DETAILED ACTION
I. Introduction
This Office action addresses U.S. reissue application number 18/371,525 (“525 reissue application” or “instant application”), having a filing date of 22 September 2023. Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
The instant application is a reissue of U.S. Patent 11,164,589 (“’589 patent”) titled “PERIODIC-COMBINED-ENVELOPE-SEQUENCE GENERATING DEVICE, ENCODER, PERIODIC-COMBINED-ENVELOPE-SEQUENCE GENERATING METHOD, CODING METHOD, AND RECORDING MEDIUM”, which issued to Takehiro Moriya et al. on 2 November 2021 with claims 1-12 (“issued claims”). The application resulting in the ‘589 patent was filed on 12 February 2020 and assigned U.S. patent application number 16/788,539 (“’539 application”).
II. Other Proceedings
After review of Applicant’s statements as set forth in the instant application, and the examiner's independent review of the ‘589 patent itself and its prosecution history, the examiner has failed to locate any current ongoing litigation. The examiner has likewise failed to locate any previous reexaminations (ex parte or inter partes), supplemental examinations, or other post issuance proceedings.
III. Priority
The ‘539 application is a continuation of U.S. Application 16/199,370, filed 26 November 2018, now U.S. Patent 10,607,616, which is a continuation of U.S. Application 15/304,733 (“the ‘733 application”), filed 17 October 2016, now U.S. Patent 10,199,046, which is a national stage application under 35 U.S.C. § 371 of PCT application PCT/JP2015/054717, filed 20 February 2015. The ‘539 application also claims foreign priority under 35 U.S.C. § 119(a)-(d) to Japanese application 2014-094881, filed 1 May 2014.
As a reissue application, the instant application is entitled to the priority date of the ‘589 patent, the patent being reissued. Thus, the instant reissue application has a priority date of at least 20 February 2015, the filing date of the PCT application. The priority date could be as early as 1 May 2014, depending upon the specific subject matter of the claim. The priority date will be determined on a claim-by-claim basis, as necessary.
Because the effective filing date of the instant application is after March 16, 2013, the pre-AIA ‘First to Invent’ provisions do not apply. Instead, the AIA First Inventor to File (“AIA -FITF”) provisions will apply.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the 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.
IV. Claim Construction
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances of lexicographic definitions, either express or implied, that are inconsistent with the ordinary and customary meaning of the respective terms. Therefore, for the purposes of claim interpretation, the examiner concludes that there are no claim terms for which applicant is acting as their own lexicographer. See MPEP § 2111.01(IV).
Additionally, upon review of the pending claims, the examiner finds no instances where the claim terms explicitly include functional language which invokes the provisions of 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
V. Applicant’s Response
Applicant’s response (“Response”), filed 18 December 2025, has been received and entered into the record. The Response includes a request to correct applicant name, a new power of attorney, a terminal disclaimer, remarks, and amendments to the claims. Specifically, claims 13-15 have been amended. Claims 1-15 remain pending in the application.
VI. Response to Arguments
The Response includes several arguments. These arguments are addressed in turn below.
Recapture
Applicant argues that in view of the newly incorporated subject matter, claims 13-15 have been materially narrowed in certain respects, and do not represent an improper recapture of surrendered subject matter (Response, pages 14-15).
The Office respectfully disagrees.
In order to avoid recapture, claims can be materially narrowed in other aspects, but such material narrowing must be related to the surrendered subject matter.
In this case, applicant has restored one aspect of the surrendered subject matter, regarding the formula by which the spectral envelope sequence is changed. However, the claims fail to include other aspects of surrendered subject matter, including variable length coding processing (argued by applicant as distinguishing over the prior art of record during prosecution of the ‘’733 application in a response filed 10 January 2018, at page 14), and details of the periodic-combined-envelope generating processing (incorporated during prosecution of the ‘539 application in order to overcome a rejection under 35 U.S.C. § 101, in a response filed 11 June 2021, at page 13). There has been no material narrowing of the claims in aspects that are related to this surrendered subject matter, and thus recapture has not been avoided.
If the reissue applicant believes that "the reissued claims were materially narrowed in other respects" related to the surrendered subject matter, the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow, and how it materially narrows the claims such that recapture is avoided.
The recapture rejections are maintained.
Double Patenting
In view of applicant’s approved Terminal Disclaimer, the pending rejections on the ground of non-statutory double patenting are withdrawn.
Claim Objection
In view of applicant’s amendment to claim 14, the pending claim objection is withdrawn.
