Daon Enterprises Limited
[2022] APO 70
•24 October 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Daon Enterprises Limited [2022] APO 70
Patent Application: 2016266041
Title:METHODS AND SYSTEMS FOR CAPTURING BIOMETRIC DATA
Patent Applicant: Daon Enterprises Limited
Delegate:Felix White
Decision Date: 24 October 2022
Hearing Date: Written submissions filed on 26 July 2022
Catchwords: PATENTS – section 45 – examiner’s objection of lack of inventive step – all claims lack inventive step in view of D3 – similar considerations likely to apply in view of D1– reg 13.4(g) invoked
Representation: Patent attorney for the Applicant: Wallington-Dummer
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016266041
Title:METHODS AND SYSTEMS FOR CAPTURING BIOMETRIC DATA
Patent Applicant: Daon Enterprises Limited
Date of Decision: 24 October 2022
DECISION
Claims 1-7 lack inventive step in view of document D3 (US 2012/0165648 A1). Pursuant to reg 13.4(g), I allow Daon Enterprises three months from the date of this decision to consider overcoming the objection through amendment.
REASONS FOR DECISION
Background
Australian Patent Application 2016266041 (“The application”) was filed on 30 November 2016 in the name of Daon Holdings Limited, claiming priority to US patent application 14/963,439 with a priority date of 9 December 2015. The application was subsequently assigned to Daon Enterprises Limited (“The Applicant”) (recorded on 2 September 2021).
Disclosure of the application
The application is directed to methods and systems for capturing biometric data from users, for use in authentication.[1]
[1] Description as filed at [0001]. Paragraph references are to the description as filed unless otherwise indicated
The background of the invention sets out that there is an increasing demand to conduct transactions requiring authentication on network devices e.g. smartphones. The description sets out a problem that some users have difficulty orienting a smart device correctly to generate trustworthy biometric data e.g. by facial recognition. The description indicates that some users hold a smartphone near waist level and/or look down while capturing facial recognition data, and “do not appreciate that differently positioning the smart device should result in capturing better quality biometric data. Consequently, enrolling and authenticating such users desiring to conduct network-based transactions has been known to be an annoying, inconvenient and timely endeavor.”[2]
[2] [0003]
The specification then sets out a “Brief Description Of The Invention”: a method, device and computer program that calculates the angle of the terminal device from the horizontal, display a prompt on the device when the angle is not 90 degrees to the horizontal to cause the user to adjust the position of the device (called “an optimal position” here but apparently being 90 degrees to the horizontal),[3] and captures the biometric image when the angle of the device is 90 degrees to the horizontal.[4]
[3] The specification contemplates at [0019] that other angles e.g. between 85 and 95 degrees from the horizontal, or any other angle usable for capturing trustworthy biometric data
[4] [0004]-[0006]
The specification goes on to provide a “detailed description of the invention” with reference to figures.
Figures 1 and 2 are views of a user operating a terminal device such as a smartphone[5] where the user is capturing biometric data of themselves.[6] Figures 1-2 and [0016] demonstrate that the device may be rotated or translated in any of the cartesian X, Y and Z axes, although it identifies rotation around the Z axis (changing the angle θ from the X or horizontal axis) as being of most interest.[7] The specification describes that that as θ increases to about ninety degrees and the device is about level with the user’s face[8] the quality of the captured data increases.[9]
[5] Other devices contempated by the invention include tablets, phablets, laptops or personal computers (see [0020]) although it is difficult to see how a personal computer could be held and oriented to a 90 degree angle from the horizontal.
[6] The specification also contemplates at [0015] that a person other than the user may also be operating the biometric device.
[7] The specification provides no further information about how to correct for rotations or translations apart from rotation around the Z axis.
[8] An apparent consequence of the biomechanics of the human arm, although there is no discussion of biomechanics in the application.
