Detailed Non-Final Action
Introduction
1. 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.
2. This Office Action addresses U.S. Application No. 18/609,598 (hereinafter also referred to as ‘598 or the instant application), filed March 19, 2024 which is a reissue application of U.S. Patent No. 8,116,459 (hereinafter also referred to as ‘459 or the original patent), issued February 14, 2012 on U.S. Non-Provisional Patent Application No. 11/384,000 (hereinafter also referred to as ‘000 or the parent application), entitled “ENHANCED METHOD FOR SIGNAL SHAPING IN MULTI-CHANNEL AUDIO RECONSTRUCTION”, filed May 18, 2006.1 The ‘000 application claims benefit to U.S. Provisional application No. 60/787,096 filed on March 28, 2006.
3. With regard to litigation involving ‘459, see Litigation Search Report of record. Also based upon the Examiner’s independent review of ‘459 itself and the prosecution history, the Examiner cannot locate any other previous reexaminations, supplemental examinations, or certificates of correction.
4. The ‘459 patent issued with claims 1-30 (hereinafter also referred to as the patent claims). A preliminary amendment filed concurrently with the application on March 19, 2024 was entered and considered. This preliminary filing cancelled claims 1-30 and added independent claims 31-32 and amended the specification. A second preliminary amendment filed November 18, 2024 amended claims 31-32 and the specification. A consent and declaration were also filed. A second ADS was filed on March 5, 2025.
5. As of the date of this Office Action, the status of the claims is:
Claims 31-32 are pending.
Claims 31-32 are examined.
Claims 31-32 are objected to and/or rejected as set forth infra.
Notice of Pre-AIA or AIA Status
6. Because the effective filing date of claims of the instant application is before March 16, 2013, see prior paragraph 2, the Pre-AIA First Inventor to Invent (“Pre-AIA ) provisions apply thereto. See also paragraph 1, supra.
Reissue
ADS
7. The Application Data Sheet (ADS) filed March 5, 2025 is objected to because: on pages 3 and 4, "Domestic Benefit/National Stage Information", "reissued" should be -- reissue--. See also the discussion in paragraph 14 below.
Note any corrected ADS must identify the information being changed with underlining for insertions and strike-though or brackets for text removed as required by 37 CFR 1.76(c)(2). See MPEP 2920.02 and Quick Start Guide for Corrected Web-based ADS at:
https://www.uspto.gov/sites/default/files/documents/Corected-WebADS-QSCG.pdf.
Additionally, the corrected ADS should be filed with a request for a corrected filing receipt. See MPEP 601.05(a) (II).
Preliminary Amendment
8. The amendment filed November 18, 2024 does not comply with 37 CFR 1.173 (b)(1), i.e. Specification, and (c), i.e. Status of claims and support for claim changes. Appropriate correction is required. See also MPEP § 1453(II).
Specifically, the precise point in the specification, i.e. col. and line of original patent, for the cross-reference paragraph must be identified, cf. “page 1”.2 Furthermore, the prior added paragraph does not need to be shown as crossed through.3
Furthermore, whenever there is an amendment to the claims pursuant to paragraph (b) of section 37 CFR 1.173, there must also be supplied, on pages separate from the pages containing the changes, the status, as of the date of the amendment, of all patent claims and of all added claims and an explanation of the support in the disclosure of the patent for newly added claims as well as any changes made to the patent claims. For example, the newly added claims 31-32 track to claims 28 and 30 of the original patent claims, respectively. Independent claims 31 and 32 include changes to respective original patent claims 28 and 30. While providing citations to, e.g., column, line and original patent claims broadly, an explanation of how the specifics of such cited portions provide support for each such amendment/claimed combination(s) has not been provided. Merely citing columns/lines in the specification and/or original claims is insufficient to explain the changes to the claims or new claims. Any further response failing to provide an explanation of support in the disclosure of the patent for the claims will be held non-compliant and a Notice of Non-Compliance requiring a supplemental paper correctly amending the reissue application in compliance with 37 CFR 1.1739 (c) will be issued.
Declaration
9. The reissue oath/declaration filed November 18, 2024 is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The assignee of 100% of the entire right, title and interest in the patent (who must be named as the reissue applicant) may sign the declaration if the application does not seek to enlarge the scope of the claims in the original patent, or the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest. See MPEP § 605.01. If the reissue applicant is a juristic entity, then the reissue declaration must be signed by an official of the applicant who has a title that carries apparent authority, or someone who makes a statement of authorization to act (e.g., an employee of the assignee who by corporate resolution of a Board of Directors has been given authority to act on behalf of the juristic entity). See MPEP § 325. A patent practitioner may only sign the reissue declaration as an official of a juristic entity applicant if the practitioner has been given authority to act as explained above and may not sign the substitute statement merely on the basis of having power of attorney in the application.
