Apple Inc.
[2024] APO 25
•25 June 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Apple Inc. [2024] APO 25
Patent Application: 2019281965
Title:Implementation of biometric authentication
Patent Applicant: Apple Inc.
Delegate:Shreyas Kumar
Decision Date: 25 June 2024
Hearing Date: Written submissions filed on 07 July 2023
Catchwords: PATENTS – examiner’s objection – amendments filed – claims construction – inventive step – prior art cited earlier still highly relevant– amendments allowable – application referred back to examination section for further consideration
Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019281965
Title:Implementation of biometric authentication
Patent Applicant: Apple Inc.
Date of Decision: 25 June 2024
DECISION
Claim 1 does not involve an inventive step in light of D3, which discloses all the features of the claim. I therefore refer the application back to the examination section for further assessment on inventive step, along with novelty, and the issuance of another examination report.
In the circumstances, pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at four (4) months from the date of this decision.
REASONS FOR DECISION
Background
The present matter concerns patent application 2019281965 (“the application”) by Apple Inc. (“the applicant”). The applicant filed the application on 01 June 2019 as a PCT application, PCT/US2019/035092, claiming an earliest priority date of 03 June 2018, and entered the Australian national phase on 30 November 2020.
The application has been the subject of four examination reports. The objections in the first report were that the claims lack support under subsection 40(3), and the claims lack an inventive step. Following responsive submissions from the applicant and a statement of proposed amendments to amend the description and the claims, the examiner raised a clarity objection and maintained the inventive step objection in a second report. A further amendment was made by the applicant in response to the second report. The examiner then raised a lack of novelty and inventive step in the third report which was relegated to an inventive step objection in the fourth report in the presence of submissions from the applicant and a statement of proposed amendments to amend the description and the claims.
On 30 November 2022, the applicant wrote to the Commissioner requesting to be heard in relation to the matter in the fourth report, namely the outstanding objection that the claimed invention did not involve an inventive step.
On 11 May 2023, the Commissioner wrote to the Applicant indicating that the hearing would be conducted by way of written submissions due to be filed by 30 June 2023. On 28 June 2023, the applicant sought further time, until 7 July 2023 to file their written submissions. On 29 June 2023, the Commissioner acknowledged and allowed the request. The applicant filed their submissions on 07 July 2023 (“the applicant’s submissions”) accompanied with a statement of proposed amendments (“the amendments”), being item numbers 8 and 9 to the description pages, and all claim pages respectively.
While the final date for acceptance of the application was 30 November 2022, patent subregulation 13.4(1)(g) is available to extend the time for gaining acceptance to 3 months (or more via subregulation 13.4(3)) from the date of the present decision where appropriate.
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act) came into effect on 15 April 2013. As the application was filed after 15 April 2013, the application is subject to the amended provisions of the Act and Regulations. Under subsection 49(1) of the Act the standard proof that applies to the application is the balance of probabilities. This means, that I must accept the application if satisfied on the balance of probabilities that the application complies with the Act, otherwise, I can refuse the application.
The specification
There were seven amendment items proposed during examination of the application. No objection has been raised to the allowability of the amendments. After the request for a hearing the applicant submitted a statement of proposed amendment with item numbers 8 and 9 to replace pages 2, 2a and 2b of the description and all claim pages on 07 July 2023 with a request for the amendments to be considered.
I have considered the proposed amendments and find basis in the specification for the amendment to the description and claims. I consider the amendments to be allowable under s102. Thus, in this decision, I will consider the application as currently proposed to be amended including up to item number 9, and wherever I refer to the specification, it is a reference to the specification (“the specification”) of the application as proposed to be amended.
The specification, as proposed to be amended, ends with 21 claims of which claim 1 is an independent claim.
10. Before commencing to construe the specification, I note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
The aim of the invention
11. The specification aims to provide electronic devices with faster, more efficient methods, interfaces and technique for enrolment and authentication of biometric features.
12. Biometric authentication, for instance of a face, iris, or fingerprint, using electronic devices is a convenient and efficient method of authenticating users of the electronic devices. Biometric authentication allows a device to quickly and easily verify the identity of any number of users.
The nature of the invention
13. In the general sense, the specification notes that the invention may reduce cognitive burden on users, may conserve power and may reduce the number of repetitive inputs. The specification states:
“[0005] Accordingly, the present technique may provide electronic devices with faster, more efficient methods and interfaces for implementing biometric authentication. Such methods and interfaces optionally complement or replace other methods for implementing biometric authentication. Such methods and interfaces may reduce the cognitive burden on a user and produce a more efficient human-machine interface. For battery-operated computing devices, such methods and interfaces may conserve power and increase the time between battery charges. Such methods and interfaces may also reduce the number of unnecessary, extraneous, or repetitive input required at computing devices, such as smartphones and smartwatches.”