[9] [0018]
Figure 3 and paragraphs [0019] – [0033] provide a rather generic description of the hardware and software components of a smart device. Of some relevance, paragraph [0028] describes that data from the gyroscope and accelerometer are used to calculate the angle of the device.
Paragraph [0034] states that the prompt displayed on the device can be any type of information that may cause the user to move the terminal device into the optimal position. An example is shown in Figures 4 and 5 with reference to [0035]-[0036]. Figure 4 shows the display of an image of the user when the device is not in the optimal orientation. Guide lines 36 delimit the optimal position of the user’s face. The face itself is shown displaced from the optimal position by a distance Δ which is a function of the angle from the horizontal θ. Further parallel lines 38 delimiting the displaced face are shown. When the device is moved to the optimal position (Figure 5) the two pairs of parallel lines move to overlap, and the face is shown in the optimal position.
Figures 6-7 and paragraphs [0037]-[0038] describe an alternative example where a guide image is used to align the image of the user by a similar process, but without the use of parallel guide lines. This example is not relevant to the embodiment that is the subject of the claims at issue.
10.Figure 8 is a flowchart representing the disclosed method for positioning the device prior to data capture. This is consistent with the brief description of the invention set out above.
11.The description concludes at [0042] with a recapitulation of this method. This restates that when the angle from the horizontal is 90 degrees, the device is considered to be in an optimal position and the image is captured. This is said to allow biometric data to be captured, and users authenticated more quickly and conveniently.[10]
[10] The referent of this comparative is not disclosed, presumably referring to a smart device with no visual feedback.
Examination
12.Following a direction from the Commisioner on 14 July 2020, examination was requested on 8 September 2020.
13.A first examination report was issued on 18 February 2021, setting a period to gain acceptance until 18 February 2022.[11] The first examination report stated that none of the claims were for patentable subject matter and additionally that none of the claims were novel (or in the alternative not inventive) in view of the disclosure of US 2014/0099003 A1 (“D1”). The report pointed to Figure 2 of D1 (reproduced below) as disclosing that in the optimal position the front surface of an image capturing terminal device is orthogonal to the X axis,[12] and Figures 4-6 (also reproduced below) as disclosing a shifting prompt when the device is not in the optimal position for capturing biometric data.
[11] Reg. 13.4(1)(b) – all references to regulations are to the Patents Regulations 1991.
[12] The axes in D1 are labelled differently to the present application: X is labelled as Z and vice versa. Nothing turns on this.
14.The Applicant filed submssions and a statement of proposed amendments on 8 February 2022 and shortly afterward contacted the named examiner by telephone on 11 February 2022 (one week before the deadline for acceptance) to discuss the patentable subject matter objection. The proposed amendments introduced the feature of a first and second pair of parallel lines displayed on the terminal device which come together as the device is moved to the optimal orientation (90 degrees to the horizontal). The submissions pointed to the lack of disclosure of overlapping images[13] and lack of disclosure of parallel lines in D1.
[13] Although the claims were silent as to overlapping images.
15.The submissions posited that the objective technical problem was how to enhance orienting a terminal device into an optimal position for capturing biometric data, and submitted that the skilled person had no hints on how to arrive at the feature of overlapping parallel lines from the disclosure of D1.
16.The submissions also pointed to a corresponding US application which had been allowed over D1.
17.A second examination report was issued on 16 February 2022. This report maintained the objection for lack of patentable subject matter, stating that that the substance of the invention is mere display which is not patentable. The report also objected to all claims as lacking an inventive step over D1.
18.The examiner acknowledged that D1 did not disclose the features of two pairs of parallel lines which delimit the dimensions of the image in the optimal position and come together when the device is in the optimal orientation. However the examiner appeared to consider that the shifting graphic of a keypad 26 in D1 has the same functionality as the parallel lines in the invention as claimed, and hence the claimed solution of parallel lines is a mere design choice.