The November 18th, 2024 declaration reissue applicant/reissue assignee is the juristic entity Fraunhofer-Gesellschaft zur Foerderung der angewandten Forschung e.V. The declaration is signed by “Dr. Carsten Wallenhauer” who has a title “Team Leader Patents”. Therefore, the reissue declaration has not been signed by 1) an official of the applicant who has a title that carries apparent authority, 2) someone who has made a statement of authorization to act (e.g., an employee of the assignee who by corporate resolution of a Board of Directors has been given authority to act on behalf of the juristic entity) or 3) a patent practitioner as an official of a juristic entity applicant if the practitioner has been given authority to act.
Furthermore, the declaration includes a “STATEMENT OF STATUS AND SUPPORT OF CLAIMS PURSUANT TO 37 CFR SECTION 1.173(c)”. Such section 37 CFR 1.173 is drawn to “Reissue specification, drawings, and amendments”, not the declaration. Any statement of error under 35 U.S.C. 251 being relied upon as a basis for the reissue under 37 CFR 1.175(a) should be clearly identified by/in the oath or declaration.
10. Claims 31-32 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Consent
11. This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a). The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission is an appropriate party to sign on behalf of the assignee. See 37 CFR 3.73.4
A proper submission establishing ownership interest in the patent, pursuant to 37 CFR 1.172(a), is required in response to this action.
35 U.S.C. 251
12. Claims 31-32 are 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 as follows:
See discussion in paragraph 16 below.
Drawings
13. The drawings are objected to because: in Fig. 1, the numeral 10 should denote the original signal (see 7:21-22). In Fig. 3, the numeral 69 should denote the direct signal modifier (see 10:46) and the numeral 68 should denote the downmix signal (see 10:48).
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the parameter representation including information on a temporal structure of an original channel and a channel level difference parameter or an inter-channel coherence parameter as claimed in claims 31-32 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.5
Corrected drawing sheets in compliance with 37 CFR 1.173 and 1.84 are required in reply to the Office action to avoid abandonment of the application. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
14. The disclosure is objected to because of the following informalities: The cross-reference to related applications section, first paragraph, filed November 18, 2024 describes numerous other reissue applications as “continuation reissues of Patent No. 8,116,459”. However, since the ‘459 patent is not a reissue application, none of those reissue applications are continuation reissues. Furthermore, such cross-reference is also inconsistent with the ADS filed March 5, 20256 and the declaration filed November 18, 2024.7 The '598 reissue application is a reissue application of the '459 patent.
In col. 1, line 43, “ILD” should be --ICLD--. In col. 5, line 48, “One” should be --On--. In col. 9, line 31, after “modifier”, --34-- should be inserted. In col. 9, lines 41-42, “receives as well the direct signal component 42” should be --receives the direct signal component 42 as well--. In col. 15, lines 54-55, “is having” should be --has--. In col. 16, line 5, before “in”, --and-- should be inserted.
The independent claims 31 and 32 now include “a parameter representation” which not only includes information on a temporal structure of the original channel but also “a channel level difference parameter or an inter-channel coherence parameter”. The claims also now set forth a direct signal component and the diffuse signal component for a reconstructed output channel are generated, based on a downmix channel and the channel level difference parameter or the inter-channel coherence parameter, i.e. of the “parametric representation” as now claimed. The claims also now set forth “wherein the modifying comprises modifying the direct signal for finite length time portions being [sic] shorter than frame time portions of additional parametric information comprising the channel level difference parameter or the inter-channel coherence parameter”. (Emphasis added.) The claims further claim only the direct signal being modified using the information on the temporal structure of an original channel included in the parameter representation to obtain a modified direct signal component. The channel level difference parameter8, i.e. also known as ICLD, or inter-channel coherence parameter, i.e. also known as ICC, are described as spatial parameters.
