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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/02/2026 has been entered.
Response to Arguments
3. Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Double Patenting
4. 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.
5. Claim 1-2 and 18-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18/618,789 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because because ‘789 claims list all the features recited in claims 1-2 and 18-20 of the current application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
6. Claim 1, 3-4 and 18-21 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4-5, 8, 9, 12-13, 15, 17 and 20 of copending Application No. 18/618,802 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the claims of this application and the claims of the copending Application is that Applicant has added the following limitations of “performing a conversion between a media file of a first video and a bitstream of the first video; and wherein the first set of coded video data units and the second set of coded video data units comprise network abstraction layer (NAL) units”
It would have been obvious to one of ordinary skill in the art at the time the invention was made to add some limitations because one of ordinary skill in the art would have realized that adding some limitations in the claims is an obvious expedient since the remaining elements perform the same functions as before. In re Karlson, 136 USPQ 184 (CCPA 1963).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
7. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
8. Claim(s) 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall et al. (US 2019/0075351) cited in IDS, hereinafter “Hall”.
As per claim 20, Hall discloses a non-transitory computer-readable recording medium storing a media file of a first video which is generated by a method performed by a video processing apparatus (paragraphs 0098-0099), wherein the method comprises (the method steps do not carry patentable weight as the claim is a product-by-process claim in which only the media file (product), generated by the method steps (process), is given weight. MPEP §2113 recites “Product-by-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. Thus, the scope of the claim is the storage medium storing the media file (with the structure implied by the method steps). The structure includes the information and samples manipulated by the steps.
“To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated”. MPEP §2111.05(I)(A). When a claimed “computer-readable medium merely serves as a support for information or data, no functional relationship exists. MPEP §2111.05(III). The storage medium storing the claimed media file in claim 20 merely services as a support for the storage of the media file and provides no fictional relationship between the stored media file and storage medium. Therefore, the structure, which scope is implied by the method steps, is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Thus, the claim scope is just a storage medium storing data.
9. Claim(s) 1-8, 12-13, 17 and 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Information technology – Dynamic adaptive streaming over HTTP (DASH) – Part1: Media presentation description and segment formats”, ISO 23009-1:2021(X) ISO/IEC JTC 1/SC 29/WG 3, June 24, 2021, cited in IDS, hereinafter “ISO 23009”.
As per claim 1, ISO 23009 discloses a method for video processing, comprising:
performing a conversion between a media file of a first video and a bitstream of the first video (see last paragraph on page 12; see also page 52, section 5.3.5.1, Each Representation includes one or more media streams, where each media stream is an encoded version of one media content component…decode the media content components), wherein the media file comprises a first indication indicating a first set of coded video data units representing a target picture-in-picture region in the first video, the first set of coded video data units being replaceable by a second set of coded video units associated with a second video (pages 100-101, section 5.3.11.6, when @tag of the Preselection is equal to "PicInPic", the Picnpic element is present, and the @dataUnitsReplacable attribute is equal to "true", the client may choose to replace the coded video data units representing the target picture-in-picture region in the main video with the corresponding coded video data units of the supplementary video before sending to the video decoder; see also table 27), and wherein the first set of coded video data units and the second set of coded video data units comprise network abstraction layer (NAL) units (pages 100-101, section 5.3.11.6, In the case of VVC, when the client chooses to replace the coded video data units (which are VCL NAL units) representing the target picture-in-picture region in the main video with the corresponding VCL NAL units of the supplementary video before sending to the video decoder…; see also table 27).
As per claim 2, ISO 23009 discloses the method of claim 1, wherein a spatial resolution of the second video being smaller than a spatial resolution of the first video (page 100, section 5.3.11.6, Picture-in-picture services offer the ability to include a video with a small spatial resolution within a video with a bigger spatial resolution).
As per claim 3, ISO 23009 discloses the method of claim 1, wherein the first indication comprises a list of region identities (IDs) identifying regions in the first video (@regionIds, see table 27 on page 101).
As per claim 4, ISO 23009 discloses the method of claim 3, further comprising: for one region ID in the list of region IDs, replacing a first coded video data unit having the region ID in the first set of coded video data units with a second coded video data
unit having the region ID in the second set of coded video data units (pages 100-101, section 5.3.11.6, In the case of VVC. when the client chooses to replace the coded video data units (which are VCL NAL units) representing the target picture-in-picture region in the main video with the corresponding VCL NAL units of the supplementary video before sending to the video decoder, for each subpicture ID. the VCL NAL units in the main video are replaced with the corresponding VCL NAL units having that subpicture ID in the supplementary video, without changing the order of the corresponding VCL NAL units; see also table 27).
As per claim 5, ISO 23009 discloses the method of claim 3, wherein the first video is coded with versatile video coding (VVC), and a region ID in the list of region identities is a subpicture ID identifying a subpicture in the first video (see table 27 on page 101, In the case of VVC, the region IDs are subpicture IDs).
