger,
displaying a message in the fingerprint enrollment interface
prompting a user to perform one or more additional finger
gestures on the fingerprint sensor with the respective finger.
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The Examiner rejected claims 1–6, 8–21, and 23–30 under 35 U.S.C.
§ 103(a) as unpatentable over Setlak (US 6,795,569 B1; iss. Sept. 21, 2004)
(“Setlak ‘569”) and Setlak et al. (US 5,828,773; iss. Oct. 27, 1998) (“Setlak
‘773”). See Final Act. 2–8. The Examiner added Howell et al. (US
7,697,729 B2; iss. Apr. 13, 2010) (“Howell”) to further reject claims 7 and
22 under 35 U.S.C. § 103(a). See Final Act. 8–9.

ANALYSIS
Claim 1
The Examiner finds Setlak ‘569 discloses all the recited steps of
claim 1, but not “displaying a fingerprint enrollment interface” and
“displaying a message in the fingerprint enrollment interface prompting a
user to perform one or more additional finger gestures on the fingerprint
sensor with the respective finger” when the fingerprint information is
determined to be insufficient for enrollment. See Final Act. 2–3. The
Examiner cites col. 3, ll. 1–16 and 40–51 of Setlak ‘773 as disclosing the
missing limitation and finds the combination would have been obvious to
one of ordinary skill in the art “in order to provide the user with guidance
and feedback of fingerprint placements during enrollment process.” Final
Act. 3–4.
Appellants contend the Examiner’s reliance on Setlak ‘569 and Setlak
‘773 is in error because: (1) Setlak ‘569 discloses “enrolling a fingerprint
once the user completes the required predetermined number of finger
placements (N, in Figure 3)” (App. Br. 19); (2) Setlak ‘773 discloses “‘a
fingerprint sensing apparatus and related methods for accurately sensing a
fingerprint,’ which ‘assists a user in accurately positioning his finger on the
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fingerprint sensor’” (App. Br. 20); and (3) the combination of the references
do not address the limitation related to determining that “the information
collected from finger inputs is or is not sufficient for enrollment of the
fingerprint” (App. Br. 23–24). According to Appellants, Setlak ‘773 teaches
“guidance can be provided to the user so that the user can place his finger in
the correct position to authorize access to the computer,” but “collects
fingerprint information to compare it to ‘a database of fingerprints for
authorized users,’ not to determine whether it is sufficient to enroll a
fingerprint.” App. Br. 25.
The Examiner responds by pointing out the relevant portions of Setlak
‘569 which were outlined in the rejection. See Ans. 10–11. With respect to
the recited “determining, based on fingerprint information collected for the
respective finger, whether the fingerprint information that has been collected
is sufficient to enroll a fingerprint of the respective finger with the device,”
the Examiner explains:
For example, in fig. 3, col. 2, lines 39–54, col. 5, lines 15–24,
col. 6, lines 25–34, and lines 44–48, Setlak ‘569 teaches a
finger enrollment process comprises generating fingerprint data
sets responsive to placing the finger on the sensor a plurality of
times, with each placement of the finger being slightly offset
from the prior placement. The fingerprint data sets of the
plurality of finger placements are used to generate composite
fingerprint data set (i.e. a full finger image) in order to enroll
the finger. Thus, in this case, Setlak ‘569 clearly teach
collecting fingerprint information for the respectively finger by
collecting fingerprint data sets of the plurality of finger
placements of a respective finger. Setlak ‘569 further teaches
that the flow chart of fig. 3, step 56, determine that the process
of collecting the plurality of finger placements (i.e. a number of
data sets or a number of finger placements) is sufficient to
enroll the finger or creating a composite data set for the finger.
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Thus, it is clear that the step of determining whether the number
of data sets for the finger is sufficient or not sufficient as shown
in step 56 of fig. 3 and further in col. 6, lines 25–34, and lines
44–48 would read on the claim limitation of “determining
whether the fingerprint information that has been collected is
sufficient to enroll a fingerprint of the respective finger with the
device.”
Ans. 10. With respect to Setlak ‘773, the Examiner responds that the
disclosed finger position indicator for guiding the user through finger
placement, as described in columns 3 and 14 of the reference, suggests the
recited “fingerprint enrollment interface.” Ans. 11.
Based on a review of Setlak ‘569, we agree with the Examiner’s
interpretation of the term “determining, based on fingerprint information
collected for the respective finger, whether the fingerprint information that
has been collected is sufficient to enroll a fingerprint of the respective finger
with the device” as collecting the fingerprint information collected for a
number of finger placements in Setlak ‘569. See Ans. 10. Additionally, we
agree with the Examiner’s finding that step 56 in Figure 3 of Setlak ‘569
discloses determining if the number of times the finger has been positioned
on the sensor is sufficient to enroll the finger or to create a composite data
set for the finger. See id. (citing Setlak ‘569 col. 6, ll. 25–34, 44–48). This
characterization is consistent with the broadest reasonable interpretation of
the disputed claim term as a sufficient or predetermined number of collected
information of finger gestures, as also described in Appellants’
Specification. See Spec. ¶¶ 248–250. Claim terms in a patent application
are given the broadest reasonable interpretation consistent with the
Specification, as understood by one of ordinary skill in the art. In re Crish,
393 F.3d 1253, 1256 (Fed. Cir. 2004). In other words, contrary to
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Appellants’ arguments (App. Br. 19–20), the suggested system meets the
recited claim limitation because step 56 of Setlak ‘569 determines the
collected fingerprint information is sufficient to enroll a fingerprint when the
required predetermined number of finger placements is completed.
