Ex Parte Passe

Patent Trial and Appeal Board

Nov 2, 2018

14683655 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/683,655 04/10/2015
74243 7590 11/06/2018
FogartyLLP
P.O. Box 703695
Dallas, TX 75370-3695
FIRST NAMED INVENTOR
Scott Passe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SEC-Pl26CP1 7074
EXAMINER
TRAN, QUOC DUC
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
11/06/2018 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):
docketing@fogartyip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT PASSE 1
Appeal2018-002801
Application 14/683,655
Technology Center 2600
Before ROBERT E. NAPPI, KEVIN F. TURNER, and BETH Z. SHAW
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1 through 27. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellant, the real party in interest is Securus Technologies.
Br. 2.
Appeal2018-002801
Application 14/683,655
INVENTION
Appellant's disclosed invention is directed to a method of verifying a
presence of a person during an electronic visitation. See Abstract. Claim 1
is representative of the invention and reproduced below.
1. A method comprising:
receiving a request to initiate an electronic visitation
sess10n;
capturing an image, with an image capture device,
of a user to provide a captured image in response to the
request;
performing a feature detection process, with a
processor, on the captured image to verify that images of
features of a corporeal human face are present in the
captured image to determine whether an image of a
corporeal human face is present in the captured image; and
connecting the electronic visitation session in
response to a determination that an image of a corporeal
human face is present in the captured image.
REJECTIONS AT ISSUE2
The Examiner rejected claims 1 through 27 on the ground of
nonstatutory, obviousness-type, double patenting, for being unpatentable
over claims 1 through 21 of Passe (U.S. 9,007,420 Bl, issued Apr. 14,
2015). Final Act. 2--4; Answer 2-3.
The Examiner rejected claims 1 through 8 and 10 through 17 under 35
U.S.C. § 103 for being unpatentable over Keiser (US 2008/0000966 Al,
2 Throughout this Decision, we refer to the Appeal Brief filed July 26, 2017,
Reply Brief filed January 3, 2018, Final Office Action mailed November 7,
2016, and the Examiner's Answer mailed November 3, 2017.
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Application 14/683,655
published Jan. 3, 2008) and Laney (US 2012/0281058 Al, published Nov. 8,
2012). Final Act. 4---6; Answer 4---6.
The Examiner rejected claims 9 and 18 under 35 U.S.C. § 103 for
being unpatentable over Keiser, Laney and Lee (US 2012/0019620 Al, Jan.
26, 2012). Final Act. 6-7; Answer 6-7.
The Examiner rejected claims 19 through 27 under 35 U.S.C. § 103
for being unpatentable over Torgersrud '271 (US 2012/0262271 Al,
published Oct. 18, 2012) and Torgersrud '789 (US 2014/0279789 Al,
published Sep. 18, 2014). Final Act. 7-9; Answer 7-9.
ANALYSIS
Obviousness Double patenting rejection.
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellant's
arguments. Appellant's arguments have persuaded us of error in the
Examiner's obviousness-type double patenting rejection of claims 4 and 19
through 27, but have not persuaded us of error in the rejection of claims 1
through 3 and 5 through 18.
Appellant argues that the Examiner's statement that the current claims
are similar in scope to that of US patent 9,007,420, with obvious wording
variations, is insufficient to support the rejection. App. Br. 6-7, Reply Br.
3--4. Further, the Appellant argues that the claims recite verifying images of
features of a corporeal human face, which are not "obvious wording
variations compared to the issued patent claims, but are meaningful
limitations resulting in differing scope." App. Br. 7.
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Application 14/683,655
The Examiner equates claim 1 with claim 1 of US Patent 9,007,420
and finds that the claims are "not patentably distinct from each other because
the claimed limitations is[sic] broader in scope to that of U.S. Patent No.
9,007,420 with some obvious wording variations." Answer 3. Further, the
Examiner in response to the Appellant's arguments provides an explanation
of the obvious wording variations. Answer 10. The Examiner finds that
Appellant's claim 1 recites verifying a "corporeal human face" is present in
an image, whereas the patent claim recites verifying that the "actual face" is
present in an image, and the difference is an obvious variation and the terms
are synonyms. Answer 10.
We concur with the Examiner with respect to representative claim 1.
The appealed claim 1 recites verifying a "corporeal human face" Appellant
identifies that this feature is supported by paragraphs 57 and 58 of the
originally filed Specification. App. Br. 3. Claim 1 of US Patent 9,007,420,
recites verifying and "actual face" the provides support for this verifying
process in col. 8, line 66 through col. 9 line 12, which recite the process of
verifying in the same manner, but does not use the term "corporeal human
face." Thus, the process for verifying the corporal human face, as presently
claimed, and an actual human face, as claimed in US Patent 9,007,420, is the
same. As such, the difference between the scopes of the terms is negligible.
