DETAILED ACTION
This action is responsive to the Amendments and Remarks received 09/08/2025 in which claims 1–13, 21, and 23 are cancelled, claims 14, 20, and 26 are amended, and no claims are added as new claims.
Response to Arguments
Regarding the argument against double patenting applied to US Patent No. 11,659,186 and 12,316,848, Applicant asserts the features drawn to the block size being 4x4 or greater is not found in the reference claims. Examiner agrees those prior art features are not found in the reference claim, but finds those features are obvious in view of the prior art. Therefore, a non-statutory double patenting rejection is appropriate. As explained below, and throughout prosecution, the skilled artisan would be led to Applicant’s claimed invention by simply understanding the relationships described in Hashimoto regarding the various coding tools and how they are envisaged to work or not work together for the claimed block sizes. Hashimoto’s Section 2.1 describes the process of determining the scaling for transform coefficients includes determining whether the size of the luma and chroma blocks represent a minimum size, and when they are, controlling the application of the scaling process. Therefore, as evidenced by Hashimoto, Applicant’s recited feature of conditioning scaling list application on block size does not distinguish the current claims from the reference patent in view of the prior art. Accordingly, the NSDP rejection is sustained.
On page 10 of the Remarks, Applicant contends that the claim requires the chroma block size to be 4x4 or greater such that “there is no case where the chroma component of the current block has a small block size such as 2xN or Nx2.” Examiner disagrees. The claim does not affirmatively state the chroma block size is greater than 4x4. In addition, Applicant has not shown support for the set of conditions leading to the scaling list being applied. Specifically, the combination of the constraints that the flag indicating scaling list being unavailable is set to indicate the scaling list is unavailable, and the size of the chroma block being greater than 4x4, leads to applying the scaling list when LFNST is enabled. In fact, Applicant leaves out of Applicant’s argument key features recited in the claims. Examiner also notes Applicant has not shown support for the combination of constraints as recited and argued. Applicant has failed to particularly point out applicable sections of the original disclosure supporting the amendments filed in response to the First Office Action. “New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirements.” MPEP 2163(I)(B). “[W]ith respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.” MPEP 2163(II)(A). See also MPEP 2163(II)(A)(3)(b). For all the foregoing reasons, Examiner is unpersuaded of error.
On page 10 of Hashimoto, Applicant explains the behavior of the prior art (e.g. Hashimoto) when the block size is 4x4 or greater and when LFNST is enabled but scaling list for LFNST is disabled. Examiner agrees that the prior art explains that in such a scenario, the scaling list is not applied. Examiner finds Applicant’s argument is to make the scaling_matrix_for_lfnst_disabled_flag meaningless, i.e. disregard the flag for really all scenarios. Examiner finds that odd and not supported by the Specification.
On page 11 of the Remarks, Applicant admits Examiner’s interpretation of the claim is correct. That is, Applicant admits that when the width and height of the current block are equal to 4, then the width and height of the chroma block are 2.
On page 11 of the Remarks, Applicant contends that Hashimoto fails to disclose what happens in the case of the width and height of the current block being greater than 4 and applying scaling list to the chroma block. Examiner disagrees. The table in Hashimoto clearly is only drawn to small blocks and the skilled artisan knows that with large blocks the scaling list would be applied according to the combination of syntax elements that would indicate such application.
Other claims are not argued separately. Remarks, 11.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14–26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–7 of U.S. Patent No. 12,316,848 (reference patent). 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. This obvious-type double patenting rejection is further made in view of the teachings of Hashimoto as described herein and throughout prosecution.
Claims 14–26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–14 of U.S. Patent No. 11,659,186 (reference patent). 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. This obvious-type double patenting rejection is further made in view of the teaching of Hashimoto and/or Egilmez as described herein and throughout prosecution.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 14–20, 22, and 24–26 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. This is a new matter rejection. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, the combination of the constraints that the flag indicating scaling list being unavailable is set to indicate the scaling list is unavailable, and the size of the chroma block being greater than 4x4, leads to applying the scaling list when LFNST is enabled. Indeed, Applicant seems to suggest that the invention is to simply decode a scaling_matrix_for_lfnst_disabled_flag and then ignore it for all chroma blocks. Applicant has failed to particularly point out applicable sections of the original disclosure supporting the amendments filed in response to the First Office Action. “New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirements.” MPEP 2163(I)(B). “[W]ith respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.” MPEP 2163(II)(A). See also MPEP 2163(II)(A)(3)(b).