14. There are several aspects of the invention described in the specification. The aspects that are directly relevant to the invention as claimed are presented as consistory statements in paragraphs [0005a] to [0005d][1], reproduced below:
“[0005a] According to a first aspect of the invention there is provided a method, comprising: at an electronic device with a display and one or more biometric imaging sensors: detecting a series of one or more inputs for initiating biometric enrollment with the one or more biometric imaging sensors; in response to receiving the series of one or more inputs for initiating biometric enrollment with the one or more biometric imaging sensors: in accordance with a determination that a first orientation of the electronic device satisfies a set of enrollment criteria, initiating a process for enrolling a biometric feature with the one or more biometric imaging sensors, wherein enrolling a respective biometric feature includes capturing information about the respective biometric feature that enables the respective biometric feature to be used to provide authentication for a first type of operation at the electronic device, wherein before the respective biometric feature is enrolled the respective biometric feature is not enabled to be used to provide authentication for the first type of operation at the electronic device; and in accordance with a determination that the first orientation of the electronic device does not satisfy the set of enrollment criteria, outputting a first set of one or more prompts to change the orientation of the electronic device to a second orientation that satisfies the set of enrollment criteria, wherein the second orientation is different from the first orientation; subsequent to outputting the first set of one or more prompts to change the orientation of the electronic device to the second orientation that satisfies the set of enrollment criteria, detecting a change in orientation of the electronic device; and in response to detecting the change in orientation of the electronic device: in accordance with a determination that the orientation of the electronic device still does not satisfy the set of enrollment criteria, outputting a second set of one or more prompts to change the orientation of the electronic device to the second orientation that satisfies the set of enrollment criteria.
[0005c] According to a second aspect of the invention there is provided a computer readable storage medium storing one or more programs configured to be executed by one or more processors of an electronic device with a display and one or more biometric imaging sensors, the one or more programs including instructions for performing the method of the first aspect.
[0005d] According to a third aspect of the invention there is provided an electronic device, comprising: a display; one or more biometric imaging sensors; one or more processors; and memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for performing the method of the first aspect.”
[1] Previous paragraphs [0005b] and [0005c] are numbered as [0005c] and [0005d] respectively in the amendments filed on 07 July 2023. As a result, there is no [0005b] in the specification.
15. The consistory statements above could be summarised as pointing towards “The invention being related to the enrollment of a biometric feature, and specifically to providing user prompts for the orientation of a device to ensure the biometric feature is properly captured and later used for authentication”.
16. The specification at paragraphs [0318] – [0340] provides discussion on some embodiments of the instant invention. The use of user interfaces for orienting an electronic device to enrol a biometric feature in accordance with examples is illustrated in Figs. 11A-11S (e.g., a face for later use in biometric authentication).
17. The paragraphs provide an explanation of what constitutes a “suitable orientation”. Paragraph [0322] states:
“In some examples, a suitable orientation for enrolling the user's face is a portrait orientation that is upright (e.g., vertical), where the portrait orientation is such that biometric sensor 903 is at the top of the device (e.g., the side of the device that is farthest away from the ground)”
18. Figs. 11C and 11Q provide an indication of the prompts 1112B and 1112C provided on screen to achieve a suitable orientation. The said figures are reproduced below:
19. Additional embodiments such as in Fig. 11B address the aspect of a horizontal orientation versus an upright position (i.e., electronic device approximately parallel or tilted to the ground, a prompt to the user to lift device to an upright position) and Figs. 11L – 11N address aspects of biometric authentication issues where the user’s face is outside the field of view of the biometric sensors.
The claims
20. The specification, as proposed to be amended, ends with 21 claims. Claim 1 is an independent claim. Claims 1 to 19 are directed towards a method. Claim 20 is directed to a computer-readable storage medium storing one or more programs for performing the method of any of claims 1 to 19. Claim 21 is directed to an electronic device comprising display, biometric imaging sensors, processors, memory storing one of more programs for performing the method of any of claims 1 to 19.
21. The marked-up copy of independent claim 1 is reproduced here:
A method, comprising:
at an electronic device with a display and one or more biometric imaging sensors:
displaying, on the display, a biometric enrollment user interfacedetecting a series of one or more inputs for initiating biometric enrollment with the one or more biometric imaging sensors;
while displaying the biometric enrollment user interface, receiving input corresponding to a request to initiate biometric enrollment;in response to receiving the series of one or more inputs for initiating biometric enrollment with the one or more biometric imaging sensors:
in accordance with a determination that a first orientation of the electronic device satisfies a set of enrollment criteria, initiating a process for enrolling a biometric feature with the one or more biometric imaging sensors, wherein enrolling a respective biometric feature includes capturing information about the respective biometric feature that enables the respective biometric feature to be used to provide authentication for a first type of operation at the electronic device, wherein before the respective biometric feature is enrolled the respective biometric feature is not enabled to be used to provide authentication for the first type of operation at the electronic device; and
in accordance with a determination that the first orientation of the electronic device does not satisfy the set of enrollment criteria, outputting a first set of one or more prompts to change the orientation of the electronic device to a second orientation that satisfies the set of enrollment criteria, wherein the second orientation is different from the first orientation;
subsequent to outputting the first set of one or more prompts to change the orientation of the electronic device to the second orientation that satisfies the set of enrollment criteria, detecting a change in orientation of the electronic device; and
in response to detecting the change in orientation of the electronic device:
in accordance with a determination that the orientation of the electronic device still does not satisfy the set of enrollment criteria, outputting a second set of one or more prompts to change the orientation of the electronic device to the second orientation that satisfies the set of enrollment criteria.
