DETAILED ACTION
This action is responsive to the Amendments and Remarks received 11/12/2025 in which no claims are cancelled, no claims are amended, and no claims are added as new claims.
Response to Arguments
Examiner incorporates herein previous Responses to Arguments.
On page 5 of the Remarks, Applicant contends the amendments to the claims overcomes the provisional double patenting rejection. Examiner disagrees due to the obvious substantial overlap of features recited in the claims. Regarding the argument that the reference patent application 17/790,907 does not recite a condition related to the transform skip flag, Examiner notes such a feature is obvious. This is especially true in view of the teachings of Egilmez, which teaches that the VVC standard already utilized transform skip flag as a condition for enabling LFNST. See double patenting rejection, infra.
On page 8 of the Remarks, Applicant is correct in responding to Examiner’s assertion for the larger block sizes, but fails to account for the fact that the dual tree nature of the chroma block means that the skilled artisan cannot infer the value of the any of the parameters for cIdx = 1 or 2. In other words, the prior art does care what the tree type of the block is because if it is dual tree chroma, separate signaling of LFNST and scaling list flags is determined. Therefore, contrary to Applicant’s assertion that Examiner’s assertion includes the fact that “tree type of the current block has no effect on whether the scaling list is applied or not” is not correct. It has an effect because dual tree chroma impacts the signaling and decoding of the additional syntax elements for the given cIdx. The claim simply says, “in response to a case where…tree type…is dual tree chroma….” There is no claimed separate “effect on whether the scaling list is applied or not” as Applicant avers. It is simply a contextual requirement of what takes place for that type of block.
On page 9 of the Remarks, Applicant disagrees with the assertion made in the previous Office Action regarding Hashimoto’s rows 1–3. Examiner finds the argument unpersuasive in view of the interpretation of Hashimoto’s table articulated in the preceding Office Action and the level of skill in the art. See rejection, infra.
Other claims are not argued separately. Remarks, 10.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1–16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–16 of copending Application No. 17/790,907 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims represent substantially overlapping subject matter regarding applying scaling lists based on tree type and whether LFNST is applied. The obviousness of the condition drawn to transform skip is evidenced by at least the teachings of Egilmez, which teaches that transform skip is incompatible with LFNST.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 7, 8, 12, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al., “Fix on LFNST condition,” JVET-Q0133-v2, 17th Meeting: Brussels, BE, January 9, 2020 (herein “Hashimoto”), Laroche (US 2023/0145618 A1), and Egilmez (US 2021/0195222 A1).
A note about interpreting Hashimoto’s Table: It is important to recognize some implied concepts represented in Hashimoto’s Table. First, as Hashimoto explains prior to the table in Section 2, the size of the chroma block controls whether LFNST is applied and the “LFNST” column in the table demonstrates that correlation. For larger-sized chroma blocks where size is not a constraint forcing disabling LFNST, LFNST can be enabled and scaling lists for LFNST can be controlled by the scaling list for LFNST flag. Second, Hashimoto explains that scaling lists can be performed regardless of LFNST in processes outside the LFNST process. Hashimoto’s Table under Section 2.1 is showing in the last two columns that scaling lists, regardless/outside of LFNST, are still possible for chroma blocks disallowed LFNST due to size.
