DETAILED ACTION
This Action is responsive to: the response and amendment of March 4, 2026 (Amendment”).
The instant 18/233,789 application was filed August 14, 2023 as a reissue continuation of reissue application 17/093,417 (now RE49,615), filed November 10, 2020 as a reissue application of US Pat 10,602,176 B2 to Xu et al., issued March 24, 2020 from US Pat App. Ser. No. 15/099,853, filed April 15, 2016.
US Pat 10,602,176 issued with claims 1-14, with claims 1, 7, and 10 being independent. A preliminary amendment filed with the application canceled claims 1-6 and 8-14, amended claim 7, and added new claims 15-31. The instant Amendment cancels these claims and adds new claims 32-46. Claims 32-46 are thus pending and rejected below.
This action is Final.
Reissue and Related Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,602,176 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The Examiner has determined that there are no other pending reissue Applications for the instant ‘176 Patent. The Examiner has determined further that there are no pending reexaminations or post-grant proceedings before the Patent Trial and Appeal Board, or any interferences. The Examiner has determined that there is no open litigation with regards to the ‘034 Patent.
Because the instant ‘176 Patent is deemed to not contain claims having an effective date prior to March 16, 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions apply, rather than the pre-AIA provisions. See 35 U.S.C. § 100 (note) and 35 U.S.C. § 100 (pre-AIA ). In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of any statutory basis for a rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Reissue Amendment
The Amendment filed March 3, 2026 is objected to for the following reasons:
As per 37 CFR 1.175, when multiple reissues are filed over a patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. Here the amendment to the specification does not provision this information in the first sentence.
A new amendment to the specification is required in response to this Office action.
Reissue Declaration
The supplemental Declaration filed March 4, 2026 is objected to as it fails to identify a broadened claim. The only claim identified in the Declaration is issued claim 7 which stands canceled. MPEP 1414.01, 37 CFR 1.175(b). The Examiner also notes that the claims are rejected below as improperly recapturing previously-surrendered subject matter, which is not a proper basis for reissue.
A new Declaration is required in response to this Office action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under § 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with § 112(f). The presumption that the claim limitation is interpreted under § 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with § 112(f). The presumption that the claim limitation is not interpreted under § 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under § 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under § 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under § 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 35, “a processor that is configured to…separately identify a motion vector and an interpolation filter”;
In claim 35, “a processor that is configured to…decode, from a compressed bitstream, an inter-prediction mode”;
In claim 35, “a processor that is configured to…identify, as the motion vector, the reference motion vector; and identify, as the interpolation filter, a reference interpolation filter”;
In claim 35, “a processor that is configured to…predict the current block using the motion vector and the interpolation filter”;
In claim 35, “a processor that is configured to…decode a second block…identify, based on an inter-predication mode…”
In claim 35, “a processor that is configured to… decode a second block…identify, as a selected motion vector…”
In claim 35, “a processor that is configured to… decode a second block…identify the current interpolation filter…”
In claim 35, “a processor that is configured to… decode a second block…decode the second block using the selected motion vector and the selected interpolation filter…”
In claim 36, “the processor is further configured to: based on the inter-prediction mode indicating a new motion vector: decode…the motion vector; and decode…the interpolation filter”
In claim 42, “a device…determines, based on an inter-prediction mode…whether the compressed bitstream expressly includes a motion vector and expressly includes an interpolation filter”;
In claim 42, “a device…decodes the current block using the motion vector and the interpolation filter”;
In claim 42, “a device…decodes a second block…identify, based on an inter-predication mode…”;
In claim 42, “a device…decodes a second block… identify, as a selected motion vector…”;
In claim 42, “a device…decodes a second block… identify the current interpolation filter…”;
In claim 42, “a device…decodes a second block… decode the second block using the selected motion vector and the selected interpolation filter…”
Because this/these claim limitation(s) is/are being interpreted under § 112(f), it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
It is noted that “device” in claim 42 is a substitute for “means”. Looking to the specification, it is noted that the limitations above are towards a processor, and the specification encompasses a general purpose processor. To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999); Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed. Cir. 2021).
The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. ("Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’" (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure." Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
As to limitation 1, the corresponding structure is disclosed with the processor in FIG 8 step 810 and 14:58-15:13 of the ‘176 Patent, which discloses an algorithm for decoding a first block by decoding a motion vector and identifier of an interpolation filter, such as a subpixel interpolation filter. This algorithm, with the processor, is read as the structure claimed.
As to limitation 2, the corresponding structure is disclosed with the processor in FIG 8 step 820 and 15:14-28 of the ‘176 Patent, which discloses an algorithm for identifying a prediction mode for decoding a second or current block by way of decoding the compressed bitstream as to the first block. This algorithm, with the processor, is read as the structure claimed.
As to limitations 3 and 10, the corresponding structure is disclosed with the processor in FIG 8 step 830 and 15:29-58 of the ‘176 Patent, which discloses an algorithm for identifying a motion vector and associated interpolation filter for decoding the second or current block. This algorithm, with the processor, is read as the structure claimed.