22. Dependent method claims 2-19 add additional limiting features to the method claim of claim 1. In comparison with the previous set of claims considered by the examiner in Examination Report No 4, the current set of claims include amendments to claim 3, “…third prompt being based on the orientation of the electronic device while receiving the series of one or more inputs”. Also claims 12 and 13 have been amended to be dependent on any of claims 1-10 with claim 13 addressing an antecedent issue for a first amount. Claims 15-17 are newly introduced claims with features of a magnetometer, accelerometer and global positioning system for determining the first orientation of the electronic device respectively, and claim 19 is also a newly introduced claim wherein the second orientation that satisfies enrollment criteria is a portrait orientation such that the biometric imaging sensor is at the top of the device. There are no issues with construction or allowability of the dependent claims.
Claims construction
23. I note what Middelton J said in Eli Lilly and Company Limited v Apotex Pty Ltd[2]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
[2] [2013] FCA 214, 100 IPR 451 at [139]
24. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[3]:
“… the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... While the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”
[3] [2009] FCAFC 70, 81 IPR 228 at [118] – [120]
25. I will specifically construe claim 1. The general understanding of claim 1 as a method can be viewed by way of as a step-by-step approach comprising several physical interactions or steps such as:
· detecting,
· receiving,
· determining an orientation is satisfied,
· enrolling and enabling authentication,
· determining an orientation is not satisfied,
· first prompting,
· detecting change and that orientation still not satisfied
· second prompting
26. In the context of understanding the meaning of the term “orientation” features related to determining the orientation, outputting a first prompt, determining orientation is not satisfied and outputting a second prompt, require closer scrutiny.
27. The plain meaning[4] of “orientation” or “orientate” is –
a: to place in any definite position with reference to the points of the compass or other points; and
b: to adjust with relation to, or bring into due relation to, surroundings, circumstances, facts, etc.
[4] Macquarie Dictionary -
28. Thus, it is clear to me that the orientation that is the subject of the claim is not any particular type of orientation, but instead merely a reference to the defining of some position of the electronic device with respect to some spatial point. There are a number of instances in the specification that refer to the idea of “orientation” including “an initial orientation” in paragraph [0347], and “a first orientation”, “a second orientation”, “the different orientation” and “a suitable orientation” in paragraph [0348]. Furthermore, there is reference to landscape and portrait (horizontal and upright) orientation within the specification. However, I do not consider the specification provides narrower definition to the term “orientation” than is otherwise present in the plain meaning.
29. Moving to the specific steps, the step of "determining the orientation”, occurs twice in the claim, and in the context of the invention is indeed an important aspect of the claimed invention, involves the use of some type of orientation sensor(s) to determine the position of the electronic device with reference to some desired arrangement.
30. Steps involving satisfaction of enrolment criteria and initiating a process for enrolling, occur when a certain pre-defined enrolment criteria are met whereby the process of enrolment is subsequently commenced using the biometric sensors.
31. When the pre-defined enrolment criteria are not met, there is defined a first set of prompts provided to the user to instruct them to modify orientation of the device in order to facilitate enrolment.
32. After provision of this first prompting a change in orientation of the electronic device is monitored for and detected. This is conducted to check whether the user has corrected moved the device in order to facilitated enrolment.
33. Finally, if the same pre-defined enrollment criteria as the previous step are not met, then there is defined a second set of prompts provided to the user. There are no features specified in the claim so as to limit the possibility of the second set of one or more prompts to not be equal to the first set of one or more prompts. In other words, the nature of the prompts is not in any way defined in the claim.
34. This stepped construction and combination of features of claim 1 will be used in my decision to consider inventive step later. In claim 1, there is nothing specific in the claim to characterise the nature of the orientations or prompts. In particular, it is noted that the nature of prompts is only defined in claim 2 to the extent that those two prompts are claimed to be different.
Outline of the examiner’s objection
35. The fourth examination report for the application indicates that amended claims 1-17 (up to items 7 filed on 21 October 2022) do not meet the requirements for Inventive Step. These claims are objected to as lacking an inventive step in quite some detail in light of each of prior art documents D1-D3 and the common general knowledge, as evidenced by D4. The relevant content of the report is as follows:
“Citation D3 (US 2017/0169202)
I maintain that claim 1 lacks an inventive step in light of D3. The novelty objection is dropped.
In view of your submissions, I concede that D3 does in fact not inherently disclose the feature of “while displaying the biometric enrollment user interface, receiving input corresponding to a request to initiate biometric enrolment”. As you say, D3 is silent to this, and it could be entirely possible that the enrolment process in D3 could be started without any prior interface display and received input.Be that as it may, the addition of this feature to D3 would have been obvious to the skilled person, and I note that the response did not provide reasoning in support of the inventiveness of this feature. …
…Additionally, the applicant submits: “that nowhere does D3 teach or suggest determining or correcting the orientation of the device much less that this occurs prior to initiating biometric enrolment, as recited in amended claim 1. Rather, D3 appears to describe correcting for the angle of the device (see paragraph [0039] and Figure 8 of D3).”.
Respectfully, I disagree.
Regarding “determining or correcting the orientation of the device”, as stated in the previous two reports (see also [0039] as referred to in your submissions):
“D3 discloses a process described as applicable to an enrolment (or authentication) context ([0001]). Figure 8 shows the general flow of the process including determination that an orientation theta of the electronic device satisfies a set of enrolment criteria (item 50), initiating a process for enrolling a biometric feature when the criteria is met (item 54) and outputting a prompt to reorient the device when the enrolment criteria are not met (item 52). The change in orientation of the device following the prompt can be seen in Figures 1 and 2.” (emphasis added)
Therefore, determination and correction (via a prompt) of an orientation are disclosed.Regarding, “that this occurs prior to initiating biometric enrolment, as recited in amended claim 1” (sic), I disagree that this is not disclosed in D3. In D3 both the determination (item 48 – Fig. 8) and correction/prompt (item 52 – Fig. 8) occur before initiating of biometric enrolment (item 54 – Fig. 8).
For these reasons it is maintained that claim 1 lacks an inventive step in light of D3.
Citations D1 and D2 (D1: US 2017/0070680 and D2: US 2016/0300100)
I maintain that claim 1 lacks an inventive step in light of each of D1 and D2.As best as I can discern, the submissions are as follows:
a.Each of D1, D2 fail to disclose a biometric enrolment process, including biometric enrolment interface.
b.That neither of D1 and D2 disclose “determining or correcting the orientation of the device much less that this occurs prior to initiating biometric enrolment” (i.e., the same submission presented against D3 above).
c.The citations and CGK do not identify a problem related to biometric enrolment interfaces that would provide motivation to modify D1 and D2. Moreover, it is submitted that 2.5.3.3 of the Patent Manual of Practice Procedure states that to find an idea of an invention obvious requires consideration of problems from the perspective of the starting point of the citations (i.e., D1 or D2).
d.There is some “substantial adaptation” required in transferring the prompting systems of D1 and D2 into a prompting system specifically for biometric enrolment.
I am not persuaded that any of these submissions serve to overcome the previously raised inventive step objections. I will now address these submissions.
Regarding (a), this point was already conceded in the previous reports, …
…
Regarding (b), whilst I acknowledge the lack of the feature of biometric enrolment within D1 and D2 (see above (a)), the remainder of the analogous features mentioned in (b) are disclosed in each of D1 and D2, including the temporal order specified.
…
Regarding (c), I would firstly note that there is no requirement for a problem relevant to the present application to be recited within a citation. Regarding 2.5.3.3 of the PMPP (workshop Improvements), I do see any reference to a requirement to consider “problems from the perspective of the starting point of the citations”, nor do I understand what the applicant means by this. I also note that the inventive step objections raised thus far have not been framed in terms of a workshop improvement.
Before commenting whether the problem addressed by the present application falls within the CGK, I will first revisit the question of what the problem is.
From [0004] of the filed description, the specification identifies a problem that users experience difficulties in successfully capturing biometric image data for biometric authentication and enrolment due to insufficient guidance.
This problem most certainly was known within the CGK at the priority date. “Face Unlock” has been around on Android devices since 2011 (Android 4.0) and presents user guides such as “face not visible” and an onscreen face outline guide overlayed on their view of the front facing camera feed. This can be seen briefly at 1:33 (sic) of D4. The existence of these enrolment guides clearly indicates that it was well-known that some users experience difficulties enrolling facial data and benefit from onscreen guidance. For these reasons, the problem addressed by the present application was known as part of the CGK at the priority date.
Regarding (d), I disagree that there is any practical difficulty, or “substantial adaptation” required to adapt either of D1 and D2 to a biometric enrolment context.
…
For these reasons, along with those of the previous examination reports, I maintain that claim 1 lacks an inventive step in light of each of D1 and D2.
Dependent claims
Claims 2-14 and 16-17 lack an inventive step for the same reasons as given in the previous report for the corresponding claims, noting the renumbering resulting from adding a new claim 15. …”
Applicant’s submissions
36. The applicant’s submissions are directed to the inventive step objection raised in Examination Report No. 4.The main points of the applicant’s submissions are summarised here:
· “D1: US 2017/0070680
… Figure 5 (provided below) and the associated description of D1 describe an iris authentication method including an “unlocking preparation process” of S10-S80 and an “unlocking process” of S90-S190.
… The claimed invention is directed to performing operations based on the orientation of the electronic device. For example, if the determination is that an orientation of the device does not satisfy a set of enrollment criteria, the present invention operates to output a set of one or more prompts that prompt the user to correct the orientation of the device so a user’s biometric feature can be properly captured and used for enrollment.
Applicant cannot, however, identify anything in D1 that teaches or suggests determining an orientation of a device or basing outputs on such a determined orientation.
…As set out above, and contrary to the Examiner’s view, the Applicant submits that the determinations performed at S120 (and similarly S60) do not teach or suggest performing operations based on (in response to) determining that an orientation of the device does or does not satisfy a set of enrollment criteria as claimed.
S120 (and S60) of D1 involve determining whether the direction of the straight line-of-sight detected from the infrared image coincides with the direction of the optical axis connecting the user’s eyes and the infrared camera. If the determination is negative at S120 (or S60), then the user in the infrared image is not looking at the infrared camera and the image of the iris regions of the user is likely to be unclear for iris authentication (see paragraphs [0070]-[0071] of D1). The Applicant submits that these determinations have nothing to do with the orientation of the device. Accordingly, the Applicant submits that D1 does not teach or suggest making any determination with respect to an orientation of the device, as recited by claim 1.
The Applicant submits that D1 simply does not teach or suggest making any determination based on an orientation of the device, as recited by amended claim 1.
In addition, the Applicant submits that determining whether an orientation of an electronic device satisfies a set of enrollment criteria, in the context of the present invention, and determining whether an infrared image of a user satisfies specific criteria as described in D1 are entirely different, and that a person skilled in the art would not be directly led as a matter of course to the present invention from D1 (adopting the test for inventive step as approved by the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411, and cited in the Patent Manual of Practice and Procedure at Section 2.5.1.5).”· “D2: US 2016/0300100
D2 describes a process for capturing an image frame with an acceptable facial pose (see abstract of D2). As illustrated in Figure 4 (provided below) and described in paragraphs [0032]-[0044] of D2, the image capture process includes receiving an image frame (402) and identifying a user’s facial pose from the image frame (404). At step 406, the facial pose is evaluated to determine if the facial pose is acceptable, which may include determining translation positions along the x, y, z axes (i.e. tx, ty, tz) and angle positons of rotation around the x, y, and z axes (i.e. rx, ry, rz) and determining whether these are within suitable reference ranges. If the facial pose is not acceptable, instructions are given to guide the user in moving the device and taking another image (408). Steps 402-408 are repeated until the result of the evaluation at 406 indicates that the facial pose is acceptable. At such time, the image frame with the acceptable face pose is output for use in an application at step 410.
… The Applicant submits that D2 is completely silent with respect to biometric enrollment.
Further, the Applicant submits that D2 fails to teach or suggest performing any determinations based on an orientation of the device, as recited by amended claim 1.
As discussed above, step 404 involves analysing a user’s facial pose obtained from a received image frame in order to identify whether the facial pose is acceptable or unacceptable. As described in paragraph [0032] of D2: “At block 404, analysis may be performed against the image frame, to identify a face in the image frame”.
The deficiencies of D2, therefore, are similar to those of D1 as discussed above. D2 describes performing operations based on the analysis of an image frame. D2 does not teach or suggest performing operations based on an orientation of the device as per the claimed invention.
As with D1, therefore, the Applicant submits that a person skilled in the art would not be directly led as a matter of course to the present invention from D2.”· “D3: US 2017/0169202
D3 is directed to a method of capturing biometric data from users during an enrollment or authentication transaction (see paragraphs [0001] and [0015] of D3). Figure 8 (provided below) and paragraph [0039] of D3 describe a method (42) for capturing biometric data during an enrollment or authentication transaction. The process starts (44) when a user activates and positions (46) the device to capture biometric data. The device calculates (48) the angle of the device between a surface of the device and an x-axis of the device and determines (50) whether the device is in an optimal position to capture adequate quality biometric data. When the angle is not in the optimal position (i.e., <90 degrees), the device displays a prompt to the user to adjust the position of the device into the optimal position (i.e., 90 degrees) and the device is adjusted (52). When the device is determined to be in the optimal position, the biometric data is captured (54) and the processing ends (56).
As can be seen from at least Figures 1 and 2 of D3 (copied below), the “x-axis” that is used in calculating the angle of D3 is such that the angle calculated by D3 may be considered a forward/back tilt of the device in question.
Similar to D1 and D2, the applicant submits that D3 also fails to teach or suggest performing any determinations based on an orientation of the device, as recited by amended claim 1. In the context of the present invention, orientation refers to a portrait or landscape orientation of the device. In contrast, D3 describes calculating the forward/back tilt or angle of the device relative to an x-axis of the device.
As with D1 or D2, therefore, the Applicant submits that a person skilled in the art would not be directly led as a matter of course to the present invention from D3.”· D4: ‘How to Setup Face Unlock on Your Android’ – (indicative of the common general knowledge)
“The common general knowledge
D4 describes setting up and performing a biometric enrollment process at an electronic device. For example, as shown in D4, starting from 1:22 sec, the user will select “Set it up” on the “About Face Unlock” screen and “Continue” on the “Set up Face Unlock” screen. Once the user selects the “Continue” button, they then hold the electronic device up to capture an image of their face. The applicant submits that D4 fails to teach or suggest making any determination based on an orientation of the device, as recited by amended claim 1.
The Applicant submits that a person skilled in the art, starting from each of D1-D3 and in light of the common general knowledge, as indicated by D4, would not have arrived at the combination of features recited by the amended claims as a matter of routine.”
37. The applicant has provided further submissions for dependent claims under heading 6 of the applicant’s submissions on how the features of the said claims are not obvious in view of the prior art documents and common general knowledge. I will not detail these submissions here. I will also defer discussion of the applicant’s submission relating to newly added features of claims 15-17 and 19 because they are additions to the main features of the independent claims with further limitations to the way of determining the orientation and positioning of the device.