Regarding claim 1, the combination of Hashimoto, Laroche, and Eglimez teaches or suggests an image decoding method performed by a decoding apparatus, the method comprising: receiving residual information from a bitstream; deriving transform coefficients for a current block by performing dequantization based on the residual information (Laroche, ¶ 0100: teaches, for a decoder, dequantizing the residual block); and deriving residual samples for the current block based on an inverse transform for the transform coefficients (Laroche, ¶ 0097: teaches the common inverse transform to derive residual samples), wherein the dequantization is performed based on a predetermined scaling list (Laroche, ¶ 0134: teaches the scaling list allows for signaling certain quantization matrices for use in quantization), wherein whether to apply the scaling list is determined based on a low frequency non-separable transform (LFNST) index of the current block (Laroche, ¶ 0134: teaches LFNST, which the skilled artisan knows is a low-frequency transform performed on a portion of the transform block; Laroche, ¶ 0134: teaches a flag that is meant to disable the use of the scaling list for LFNST; Laroche does not teach that which Hashimoto teaches regarding the default behaviors and signaling structure in the reference software of VVC; Hashimoto, Section 2.1: describes to one having ordinary skill in the art that scaling lists are not necessarily of much benefit to LFNST coefficients and that if the user wants to apply scaling lists when LFNST is enabled, a particular flag can override the default behavior of disallowing scaling lists when LFNST is enabled to allow coefficient scaling lists when LFNST is enabled; Hashimoto, Section 2.1: describes in the table that the desired behavior is that scaling lists are applied or not applied based on whether LFNST is applied) and a tree type of the current block, wherein the tree type of the current block is one of pre-defined tree types, wherein the pre-defined tree types include a single-tree, a dual-tree luma and a dual-tree chroma, wherein, in response to a case where i) the tree type of the current block is the single-tree, ii) the current block is a chroma component, and iii) the LFNST index is greater than 0 (Hashimoto, Section 2.1: the table describes this scenario in the second row; see also next), it is determined that the scaling list is applied to the current block (Hashimoto, Section 2.1: describes in the table that whether scaling lists are applied can be influenced by whether the tree type is single tree (luma or chroma depends on the color index variable, cIdx) or dual tree (again, luma or chroma depends on the color index variable, cIdx); Examiner notes that the size of the transform block and the LFNST index are given in the table and that the table does not represent an exhaustive list of the possibilities of the use of scaling matrices under given scenarios; see original claim 2 wherein the exact claimed scenario is depicted in Hashimoto’s Table; Hashimoto, Sections 1 and 2: teaches partially decoupling scaling lists from LFNST since other parts of the Working Draft utilize scaling lists such that the scaling matrix for LFNST does not alone control scaling list application; Hashimoto’s second row shows scaling lists are possible under the claimed scenario), wherein, in response to a case where i) the tree type of the current block is the single tree ii) the current block is a luma component, and iii) the LFNST index is greater than 0, it is determined that the scaling list is not applied to the current block (Hashimoto, Section 2.1: describes in the table that whether scaling lists are applied for single tree differs based on cIdx, which Examiner notes the skilled artisan knows is the color component index wherein 0 is for luma and 1 is for chroma; Examiner notes the claimed scenario is line 1 in the table and further notes that the scaling matrix disabled flag can control in such a scenario), and wherein, in response to a case where i) the tree type of the current block is the dual-tree chroma and ii) the LFNST index is greater than 0, it is determined that the scaling list is not applied to the current block (Hashimoto, Section 2.1: describes in the table that whether scaling lists are applied can be influenced by parameters such as whether the tree type is single tree or dual tree, whether LFNST is enabled, and whether the scaling matrix disabled flag is set; Examiner finds it obvious to not apply a scaling list when there is no scaling list available; Hashimoto, Section 2.1: describes a dual tree chroma scenario (line 4 in the Table) in which the scaling list can be disabled (i.e. disabled flag = 1); Examiner notes line 4 in the Table is disabling LFNST for dual tree chroma because of the size of the chroma block being too small; If the dual tree chroma block were bigger, then LFNST is possible and the scaling list LFNST disable flag, obviously, by its name, controls whether the scaling list is applied; In other words, if one were to argue that row 4 of Hashimoto’s Table is deficient because it fails to show LFNST index greater than 0 and fails to show a scaling list disabled, one would be wrong due to a failure to properly interpret the teachings of Hashimoto; Hashimoto’s row 4 is teaching that because of the size of the chroma block, LFNST is automatically disabled such that it does not matter what the flag indicates regarding whether scaling lists should be disabled for LFNST since there is no reason to disable them based on that flag), and wherein in response to a case where i) the tree type of the current block is the dual-tree chroma and ii) transform skip flags for both Cb component and Cr component for the current block are equal to 0, the LFNST index is obtained (Examiner notes Applicant’s transform skip flag being zero is obvious because skipping transform and performing a transform (e.g. LFNST) are incompatible as taught by Egilmez; Egilmez, see e.g. ¶¶ 0127–0131: teaching for single tree luma or chroma, applying a rule that if at least one of the transform flags for Y, Cb, Cr is disabled, then LFNST index is coded and otherwise explaining that when all three transform skip flags are disabled, LFNST can be coded; Other rule variations are also disclosed as possible; For this limitation, see specifically Egilmez, ¶ 0130.2).