The specification, however, e.g., shows in Fig. 1 (“PRIOR ART), “side info processing” as ICLD, ICTD, and ICC. See also 7:22-25 (“side information 14 indicating the spatial distribution of the various channels of the original multi-channel signals with respect to one another”) and 7:39-41 (“Sample parameters describing the spatial distribution of the original channels are, as for example indicated in FIG. 1, the previously introduced parameters ICLD and ICC.”). In Fig. 2, it shows “a parameter representation” 40 labelled “parameters having information on temporal structure” connected to both a generator 32 (which itself is labelled “generator e.g. only using the downmix channel or using additional parametric information” (emphasis added)) and direct signal modifier 34. See also 9:30-48 (“FIG. 2 shows … a downmix channel 38 downmixed from a plurality of original channels and a parameter representation 40 including information on a temporal structure of an original channel… The direct signal modifier 34 receives as well [sic] the direct signal component 42 as the diffuse signal component 44 and in addition the parameter representation 40 having the information on a temporal structure of the original channel. According to the present invention, the direct signal modifier modifies only the direct signal component 42 using the parameter representation.” (emphasis added)). In Figure 3, a spatial side information 70 is shown connected to a generator 62 and envelope side information 72 is shown connected to a direct signal modifier. See also 10: 25-45 (“As will be discussed in more detail in the description of FIG. 3, … For reshaping, parametric broad band envelope side information contained in the bit stream of the parameter representation is used. This side information consists, according to one embodiment of the present invention, of ratios (envRatio) relating the transmitted downmix signal's envelope to the original input channel signal's envelope. In the decoder, gain factors are derived from these ratios to be applied to the direct signal on each time slot in a frame of a given output channel. The diffuse sound portion of each channel is not altered according to the inventive concept….The multi-channel reconstructor 60 comprises a generator 62 for generating a direct signal component 64 and a diffuse signal component 66 using a downmix channel 68 derived by downmixing a plurality of original channels and a parameter representation 70 having information on spatial properties of original channels of the multi-channel signal, as used within MPEG coding.” (emphasis added)). In Figures 5 and 6, “parameters” are shown connected to both a generator/generator step and direct signal modifier/scaling step. See also 15:48-62 (“FIG. 5 shows an example of an inventive multi-channel audio decoder 100, receiving a downmix channel 102 derived by downmixing a plurality of channels of one original multi-channel signal and a parameter representation 104 including information on a temporal structure of the original channels (left front, right front, left rear and right rear) of the original multi-channel signal. (emphasis added)), and 16:1-18 (“FIG. 6 shows … In a generation step 110, a direct signal component and a diffuse signal component is derived from the downmix channel [sic] in [sic] a modification step 112 the direct signal component is modified using parameters of the parameter representation having information on a temporal structure of an original channel….” (emphasis added)). With regard to the terminology “additional parametric information”, see also original patent claims 8-9.
Accordingly, at the very least, see again also paragraph 10 above and 16 below, the claim terminology “parameter representation” as used in the claims is not clearly/consistently described, e.g. the terminology is used to both to describe only temporal information for application only to the direct signal by a direct signal modifier and to describe only information on spatial properties of original channels of the multi-channel signal applied to both direct and diffuse signals by the generator. This lack of clarity/inconsistency is exacerbated by the use of multiplicity of other terms, e.g. “side information”, “parametric information”, “parameters”, “additional parametric information” relative to such spatial and temporal parameters. A clear consistent description of the “parametric representation” should be set forth, i.e., how many parametric representations are there? what does/do it/they include? how is/are it/they implemented? how do multiplicity of other terms, e.g. “side information”, “parametric information”, “parameters”, “additional parametric information” relate thereto?
Appropriate correction is required.
Claim Objections
15. Claims 31-32 are objected to because of the following informalities: in claim 31, lines 4, 7 and 13, “channel level” should be --inter-channel level--. On line 12, “being” should be -- which are--. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. See MPEP 2111. It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(11). Therefore, unless Applicant for patent has provided a lexicographic definition for the term, see MPEP §211l.0l(IV), or 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
When the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. §112(6th ¶) and MPEP §2181-2183. As noted in MPEP §2181, a three prong test is used to determine the scope of a means-plus-function or step-plus-function limitation in a claim:
The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
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.
16. Claims 31-32 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.
As discussed above with regard to the specification and the amendments under 1.173(c), the independent claims 31 and 32 now include “a parameter representation” which not only includes “information on a temporal structure of the original channel” but also “a channel level difference parameter or an inter-channel coherence parameter”. The claims also set forth that a direct signal component and a diffuse signal component for the reconstructed output channel are generated, based on the downmix channel and the channel level difference parameter or the inter-channel coherence parameter, i.e. of the parametric representation as now claimed, as well as the diffuse signal component being generated using a filtered and/or delayed portion of the at least one downmix channel. The claims further claim only modifying the direct signal using the information on the temporal structure of an original channel included in the parameter representation to obtain a modified direct signal component. Finally, the claims now claim the modifying of the direct signal component comprises modifying the direct signal for finite length time portions being [sic] shorter than frame time portions of additional parametric information9 comprising the channel level difference parameter or the inter-channel coherence parameter”. As described above10, the channel level difference parameter is also known as ICLD and the inter-channel coherence parameter is also known as ICC.
The support for such amendment was identified as “USPN 8,116,459: Claim 1; col. 7, line 51 - col. 8, line 63.” The support for claim 32 was “Claim 30”. Col. 7, line 51-col. 8, line 63 describes Fig. 1 (“FIG. 1 shows an example for coding of multi-channel audio data according to prior art, to more clearly illustrate the problem solved by the inventive concept.”) and Fig. 1b (“ FIG. 1b gives an extremely simplified example of the downmix and reconstruction process during multi-channel audio coding to explain the great benefit of the inventive concept of scaling only the direct signal component during reconstruction of a channel of a multi-channel signal.”). See also col. 6, line 66 -col. 7, line 2. In other words, this portion does not describe the combination of features as claimed in claim 31 but rather discusses the prior art.11 Claim 30 does not cure this deficiency. Accordingly, claim 32 lacks support for the same reasons as claim 31. See again the discussion of paragraph 8 above with regard to the discussion of CFR 1.173(c).