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 14–20, 22, and 24–26 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”), Lai (US 2021/0092361 A1), and Eglimez (US 2021/0195222 A1).
Regarding claim 14, the combination of Hashimoto, Lai, and Egilmez teaches or suggests a decoding apparatus for image decoding, the decoding apparatus comprising: a memory; and at least one processor connected to the memory, the at least one processor configured to: receive flag information related to whether a scaling list is available for a block to which a low frequency non-separable transform (LFNST) is applied (Lai, ¶¶ 0071–0072 and Table 7: teaches a scaling list disable flag for LFNST), an LFNST index for a current block (Hashimoto, Section 2.1: the table describes the LFNST index (lfnstIdx) being communicated in the bitstream), and residual information (Lai, ¶ 0097: teaches residual information received for decoding), determine whether the scaling list is applied to the current block based on the flag information (Lai, ¶ 0072: teaches the scaling matrix flag disables scaling when LFNST is applied), the LFNST index (Hashimoto, Section 2.1: the table describes the LFNST index (lfnstIdx) being communicated in the bitstream), and a tree type of the current block (Hashimoto, Section 2.1: the table describes the tree type influencing determination of LFNST and coefficient scaling), derive transform coefficients for the current block from the residual information based on the determination (Lai, ¶ 0097: teaches in the decoder the de-quantization of transform coefficients to obtain reconstructed residuals), and derive residual samples based on an inverse transform for the transform coefficients (Lai, ¶ 0097: teaches residual information received for decoding, which includes inverse transform decoding operation(s); Hashimoto, Section 2.1: teaches applying LFNST in certain circumstances), wherein a width and height of the current block are greater than 4 (Hashimoto, Section 2.1: teaches in the table the block width and block height parameters for signals sizes of blocks such that block sizes bigger than 4 are possible; Lai, ¶ 0031: teaches scaling lists for block sizes 4x4 through 32x32), wherein based on the tree type of the current block being a single tree and a color component of the current block being a luma component, the scaling list is not applied to the luma component of the current block (Hashimoto, Section 2.1: the table describes the scenario in the first row; Examiner notes cIdx is the color index and that cIdx = 0 is the luma component), wherein based on the flag information indicating that the scaling list is not available, the LFNST index being greater than 0, the tree type of the current block being the single tree, and the color component of the current block being a chroma component, the scaling list is applied to the chroma component of the current block (Hashimoto, Section 2.1: the table describes the scenario in the second row; Examiner notes cIdx is the color index and that cIdx = 1 is the chroma component; Examiner notes that where the luma block is 4x4, the chroma block in 4:2:0 is 2x2 as expressed in Hashimoto’s table), wherein based on the tree type of the current block being a dual-tree chroma and the LFNST index being greater than 0, the scaling list is not applied to the chroma component of 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 is applied because the LFNST is disabled due to the size of the chroma block being too small; The skilled artisan understands that the LFNST index value is inferred to be zero in this scenario because of the size of the chroma transform block but that otherwise the behavior as claimed would be obvious given dual-tree chroma may be larger than the threshold disabling LFNST, and as Hashimoto explains, it is desirable to have scaling list availability when LFNST is disabled), wherein the LFNST index is signaled from a bitstream based on a first variable being equal to 1 (Applicant admits in the arguments dated 04/15/2025 (page 8) that LfnstNotSkipFlag of Table 6 of the Specification is the recited “first variable”; Egilmez, e.g. ¶¶ 0129–0136: teach the same variable and same behavior as Applicant’s Table 6, namely LfnstTransformNotSkipFlag which is set equal to 1 for single tree when all of the transform skip flags for luma and chroma are false (see particularly ¶ 0136 pseudocode)), and wherein when the tree type of the current block is the single tree, the first variable is set to 1 based on a transform skip flag for the luma component and a transform skip flag for the chroma component being equal to 0 (Applicant admits in the arguments dated 04/15/2025 (page 8) that LfnstNotSkipFlag of Table 6 of the Specification is the recited “first variable”; Egilmez, e.g. ¶¶ 0129–0136: teach the same variable and same behavior as Applicant’s Table 6, namely LfnstTransformNotSkipFlag which is set equal to 1 for single tree when all of the transform skip flags for luma and chroma are false (see particularly ¶ 0136 pseudocode)).