In as much as there is a difference in the terms, as found by the Examiner,
the scope of the term "corporeal human face" may be broader (e.g. a genus)
than "actual human face" ( e.g. a species), as an actual human face is a
corporeal human face (see Specification ,r 58). In such cases where the
scope of the patent claim falls within the scope of the examined claim a
nonstatutory double patenting rejection is appropriate. See MPEP 804 (II)
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Application 14/683,655
(B) (1) and MPEP 804 (II) (B) (2). Accordingly, we sustain the Examiner's
obviousness double patenting rejection of claim 1.
Appellant's arguments have not identified substantive errors in the
Examiner's nonstatutory double patenting rejection of claims 2, 3, 5 through
9 and 11, 12, 14 through 18 over the claims of US Patent 9,007,420. Thus,
we sustain the Examiner's obviousness double patenting rejection of these
claims for the same reasons as claim 1.
Appellant presents separate arguments with respect to dependent
claim 4. Appellant argues claim 4 recites a limitation directed to performing
facial recognition following performance of the feature detection process
which is not recited in claim 5 of the US Patent 9,007,420. Reply Br. 4.
We are persuaded of error in the Examiner's rejection of claim 4, and
claim 13 which recites a similar limitation. The Examiner has not shown
how the features of claim 4 are taught or made obvious in light of the claims
of US Patent 9,007,420. Accordingly, we do not sustain the Examiner's
obviousness double patenting rejection of claims 4 and 13.
Appellant also presents separate arguments directed to independent
19. Reply Br. 5. Appellant argues that claim 19 is directed to capturing
images of residents of a facility at time of intake and performing a feature
detection process to verify that face detection usable features are present.
Reply Br. 5.
We concur with the Appellant. The Examiner has not shown that the
features of independent claim 19 are taught or made obvious in light of the
claims of US Patent 9,007,420. Further the Examiner's finding that claim 19
is not to be afforded priority of application 14/152831 (which matured into
patent 9,007,420) demonstrates that the Examiner has also found that the
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Application 14/683,655
specification of US Patent 9,007,420 does not disclose the feature of these
claims. Answer 7. Accordingly, we do not sustain the Examiner's
obviousness double patenting rejection of claim 19 through 27.
Rejections under 35 U.S.C. § 103
Independent claims 1, and 10, and dependent claims 2 through 9 and
11 through 18.
Appellant argues that the Examiner's rejection of independent claims
1 and 10, is in error on pages 8 through 21 of the App. Br. The dispositive
issue presented by these arguments is did the Examiner err in finding that the
combination of Keiser and Laney teaches performing a feature detection to
determine if an image includes images of a corporeal human face and
connecting an electronic visitation session in response to this determination.
The Examiner finds that Keiser teaches a system to authenticate
visitors by verifying a visitor is the actual person that is registered. Answer
11-12 (citing Keiser ,r,r 27-29 and 39). The Examiner finds that this is
performed by comparing an image of the visitor with a stored image of the
visitor, to determine that the visitor is the actual person authorized. Answer
12. The Examiner states
While Keiser did not disclose how the process of comparing the
image is performed. One of the ordinary skill in the art readily
appreciate that inherently perform some form of process in order
to determine if the captured image matches the stored image.
The system must use obvious facial features (i.e., eyes, nose, skin
tone, etc.) from the image to compare with features in the stored
image to verify that the captured image is of the same individual
of the image stored. Therefore, Keiser's comparison of the
images inherently use some form of feature detection in
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comparing the captured image to stored image to verify that that
captured image is the same individual of the stored image.
Answer 12-13. Further, the Examiner finds that Laney teaches an electronic
visitation system which includes authentication logic to authenticate users.
Answer 13 (citing Laney ,r,r 43, 46 and 47). Thus, the Examiner concludes,
"the combination of Keiser and Laney et al would [have] resulted in
connecting the electronic visitation session in response to a determination
that the visitor is the actual person that registered for the visitation ( that an
image of a corporeal human face is present in the captures image)." Answer
13.