Rejections under 35 U.S.C. § 112(b)
Applicant argues that the rejections under 35 U.S.C. § 112(b) should be withdrawn, because “it would be understood to a person of skill in the art that this is referring to the program that is necessarily stored on non-transitory computer-readable recording medium which would cause the computer to perform the coding method referenced in another claims. Therefore, it is clear and definite that it is not referencing a previously recited program in this case when read in context.” (Response, page 16).
The Office respectfully disagrees.
Exemplary claim 6 refers to the coding method of claim 5, which comprises a series of steps. The steps include a number of calculations for encoding audio signals using spectral envelopes of the audio signals. However, neither claim 5 nor claim 6 includes the limitation of a program that executes the steps outlined in claim 5, and so referring to “the program” in claim 6 lacks antecedent basis.
The rejections are maintained.
Rejections under 35 U.S.C. § 101
Applicant argues that the inclusion of encoding a frequency-domain sequence derived from the input audio signal based on the periodic combined envelope sequence is a tangible procedure performed on a real signal and thus us not a mathematical procedure for merely converting one form of numerical representation to another (Response, pages 16-17).
The Office finds this argument persuasive.
The pending rejections under 35 U.S.C. § 101 are withdrawn.
Rejections under 35 U.S.C. § 102
Applicant argues that the amendments to claims 13-15 distinguishes over the prior art of record (Response, pages 17-19).
The Office finds this argument persuasive.
The pending rejections under 35 U.S.C. § 102 are withdrawn.
VII. Recapture under 35 U.S.C. § 251
In In re Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three-step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
(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
With respect to step 1 (see MPEP § 1412.02(I)(A)), applicants seek to broaden the reissue claims by at least deleting/omitting the following limitations which are present in issued independent claims 1-5, 7, 9, and 11 of the ‘589 patent, but not in new reissue claims 13-15 (paraphrased):
With respect only to claims 1, 3, 5, and 9, the following limitations have been omitted:
Execute a variable-length-coding-parameter calculating processing in which the circuitry calculates a variable-length coding parameter dependent on an amplitude value from the periodic combined envelope sequence
The coding processing is variable-length, and uses the variable-length coding parameter for the encoding by variable-length coding dependent on the amplitude value and to output a variable-length code
Further with respect only to claims 2, 4, 7, and 11, the following limitations have been omitted:
Execute a variable-length-coding processing in which the circuitry encodes a frequency-domain sequence derived from the input audio signal on the assumption that the amplitude value of the frequency-domain sequence is greater for a frequency with a greater value of the periodic combined envelope sequence and outputs a variable-length code
Further with respect only to claims 1, 2, 5, and 7, the following limitations have been omitted:
The periodic-combined-envelope generating processing obtains, as a periodic combined envelope sequence, a sequence that is obtained by more greatly changing values of samples at integer multiples of a period in the frequency-domain of the input audio signal in the spectral envelope sequence and values of samples whose index is within a predetermined range from any one of the samples at the integer multiples of the period, as the length of the period in the frequency domain of the input signal is longer
Further with respect only to claims 3, 4, 9, and 11, the following limitations have been omitted:
The periodic-generating-envelope generating processing obtains, as a periodic combined envelope sequence, a sequence that is obtained by more greatly changing values of at least samples at integer multiples of a period in the frequency domain of the input audio signal in the spectral envelope sequence and values of samples whose index is within a predetermined range from any one of the samples at the integer multiples of the period, as a degree of periodicity of the input audio signal is greater
Step 2
With respect to step 2 (see MPEP § 1412.02(I)(B)), there were several instances where applicants surrendered subject matter during prosecution of the original application (which became the patent to be reissued). Note that the "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010).
