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 .
Reissue Applications
This is an application to reissue US Patent No. 11,776,552 (“the ‘552 patent”). In a preliminary amendment, claims 1 and 4 have been amended. Claims 1-4 are currently pending. This is a broadening reissue application.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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. 11,776,552 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, 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.
Objection, 37 CFR 1.173 – Improper Explanation of Support
This application is objected to under 37 CFR 1.173(c), which requires “an explanation of the support in the disclosure of the patent for the changes made to the claims.” The claims have been amended to remove limitations requiring “receiving” the mid-signal and side signal. The claims have also been amended to no longer require that the stereo signal is determined in the frequency domain. In describing support for the amendments, the applicant refers only to the ‘552 patent at 12:58-60. See the Remarks document that was filed with this application. This passage states only: “The mid signal 426 and side signal 424 are then input to the stereo upmixing component 452 which generates a stereo signal 428 represented on an L/R form.” This does not show support for decoding the audio signal without “receiving” it, or for not determining the stereo signal in the frequency domain.
The applicant is required to submit a supplemental explanation that clearly describes where the specification provides support for each change made to the scope of the claims.
Rejection, 35 U.S.C. § 251 – Original Patent
Claims 1-4 are rejected for violating the original patent requirement of § 251. Claims in a reissue application “must be for the same invention as that disclosed as being the invention in the original patent.” MPEP 1412.01(I). In amending claims 1-4 to remove certain limitations, this requirement in §251 has been violated.
Claims 1-4 have been amended to remove limitations that relate to “receiving” the mid-signal and side signal. By removing these limitations, the claims now cover an invention for decoding a plurality of audio signals in which the audio signals are not first “received.” That this reissue application was filed in part to remove these limitations implies that this is the intended scope of the claims.
The specification of the ‘552 patent only shows that when decoding these audio signals, the mid-signal and the side signal are received as part of a data stream. See the ‘552 patent throughout, especially the description of Figures 1 and 3-8. By eliminating the requirement that these audio signals are received, the amended claims include in their scope something different than was previously recited. For example, by no longer requiring the audio signals to be received, the scope of the claims would appear to include that the audio signals are generated by, or somehow pre-stored in, the decoder. This is not “what the patentee objectively intended as the invention.” MPEP 1412.01(I).
To satisfy the original patent requirement of § 251, “the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” MPEP 1412.01(I), quoting Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 1363 (Fed. Cir. 2014). The specification of the ‘552 patent does not clearly and unequivocally disclose a different invention in which the audio signals are decoded without first receiving them.
Claims 1-4 are also rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is described in the §112(a) rejection below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. 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.
Claims 1-4 have been amended to remove limitations that relate to “receiving” the mid-signal and side signal. By removing these limitations, the claims now cover an invention for “decoding a plurality of audio signals” in which the audio signals are not first received. That this reissue application was filed in part to remove these limitations implies that this is the intended scope of the claims.
The specification of the ‘552 patent only shows that when decoding these audio signals, the mid-signal and the side signal are received as part of a data stream. See e.g. the ‘552 patent throughout, especially the description of Figures 1 and 3-8. The scope of the claims would now appear to include that the audio signals are generated by, or somehow pre-stored in, the decoder. This is not disclosed in the specification of the ‘552 patent, which shows that receiving the audio signals is essential to decoding them. “A claim that omits an element that applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement.” MPEP 2163(I)(B).
Claim 2 is further rejected under §112(a). Claim 2 recites that “extending the first audio signal to a frequency range above the second frequency by performing high frequency reconstruction prior to performing parametric upmixing.” The specification appears to only describe that extending a signal “prior to performing parametric upmixing” is performed on the mid-signal, not the “first audio signal,” which claim 1 defines as being part of the output stereo signal. See e.g. 4:9-11, and Fig. 8 and its description. Stated differently, “the first audio signal” does not exist prior to the parametric upmixing, because the parametric upmixing is what generates this signal. See ‘552 patent at 12:58-13:24.
Claim Rejections - 35 USC § 112(b)
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 1-4 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.