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 Lai, 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 Lai’s references to LFNST and scaling lists as it applies to tree type, and because Lai’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 Lai 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 Lai, 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 Hashimoto is simply further explaining Lai’s references to LFNST and scaling lists as it applies to tree type, because Lai’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, and because Egilmez is merely explaining that transform skip can be set as incompatible with LFNST 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, Lai, and Egilmez used in this Office Action unless otherwise noted.
Regarding claim 15, the combination of Hashimoto, Lai, and Egilmez teaches or suggests the decoding apparatus of claim 14, wherein based on the tree type of the current block being the single tree and the color component of the current block being the chroma component, the LFNST is not applied to the chroma component of the current block (Hashimoto, Section 2.1: the table describes in the second row that LFNST is not applied).
Regarding claim 16, the combination of Hashimoto, Lai, and Egilmez teaches or suggests the decoding apparatus of claim 14, wherein based on the flag information indicating that the scaling list is not available, the LFNST index being greater than 0, and the tree type of the current block being the single tree, the scaling list is not applied to the luma component of the current block (Hashimoto, Section 2.1: the table describes in the first row that the LFNST index is greater than zero and that when the flag disabling scaling is set to 1, no scaling is applied for luma (cIdx=0)).
Regarding claim 17, the combination of Hashimoto, Lai, and Egilmez teaches or suggests the decoding apparatus of claim 14, wherein based on the flag information indicating that the scaling list is not available, the LFNST index is greater than 0, and the tree type of the current block being the dual-tree chroma, the scaling list is not applied to the chroma component of the current block (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 in which the scaling list is applied because the LFNST is disabled due to the size of the chroma block being too small; The skilled artisan understands that the LFNST index value is inferred to be zero in this scenario because of the size of the chroma transform block but that otherwise the behavior as claimed would be obvious; In other words, it is obvious behavior to disable scaling when LFNST is enabled; 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).
Regarding claim 18, the combination of Hashimoto, Lai, and Egilmez teaches or suggests the decoding apparatus of claim 14, wherein based on the flag information indicating that the scaling list is not available, the LFNST index being greater than 0, and the tree type of the current block being a dual-tree luma, the scaling list is not applied to the luma component of the current block (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 luma scenario in row 3 in which the scaling list is not applied when the LFNST index is greater than 1 and the flag indicates no scaling).
Regarding claim 19, the combination of Hashimoto, Lai, and Egilmez teaches or suggests the decoding apparatus of claim 14, 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 20 lists the same elements as claim 14, but is drawn to the encoding apparatus rather than the decoding apparatus. Therefore, the rationale for the rejection of claim 14 applies to the instant claim.
Claim 22 lists the same elements as claim 15, but is drawn to the encoding apparatus rather than the decoding apparatus. Therefore, the rationale for the rejection of claim 15 applies to the instant claim.
Claim 24 lists the same elements as claim 18, but is drawn to the encoding apparatus rather than the decoding apparatus. Therefore, the rationale for the rejection of claim 18 applies to the instant claim.
Claim 25 lists the same elements as claim 19, but is drawn to the encoding apparatus rather than the decoding apparatus. Therefore, the rationale for the rejection of claim 19 applies to the instant claim.
Claim 26 lists essentially the same elements as claim 14. Therefore, the rationale for the rejection of claim 14 applies to the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Eglimez (US 2021/0195222 A1) teaches LFNST and scaling and the LFNST index (e.g. ¶ 0244 and 0260) and also teaches not enabling LFNST if transform skip is enabled according to color component (e.g. ¶¶ 0129–0130).
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 January 2020 (uploaded 01/08/2020). This publication has overlapping authorship with Egilmez (US 2021/0195222 A1) and demonstrates similar subject matter being disclosed to the public prior to Applicant’s priority date.
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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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Vaughn can be reached on (571)272-3922. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8933.
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/MICHAEL J HESS/Examiner, Art Unit 2481
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