During prosecution of the ‘733 application, applicant filed a response to a non-final rejection on 10 January 2018. Therein, applicant argued that the prior art of record failed to disclose the following claim limitations (see page 15):
Execute a periodic-combined-envelope generating processing in which the circuitry generates a periodic combined envelope sequence which is a frequency-domain sequence based on by changing values of samples of a spectral envelope sequence
The spectral envelope sequence is a frequency-domain sequence corresponding to a linear predictive coefficient code obtained from an input audio signal in a predetermined time segment based on a frequency-domain period corresponding to a period obtained from the input audio signal
Execute a variable-length-coding-parameter calculating processing in which the circuitry calculates a variable-length coding parameter dependent on an amplitude value from the periodic combined envelope sequence
Executing a variable-length coding processing in which the circuitry uses a variable-length coding parameter to encode a frequency-domain sequence derived from the input audio signal by variable-length coding dependent on an amplitude value and to output a variable-length code
Thereafter, in a response filed 6 July 2018, applicant presented amended claims, supported by arguments that the prior art of record failed to disclose the following limitations:
Execute a periodic-combined-envelope generating processing in which the circuitry generates a periodic combined envelope sequence, WM[1], … , WM[N], which is a frequency-domain sequence based on by changing values of samples of a spectral envelope sequence, W[1], … , W[N]
The spectral envelope sequence, W[1], … , W[N], is a frequency-domain sequence corresponding to a linear predictive coefficient code obtained from an input time-domain audio signal in a predetermined time segment based on a frequency-domain period corresponding to a period obtained from the input time-domain audio signal
The values of samples of the spectral envelope sequence are changed as in the following formula:
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, wherein P[n] is a periodic envelope sequence P[1], … , P[N], and δ is a predetermined value or a chosen value from candidates
Execute a variable-length-coding-parameter calculating processing in which the circuitry calculates a variable-length coding parameter dependent on an amplitude value from the periodic combined envelope sequence
Executing a variable-length coding processing in which the circuitry uses a variable-length coding parameter to encode a frequency-domain sequence derived from the input time-domain audio signal by variable-length coding dependent on an amplitude value and to output a variable-length code to a decoder
The claims were allowed in response to the amendment.
In addition, during prosecution of the ‘539 application, applicant filed an amendment on 11 June 2021. In order to overcome the rejections presented in the Office action of 14 April 2021, a number of amendments were made.
For instance, with respect only to issued claims 1, 3, 5, and 9, the following limitations were incorporated to overcome the rejections:
Execute a variable-length-coding-parameter calculating processing in which the circuitry calculates a variable-length coding parameter dependent on an amplitude value from the periodic combined envelope sequence
Execute a variable-length coding processing in which the circuitry uses the variable-length coding parameter to encode a frequency-domain sequence derived from the input audio signal by variable-length coding dependent on the amplitude value and to output a variable-length code
With respect only to issued claims 2, 4, 7, and 11, the following limitation was incorporated to overcome the rejections:
Execute a variable-length-coding processing in which the circuitry encodes a frequency-domain sequence derived from the input audio signal on the assumption that the amplitude value of the frequency-domain sequence is greater for a frequency with a greater value of the periodic combined envelope sequence and outputs a variable-length code
With respect only to issued claims 1, 2, 5, and 7, the following limitation was incorporated to overcome the rejections:
The periodic-combined-envelope generating processing obtains, as a periodic combined envelope sequence, a sequence that is obtained by more greatly changing values of samples at integer multiples of a period in the frequency-domain of the input audio signal in the spectral envelope sequence and values of samples whose index is within a predetermined range from any one of the samples at the integer multiples of the period, as the length of the period in the frequency domain of the input signal is longer
Further with respect only to issued claims 3, 4, 9, and 11, the following limitations have been omitted:
The periodic-generating-envelope generating processing obtains, as a periodic combined envelope sequence, a sequence that is obtained by more greatly changing values of at least samples at integer multiples of a period in the frequency domain of the input audio signal in the spectral envelope sequence and values of samples whose index is within a predetermined range from any one of the samples at the integer multiples of the period, as a degree of periodicity of the input audio signal is greater
As noted in MPEP § 1412.02, “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 applicant that a limitation of the claim(s) defines over the art.”
