DETAILED ACTION
I. ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 18/442,813 (“813 Reissue Application” or “instant application”). Based upon a review of the instant application, the actual filing date is Feb. 15, 2024 (“813 Actual Filing Date”). Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this reissue application proceeding. The 813 Reissue Application contained, among other things: reissue application declarations by the inventors and a preliminary amendment.
The 813 Reissue Application is a reissue application of U.S. Patent No. 8,743,969 (“969 Patent”) titled “IMAGE DECODING METHOD AND APPARATUS BASED ON A SIGNAL TYPE OF THE CONTROL PARAMETER OF THE CURRENT BLOCK.” The 969 Patent was filed on Jun. 22, 2012 and assigned by the Office US patent application number 13/530,218 (“218 Application”) and issued on Jun. 3, 2014 with claims 1-2 (“Originally Patented Claims”). Because the parent reissue application 15/168,529 indicated broadening, broadening in this reissue application is permitted.
II. OTHER PROCEEDINGS
Based upon Applicant’s statements as set forth in the instant application and after the Examiner's independent review of the 969 patent itself and its prosecution history, the Examiner finds that she cannot locate any ongoing proceeding before the Office or current ongoing litigation. Also based upon the Examiner's independent review of the 969 Patent itself and the prosecution history, the Examiner finds that she cannot locate any previous reexaminations (ex parte or inter partes), supplemental examinations, or certificates of correction.
III. PRELIMINARY AMENDMENT
The 813 Reissue Application contains a preliminary amendment (“813 Preliminary Amendment”) that was filed on the 813 Actual Filing Date. The 813 Preliminary Amendment is hereby entered. The 813 Preliminary Amendment contained, among other things, “REMARKS” (“2024 Remarks”), “AMENDMENT TO THE SPECIFICATION”(“2024 Specification Amendment”) an IDS and “AMENDMENTS TO THE CLAIMS” (“2024 Claim Amendment”). The 2024 Claim Amendment added new claims 3-4 and cancel original patent claims 1-2.
IV. INFORMATION DISCLOSURE STATEMENT
Applicant's Information Disclosure Statement, filed on Feb. 15, 2024, has been received, and entered into the record.
However, it is impractical for the examiner to review the references thoroughly with the number of references cited in this case. By initializing each of the cited references on the accompanying 1449 forms, the examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made of the cited references.
MPEP § 2004.13 states: It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant's attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aft 'd, 479 F.2d 1338, 178 USPQ 577 (Sth Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
Further, it should be noted that an applicant's duty of disclosure of material and information is not satisfied by presenting a patent examiner with "a mountain of largely irrelevant material from which he is presumed to have been able, with his experience and with adequate time, to have found the critical [material]. It ignores the real world conditions under which examiners work." Rohm & Haas Co. v. Crystal Chemical co., 722 F.2d 1556, 1573 [220 USPQ 289] (Fed. Cir. 1983), cert. Denied, 469 U.S. 851 (1984). Patent applicant has a duty not just to disclose pertinent prior art references but to make a disclosure in such a way as not to "bury" it within other disclosures of less relevant prior art; see Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 USPQ2d 180i (N~D. Ind. 1992); Molins PLC v. Textron Inc., 26 USPQ2d 1889, at 1899 (D.Del 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 USPQ 260, at 272 (S.D. FI. 1972).
The Examiner notes that some of the cited references in the IDS are rather lengthy: for example, "WD2: Working Draft 2 of High-Efficiency Video Coding” (153 pages),” “WD3: Working Draft 3 of High-Efficiency Video Coding” (215 pages).” It would be helpful to the examiner if the applicant could point out specific sections of such lengthy references that are most relevant to the applicant's invention. From MPEP § 609 A(3), "Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.
V. STATUS OF CLAIMS
In light of the above:
Claims 3-4 are currently pending (“Pending Claims”).
Claims 3-4 are currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 3-4 are rejected.