Additionally, we agree with the Examiner’s findings with respect to
Setlak ‘773 disclosing the recited fingerprint enrollment interface. As the
Examiner explains, Setlak ‘773 includes “a finger enrollment interface to
guide the user through the variation of finger placements until a
predetermined number of finger placements is required.” Ans. 11 (citing
Setlak ‘773 col. 3, ll. 1–16, 40–63; col. 14, ll. 19–40). The disclosed
interface provides placement guidance for the user’s finger in an image
capturing and fingerprint enrollment process by displaying a visual image
and instructions that prompts the user as to how and to what extent move the
finger to the correct position. See also Setlak ‘773 Fig. 25, col. 14, ll. 10–
18, 41–62. To the extent claim 1 requires the fingerprint enrollment
interface to prompt the user “to perform one or more additional finger
gestures on the fingerprint sensor,” the interface disclosed in Setlak ‘773
would suggest to one of ordinary skill in the art an interface to guide and
instruct the user with respect to the placement of the finger for collecting
fingerprint information in Setlak ‘569 or whether any additional finger
gesture is needed to capture another fingerprint image when it is determined
that the predetermined number of images has not been reached.
For the reasons discussed above we are unpersuaded of Examiner
error. Accordingly, we sustain the 35 U.S.C. § 103(a) rejections of
independent claim 1 and, for the same reasons, independent claims 15 and
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16, together with the rejections of dependent claims 2–6, 17–21, and 30
which are not argued separately.
Claim 9
In rejecting claim 9, the Examiner points to the portions of Setlak
‘569 and Setlak ‘773, which were used in rejecting claim 1 and more
specifically finds Figure 25 of Setlak ‘773 “shows providing live feedback of
fingerprint image 206 regarding positioning of the finger.” Final Act. 6.
Appellants contend the visual indication of finger position, as shown in
Figure 25 of Setlak ‘773, is not a progress indicator nor changes the
appearance of the image to show the collection of additional fingerprint
information for enrollment. See App. Br. 27–29.
Figure 25 of Setlak ‘773 shows a display including the fingerprint
image 206 with its center point 205 and the display center point 208, which
are used to guide the user with finger placement and repositioning the finger
for an accurate reading. See Setlak ‘773 col. 14, ll. 19–40. We therefore are
persuaded by Appellants’ contention that the Examiner has not explained
how the finger positioning guide in Setlak ‘773 meets the claimed “progress
indicator” and changing its appearance to indicate the collection of
additional fingerprint collection. See App. Br. 27. As further pointed out by
Appellants (Reply Br. 13–15), the fingerprint image 206 “is merely an image
of the sensed fingerprint and its current location, and it does not convey any
information regarding the progress of any fingerprint enrollment.”
Therefore, Appellants’ arguments have persuaded us of error in the
Examiner’s position with respect to the rejection of dependent claim 9.
Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of claim 9,
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as well as claim 24 which recites similar limitations, and claims 10–14 and
25–29 dependent therefrom.
Claim 8
The Examiner relies on portions of the applied references similar to
the rejection of claim 9 and finds the combination of Setlak ‘569 and Setlak
‘773 teaches or suggests the recited “progress indicator” and “changing an
appearance of the progress indicator.” Final Act. 5–6. Appellants present
arguments that are similar to those discussed above with respect to claim 9.
See App. Br. 35–36.
We are therefore persuaded of Examiner error by Appellants’
contentions and do not sustain the rejection of claim 8, as well as claim 23
which recites similar limitations.
Claim 7
In rejecting claim 7, the Examiner relies on Howell for teaching a
fingerprint setting interface, detecting a second finger gesture, and
highlighting the respective entry, and finds it would have been obvious to
add such features to the combination of Setlak ‘569 and Setlak ‘773 “in
order to provide the user with enrollments of more than one fingers [sic].”
Final Act. 9. Appellants contend Howell relates to helping the user to
launch different applications by swiping different fingers and has nothing to
do with a plurality of entries that correspond to enrolled fingerprints and
highlighting the respective entry. App. Br. 37–38.
We disagree with the Examiner that Howell’s Figure 7 shows the
disputed limitations because the different finger swipes correspond to
different tasks and any indication presented to the user is only to remind the
user of the corresponding application associated with a specific finger or
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fingerprint. See Howell Figs. 7, 8; col. 11, ll. 43–57; col. 12, ll. 32–49. As
argued by Appellants, Howell is not concerned with “detecting a second
finger gesture on the fingerprint sensor that corresponds to the fingerprint of
the respective finger” nor “highlighting the respective entry.” See App. Br.
37–39.
We are therefore persuaded of Examiner error by Appellants’
contentions and do not sustain the rejection of claim 7, as well as claim 22
which recites similar limitations.

DECISION
We affirm the Examiner’s decision to reject claims 1–6, 15–21, and
30 under 35 U.S.C. § 103(a).
We reverse the Examiner’s decision to reject claims 7–14 and 22–29
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART