DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
2. Claims 1, 6, 11, 16-19 and 22-29 are currently pending.
Claims 2-5, 7-10, 12-15 and 21 stand cancelled.
Claim 20 is not presented thus missing from the claim listing.
Claims 27-29 are newly introduced. No new matter is recited.
Claim Objections
3. Claim listing objected to because of the following informalities:
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Currently a claim 20 is omitted from the required listing of claims presented.
The claim amendment of 09/17/2025 is considered non-responsive to the objection to “Claim 20. Not presented in the claim listing.”, issued along in the previous Office Actions, and being reiterated in the First Action on Merit of 06/17/2025.
Appropriate correction is required to the claim listing in response to the herein Final Office Action.
Double Patenting
4. A revised claim analysis on the issue of Obviousness Double Patenting (ODP) has been conducted as further detailed.
The instant Claim 1 (hereinafter “instant claim 1”), is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, of U.S. Patent No. 10,848,763 (hereinafter “the patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is anticipatively recited at claim 1 of the issued patent.
Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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.
The request to extend an abeyance is not granted since the amendment to instant claim 1, does not overcome the double patenting statute based on the following rationale;
(i) “instant claim 1” reciting; “determining whether a neighboring block of a current block is coded by an intra-inter prediction mode; and “
(i“) “the patent” reciting; “based on the neighboring block being determined to be coded by the intra-inter prediction mode:”. Identically claiming the “block is coded by an intra-inter prediction mode”.
(ii) “instant claim 1” reciting; “determining whether a neighboring block of a current block is coded by an intra-inter prediction mode;“, finds a similar scope at,
(ii”) “the patent” reciting; “determining whether a neighboring block of a current block is coded by an intra prediction mode, an inter prediction mode, or an intra-inter prediction mode;”,
Is obviated by one of ordinary skill where the OR logic allows a sole interpretation of the intra-inter prediction mode for examination.
(iii) “instant claim 1” reciting; “incrementing a context index of a prediction mode flag associated with the current block by 0.5 or one based on determining that the neighboring block is coded by intra-inter prediction mode;” finds a direct interpretation in the generic conflicting patent at claim 1, reciting;
(iii”) “the patent” recites; “based on the neighboring block being determined to be coded by the intra-inter prediction mode:”,
hence the specific values of the instant claim finds its corresponding generic meaning at the conflicting claim 1, limitation disclosing the incrementing of the context index by a second value different from the first value, i.e., 0.5.
Proper use of Disclosure noted as an exception to ODP statute use, is identified from the express teaching on the portion of the disclosure, obviating the limitation above as referenced in the conflicting patent, at least at Par.[0075].
(iv) “instant claim 1” reciting; “determining an average context index based on the incremented context index and a number of neighboring blocks of the current block; and
using the context value and the average context index, encoding the prediction mode flag associated with the current block indicating that the current block is intra-coded. ”
(iv”) “the patent” reciting at claim 8 depending from 1;
“setting a prediction mode flag associated with the current block, based on the determined average context index.”, remains generic to all that is anticipated at the claim 1, finds an identical recitation from the limitations at least at claim 8 depending from claim 1, in haec verba;
“determining an average context index, based on the incremented context index and a number of neighboring blocks of the current block: and”
“setting the prediction mode flag associated with the current block, based on the determined average context index. “
The ordinary skilled in the art would have found obvious to determine the common scope of the “instant claim 1” vs. the “the patent”, albeit the lexicographic differences remarked from the respective recitations.
Instant Claims 6 and 11 are also rejected under this paragraph for reciting subject matter obviated by the claims 10 and 19 of the conflicting “patent”, respectively.
Response to Arguments
5. Applicant’s arguments with respect to the rejection(s) of claims under 35 U.S.C. 35 112 1, 6, 11, 16-19 and 22-29 have been fully considered and are persuasive.
The rejections under 35 U.S.C. 112(a) and (b) to Claim 11 and of the Claims 1, 6, 11, 16-18 and 22-25 under 35 U.S.C. 103, are withdrawn on amendment.
Allowable Subject Matter
6. Examiner reiterates the Allowable Subject Matter, drafted at the First Action on Merit, (06/17/2025 at Pg.11) indicating the reason set for the allowable subject matter, by finding that none of the recited arts to Chen-Yen Lai et al., (US 11,070,815) in view of Jing Ye et al., (US 2017/0251213), when considered independently or in combination teaches or suggests the method of incrementing the context index value by 2, 1 or 0 and by 1, 0 or 0.5 under different conditions considering the neighboring blocks prediction modes in determine ng the prediction mode of the current block according to an intra-inter prediction mode flag pred_mode_flag.
The Claims 1, 6, 11, 16-19 and 22-29, would be placed in condition for allowability, mandated by overcoming the outstanding Obviousness Double Patenting (ODP) rejection by the filing of a Terminal Disclaimer (TD) and responding to the Claim Objections by correcting the claim listing currently omitting Claim 20.
The newly searched prior art listed below, made of record and not relied upon is considered pertinent to applicant's disclosure.
US 7,469,070; US 9,998,726; US 10,142,627; US 201/60373741 and CA 2838575. See PTO-892 form.
Conclusion
7. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DRAMOS KALAPODAS whose telephone number is (571)272-4622. The examiner can normally be reached on Monday-Friday 8am-5pm.Application/Control Number: 18/41 1,649 Page 18 Art Unit: 2487 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:/Awww.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, David Czekaj can be reached on 571-272-7327. 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 Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DRAMOS . KALAPODAS
Primary Examiner
Art Unit 2487
/DRAMOS KALAPODAS/