VI. PRIORITY CLAIMS
Based upon a review of the instant application and 969 Patent, the Examiner finds that in the instant application, Applicant is claiming domestic priority to provisional application 61/500,163. The instant reissue application is also a continuation reissue application of 17/465,333, Now, US RE49906, which is a continuation reissue application of 16/446,027, now US RE48,810 E, which is a continuation reissue application of 15/168,806, now US RE47,547 E, which is a continuation reissue application of 15/168,529, now US RE47,537 E. However, the instant application does not claim any foreign priority.
Because the effective filing date of the instant application is not on or after March 16, 2013, the AIA First Inventor to File (“AIA -FITF”) provisions do not apply. Instead, the earlier ‘First to Invent’ provisions apply.
VII. CLAIM INTERPRETATION
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.
A. Lexicographic Definitions
A first exception occurs when there is lexicographic definition in the specification. After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiner below, the Examiner finds that she is unable to locate any lexicographic definitions (either express or implied) with reasonable clarity, deliberateness, and precision. Because the Examiner is unable to locate any lexicographic definitions with reasonable clarity, deliberateness, and precision, the Examiner concludes that Applicants are not their own lexicographer. See MPEP §2111.01 IV.
B. 'Sources' for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Applicant, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how she is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support her interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. Configuration: “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to a hardware configuration or software configuration.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
2. Controller: A device that controls the operation of another device by relaying information to that device, the controller potentially a processor or computer. See “Newton’s Telecom Dictionary. 14th Expanded Edition, Telecom Books, October 1998,” describing a controller as a device that controls another device by relaying information, and also describing the most common form of controller as being a computer.
C. 35 U.S.C. § 112 6th Paragraph (§ 112 ¶ 6)
A second exception is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112 ¶ 6. See MPEP § 2181 et seq. To invoke § 112 ¶ 6, a claimed phrase must meet the three (3) prong analysis as set forth in MPEP § 2181 I. The following phrases will be analyzed to determine if the claimed phrases invoke § 112 ¶ 6. If a phrase invokes § 112 ¶ 6, the corresponding structure or materials will also be determined.
The Examiner has reviewed the Examined claims of the instant application and concludes that based on the three Prong analysis set forth in MPEP§ 2181 I, the following functional phrases invoke 35 U.S.C. § 112 ¶ 6.
(1) Functional Phrase #1
the processor to perform operations including:
determining a context for a current block in an image, from among a plurality of contexts; and
wherein the determining further includes:
determining the context by using both of decoded control parameters for a left block and an upper block, when the control parameter is a skip flag, the left block being a neighboring block to the left of the current block, and the upper block being a neighboring block on top of the current block; and
determining the context by using a predetermined fixed value, when the control parameter is a merge mode flag,
wherein the skip flag indicates whether or not the current block is to be skipped, and the merge mode flag indicates whether or not a merge mode is used for the current block.
--“Functional Phrase #1” or “FP #1” – From claim 3.
To invoke 35 U.S.C. § 112 ¶ 6, a claimed phrase must meet the three (3) prong analysis as set forth in MPEP § 2181 I.
i. 3 Prong Analysis: Invocation Prong (A)
In accordance with Invocation Prong (A), the MPEP states:
(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 ....
MPEP § 2181 I. — Invocation Prong (A).
As an initial matter, the Examiner finds that Functional Phrase #1 does not use the term “means.” Therefore the issue arising under Invocation Prong (A) then becomes whether or not the claimed “processor” denotes structure or is a generic placeholder for “means.
In assessing whether or not FP#1 invokes § 112 ¶ 6, the Examiner must not only consider the introductory phrase “processor,” but the entire FP#1. “In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase. [Emphasis added.]” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019).
Second, the Examiner has reviewed the original specification and drawings as set forth in the 813 Reissue Application, general and subject matter specific dictionaries, and the prior art now of record to determine if FP#1 provides a description sufficient to inform one of ordinary skill in this particular art that FP#1 denotes a particular structure.
Third, the Examiner finds that “processor” is structure and non-transitory computer-readable medium is also structure. However the claimed “processor” as set forth in FP#1 has a particular configuration (i.e. it is “configured to execute instructions [and perform the claimed functions]”). In light of the claimed ‘configuration,’ the Examiner concludes that the claimed “processor” is not a generic computer processor or a general purpose computer but a particular processor requiring special programming since the two claimed “determining…” functions and the one “performing” functions as set forth in FP#1 cannot be performed by a general purpose processor or computer.
In light of the above, the Examiner concludes that the phrase “processor” configured to perform the claimed functions is a generic placeholder. Because “processor” is merely a generic placeholder, the Examiner concludes that Functional Phrase #1 meets invocation Prong (A).
ii. 3 Prong Analysis: Invocation Prong (B)
Based upon a review of the Functional Phrase #1, the Examiner finds that for Functional Phrase #1, the claimed function is
determining a context for a current block in an image, from among a plurality of contexts; and
wherein the determining further includes:
determining the context by using both of decoded control parameters for a left block and an upper block, when the control parameter is a skip flag, the left block being a neighboring block to the left of the current block, and the upper block being a neighboring block on top of the current block; and
determining the context by using a predetermined fixed value, when the control parameter is a merge mode flag,
wherein the skip flag indicates whether or not the current block is to be skipped, and the merge mode flag indicates whether or not a merge mode is used for the current block.
--Function of FP#1.
Additionally, the Examiner finds that because nothing in the written description of the 813 reissue application contradicts the plain language as set forth in the Function of FP#1, Function of FP#1 will have their ordinary and accustomed meaning. Because Functional Phrase #1 includes the Function of FP#1, the Examiner concludes that, Functional Phrase #1 meets invocation prong (B).
iii. 3 Prong Analysis: Invocation Prong (C)
Based upon a review of Functional Phrase #1, the Examiner finds that Functional Phrase #1 does not contain sufficient structure for performing the entire Function of FP#1. In fact, the Examiner finds that Functional Phrase #1 recites very little structure (if any) for performing the Function of FP#1.
Because Functional Phrase #1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrase #1 meets invocation Prong (C).
Because Functional Phrase #1 meets the three prong analysis as set forth in MPEP § 2181 I, the Examiner concludes that Functional Phrase #1 invokes § 112 ¶ 6.
iv. Corresponding Structure or Materials
Based upon a review of the 813 reissue application itself, the Examiner concludes that the corresponding structure for FP#1 is a general purpose computer plus algorithm for the following functions:
determining a context for a current block in an image, from among a plurality of contexts; and
--The corresponding structure is illustrated as 242 in Fig. 6 and the algorithm is described associated with Steps 202-209 in Fig. 7, col. 16, line 19-67, Fig. 8, col. 18, lines 27-44, Fig. 9, col. 19, line 6-col. 20, line 8, Fig. 16A, col. 24, line 52-col. 25, line 12
wherein the determining further includes:
determining the context by using both of decoded control parameters for a left block and an upper block, when the control parameter is a skip flag, the left block being a neighboring block to the left of the current block, and the upper block being a neighboring block on top of the current block; and
--col. 10, line 59-col. 11, line 39, col. 12, line 57-col. 13, line 58, col. 13, line 66-col. 14, line 13, col. 23, lines 33-37 and col. 24, lines 52-64 in association with 142 in Fig. 1 and 242 in Fig. 6 of the 969 Patent
determining the context by using a predetermined fixed value, when the control parameter is a merge mode flag,
– col. 13, lines 46-48, col. 24, lines 29-33 and lines 65-67 of the 969 Patent
wherein the skip flag indicates whether or not the current block is to be skipped, and the merge mode flag indicates whether or not a merge mode is used for the current block
--col. 7, lines 58-61 of the 969 Patent.
(2) Functional Phrase #2
the processor to perform operations including:
determining a context for a current block in an image, from among a plurality of contexts; and
wherein the determining further includes:
determining the context by using both of coded control parameters for a left block and an upper block, when the control parameter is a skip flag, the left block being a neighboring block to the left of the current block, and the upper block being a neighboring block on top of the current block; and
determining the context by using a predetermined fixed value, when the control parameter is a merge mode flag,
wherein the skip flag indicates whether or not the current block is to be skipped, and the merge mode flag indicates whether or not a merge mode is used for the current block.
--“Functional Phrase #2” or “FP #2” – From claim 4.
i.-iii. 3-Prong Analysis: Prong (A)-Prong (C)
Similar 3-Prong Analysis performed for FP#1 is performed for FP#2. The Examiner concludes that FP#2 invoke § 112 ¶ 6.
iv. Corresponding Structure or Materials
Based upon a review of the 813 reissue application itself, the Examiner concludes that the corresponding structure for FP#2 is a general purpose computer plus algorithm for the following functions:
determining a context for a current block in an image, from among a plurality of contexts; and
--The corresponding structure is illustrated as 242 in Fig. 6 and the algorithm is described associated with Steps 202-209 in Fig. 7, col. 16, line 19-67, Fig. 8, col. 18, lines 27-44, Fig. 9, col. 19, line 6-col. 20, line 8, Fig. 16A, col. 24, line 52-col. 25, line 12
wherein the determining further includes:
determining the context by using both of decoded control parameters for a left block and an upper block, when the control parameter is a skip flag, the left block being a neighboring block to the left of the current block, and the upper block being a neighboring block on top of the current block; and
--col. 10, line 59-col. 11, line 39, col. 12, line 57-col. 13, line 58, col. 13, line 66-col. 14, line 13, col. 23, lines 33-37 and col. 24, lines 52-64 in association with 142 in Fig. 1 and 242 in Fig. 6 of the 969 Patent
determining the context by using a predetermined fixed value, when the control parameter is a merge mode flag,
– col. 13, lines 46-48, col. 24, lines 29-33 and lines 65-67 of the 969 Patent
wherein the skip flag indicates whether or not the current block is to be skipped, and the merge mode flag indicates whether or not a merge mode is used for the current block.
--col. 7, lines 58-61 of the 969 Patent.
(3) Functional Phrase #3
the processor to perform operations including:
performing context-based adaptive binary arithmetic decoding (CABAC) on a bitstream corresponding to the current block, using the determined context to obtain a control parameter for the current block.
--“Functional Phrase #3” or “FP #3” – From claim 3.
i.-iii. 3-Prong Analysis: Prong (A)-Prong (C)
Similar 3-Prong Analysis performed for FP#1 is performed for FP#3. The Examiner concludes that FP#3 invoke § 112 ¶ 6.
iv. Corresponding Structure or Materials
Based upon a review of the 813 reissue application itself, the Examiner concludes that the corresponding structure for FP#3 is a general purpose computer plus algorithm for the following function:
performing context-based adaptive binary arithmetic decoding (CABAC) on a bitstream corresponding to the current block, using the determined context to obtain a control parameter for the current block
-- col. 10, lines 59-61 of the 969 patent, description associated with the context control unit 242 and in NPL 1, i.e., "Context-Based Adaptive Binary Arithmetic Coding in the H.264/AVC Video Compression Standard", IEEE Transaction on circuits and systems for video technology, Vol. 13, No. 7, July 2003 by Detlev Marpe, et al.
(4) Functional Phrase #4
the processor to perform operations including:
performing context-based adaptive binary arithmetic coding (CABAC) on a control parameter for the current block, using the determined context to generate a bitstream corresponding to the current block
--“Functional Phrase #4” or “FP #4” – From claim 4.
i.-iii. 3-Prong Analysis: Prong (A)-Prong (C)
Similar 3-Prong Analysis performed for FP#1 is performed for FP#4. The Examiner concludes that FP#4 invoke § 112 ¶ 6.
iv. Corresponding Structure or Materials
Based upon a review of the 813 reissue application itself, the Examiner concludes that the corresponding structure for FP#4 is a general purpose computer plus algorithm for the following function:
performing context-based adaptive binary arithmetic coding (CABAC) on a control parameter for the current block, using the determined context to generate a bitstream corresponding to the current block
-- col. 10, lines 59-61 of the 969 patent, context control unit 242 and in NPL 1, i.e., "Context-Based Adaptive Binary Arithmetic Coding in the H.264/AVC Video Compression Standard", IEEE Transaction on circuits and systems for video technology, Vol. 13, No. 7, July 2003 by Detlev Marpe, et al.
