Ex parte Xuezhi Zhang

• Docket Number: Appeal 2023-000471,Application 16/660,841,Technology Center 2400
• Decision Date: 28 December 2023
• Parties: Ex parte XUEZHI ZHANG[1]
• Court: Patent Trial and Appeal Board

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Ex parte XUEZHI ZHANG^[1]

Appeal 2023-000471

Application 16/660,841

Technology Center 2400

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 28, 2023

FILING DATE 10/23/2019

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Before MAHSHID D. SAADAT, JASON J. CHUNG, and JAMES W. DEJMEK, Administrative Patent Judges.

DECISION ON APPEAL

CHUNG, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant^[2] appeals the Final Rejection of claims 1-5 and 7-11.^[3] We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM and enter a new ground of rejection.

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INVENTION

The invention relates to information systems for social networking. Spec. ¶ 1. Claim 1 is illustrative of the invention and is reproduced below:

1. A method for making friends through face recognition comprising

Users invoke a friend scanning function to activate a camera in a smart phone or smart device, aim at an interested candidate for friends, and select the candidate to dispatch out a command of making friends with the candidate in an application; the candidate's photo or face image taken by the camera when dispatching out the command of making friends is sent to a server program of the application together with the command, the server program searches using a face recognition algorithm through one or several of the database of the application, databases of cooperating social networking platforms and public face images databases to obtain an account or accounts of the candidate, to which request for making friends is sent; if the candidate's account cannot be found, a message stating that the candidate's account cannot be found is displayed to the user.

Appeal Br. 24 (Claims Appendix).

REJECTIONS

The Examiner rejects claims 1-3 and 7-9 under 35 U.S.C. § 103 as being unpatentable over the combination of Qi (US 2019/0332804 A1; CN Application No. 201810886489.5 filed on Aug. 6, 2018) and Petrou (US 2011/0038512 A1; published Feb. 17, 2011). Final Act. 8-12.

The Examiner rejects claims 4 and 10 under 35 U.S.C. § 103 as being unpatentable over the combination of Qi, Petrou, Su (US 2017/0310615 A1; published Oct. 26, 2017), and Becker (US 7,991,388 B1; issued Aug. 2, 2011). Final Act. 12-14.

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The Examiner rejects claims 5 and 11 under 35 U.S.C. § 103 as being unpatentable over the combination of Qi, Petrou, and Sundaresan (US 2014/0149510 A1; published May 29, 2014). Final Act. 14-15.

ANALYSIS

The Examiner determines that Qi's priority date is August 6, 2018. Ans. 3-4. The Examiner finds Qi teaches using a camera on a terminal to scan the face of a stranger and the terminal uploads the scanned photo to a server, which the Examiner maps to the limitation "searches using a face recognition algorithm" recited in claim 1. Ans. 5-6 (citing Qi ¶ 71); Final Act. 9 (citing Qi ¶ 71). Moreover, the Examiner finds Petrou teaches a facial recognition search system, which the Examiner maps to the limitation "searches using a face recognition algorithm" recited in claim 1. Ans. 5 (citing Petrou's Title, "FACIAL RECOGNITION WITH SOCIAL NETWORK AIDING"); Final Act. 10 (citing Petrou ¶¶ 44-45). The Examiner determines that a person having ordinary skill in the art at the time of the invention (hereinafter, "PHOSITA") would have combined Qi and Petrou to select the region of interest on the image, then to process that region through multiple databases using parallel searches in order to recognize the face of the person on the image. Ans. 10 (the Examiner determines a photo of someone in front of a mountain would not need to analyze the mountain to see if it contains facial features, which would expand Qi's system to have access to a broader range of potential facial matches); Final Act. 11 (citing Petrou ¶ 34).