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the elements taught by Hashimoto, with those of Laroche, because both references are drawn to the same field of endeavor such that one wishing to practice LFNST and scaling lists would be led to their relevant teachings, because Hashimoto is simply further explaining Laroche’s references to LFNST and scaling lists as it applies to tree type, and because Laroche’s teachings are merely being used to teach ancillary features regarding the well-known approach of subjecting residuals to a transform for encoding and reversing that process when decoding such that the combination amounts to a mere combination of prior art elements, according to known methods, to yield a predictable result. This rationale applies to all combinations of Hashimoto and Laroche used in this Office Action unless otherwise noted.
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the elements taught by Hashimoto and Laroche, with those of Egilmez, because all three references are drawn to the same field of endeavor such that one wishing to practice LFNST and scaling lists would be led to their relevant teachings, because both Egilmez and Hashimoto are simply further explaining Laroche’s references to LFNST and scaling lists as it applies to tree type, color component, and transform skip flag, and because Laroche’s teachings are merely being used to teach ancillary features regarding the well-known approach of subjecting residuals to a transform for encoding and reversing that process when decoding such that the combination amounts to a mere combination of prior art elements, according to known methods, to yield a predictable result. This rationale applies to all combinations of Hashimoto, Laroche, and Egilmez used in this Office Action unless otherwise noted.
Regarding claim 7, the combination of Hashimoto, Laroche, and Eglimez teaches or suggests the image decoding method of claim 1, wherein the current block comprises a transform block (Hashimoto, Section 2.1: the table describes the size of the transform blocks (Tb) according to width and height such that the skilled artisan understands the blocks being discussed are transform blocks (Tb)).
Regarding claim 8, the combination of Hashimoto, Laroche, and Eglimez teaches or suggests an image encoding method performed by an image encoding apparatus, the method comprising: deriving prediction samples for a current block; deriving residual samples for the current block based on the prediction samples; deriving transform coefficients for the current block based on a primary transform of the residual samples (Laroche, ¶¶ 0093 and 0096: teaches, during encoding, residuals are the result of prediction and that the residuals are subjected to transform); and quantizing the transform coefficients, wherein the quantizing is performed based on a predetermined scaling list (Laroche, ¶ 0134: teaches the scaling list allows for signaling certain quantization matrices for use in quantization), wherein whether to apply the scaling list is determined based on a low frequency non-separable transform (LFNST) index of the current block (Laroche, ¶ 0134: teaches a flag that is meant to disable the use of the scaling list for LFNST; Laroche does not teach that which Hashimoto teaches regarding the default behaviors and signaling structure in the reference software of VVC; Hashimoto, Section 2.1: describes to one having ordinary skill in the art that scaling lists are not necessarily of much benefit to LFNST coefficients and that if the user wants to apply scaling lists when LFNST is enabled, a particular flag can override the default behavior to allow coefficient scaling lists when LFNST is enabled; Hashimoto, Section 2.1: describes in the table that the desired behavior is that scaling lists are applied or not applied based on whether LFNST is applied) and a tree type of the current block (Hashimoto, Section 2.1: describes in the table that whether scaling lists are applied can be influenced by whether the tree type is single tree or dual tree; Examiner notes that the size of the transform block and the LFNST index are given in the table and that the table does not represent an exhaustive list of the possibilities of the use of scaling matrices under given scenarios; see original claim 2 wherein the exact claimed scenario is depicted in Hashimoto’s Table), wherein the tree type of the current block is one of pre-defined tree types, wherein the pre-defined tree types include a single tree, a dual-tree luma and a dual-tree chroma, wherein, in response to a case where i) the tree type of the current block is the single-tree, ii) the current block is a chroma component and iii) the LFNST index is greater than 0, it is determined that the scaling list is applied to the current block, wherein, in response to a case where i) the tree type of the current block is the single tree, ii) the current block is a luma component, and iii) the LFNST index is greater than 0, it is determined that the scaling list is not applied to the current block, and wherein, in response to a case where i) the tree type of the current block is the dual-tree chroma and ii) the LFNST index is greater than 0, it is determined that the scaling list is not applied to the current block, and wherein in response to a case where i) the tree type of the current block is the dual-tree chroma and ii) transform skip for both Cb component and Cr component for the current block are equal to 0, the LFNST index is signaled (see rationale for the rejection of claim 1).