19.On 18 February 2022[14] the Applicant filed a request to be heard. A divisional application, 2022201107, was filed on the same day. Reg 13.4(1)(g) and reg 13.4(3) provide that, if the application is not refused, the application would not lapse for at least three months after the issuance of this decision. Of course, in the event I was to refuse the application, the time to gain acceptance would be moot.
[14] The final day of the Reg 13.4(1)(b) period.
20.On 4 March 2022, a delegate of the Commissioner wrote to the Applicant (“The letter”) to indicate that the ground of lack of patentable subject matter would not be pursued[15] but set out further evidence and reasoning to form the basis of the issues to be determined in this decision.
[15] I concur with this assessment.
21.The letter set out two rationales for lack of inventive step, as follows:
· All claims lack inventive step in view of the combined disclosure of D1 with D2 (EP 2 031 556 A1)
· All claims lack an inventive step in view of D3 (US 2012/0165648 A1)
22.Notably, the first of these does not even implicitly invoke common general knowledge, although in my view the second does.
Lack of invnetive step in view of the combined disclosure of D1 and D2 (EP 2 031 556 A1)
23.In short, this replaces the “design choice” inventive step argument set forth in the second examination report with a one based on features from a combination of documents.
24.With respect to the independent claims, the letter states that D2 discloses the feature of overlapping two pairs of parallel lines in the embodiment of Figure 16 (reproduced below), and paragraph [0086]. In particular the guidance arrows prompt the user to align the two sets of auxiliary lines (described as “parallelograms” in the letter although they are apparently oblique views of rectangles). The auxiliary lines are stated to “delimit” the image 108. The letter also states that D2 is directed to a similar problem of adjusting the relative position of a camera and a subject, and concludes that the person skilled in the art would readily implement the disclosure of D2 into the disclosure of D1 without difficulty, thus arriving at the claimed invention.
Lack of inventive step in view of the disclosure of D3 (US 2012/0165648 A1)
25. This argument, newly raised in the letter, is based on the embodiment of Figures 2 and 3 (reproduced below), and paragraphs [0030] and [0049] of this newly raised citation. D3 is also directed to a method of taking a biometric image using a device with a camera and an accelerometer (e.g. a smartphone). With respect to the independent claims the letter states that lines 16a and 16b correspond to the first pair of lines and lines 18a and 18b correspond to the second pair of lines, and that these lines overlap when the image is oriented correctly. The letter also states that D3 discloses a step of capturing an image when alignment is achieved.
26. Although the letter admits that in D3 these lines are not parallel reference lines delimiting the image, the letter asserts that parallel lines delimiting an image are well known in the art, for example lines 24a and 24b in Figures 5 and 6 (reproduced below).
27. The letter then asserts that the difference between the claim and the disclosure of D3 is just the shape of the visual indicator for display which is an obvious choice of one of several known alternatives, and there is no particular problem to be overcome in applying a known alternative display indicator.
28. The letter also states that the features of the appended claims are either disclosed or obvious for similar reasons as set out in the examination reports.
The hearing
29. On 2 May 2022, the Commissioner set the case for hearing by written submissions, to be filed by 17 June 2022. Between 17 June and 14 July 2022 the Applicant requested, and was granted, three sequential two-week extensions for filing submissions. The Applicant filed written submissions and a further statement of proposed amendments (up to amendment item 4) on 26 July 2022. The proposed amendments added the feature that the terminal device is hand-held to the claims. I have reached my decision on the basis of the specification if it were to incorporate the proposed amendments, which I consider to satisfy the requirements of s102 of the Act.
Statutory basis
30. The present application was filed after 15 April 2013 and is therefore governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. These amendments included the introduction of new section 49(1). Under this provision, I must accept the present application if satisfied on the balance of probabilities that it complies with the requirements of the Act. If I am not so satisfied, I can refuse the present application.
Inventive step
31. The definition of inventive step is set out in subsections 7(2) and (3) of the Act:
(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.
Legal standards
32. The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V. R. Laboratories (Aust.) Pty Ltd[16] Aickin J stated:
“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 are the steps of the inventor or not.”
[16] (1981) 148 CLR 262 at 286
33. More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd[17] referred to this approach with approval and further held:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
'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 [the desired result]?'
That approach should be accepted.”
[17] (2002) 212 CLR 411 at 53
34. However, the “Cripps question” is not the sine qua non for inventive step. Other factors considered by the courts are whether a threshold requirement for inventive step has been met. As elegantly summarised by Lockhart J in R.D. Werner & Co. Inc. & Bailey Aluminium Products Pty. Ltd. [1989] FCA 37 at 39, with reference to 19th century UK case law that is still relevant today:
Novelty alone will not sustain a patent. There must in addition be some difficulty overcome, some barrier crossed. The distinction drawn by the courts between the two characteristics is illustrated by reference to some of the cases. In Britain v Hirsch (1888) 5 RPC 226 Cotton L.J. said:
"I do not agree with the view that when anything is done which has [sic: not] been done before, that is sufficient to justify a patent being obtained for it. In my opinion, it must be a question of whether there is sufficient invention to justify a monopoly being granted by the Crown in the particular thing."
35. The necessary quality of inventiveness has also been summarised as something that was beyond the skill of the calling at the priority date.[18]
[18] Allsop Inc & Another v Bintang Ltd & Ors 15 IPR 686 at page 701, citing with approval Graham v John Deere Co, 383 U.S. 1(1966)
Claim construction
36. At this point it is necessary to consider and construe the claims. The legal principles for construction of claims are well established: they are to be construed through the eyes of a skilled worker,[19] who is someone with an interest in the field of the invention; they are to be construed with reference to the specification as a whole; and with a generous measure of common sense.
[19] 37. Neither the letter nor the Applicant’s submissions make any representations as to the nature of the skilled worker, although the Applicant’s submissions make reference to “the skilled person in the biometric authentication art”. I would hazard that this skilled person would be a team involving software engineers with a knowledge of biometrics, and perhaps physiologists.
37. The specification as proposed to be amended concludes with seven claims, of which claims 1, 4 and 6 are independent. I will reproduce Claim 1 here in full:
1. A method of capturing biometric data comprising:
generating, by an accelerometer and a gyroscope included in a hand-held terminal device, data regarding rotation and translation of the hand-held terminal device;
calculating, by the hand-held terminal device, based on the generated data, an angle between a surface of the hand-held terminal device and an X-axis of the terminal device;
when the angle is other than ninety degrees, displaying, by the hand-held terminal device an image of a biometric modality of a user, a first pair of parallel lines, and a second pair of parallel lines;
moving the first pair of parallel lines to overlap the second pair of parallel lines as the hand-held terminal device is moved into an optimal position in response to said displaying step, wherein each pair of parallel lines delimits the dimensions of the image in the optimal position; and
when the first and second pairs of parallel lines overlap, capturing, by the terminal hand-held device, biometric data of the user.
38. This claim appears to correspond to the combination of the features shown in Figures 1, 4 and 8 as discussed above.
39. There does not appear to be much ambiguity in the claim, although I would make the following observations:
· The language “calculating … an angle between a surface of the hand-held terminal device and an X-axis of the terminal device” appears to be a drafting error. Taken literally, that angle would always be ninety degrees. The only reasonable construction of this feature, consistent with the specification as a whole, is calculating the angle between the surface of the device and the horizontal.
· The image displayed is “of a biometric modality of a user”. From this I take “the image” to be only the part showing the modality (e.g. the face or body part) and not to include any whitespace or background of the image.
· The claim does not exclude the possibility that the device can be held by someone other than the user.
· Likewise the claim does not limit the biometric modality to be the face of the user, although this is reflected in claim 3.
· “Optimal position” is not defined in the claim. However the reference to “when the angle is other than ninety degrees” clearly triggers the realignment step. This does not, to me, permit any construction apart from the “optimal position” being ninety degrees from the horizontal.
· The limitation to “hand-held” device excludes the rather inoperable embodiment of the terminal device being for example a personal computer, but it was hard to see how the invention disclosed could have been used with any other kind of device.
40. Independent claims 4 and 6 are directed to a hand-held terminal device comprising hardware and software features corresponding to the features of claim 1, and a computer readable medium comprising executable instructions corresponding to the features of claim 1 respectively.
41. Dependent claims 2, 5 and 7 further specify that the image is captured when the device is at about the same height as the face of the user.
42. Dependent claim 3 further specifies that the biometric data captured is of the face.
Applicant’s submissions
43. The Applicant’s submissions take the form of rebuttals of the grounds of objection set out in the letter. These submissions are principally focused on claim 1. They posit that since, in their submission, claim 1 is inventive over the cited references then independent claims 4 and 6 are also. I take from this that claims 1, 4 and 6 stand and fall together.
44. The submissions only briefly touch on dependent claims 2, 5 and 7 with respect to D1, and do not refer to dependent claim 3 at all.
45. The Applicant submits that the objective technical problem is how to enhance orienting a hand-held terminal device into an optimal position from which the hand-held terminal device may capture biometric data that may be used to generate trustworthy authentication transaction results.
Combination of D1 and D2
46. The Applicant notes, as stated in the letter, that D1 does not disclose first and second parallel lines which delimit the image and move to overlap as the terminal device is moved into an optimal position.
47. The Applicant submits that D2 is directed to an interface for visualising the movement of the user (as exemplified by the hand in Fig 16) and the lines do not overlap as the device is moved, but as the hand is moved. The Applicant further submits that the amended claims are directed to a hand-held device whereas the device of D2 is not hand-held.
48. The Applicant further submits that the parallel lines in D2 do not “delimit” the image. The Applicant proffers a construction from the American Heritage Collegiate Dictionary defining “delimit” as to establish limits or boundaries, and submits that the lines in D2 are not at the limits or boundaries of the hand, but rather exist outside the boundaries of the image.
49. The Applicant further submits that the skilled addressee would not adapt the device of D1 with the display of D2 because the embodiment of D1 uses displayed data to prompt the user to realign the device, whereas the device of D2 is stationary and cannot be moved.
Dependent claims vs D1
50. The Applicant submitted that claims 2, 5 and 7 are further distinguished from D1 in that the optimal position in D1 is not determined by the relative height of the device but only by reference to the displayed data.
Disclosure of D3
51. The Applicant identifies upper reference lines 24a and lower reference lines 24b as potentially corresponding to the parallel lines in the claim. The Applicant submits that these lines do not “delimit” the image as they are used for scaling or normalising rather than delimiting the image.
52. The Applicant notes that D3 uses crosshair reference lines (horizontal, vertical and circles) to achieve proper alignment in both vertical and rotation aspects before capturing an image. The Applicant submits that the skilled person would not modify the disclosure D3 to replace crosshairs with parallel delimiting lines because this would degrade the performance of D3: it would no longer be able to provide rotational alignment.
Consideration
53. From the perspective of the Cripps question, the question to be answered is whether the skilled worker would have used overlapping two parallel line-delimited images to align a device to an orientation of 90 degrees in order to capture biometric data for generating trustworthy authentication transaction results.
54. It is also necessary to ask whether the claimed invention possesses the necessary qualities of inventiveness.
55. It does not seem in doubt that the features of a smart phone including a camera and gyroscope were common general knowledge as of the priority date.
56. D1 is directed to the problem of aligning a self-taken biometric facial image. D2 is directed to aligning an unseen movable biometric part (as exemplified, a hand) in a static device, as pointed out by the Applicant. D3 is directed to aligning a full body image of a second person rather than the user.[20] Although the present specification mainly discusses an embodiment where the user is taking a self image, the claims clearly extend to the situation where an image is taken by a second person, and so D3 is directly relevant to this.