38. The applicant’s submissions, having covered the history of the present application and the objections raised, raised two broad lines of arguments for claim 1 against each of the citations along with the examiner’s starting point as to why the amended claims do not lack an inventive step. These could be summarised and listed as:
a.The citations do not teach or suggest making any determination with respect to an orientation of the device, as recited by claim 1.
b.The person skilled in the art would not be directly led as a matter of course to the present invention from the citations.
Statutory framework
Inventive Step
39. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
40. The test for obviousness set out in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd is whether it would have been a matter of routine to proceed to the claimed invention.
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” [5]
[5] [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286
41. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [6] also approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd in which Graham J had posed the reformulated Cripps question[7]:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
[6] [2002] HCA 59 at [51] – [53]
[7] [1970] RPC 157 at [187]
42. In AstraZeneca AB v Apotex Pty Ltd [8], the Full Court held that in formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge or information available under subsection 7(3).
[8] [2014] FCAFC 99 at [203]
43. In relation to what level of inventiveness is required to sustain a patent, the Full Federal Court in Garford Pty Ltd v Dywidag Systems International Pty Ltd stated as follows[9]:
“The inventiveness required to sustain a patent for a claimed invention is quite small. A ‘scintilla’ of inventiveness is all that is required: Alphapharm at [195]. However, there must still be ‘some difficulty overcome, some barrier crossed’ (per Lockhart J in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd [1989] FCA 57; (1989) 25 FCR 565 at 574) or some contribution to the art “beyond the skill of the calling” (Allsop Inc v Bintang Ltd [1989] FCA 297; (1989) 15 IPR 686 at 701)”.
[9] [2015] FCAFC 6 at [44]
44. Additionally, where a piece of prior art discloses the relevant features of a claimed invention then the claim will generally be considered as obvious in view of that prior art as there is no inventive step.
Common General Knowledge (CGK)
45. Common general knowledge was described by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No 2] in the following terms[10]:
“‘Common general knowledge’ was well understood as being ‘part of the mental equipment of those concerned in the art under consideration’, and Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [11] had confirmed that what was ‘known or used’ in Australia was confined to common general knowledge, which was explained as:
“the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old””. (Citations omitted.)
[10] [2007] HCA 21; (2007) 235 CLR 173 at [55]
[11] (1980) 144 CLR 253 at [292]
46. In Aktiebolaget Hässle v Alphapharm Pty Ltd [12], the High Court upheld the primary judge’s rejection of s7(3) information as common general knowledge in circumstances in which there was no evidence of its general acceptance and assimilation by the PSA.
[12] [2002] HCA 59; (2002) 212 CLR 411 at [31]
47. In order to qualify as common general knowledge, it is not necessary that the knowledge be memorised by the PSA. It is sufficient if it is material in the field in which the PSA is working which he or she knows exists to which he or she would refer as a matter of course.[13]
[13] (ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345; (1999) 45 IPR 577 at [112] per Emmett J; ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349; (2000) 106 FCR 214 at [57]; see Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) at [4110]).
Problem to be Addressed
48. The background discussion given in the specification (see paragraphs [0004] and [0005]) discusses problems with biometric enrolment and the use of biometric authentication. The specification notes:
“[0004] Some techniques for implementing biometric authentication using electronic devices, however, are generally cumbersome. When a user fails to enroll a biometric feature for biometric authentication or fails to perform biometric authentication, a user is often unaware of the underlying cause for the failure. Thus, the user can be discouraged from using biometric authentication altogether. Moreover, when the user performs additional attempts to enroll a biometric feature or biometrically authenticate after a failure, the user often does so without having the knowledge to correct the underlying cause of the failure. In view of the foregoing drawbacks, existing techniques require more time than necessary, wasting both user time and device energy. This latter consideration is particularly significant in the operation of battery-operated devices.
[0005] Accordingly, the present technique may provide electronic devices with faster, more efficient methods and interfaces for implementing biometric authentication. Such methods and interfaces optionally complement or replace other methods for implementing biometric authentication. Such methods and interfaces may reduce the cognitive burden on a user and produce a more efficient human-machine interface. For battery-operated computing devices, such methods and interfaces may conserve power and increase the time between battery charges. Such methods and interfaces may also reduce the number of unnecessary, extraneous, or repetitive input required at computing devices, such as smartphones and smartwatches.”
49. As such, the problem that is sought to be addressed by the claims has to do with addressing the lack of correct guidance to the user enrolling a biometric feature or for biometric authentication.
50. The examiner has discussed the problem and associated the problem to be common general knowledge for a person skilled in the art at the priority date in Examination Report No 4.
“This problem most certainly was known within the CGK at the priority date. “Face Unlock” has been around on Android devices since 2011 (Android 4.0) and presents user guides such as “face not visible” and an onscreen face outline guide overlayed on their view of the front facing camera feed. This can be seen briefly at 1:33 (sic) of D4. The existence of these enrolment guides clearly indicates that it was well-known that some users experience difficulties enrolling facial data and benefit from onscreen guidance. For these reasons, the problem addressed by the present application was known as part of the CGK at the priority date.”
51. The applicant’s submissions, both during examination and now, do not assist in this matter. Indeed, the applicant appears to have left it up to the examiner to find a problem, and then sought to provide arguments in relation to the citations and the common general knowledge in the art without touching on the problem.