Regarding claim 12, the combination of Hashimoto, Laroche, and Eglimez teaches or suggests the image encoding method of claim 8, wherein, in response to a case where the tree type of the current block is the dual-tree luma and the LFNST index is greater than 0, it is determined that the scaling list is not applied to the luma component (Hashimoto, Section 2.1: row three of the table describes a dual tree luma scenario in which the scaling list is not applied when LFNST is enabled when the scaling matrix flag indicates disabling scaling matrix for LFNST).
Regarding claim 14, the combination of Hashimoto, Laroche, and Eglimez teaches or suggests the image encoding method of claim 8, wherein the current block comprises a transform block (Hashimoto, Section 2.1: the table describes the size of the transform blocks (Tb) according to width and height such that the skilled artisan understands the blocks being discussed are transform blocks (Tb)).
Claim 16 lists essentially the same elements as claim 8. Therefore, the rationale for the rejection of claim 8 applies to the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ramasubramonian et al., “AHG15: Scaling matrices for LFNST-coded blocks,” JVET-P0365-v2, 16th Meeting: Geneva, CH, October 2019. The publication teaches scaling matrices for LFNST may be flat and proposes a flag called scaling_matrix_for_lfnst_disable_flag. It also demonstrates the interplay between the lfnst index being not equal to zero and the size of the transform unit not being too small.
Egilmez et al., “Chroma LFNST Simplification and Signaling,” JVET-Q0686-v1, 17th Meeting: Brussels, BE, uploaded 01/08/2020. The following is an excerpt from the JVET submission website indicating the upload date and time for Egilmez’s JVET-Q0686.
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It is noted versions 1 and 2 antedate Applicant’s priority filing date. It is noted 5:09 AM on 01/10/2020 in France (where the server is generating its local time and date stamp) is actually the prior evening, 01/09/2020, in the United States.
Tsukuba (US 2022/0385904 A1) confirms, and is evidentiary proof, of what Examiner has found through logic and knowledge of the art, that LFNST is skipped when transform is skipped (e.g. ¶¶ 0058 and 0071) and further teaches, for dual tree chroma, that if both the Cb and Cr transform skip flags are true, it is redundant to signal an LFNST index since, by rule, LFNST is skipped when the transform skip flag is true (e.g. ¶¶ 0058 and 0071). See also teachings regarding single tree luma, etc. (e.g. ¶ 0077).
Egilmez (US 2021/0195222 A1) teaches for single tree luma or chroma, applying a rule that if at least one of the transform flags for Y, Cb, Cr is disabled, then LFNST index is coded. Other rule variations are also disclosed as possible (see e.g. ¶¶ 0127–0131).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J Hess whose telephone number is (571)270-7933. The examiner can normally be reached Mon - Fri 9:00am-5:30pm.
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/MICHAEL J HESS/Examiner, Art Unit 2481
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