DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Rejection under 35 U.S.C. §102
Applicant’s arguments, see page 2, line 27 through page 6, line 19, filed 19 May 2026, with respect to the rejection of claims 1-8 and 11-19 under 35 U.S.C. §102(a)(1) as being anticipated by Watanabe et al. (U.S. Patent Application Publication No. US 20050104974/ A1), have been fully considered and are persuasive. The rejection of claims 1-8 and 11-19 under 35 U.S.C. §102(a)(1) as being anticipated by Watanabe et al. (U.S. Patent Application Publication No. US 20050104974/ A1) has been withdrawn.
Rejection under 35 U.S.C. §103
Applicant’s arguments, see page 6, line 21 through line 24, filed 19 May 2026, with respect to the rejection of claim 10 under 35 U.S.C. §103(a) as being unpatentable over Watanabe et al. (U.S. Patent Application Publication No. US 20050104974/ A1) in view of Hrytzak et al. (U.S. Patent No. 5,327,257), have been fully considered and are persuasive. The rejection of claims 10 under 35 U.S.C. §103(a) as being unpatentable over Watanabe et al. (U.S. Patent Application Publication No. US 20050104974/ A1) in view of Hrytzak et al. (U.S. Patent No. 5,327,257) has been withdrawn.
Double Patenting Rejection
Applicant’s arguments, see page2, line 6 through line 25, filed 19 May 2026, with respect to the rejection of claims on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. (U.S. Patent Application No.18/373,814), have been fully considered but are not persuasive.
On page 2, line 6 through line 25, Applicant argues that “As stated in the terminal disclaimer, "The owner(s) of percent interest listed above in the instant application (i.e. the '814 application) hereby disclaims, except as provided below, the terminal part of the statutory term of any patent granted on the instant application (i.e. the '814 application) which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number(s) Application # 18373710 Filing Date 09/27/2023" (i.e. the present application). This means that both patents will expire on the same date, i.e. September 27, 2043. Both applications were filed on the same day, so their term of 20 years from the earliest filing date is the same, i.e. there is and can be no timewise extension of the "right to exclude", improper or otherwise. The terminal disclaimer also prevents the patent on the '814 application from being enforceable unless co-owned with the present application. Thus, there is absolutely no need for a terminal disclaimer to be filed in the present application as the public policy considerations underlying the doctrine have been completely satisfied by the terminal disclaimer that was filed in the '814 application. The continued rejection of the present application on the ground of non-statutory double patenting is therefore improper, and should be withdrawn.”, the examiner respectfully disagrees.
The "nonstatutory" double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent.
The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767.
The rejection of claims 1-19 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Application No.18/373,814 is therefore both reasonable and proper and is hereby maintained.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp
Claims 1-19 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims of 1-20 of U.S. Patent Application No.18/373,814. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the instant application are broader in every aspect than the claims in the above-listed reference application and therefore obvious variants thereof.
This is a provisional nonstatutory obviousness-type double patenting rejection
because the patentably indistinct claims have not in fact been patented.
For example, comparing representative claim 1 of the present application with representative claim 1 of copending U.S. Patent Application No. 18/373,814. Claim 1 of the present application recites: A method of applying adaptive sharpening, for a block of input pixels, to determine a block of output pixels, the method comprising (Claim 1 of issued U.S. Patent Application No.18/373,814 recites: A method of applying adaptive sharpening, for a block of input pixels for which upsampling is performed, to determine a block of output pixels, the method comprising); obtaining a block of sharp pixels based on the block of input pixels, the block of sharp pixels being for representing a sharp version of the block of output pixels (Claim 1 of issued U.S. Patent Application No.18/373,814 recites: obtaining a block of non-sharp upsampled pixels based on the block of input pixels, the block of non-sharp upsampled pixels being for representing a non-sharp version of the block of output pixels); determining one or more indications of contrast for the block of input pixels (Claim 1 of issued U.S. Patent Application No.18/373,814 recites: determining one or more indications of contrast for the block of input pixels); and determining each of the output pixels of the block of output pixels by performing a respective weighted sum of (i) a corresponding input pixel in the block of input pixels and (ii) a corresponding sharp pixel in the block of sharp pixels (Claim 1 of issued U.S. Patent Application No.18/373,814 recites: and determining each of the output pixels of the block of output pixels by performing a respective weighted sum of (i) a corresponding non-sharp upsampled pixel in the block of non-sharp upsampled pixels and (ii) a corresponding sharp upsampled pixel in the block of sharp upsampled pixels);, wherein the weights of the weighted sums are based on the determined one or more indications of contrast for the block of input pixels (Claim 1 of issued U.S. Patent Application No.18/373,814 recites: wherein the weights of the weighted sums are based on the determined one or more indications of contrast for the block of input pixels).
As the comparison shows the claims recite common subject matter, and the differences relate to variations of the claimed limitations, and the processing is carried out on the data and/or elements in no way affects how the data would be received from an input, processed and output within the context of the claims. Therefore, the substitution of the different variations would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. While claim 1 of copending U.S. Patent Application No.18/373,814 includes additional limitations that are not set forth in the instant claim 1, the use of transitional term "comprising" in the instant claim 1 fails to preclude the possibility of additional elements, so that instant claim 1 fails to define an invention that is patentably distinct from claim 1 of copending U.S. Patent Application No.18/373,814. Furthermore, the elements of instant claim 1 are fully anticipated by the patented claim, and anticipation is “the ultimate or epitome of obviousness (In re Kalm, 154 USPQ 10 (CCPA 1967), also In re Dailey, 178 USPQ 293 (CCPA 1973) and In re Pearson, 181 USPQ 641 (CCPA 1974)).
Claims 2-19 of the present application recite limitations which are in most cases word for word the same limitations as found in claims 2-20 respectively of copending U.S. Patent Application No.18/373,814.
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 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jose L. Couso whose telephone number is (571) 272-7388. The examiner can normally be reached on Monday through Friday from 5:30am to 1:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Bella, can be reached on 571-272-7778. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Center information webpage on the USPTO website. For more information about the Patent Center, see https://www.uspto.gov/patents/apply/patent-center. Should you have questions about access to the Patent Center, contact the Patent Electronic Business Center (EBC) at 571-272-4100 or via email at: ebc@uspto.gov .
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.
/JOSE L COUSO/Primary Examiner, Art Unit 2667
May 20, 2026
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