As to limitations 4 and 11, the corresponding structure is disclosed with the processor in FIG 8 and 16:41-49 of the ‘176 Patent, which discloses an algorithm for decoding the second or current block by generating a predicted block using the selected vector and interpolation filter. This algorithm, with the processor, is read as the structure claimed.
As to limitations 5 and 12, the corresponding structure is disclosed with the processor in FIG 8 and 15:29-52 of the ‘176 Patent, which discloses an algorithm for decoding a second block by identifying, based on an inter-prediction mode for decoding the second block from previously decoded blocks spatially proximal to the second block. This algorithm, with the processor, is read as the structure claimed.
As to limitations 6 and 13, the corresponding structure is disclosed with the processor in FIG 8 and 15:44-57 of the ‘176 Patent, which discloses an algorithm for identifying, as a selected motion vector for predicting the second block, the motion vector from the selected previously decoded block. This algorithm, with the processor, is read as the structure claimed.
As to limitations 7 and 14, the corresponding structure is disclosed with the processor in FIG 8 and 15:58-62 of the ‘176 Patent, which discloses an algorithm for identifying the current interpolation filter as a selected interpolation filter for predicting the second block. This algorithm, with the processor, is read as the structure claimed.
As to limitations 8 and 15, the corresponding structure is disclosed with the processor in FIG 8 and 15:62-65 of the ‘176 Patent, which discloses an algorithm for decoding the second block using the selected motion vector and the selected interpolation filter. This algorithm, with the processor, is read as the structure claimed.
As to limitation 9, the corresponding structure is disclosed with the processor in FIG 8 and 14:58-62 of the ‘176 Patent, which discloses an algorithm for, when a new motion vector is identified, decoding, from the compressed bitstream, the motion vector and the interpolation filter This algorithm, with the processor, is read as the structure claimed.
If applicant does not intend to have this/these limitation(s) interpreted under § 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under § 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under § 112(f).
Claim Rejections - 35 USC § 251
Claims 32-46 are rejected as being based upon a defective reissue Declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
Claims 32-46 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP § 1412.02 II.):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP § 1412.02 II. A.) In the instant case and by way of the instant amendment, Patent Owner seeks to present broadened independent claims 32, 35, and 42 by removing subject matter in issued independent claim 7, specifically the limitation “identifying, based on an inter-prediction mode for decoding the second block, the current block from previously decoded blocks spatially proximal to the second block as the selected previously decoded block for predicting the second block;” Thus the newly presented claims have been broadened.
(Step 2: MPEP 1412.02 § II. B.) The record of the prior 13/647,175 application prosecution indicates that, in an amendment of October 8, 2019, such limitation was added to claim 7, and the underlying application was allowed.
If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by application that a limitation of the claim(s) defines over the art, or an examiner’s amendment that the applicant approved. MPEP § 1412.02 II. B. 2. Therefore, the limitations above are surrendered subject matter and some of the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter. See also MPEP § 1412.02 II. B. 1. B.
(Step 3: MPEP § 1412.02 II. C) It is noted that the limitation is removed from the new independent claims in its entirety and therefore impermissible recapture exists.
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 32, 35, and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. RE49,615. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claims 32, 35, and 42 are noted as similar to claim 7 of RE49,615, except in that the reference claim is more narrow, including features unclaimed here such as identifying, based on an inter-prediction mode for decoding the second block, the current block from previously decoded blocks spatially proximal to the second block as the selected previously decoded block for predicting the second block. Thus the instant claim, being broader, includes the reference claim in its scope i.e. the entire scope of the reference claim falls within the scope of the examined claim.
Response to Arguments
Patent Owner provides arguments with his Amendment of March 4, 2026 (“Remarks”).
As to the reissue amendment (Remarks at 8), note the objection to the amendment to the specification above.
As to the objection to the reissue Declaration (and associated rejection under § 251, Remarks at 8 and 10), note above that the supplemental reissue Declaration is insufficient.
As to the previous rejection under Double Patenting (Remarks at 9), Patent Owner states that he filed a Terminal Disclaimer to obviate the previous rejection, however a Terminal Disclaimer does not appear to have been filed with his response. Note the electronic filing receipt filed therewith, which does not include any Terminal Disclaimer. As such, the rejection is upheld above.
As to rejections of claims 7 and 15-19 under §§112 and 251 (Remarks at 9-11), such are withdrawn in light of the amendment canceling said claims.
As to rejections under §251 (Recapture, Remarks at 11), the Examiner notes that while claims 7 and 15-31 have been canceled, new claims 31-46 are rejected under similar grounds as a limitation added to attain issue has been eliminated in its entirety from the new independent claims.
As to rejections under §§102 and 103 (Remarks at 11-12), such are withdrawn in light of the amendment presenting new claims that are narrower than those previously presented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Charles Craver whose telephone number is (571) 272-7849. The examiner can normally be reached on Monday - Friday 8:30-5:30 PT Pacific Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew J. Fischer can be reached at at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
Conferees:
/ROBERT J HANCE/Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992