The claimed invention vs D1
57. The invention of claim 1 differs from the disclosure of D1 in two ways - one is the optimal angle which the description and claim states is vertical (90 degrees from the horizontal). The other is the nature of the interface for guiding the user to the optimal angle.
58. In terms of the first difference, Figure 1 of D1 shows the camera pointing at the user’s face at a slightly off horizontal angle. Of course, the most important angle for the purpose of biometric capture is the angle between the device and the plane of the face. The present description has not explained why a having the camera orthogonal to the horizontal axis provides any more optimal angle than a camera simply orthogonal to the plane of the face.
59. Since 90 degrees to the horizontal is one commonly used angle for taking selfies, I am satisfied that the choice of 90 degrees to the horizontal is indeed a design choice that the skilled worker would have tried with an expectation of also being an optimal angle.
60. I note that the specification asserts that ninety degrees is “considered” to be the optimal position and this method and system allows data to be collected more quickly and conveniently.[21] However there is no technical data to support this proposition. Indeed, elsewhere in the description it is more broadly stated that 85-95 degrees or indeed any other angle could be optimal.
[21] [0043]
61. The second difference, according to the letter, is made up for by the disclosure of D2.
Combination of D1 and D2
62. I would say that I am convinced by the Applicant’s submissions regarding the combination of D1 with D2.
63. In terms of the feature of “delimit”, the (Australian) Macquarie dictionary defines “delimit” as “to fix or mark the limits of; demarcate” which is consistent with the Applicant’s position. The term only appears once in the specification, in the context of describing the guide lines 36 in Figure 4. These lines do cleave to the limits of the face in the figures which is consistent with this definition.
64. Because the lines of D2 encompass rather than demarcate the image, I am satisfied that the lines of D2 do not “delimit” the image in the sense of the claims and hence combining D1 with D2 would not provide all the features of the claimed invention.
65. A further reason in my view that the skilled worker would not combine D1 and D2 is that they are measuring different types of biometrics. Although D2 might be said to disclose the principle of using auxiliary lines in a guidance display, the embodiment of Figure 16 in D2 differs in enough ways, to my mind, from the system of D1 that the uninventive skilled worker would not have been led to combine them with an expectation of success. These differences include:
· D2 is guiding the position of a movable biometric object inside a stationary reader, whereas D1 guides a movable reader external to a stationary object; and
· The auxiliary lines in D2 represent the “roll” of the plane of an object with respect to rotation around the X axis whereas D1 tracks the “pitch” and “yaw” i.e. displacement of an object with respect to rotation around the Y and Z axes.
66. For the two reasons identified above, I am not satisfied on the balance of probabilities that claim 1 lacks inventive step in view of the combination of D1 and D2.
The claimed invention vs D3
67. The invention of claim 1 differs from the disclosure of D3 only in the nature of the alignment interface (this does not appear to be disputed by the Applicant), although claim 3 differs further in the nature of the image being captured (full body vs face).
68. In the claims, the alignment interface is pairs of parallel horizontal lines delimiting the image. In D3 it is crosshairs (perpendicular lines). The letter not only asserts that D3 discloses parallel reference lines delimiting the image (admittedly in a different context) but also asserts that the shape of visual indications is one of several obvious known alternatives in the art.
69. I do not necessarily agree with the Applicant’s submissions on reference lines 24a and 24b in D3. Since I have construed “delimit” to mean “demarcate”, this meaning seems consistent with the way D3 uses these lines: for scaling or rotation. I also note that the Applicant has not directly addressed the assertion in the letter that the shape of the indicators is an obvious choice.
70. It is not being suggested that the precise interface disclosed and claimed by the Applicant is disclosed anywhere in the prior art, since it is acknowledged to be novel. There is still a question of whether the interface involves an inventive step.