We disagree with the Examiner that this combination of the references
teaches the disputed limitation. While we concur that Keiser teaches
comparison of images to determine if a person is authenticated, which may
involve feature recognition, and Laney teaches an electronic visitation
system when a person is verified as authorized. We do not find that the
evidence demonstrates that the system connects an electronic visitation
session in response to a determination that the image contains a corporal
human face as recited in independent claims 1 and 10. Rather, the cited
teachings identify that the session is connected in response to a
determination that an authorized person is in the image. Accordingly, we do
not sustain the Examiner's rejection of independent claims 1, 10 and
dependent claims 2 through 8 and 11 through 1 7.
The Examiner's rejection of dependent claims 9 and 18 similarly
relies upon the combination of Keiser and Laney to teach the limitations of
independent clams 1 and 10. Answer 6-7. Further, the Examiner has not
shown that the teachings of Lee make up for the deficiency in the rejection
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of claims 1 and 10. Accordingly, we do not sustain the Examiner's rejection
of claims 9 and 18 for the same reasons as claims 1 and 10.
Independent claim 19 and dependent claims 20 through 2 7.
Appellant argues the Examiner's rejection of independent claim 19 is
in error as the combination of the two T orgersrud references does not teach
using a feature detection process to verify/detect that the images to be stored
have images of a facial features that can be used for facial detection. App.
Br. 21-23. Specifically, Appellant argues that Torgersrud '271 merely
teaches capturing an image for verification, a facial recognition process
which compares the image to a prior image. App. Br. 22 ( citing Torgersrud
'271, ,r,r 66 and 67). Appellant asserts that this is different from the claims,
which are directed, to the capture, analysis and storage of an image. App.
Br. 23. Appellant concludes:
Torgersrud '789 may teach capturing an image of a resident upon
intake, however, saving of that image in Torgersrud '789 is not
limited to saving only images of residents that are deemed to
include images of corporeal facial features that can be used later,
such as, as exemplars, in face detection and/or facial recognition,
in the manner claimed. That is, the proposed combination of
Torgersrud '271 and Torgersrud '789 fails to teach or suggest,
performing a feature detection process on each image of each
resident captured at the time of intake, so as to verify that face
detection-useable and/or facial recognition-usable images of
corporeal facial features are present in each of the images, much
less saving only copies of images captured at intake of each
resident in which face detection-useable and/or facial
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Application 14/683,655
recognition-usable nnages of corporeal facial features are
present.
App. Br 23-32.
The Examiner's rejection relies upon Torgersrud '789 to teach
capturing images of inmates as during intake as claimed. Answer 7-8
(Citing Torgersrud '789 ,r 26). Further the Examiner's rejection relies upon
Torgersrud '271 performing feature detection on images to verify face
detection useable images as claimed and that the combination of the two is
obvious. Answer 7.
We concur with the Examiner and are not persuaded of error by
Appellant's arguments directed to the rejection of independent claim 19.
Initially, we note that Torgersrud '789 in paragraph 26 incorporates by
reference the teachings of Torgersrud '271 and teaches storing an image
using the kiosk of T orgersrud '2 71. Claim 19 recites capturing an image,
and performing a feature detection process on the image to verify that face
detection usable images are of corporeal face features, and if so saving the
images. Contrary to Appellant's arguments, the teachings of Torgersrud
'271 are not limited to facial recognition by comparing new images with
stored images. Torgersrud '271 teaches two processes, a facial detection
process and a facial recognition process which work together. (See e.g. ,r
86). The facial detection process includes steps of storing images and
scanning and image to insure that a human face is present in the image. See
,r,r 64, and 85. The information from the facial detection process is passed to
the facial detection process. See ,r 86. We consider the description of the
facial detection process of verification that a human face is in the image, to
teach the claimed verifying facial detection usable images of a corporal
facial feature, because the Torgersrud process involves verifying that human
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images are passed to the facial recognition process. 3 Accordingly,
Appellant's arguments have not persuaded us of error in the Examiner's
rejection of independent claim 19 and we sustain the Examiner's rejection.
Appellant has not presented separate arguments directed to dependent claims
20 through 27, accordingly, we similarly sustain the rejection of those
claims.
DECISION
We reverse the Examiner's obviousness double patenting rejection of
claims 4, 13 and 19 through 27.
We affirm the Examiner's obviousness double patenting rejection of
claims 1 through 3 and 5 through, 12 and 14 through 18.
We reverse the Examiner's rejection of claims 1 through 8 and 10
through 18 under 35 U.S.C. § 103.
We affirm the Examiner's rejection of claims 19 through 27 under 35
U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
3 The discussion in Torgersrud of facial landmarks (features of a human
face), in conjunction with the facial verification process, further
demonstrates that the facial detection process is verifying features of a
corporal human face.
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