17. Claims 31-32 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the employment of an envelope shaping process employing an envelope extraction operation on different signals prior to the modification of the direct signal component of claims 31 and 32 which is critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
See 11:33-38 (“The envelope shaping process employs an envelope extraction operation on different signals. The envelopes extraction process taking place within direct signal modifier 69 is described in further detail in the following paragraphs as this is a mandatory step before application of the inventive modification to the direct signal component.) (emphasis added) and, e.g., claim 31, lines 11-15, claim 32, line 2. Note also 10:25-45 set forth in paragraph 14 above.
18. Claims 31-32 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.
Claim 31 recites the limitation "the downmix channel” in line 7. There is insufficient antecedent basis for this limitation in the claim. Note lines 1-2 of claim 31 sets forth “at least one downmix channel”.
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 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.
19. Claims 31-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31-45 of copending Application No. 18/609,374 (reference application), 31-43 of copending Application No. 18/609,425 (reference application, ), claims 31-43 of copending Application No. 18/609,493 (reference application), claims 31-32 of each of copending Application Nos. 18/609,530 and 18/609,446 (reference applications), claims 31-44 of copending Application No. 18/609,565 (reference application), over 31-51 of copending Application No. 18/609,647 (reference application), and over claims 31-45 of copending Application No. 18/609,669 (reference application) in view of U.S. Patent Publication No. 20070081597.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application differ from those in the reference applications in that those reference applications recite additional limitations not claimed in this application See, e.g., the STATEMENT OF STATUS AND SUPPORT OF CLAIMS PURSUANT TO 37 CFR SECTION 1.173(c) in each one of the reference applications relative to such statement in this application. In other words, the claims in the instant application are broader with regard to such additional limitations in the reference applications. See 214 U.S.P.Q. 761, In re Van Ornum and Stanz.
The claims in the application differ from those in reference applications ( other than 18/609,565) with regard to the recited limitation of “the modifying comprises modifying the direct signal for finite length time portions being [sic] shorter than frame time portions of additional parametric information comprising the channel level difference parameter or the inter-channel coherence parameter” as presented in the claims 31 and similar language in claim 32. However, see claims 31 and 44 of 18/609,565. Therefore, as best understood, see paragraphs 12, 14, 16 and 18 above, it would have been obvious to one of ordinary skill in the art to employ the teachings of ‘565, i.e. modifying the direct signal for finite length time portions to be shorter than frame time portions of additional parametric information comprising the channel level difference parameter or the inter-channel coherence parameter, to modify the direct signal component as claimed in claims 31-32 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
20. The subject matter recited by claims 31-32 distinguishes over the art.
Conclusion
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Amendments
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 8,116,459 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely appraise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
Inquiries:
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karin M Reichle whose telephone number is (571)272-4936. The examiner can normally be reached on 6:00-6:00 M-Th.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached on 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/Karin Reichle/Primary Examiner, Art Unit 3992
Conferees:
/Cameron Saadat/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
1 The term of the patent was extended or adjusted by 1274 days.
2 MPEP 1453, 1.: "Applicant must indicate the precise point where any added or rewritten paragraph is located. All bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application. Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined each time they are re-submitted in the reissue application." See MPEP, V., A.
3 However, note 1.173 (d)(1) when the omission of matter is part of the original patent, brackets, not strike out, is used. Note also with regard to the claims MPEP 1453, V., B.
4 Note paragraph 9 above.
5 Note, however, the discussion in paragraphs 8 and 12 above and paragraphs 16-17 below.
6 The ADS identifies the instant application as a "divisional" of the '374 reissue application. However, a restriction
was not issued in that '374 application. See also footnote 7 as well as MPEP 1451, I.
7 Note also the declaration describes the error with regard to the claims of the original ‘459 patent, not the '374 reissue application.
8 It is unclear whether this refers to an inter-channel level difference parameter or not. For the purposes of discussion, it will be treated as such.
9 See the discussion in the following paragraph 18.
10 See footnote 8.
11 It is noted that the portions of the specification relied upon for support do not include citations to portions relied upon in related applications, e.g. 16/609,374 and 16/609,446, with regard to added limitations to inter-channel parameters., e.g. col. 5, lines 56-67, although the instant claims appear to include similar limitations with regard to inter-channel parameters. However, these portions of the specification also do not describe the combination of features as claimed in claims 31-32.
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