52. To my mind, it is appropriate to adopt the problem to be that biometric enrollment can fail because a user is unaware of the causes of failure, thus leading to a cognitive burden on a user with wasted effort, time and resources.
Person Skilled in the Art
53. It is well established that many of the issues in patent examination are answered by reference to the person skilled in the art (“PSA”):
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.” [14]
[14] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70]
54. However, the person skilled in the art is an artificial construct that is used as a tool of analysis, and there is a danger in trying to identify the person skilled in the art as an actual person or persons:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”[15]
[15] AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23]
55. In the present case the art is biometric enrolment of features to be used for authentication. The person skilled in the art must have knowledge of biometric security, use of sensors and authentication with design background in computer implemented programming for designing a user interface in an electronic device.
Consideration of disclosures of documents D1 to D3
56. The applicant is seeking to differentiate the determination of orientation made in the prior art documents. I will analyse inventive step in the following paragraphs.
57. Document D1 describes an authentication process that uses an infrared image based on detecting the line of sight of the user’s eyes (paragraph [0037]). The orientation mentioned in D1 and associated prompts are instructing the user to orient (position or move) the infrared camera towards the eyes of the user of the smartphone to perform iris authentication (paragraphs [0041] - [0042], figures 5-6, paragraphs [0059] – [0064]). While this can be seen as positioning the smartphone or electronic device vertical to the face of the user, the determinations in D1 are associated with the direction of the straight line of sight detected (figure 5) from the infrared image coinciding with the direction of the optical axis connecting the user’s eyes and the infrared camera. Further, D1 does not define an enrollment criteria as such to determine if the orientation is satisfied or not. The subsequent steps of determining a change in orientation and a second set of prompts when the orientation does not satisfy the enrollment criteria of the claimed invention are neither presented nor discussed in D1.
58. Document D2 in Figure 4 describes a process for capturing an image frame with an acceptable facial pose. The image capture process in D2 includes receiving an image frame and identifying a user’s facial pose from the image frame. D2 evaluates the face to determine whether the image frame comprises an acceptable or unacceptable face pose (see abstract). The determining of an acceptable facial pose is based on translation positions along the X, Y, Z axis and angle of rotations (see paragraphs [0031], [0041]-[0044]). If the facial pose is not acceptable, instructions (prompts) are given to the user in moving the device and taking another image (see paragraph [0042]). These steps are repeated until a facial pose is acceptable (see paragraph [0044]). The movement of the device in D2 along with the associated instructions (prompts to instruct the user to rotate device towards or away from a user, in a clockwise or counterclockwise direction, or towards the left or right) to the user are based on a likelihood of the face pose of the next captured image being increased. The differences with D2 and the claimed invention according to me are, D2 fails to disclose:
· The step of “satisfies a set of enrollment criteria, initiating a process for enrolling”, for authentication. D2 is merely an image capturing apparatus for capturing images and face tracking. There is no determination whether an orientation satisfies an enrollment criteria.
· The step of “detecting a change in orientation of the electronic device”. D2, again uses captured images from the imaging device to analyse, compute and provide instructions.
59. D3 is the closest prior art document and describes a method of capturing biometric data that includes calculating, by a terminal device, an angle between a surface of the terminal device and an X-axis of the terminal device. When the angle is other than ninety degrees, a prompt is displayed on the terminal device that is designed to cause a terminal device user to adjust the position of the terminal device into an optimal position. After adjusting the position of the terminal device, the terminal device continues to calculate the angle and when the angle is ninety degrees the terminal device captures biometric data from the user. The position determination in D3 is with reference to the ground position, I see that to be equivalent to the “determination of orientation” step as per the claimed invention. I also note that, D3 has no precisely explicit disclosure relating to “detecting a change in orientation of the electronic device”, or a specific determination that that device has changed at all, in relation to figure 8 and paragraphs [0039] and [0040] of D3. However, it is clear to me that the device in D3 would always be calculating the angle and determining whether the device is in the optimal position of ninety degrees. In this context Figure 8 of D3 is clearly describes a looping process whereby continual calculation an instruction/prompting will occur. As the examiner lays out in his fourth report:
“D3 discloses a process described as applicable to an enrolment (or authentication) context ([0001]). Figure 8 shows the general flow of the process including determination that an orientation theta of the electronic device satisfies a set of enrolment criteria (item 50), initiating a process for enrolling a biometric feature when the criteria is met (item 54) and outputting a prompt to reorient the device when the enrolment criteria are not met (item 52). The change in orientation of the device following the prompt can be seen in Figures 1 and 2.”