(5) How To Prevent FP#1-FP#4 From Invoking § 112 ¶ 6
If Applicant does not intend to have the claim limitation invoke § 112 ¶ 6, Applicant may amend claims 3-4 so that they will clearly not invoke § 112 ¶ 6.
Moreover, if Applicant believes FP#1-FP#4 has a structural meaning known to a person of ordinary skill in this particular art, Applicant should in their next appropriately filed response, expressly state on the record that FP#1-FP#4 has a structural meaning known to a person of ordinary skill in this particular art and provide appropriate evidence in support thereof (e.g. a prior art U.S. patent).
Additionally, in order to show that FP#1-FP#4 does not meet 3 Prong Analysis: Invocation Prong (C), Applicant must also state on the record and provide evidence in support thereof that the claimed structure (of FP#1-FP#4 whatever it is) can perform the entire Function of FP#1-FP#4.
Applicant is reminded that should Applicant amend a claimed phrase so that a claimed phrase does not invoke § 112 ¶ 6 or successfully argue that a claimed phrase does not invoke § 112 ¶ 6, elements from the specification (including any algorithms) will not be read into the claims. “This court [the Federal Circuit] has repeatedly and clearly held that it will not read unstated limitations into claim language.” Northern Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1290, 55 USPQ2d 1065, 1072 (Fed. Cir. 2000).
VIII. DOUBLE PATENTING REJECTION
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 §§ 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/patent/patents-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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
US Patent RE48,810 (matured from 16/446,027)
Claims 3-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4 of U.S. Patent RE48,810 (“the 810 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because
Claims 3-4 and claims 3-4 of the 810 Patent recite common subject matter respectively;
Whereby claims 3-4 of the instant application, which recites the open ended transitional phrase “comprising”, does not preclude the additional elements recited by claims 3-4 of the 810 Patent, and
Therefore claims 3-4 of the instant application is obvious in view of claims 3-4 of the 810 Patent.
US Patent RE47,547 (matured from 15/168,806)
Claims 3-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent RE47,547 (“the 547 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because
Claims 3-4 and claim 3 of the 547 Patent recite common subject matter;
Whereby claims 3-4 of the instant application, which recites the open ended transitional phrase “comprising”, does not preclude the additional elements recited by claim 3 of the 547 Patent, and
Claim 3 of the instant application is the corresponding decoding claims of claim 3 of the 547 patent. It is known in the art that decoding is the reverse process or coding and both decoding and coding require determining context using the same process.
Therefore claims 3-4 of the instant application is obvious in view of claim 3 of the 547 Patent.
C. US Patent RE47,366 (matured from 15/168,867)
Claims 3-4 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 3 of U.S. Patent No RE47,366 (“the 366 Patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because
Claims 3-4 of the instant application and claim 3 of the 366 Patent recite common subject matter;
Whereby claims 3-4, which recites the open ended transitional phrase “comprising”, does not preclude the additional elements recited by claim 3 of the 366 Patent, and
Whereby the elements of claims 3-4 are obvious over claim 3 of the 366 Patent.
D. US Patent RE47,537 (matured from 15/168,529)
Claims 3-4 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of U.S. Patent No RE47,537 (“the 537 Patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because
Claims 3-4 of the instant application and claim 2 of the 537 Patent recite common subject matter;
Whereby claims 3-4, which recites the open ended transitional phrase “comprising”, does not preclude the additional elements recited by claim 2 of the 537 Patent, and
Claim 2 of the 537 patent is a decoding claim while claim 4 of the instant application is a coding claim. It is known in the art that both coding and decoding need to determine context of coding using similar method and decoding is the reverse process of coding.
Whereby the elements of claims 3-4 are obvious over claim 2 of the 537 Patent.
E. US Patent 8,743,969 (matured from 13/530,218)
Claims 3-4 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of U.S. Patent No 8,743,969 (“the 969 Patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because
Claims 3-4 of the instant application and claim 2 of the 969 Patent recite common subject matter;
Whereby claims 3-4, which recites the open ended transitional phrase “comprising”, does not preclude the additional elements recited by claim 2 of the 969 Patent, and
Claim 2 of the 969 patent is a decoding claim while claim 4 of the instant application is a coding claim. It is known in the art that both coding and decoding need to determine context of coding using similar method and decoding is the reverse process of coding.
Whereby the elements of claims 3-4 are obvious over claim 2 of the 969 Patent.
X. ALLOWABLE SUBJECT MATTER
Claims 3-4 would be allowable if a terminal disclaimer is filed to overcome the double patenting rejections, set forth in this Office action.
The following is an examiner’s statement of reasons for allowable subject matter:
FP#1 in claim 3 and FP#2 in Claim 4 are interpreted invoking § 112 ¶ 6. The prior art on the record including Marpe (“Context-Based Adaptive Binary Arithmetic Coding in the H.264/AVC Video Compression Standard", IEEE Transaction on circuits and systems for video technology, Vol. 13, No. 7, July 2003 by Detlev Marpe, et al) fails to teach the following limitation listed feature(s) in combination with other limitations in the claims:
the algorithm involving determining the context of coding/decoding control parameter of merge mode and performing arithmetic decoding/coding of the control parameter corresponding to the skip flag as described in col. 10, line 59-col. 11, line 39, col. 12, line 57-col. 13, line 58, col. 13, line 66-col. 14, line 13, col. 23, lines 33-37 and col. 24, lines 52-64 in association with 142 in Fig. 1 and 242 in Fig. 6 of the 969 Patent.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
XI. CONCLUSION
A. Reissue Application Reminders
Disclosure of other proceedings. Applicants 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 the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is 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.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
B. Suggested Examples: Preventing Both New Matter Rejections & Objections to the Specification in the Future
Applicants are respectfully reminded that any suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. To be especially clear, any suggestion or example provided in this Office Action (or in any future office action) does not constitute a formal requirement mandated by the Examiner.
Should Applicants decide to amend the claims, Applicant is also reminded that—like always—no new matter is allowed. The Examiner therefore leaves it up to Applicants to choose the precise claim language of the amendment in order to ensure that the amended language complies with 35 U.S.C. § 112 1st paragraph.
Independent of the requirements under 35 U.S.C. § 112 1st paragraph, Applicants are also respectfully reminded that when amending a particular claim, all claim terms must have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Should Applicants amend the claims such that the claim language no longer has clear support or antecedent basis in the specification, an objection to the specification may result. Therefore, in these situations where the amended claim language does not have clear support or antecedent basis in the specification and to prevent a subsequent ‘Objection to the Specification’ in the next office action, Applicants are encouraged to either (1) re-evaluate the amendment and change the claim language so the claims do have clear support or antecedent basis or, (2) amend the specification to ensure that the claim language does have clear support or antecedent basis. See again MPEP § 608.01(o) (¶3). Should Applicants choose to amend the specification, Applicants are reminded that—like always—no new matter in the specification is allowed. See 35 U.S.C. § 132(a). If Applicants have any questions on this matter, Applicants are encouraged to contact the Examiner via the telephone number listed below.
C. Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to YUZHEN GE whose telephone number is (571)272-7636. The Examiner can normally be reached on Monday-Thursday 8:00-6:00.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor Andrew J. Fischer can be reached on 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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/Yuzhen Ge/
Primary Examiner, Art Unit 3992
Conferees:
/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While most interpretations are cited because these terms are found in the claims, the Examiner may have provided additional interpretations to help interpret words, phrases, or concepts found in the interpretations themselves, the instant patent, or in the prior art.