Appellant argues Qi's publication date of October 31, 2019 is after the effective date of the present application, which is October 23, 2019 with a priority date of August 15, 2019. Appeal Br. 4; Reply Br. 2-3. In addition,

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Appellant argues its facial recognition algorithm based on deep artificial intelligence, as claimed, is drastically different than Qi's image recognition. Appeal Br. 4-11; Reply Br. 8-11. Appellant argues there is no need for any pre-knowledge in its claims, whereas Qi requires pre-knowledge of the target augmented reality business card. Appeal Br. 12; Reply Br. 4-5. Appellant argues Qi does not require authentication, whereas in the present invention, an account user needs to take a picture of himself for face recognition verification for authentication. Appeal Br. 12; Reply Br. 5. Appellant argues combining Petrou with Qi is detrimental to Qi because of the introduction of Petrou's region selection will reduce the usefulness of Qi's invention by two thirds. Appeal Br. 13, 17; Reply Br. 3-4. We disagree with Appellant.

We agree with the Examiner's determination that Qi's priority date is August 6, 2018. See 35 U.S.C. § 102(a)(2) (post AIA) ("the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention"). Qi's priority date of August 6, 2018 meets all the criteria of 35 U.S.C. § 102(a)(2) (post AIA) and, therefore, qualifies as prior art on the August 6, 2018 date.

We also agree with the Examiner's obviousness rejection. Qi teaches using a camera on a terminal to scan the face of a stranger and the terminal uploads the scanned photo to a server to try to match that feature (i.e., searches using face recognition algorithm) with a feature of a picture prestored in an augmented reality (AR) business card, which teaches the

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limitation "searches using a face recognition algorithm" recited in claim 1. See Ans. 5-6 (citing Qi ¶ 71); Final Act. 9 (citing Qi ¶ 71). Petrou teaches a facial recognition search system, which also teaches the limitation "searches using a face recognition algorithm" recited in claim 1. See Ans. 5 (citing Petrou's Title, "FACIAL RECOGNITION WITH SOCIAL NETWORK AIDING"); Final Act. 10 (citing Petrou ¶¶ 44-45).

The Examiner properly determines that a PHOSITA would have combined Qi and Petrou to select the region of interest on the image, then to process that region through multiple databases using parallel searches in order to recognize the face of the person on the image. See Ans. 10 (the Examiner determines a photo of someone in front of a mountain would not need to analyze the mountain to see if it contains facial features, which would expand Qi's system to have access to a broader range of potential facial matches); Final Act. 11 (citing Petrou ¶ 34). Thus, the Examiner has set forth sufficient "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

Appellant's argument that its claim has facial recognition algorithm based on deep artificial intelligence, which is drastically different than Qi's image recognition (Appeal Br. 4-11) is unpersuasive because this is not recited in the claim. "[A]ppellant's arguments fail from the outset because . . . they are not based on limitations appearing in the claims." See In re Self, 671 F.2d at 1348 (CCPA 1982).

Similarly, Appellant's argument there is no need for any pre-knowledge in its claims, whereas Qi requires pre-knowledge of the target

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augmented reality business card (Appeal Br. 12) is unavailing because the use of pre-knowledge is not precluded by the claim language.

We also disagree with Appellant's argument that Qi does not require authentication, whereas in the present invention, an account user needs to take a picture of himself for face recognition verification for authentication (Appeal Br. 12) because authentication is not recited in the claim.

Appellant does not argue claims 2-5 and 7-11 separately with particularity. Appeal Br. 5-23. Accordingly, we sustain the Examiner's rejection of: (1) independent claims 1^[4] and 7; and (2) dependent claims 2-5 and 8-11 under 35 U.S.C. § 103.

We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be forfeited. See 37 C.F.R. § 41.37(c)(1)(iv).

NEW GROUND OF REJECTION

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1 and 7 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter for the following reasons.

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A. Principles of Law

Inventions for a "new and useful process, machine, manufacture, or composition of matter" generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014).

In determining whether a claim falls within an excluded category, we are guided by the Court's two-step framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 7577). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk.").

Concepts...