71. After considering a number of perspectives, I am not satisfied that the feature of aligning pairs of parallel horizontal lines involves an inventive step, for the reasons set out below:
72. Firstly, to take the position that a finding of lack of inventive step cannot be made out merely because the feature has not been explicitly disclosed would be to conflate the grounds of novelty and inventive step. They are clearly separate grounds, as pointed out by Lockhart J in the passage quoted earlier.
73. I cannot see how merely replacing the interface of D3 with delimiting horizontal lines involves “crossing a barrier” or ingenuity beyond the “skill of the calling” of a software designer.
74. Indeed, if I were to find that the feature of delimiting horizontal lines to be inventive merely because that exact display modality has not been disclosed before would open the seemingly absurd possibility that any arbitrary novel interface design for framing the image (a pentagon for example) could independently be offered patent protection, where there is clearly no problem being solved by substituting an arbitrary graphical interface.
75. Secondly, from the perspective of the Cripps question, I am of the opinion that the skilled worker, in searching for an alternative interface to align a smartphone at a correct orientation, would have considered parallel horizontal lines, out of perhaps a number of possible options. I find the proposition set out in the letter, that horizontal lines 24a and 24b in D3 can be used for rotation of the image, to be consistent with this.
76. At best, the present invention could arguably be said to be a simplified method for providing less alignment functionality (one axis only, compared to D3 which aligns in three axes) and I suppose it is possible that the present invention could be less computationally intensive than the method in D3 if it simply used one axis data from the gyroscope rather than processing the image in two dimensions. However, this is neither reflected in any of the claims on file nor mentioned at all in the description of the application, so I cannot see how it can be given any weight for the purposes of inventive step.
77. The Applicant did made submissions along these lines, to the effect that the skilled worker would not be motivated to remove axes from D3. It is nevertheless difficult to see how merely designing a degraded version of the prior art could be said to involve an inventive step. E.g. the present invention appears incapable of determining whether the camera is actually pointing at the face (only that it is being held at 90 degrees).
Claims 2-7
78. As indicated above, claims 1, 4 and 6 stand and fall together.
79. The Applicant did not make any submissions with respect to claims 2, 5 and 7 with respect to D3. With respect to D1, the Applicant’s submission was that the citation did not take the height of the device into account when deciding whether to capture the biometric data. However, this is not reflected in the claim language. The claims merely require that the data is captured when the device is about at the height of the user. I note that this is clearly evident in D1 (see e.g. Figure 1 of D1). It also appears implicit in D3, given that the device is being held, presumably at eye level, by a third party.
80. Claim 3 has not been contested by the Applicant. With respect to D3, I note that the image captured by D3 is the full body rather than the face, but it appears straightforward for the skilled worker to modify the system of D3 to capture a facial image rather than a body image if desired.
81. Consequently, I find that claims 1-7 all lack an inventive step in view of D3.
Conclusion
82. My decision is that none of the claims involve an inventive step in view of D3. It is conventional to invoke reg 13.4(1)(g) rather than refuse the application where there may be a prospect of overcoming the objection by amendment. I therefore allow the Applicant a period of three months from the date of this decision pursuant to reg 13.4(1)(g) to attempt to place the application in order for acceptance.
83. However the Applicant should be aware that, in my view, a similar finding of lack of inventive step in view of D1 alone appears equally applicable. D1 is arguably more relevant prior art than D3 since it relates to the same problem as the present application (aligning an image of the user’s face), and the same considerations of “no barrier crossed” would seem to apply. Although this is consistent with the Examiner’s position in the second examination report, no objection in view of D1 alone was present in the letter. Hence I am not making any formal findings in terms of the inventiveness of the claims in view of D1 alone, but it would seem expedient for any further response to address D1 as well as D3.
Felix White
Delegate of the Commissioner of Patents
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