60. I will lay out a feature-by-feature table comparison of claim 1 with D3 as follows:
| Features of claim 1 | D3: US 2017/0169202 A1 |
| A method, comprising: at an electronic device with a display and one or more biometric imaging sensors: | Abstract; Figure 3, item 26 (display), item 29 (sensing device); paragraph [0029] |
| detecting a series of one or more inputs for initiating biometric enrollment with the one or more biometric imaging sensors; | Capturing biometric data from a user would inherently involve sensors, cameras and the like. (paragraph [0039] first 4 lines) |
| in response to receiving the series of one or more inputs for initiating biometric enrollment with the one or more biometric imaging sensors: | paragraph [0039] first 4 lines |
| in accordance with a determination that a first orientation of the electronic device satisfies a set of enrollment criteria, initiating a process for enrolling a biometric feature with the one or more biometric imaging sensors, | Optimal position, initiate enrollment by capturing biometric data, paragraph [0018], Configurable policies for enrollment in paragraph [0025], claim 1 |
| wherein enrolling a respective biometric feature includes capturing information about the respective biometric feature that enables the respective biometric feature to be used to provide authentication for a first type of operation at the electronic device, wherein before the respective biometric feature is enrolled the respective biometric feature is not enabled to be used to provide authentication for the first type of operation at the electronic device; and | Figure 2; Paragraph [0019], Figure 4, paragraph [0035], facial image |
| in accordance with a determination that the first orientation of the electronic device does not satisfy the set of enrollment criteria, outputting a first set of one or more prompts to change the orientation of the electronic device to a second orientation that satisfies the set of enrollment criteria, | Figure 1; Figure 8 item 52; paragraph [0039] |
| wherein the second orientation is different from the first orientation; subsequent to outputting the first set of one or more prompts to change the orientation of the electronic device to the second orientation that satisfies the set of enrollment criteria, | in Figures 1 and 2, Constantly detecting the angle θ in respect to the orientation of the terminal device. Paragraph [0034] where a prompt is shown when the angle is not θ. Paragraph [0039] continues to state the prompt could be instruction, could be guide lines or guide images. |
| detecting a change in orientation of the electronic device; and | Constantly detecting the angle θ in respect to the orientation of the terminal device paragraph [0040] & [0042], claim 1 |
| in response to detecting the change in orientation of the electronic device: | As it detects [0042] processing continues; after adjusting step in claim 1, |
| in accordance with a determination that the orientation of the electronic device still does not satisfy the set of enrollment criteria, outputting a second set of one or more prompts to change the orientation of the electronic device to the second orientation that satisfies the set of enrollment criteria. | Paragraph [0034] where a prompt is shown when the angle is not θ. Figure 8, step 50 is the optimal position determination before step 54 of capturing biometric data. Figures 1 and 2, Constantly detecting the angle θ in respect to the orientation of the terminal device. Paragraph [0039] continues to state the prompt could be instruction, could be guide lines or guide images – specifically in terms of enrollment and in generating trustworthy authentication transaction results see paragraph [0042] |
61. D4 which is a video provided by the examiner to be indicative of common general knowledge only provides guidance on the steps of registering a “Face Unlock” feature on an Android phone. It establishes that there is guidance provided before the actual face registration process, e.g.: find an indoor spot – not too bright or too dim and hold the phone at eye level. To me these instructions in the video are quite generic and useful, however are not really solving the problem of the present application of user guidance and users being unaware of the causes of failure, thus still leading to a cognitive burden on a user with wasted effort, time and resources.
Obviousness in light of the citations D1-D3
62. The Examiner has indicated in the 4th examination report the claimed invention lacks an inventive step in light of each of D1, D2 and D3.
63. The applicant’s submissions repeat the argument “that a person skilled in the art would not be directly led as a matter of course to the citation” for each of D1, D2 and D3 in light of the common general knowledge.
64. Regarding obviousness firstly in light of each D1 or D2 and the common general knowledge in the art, it must be borne in mind that the invention is not just in providing useful guidance to users but is a combination of factors of determination and processing based on the orientation of the device and prompts that are aligned to an enrollment criteria. With the challenges and difficulty of user engagement in registering/enrolling biometrics and subsequently using them for authentication, especially in terms of time and energy, I am not convinced that it would have been obvious (i.e. a matter of course/routine) for a person skilled in the art to use the steps disclosed in D1 and D2 (when combined with common general knowledge as presented in document D4) to arrive at the orientation determination steps for the claimed enrolment process. Documents D1 and D2 do not relate to enrolment issues and addition of the general disclosure of Document D4 does not on my reckoning directly lead the person skilled in the art to use Documents D1 and D2 in an enrolment procedure. In other words, D1 and D2 does not define an enrolment criteria as such to determine if the orientation is satisfied or not, any subsequent steps of determining a change in orientation and a second set of prompts when the orientation does not satisfy the enrolment criteria of the claimed invention, with D4 not teaching this addition to those documents.
65. Therefore, independent claim 1 and subsequent dependent claims are not obvious in light of the citations D1 or D2 alone or in combination with the common general knowledge in the art (D4).
66. It is apparent that D3 discloses each feature of claim 1, and as such it is self-evident that this claim would be arrived at without an invention and is obvious. While not the subject of this decision, it would seem that a lack of novelty would also follow. Further analysis of novelty and inventiveness of the dependent claims using D3 is deferred to the examination section.
Conclusion
67. I find that claim 1 is not inventive. All features of claim 1 are disclosed in D3 and therefore, there is no barrier to be crossed, there being no inventive step. It would seem that a lack of novelty would also follow. I therefore refer the application back to the examination section for further assessment and the issuance of another examination report dealing with the claim set as proposed to be amended.
68. In the circumstances, pursuant to sub-regulation 13.4(3), the final date to gain acceptance is set at four (4) months from the date of this decision.
Shreyas Kumar
Delegate of the Commissioner of Patents
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