If new claims 13-15 are intended as broadened versions of any of issued claims 1, 3, 5, and 9, the following broader aspects of reissue claims 13-15 are related to the subject matter surrendered during original prosecution of the ‘539 application:
Execute a variable-length-coding-parameter calculating processing in which the circuitry calculates a variable-length coding parameter dependent on an amplitude value from the periodic combined envelope sequence
The coding processing is variable-length, and uses the variable-length coding parameter for the encoding by variable-length coding dependent on the amplitude value and to output a variable-length code
If new claims 13-15 are intended as broadened versions of any of issued claims 2, 4, 7, and 11, the following broader aspects of reissue claims 13-15 are related to the subject matter surrendered during original prosecution of the ‘539 application:
Execute a variable-length-coding processing in which the circuitry encodes a frequency-domain sequence derived from the input audio signal on the assumption that the amplitude value of the frequency-domain sequence is greater for a frequency with a greater value of the periodic combined envelope sequence and outputs a variable-length code
If new claims 13-15 are intended as broadened versions of any of issued claims 1, 2, 5, and 7, the following broader aspects of reissue claims 13-15 are related to the subject matter surrendered during original prosecution of the ‘539 application:
The periodic-combined-envelope generating processing obtains, as a periodic combined envelope sequence, a sequence that is obtained by more greatly changing values of samples at integer multiples of a period in the frequency-domain of the input audio signal in the spectral envelope sequence and values of samples whose index is within a predetermined range from any one of the samples at the integer multiples of the period, as the length of the period in the frequency domain of the input signal is longer
If new claims 13-15 are intended as broadened versions of any of issued claims 3, 4, 9, and 11, the following broader aspects of reissue claims 13-15 are related to the subject matter surrendered during original prosecution of the ‘539 application:
The periodic-generating-envelope generating processing obtains, as a periodic combined envelope sequence, a sequence that is obtained by more greatly changing values of at least samples at integer multiples of a period in the frequency domain of the input audio signal in the spectral envelope sequence and values of samples whose index is within a predetermined range from any one of the samples at the integer multiples of the period, as a degree of periodicity of the input audio signal is greater
The limitations of the periodic-combined-envelope generating processing and the variable-length coding processing have been broadened in new reissue claims 13-15 by the omission of the above-cited limitations. The variable-length-coding-parameter calculating processing, the “periodic-combined-envelope generating processing obtains…”, and the “periodic-generating-envelope generating processing obtains…” limitations have been entirely eliminated from new reissue claims 13-15.
Step 3
With respect to step 3 (see MPEP § 1412.02(I)(C)), the Office has reviewed and analyzed new independent claims 13-15, and concluded that there has been no material narrowing of the reissue claims in such a way that recapture has been avoided. Therefore, in view of the surrendered subject matter that has been broadened in the reissue claims, claims 13-15 are subject to rejection under 35 U.S.C. § 251.
Claims 13-15 are therefore 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. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (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 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.
VIII. Rejections under 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 8, 10, 12, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claims 6, 8, 10, 12, and 15, these claims include the limitation “the program” in the preamble. However, there is no antecedent basis for this term.
IX. Allowable Subject Matter
Claims 1-5, 7, 9, and 11 are allowed.
The following is an examiner' s statement of reasons for allowance:
The prior art of record fails to teach or fairly suggest the claimed encoder and coding method, including the generation of a periodic combined envelope sequence, WM[1], … , WM[N], by changing the spectral envelope sequence, W[1], … , W[N], on the basis of a periodic envelope sequence P[1], … , P[N], which is a periodic component of the input audio signal in the frequency domain, wherein the spectral envelope sequence are changed as in the formula
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wherein δ is a predetermined value or a chosen value from candidates.
Claims 13-15 would be allowed were applicant to overcome the pending recapture rejections.
The following is an examiner's statement for the indication of allowable subject matter:
The prior art of record fails to teach or fairly suggest the claimed encoder and coding method, including the generation of a periodic combined envelope sequence, which is a sequence as following formula
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wherein δ is a predetermined value.
X. Conclusion
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 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.
In accordance with MPEP § 1406, the examiner has reviewed and considered the prior art cited or ‘of record’ in the original prosecution of the ‘589 patent. Applicants are reminded that a listing of the information cited or ‘of record’ in the original prosecution of the ‘589 patent need not be resubmitted in this reissue application unless Applicant(s) desire the information to be printed on a patent issuing from this reissue application.
Applicant(s) are reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which ‘589 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, other post-grant proceedings in the Office, and litigation.
Applicant(s) are further reminded of the continuing obligation under 37 C.F.R. § 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.
Applicant(s) are also reminded that any amendments to the claims must comply with the provisions of 35 U.S.C. § 112 first paragraph, having clear support and antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Luke S. Wassum whose telephone number is (571) 272-4119. The examiner can normally be reached on Monday - Friday 8 AM-5 PM, alternate Fridays off.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on 571-270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
In addition, INFORMAL or DRAFT communications may be faxed directly to the examiner at 571-273-4119. Such communications must be clearly marked as INFORMAL, DRAFT or UNOFFICIAL.
Patent Center
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/LUKE S WASSUM/Primary Examiner, Art Unit 3992
Conferees:
/Stephen J. Ralis/Primary Examiner, Art Unit 3992 /MF/ Michael Fuelling
Supervisory Patent Examiner
Art Unit 3992
lsw
23 January 2026