Claims 1-4 recite that the “stereo signal comprises a first audio signal and a second audio signal which are suitable for playback on two channels of a speaker configuration.” It is not clear how the phrase “suitable for playback” limits the claims. Whether an audio signal is “suitable for playback” on two channels of a speaker would appear to be a subjective conclusion. See MPEP 2173.05(b)(IV). Stated in another way, the claims and specification do not make clear what types of audio signal would, and what types would not, be “suitable for playback on two channels of a speaker configuration.” Given this lack of guidance regarding this term, a skilled artisan would not understand “how to avoid infringement” of these claims. MPEP 2173.02(II).
Claim 1-4 are further rejected under § 112(b). Claims 1-4 have been amended to remove limitations relating to “receiving” the mid-signal and side signal. See the §112(a) rejection above for a discussion of this term in these claims. It is not clear how a decoder would decode these signals without first receiving them. It is also not clear if the claim scope includes the decoder generating these signals.
Claim 2 is further rejected under §112(b). Claim 2 recites “extending the first audio signal to a frequency range above the second frequency by performing high frequency reconstruction prior to performing parametric upmixing.” Claim 1 recites that the “first audio signal” is a component of the stereo signal that is generated by the upmixing. It is unclear how “the first audio signal” can be extended prior to the upmixing that generates the “first audio signal.” The specification appears to only describe that extending a signal “prior to performing parametric upmixing” is performed on the mid-signal, not the “first audio signal.” See e.g. Fig. 8 and its description.
Claim 4 recites the terms "the mid-signal and the side signal.” These terms lack antecedent basis in the claim.
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, 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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Edgar, US 5288909 in view of Vos, US 20120275604.
Claim 1: Edgar discloses a method for decoding a plurality of audio signals, the method comprising:
determining a stereo signal based on a mid-signal and a side signal (A stereo signal 352/354 is determined based on a sum (i.e., mid-) signal 324 and different (i.e., side) signal 331. 10:43-67),
wherein the plurality of audio signals comprises the mid-signal and the side signal (The signal that is received at the decoder includes the sum and different (i.e., mid- and side) signals. See Fig. 10.),
wherein the stereo signal comprises a first audio signal and a second audio signal which are suitable for playback on two channels of a speaker configuration (The left and right stereo output signals (Fig. 10: 352 and 354) are suitable for playback over left and right channels of a speaker, as the POSITA reading this disclosure would appreciate. See also the §112(b) rejection above regarding this limitation), and
wherein the stereo signal is determined based on, for first frequencies below a first frequency, a first upmixing that comprises performing a inverse sum-difference transformation of the mid-signal and the side signal (The difference signal 332, along with components of the sum signal below “a first frequency” of lowpass filter 330, are subject to a first upmixing. See Fig. 10 and 10:43-67. The processes carried out by elements 336, 338, 334, and 346 in Fig. 10 amount to an inverse sum-different transformation, as it reproduces a stereo signal from sum- and difference signals. See id.), and, for second frequencies above the first frequency, a second upmixing that comprises upmixing of the mid-signal (The components of the sum (i.e. mid-) signal 324 above the frequency of the high-pass filter 328 are up-mixed by decoder 346 to stereo signal. See Fig. 10 and 10:43-67. The POSITA would appreciate that the low-pass filter 330 and the high-pass filter 328 have the same cutoff frequency, as this would ensure that no frequency components of the sum signal are discarded. Therefore frequencies of the sum signal 324 that are above the “first frequency” are passed on line 344 to the decoder 346 for a second upmixing.).
Edgar does not disclose that the inverse sum-difference transformation is a weighted transformation.
Vos discloses using a weighted inverse sum-difference transformation (¶ 10.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Edgar with these teachings in Vos, the rationale being to provide “greater coding efficiency.” Vos ¶ 10.
Claim 2: Edgar discloses that the first audio signal comprises spectral data corresponding to third frequencies up to a second frequency (implicit in Fig. 10 and 10:43-67), the method further comprising: extending the first audio signal to a frequency range above the second frequency by performing high frequency reconstruction prior to performing parametric upmixing (High-frequences of the different signal are synthesized (that is, they are reconstructed) in the decoder prior to the upmixing. 10:38-42. This results in extending the frequency of the constituent signals of the stereo output signal in the manner claimed.).
Claims 3 and 4: see rejection of claim 1. Edgar-Vos further discloses a non-transitory computer readable storage medium containing instructions that when executed by a processor perform a method according to claim 1, as well as an apparatus for decoding a plurality of audio signals comprising the claimed structure that performs the method of claim 1 (see e.g. Vos ¶ 39.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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