As per claim 6, ISO 23009 discloses the method of claim 1, wherein the first set of coded video data units comprise a video coding layer network abstraction layer (VCL NAL) unit, and the second set of coded video data units comprise a VCL NAL unit (pages 100-101, section 5.3.11.6, In the case of VVC, when the client chooses to replace the coded video data units (which are VCL NAL units) representing the target picture-in-picture region in the main video with the corresponding VCL NAL units of the supplementary video before sending to the video decoder…; see also table 27).
As per claim 7, ISO 23009 discloses the method of claim 1, wherein the first indication is included in a data structure in the media file (pages 100-101, section 5.3.11.6, table 27).
As per claim 8, ISO 23009 discloses the method of claim 7, wherein the data structure is a "pinp" entity group (pages 100-101, section 5.3.11.6, table 27).
As per claim 12, ISO 23009 discloses the method of claim 7, wherein the size of the target picture-in-picture region is smaller than a size of the first video (page 100, section 5.3.11.6, Picture-in-picture services offer the ability to include a video with a small spatial resolution within a video with a bigger spatial resolution), and the data structure further includes position information and size information of the target picture-in-picture region (@x, @y, @width and @height taught in table 27 of pages 100-101, section 5.3.11.6).
As per claim 13, ISO 23009 discloses the method of claim 12, wherein the position information indicates a horizontal position and a vertical position of a top-left corner of the target picture-in-picture region, and the size information indicates a width and a height of the target picture-in-picture region (see description of @x, @y, @width and @height taught in table 27 of pages 100-101, section 5.3.11.6).
As per claim 17, ISO 23009 discloses the method of claim 1, wherein the conversion comprises generating the media file and storing the bitstream to the media file, or wherein the conversion comprises parsing the media file to reconstruct the bitstream (see last paragraph on page 12; see also page 52, section 5.3.5.1, Each Representation includes one or more media streams, where each media stream is an encoded version of one media content component…decode the media content components. Page 226, For an Application-related timed metadata track, the entire Representation/track is parsed including the Initialization Segment (i.e. track header) as well as the Media Segments (i.e. the movie fragments and media data containers)).
As per claim 21, ISO 23009 discloses the method of claim 1, wherein the first set of coded video data units are allowed to be replaced by the second set of coded video data units before being sent to a decoder for decoding (pages 100-101, section 5.3.11.6, when @tag of the Preselection is equal to "PicInPic", the Picnpic element is present, and the @dataUnitsReplacable attribute is equal to "true", the client may choose to replace the coded video data units representing the target picture-in-picture region in the main video with the corresponding coded video data units of the supplementary video before sending to the video decoder; see also table 27).
As per claim 22, ISO 23009 discloses the method of claim 21, wherein for a picture in the first video, corresponding coded video data units of the second video are all coded video data units in a decoding-time- synchronized sample in a track for the second video (page 100, section 5.3.11.6, for a particular picture in the main video, the corresponding video data units of the supplementary video are all the coded video data units in the decoding-time-synchronized sample in the supplemental video representation).
Claim Rejections - 35 USC § 103
10. 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.
11. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
12. Claim(s) 14-16 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Information technology – Dynamic adaptive streaming over HTTP (DASH) – Part1: Media presentation description and segment formats” in view of Hall et al. (US 2019/0075351) hereinafter “Hall”.
As per claim 14, ISO 23009 discloses the method of claim 1, further comprising:
if the media file comprises a third indication indicating that the first set of coded video data units are irreplaceable by the second set of coded video data units, determining a first region in a first video for the second video (this is a conditional limitation that does not require “determining a first region in a first video for the second video” if the media file does not comprise a third indication indicating that the first set of coded video data units are irreplaceable by the second set of coded video data units. Therefore, under the broadest reasonable interpretation, the claim does not require determining a first region in a first video for the second video if the recited predicate condition is not met. See Cybersettle, Inc. v. Nat 'l Arbitration Forum, Inc., 243 Fed. Appx. 603,607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed."); see also Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a method claim as including a step that need not be practiced if the condition for practicing the step is not met);
However, ISO 23009 does not explicitly disclose overlaying the second video on the first video in the first region.
In the same field of endeavor, Hall discloses overlaying the second video on the first video in the first region (overlaying the second video on the first region; see paragraphs 0103-0106).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the elements taught by ISO 23009, with those of Hall, because both references are drawn to the same field of endeavor, because indeed both references are related to Picture-in-Picture (PiP) display, and because such a combination represents a mere combination of prior art elements, according to known methods, to yield a predictable result. This rationale applies to all combination of ISO 23009 and Hall used in this Office Action unless otherwise noted.
As per claim 15, ISO 23009 and Hall discloses wherein the media file further comprises position information and size information of the target picture-in-picture region (@x, @y, @width and @height taught in table 27 of pages 100-101, section 5.3.11.6 of ISO 23009), and wherein determining the first region comprises: determining the first region based on the target picture-in-picture region (determine the first region to coincide with the target; see paragraphs 0071 and 0075-0076 of Hall).
As per claim 16, arguments analogous to those applied for claim 13 are applicable for claim 16.
As per claims 18-19, arguments analogous to those applied for claim 1 are applicable for claims 18-19; in addition, Hall discloses a processor and a non-transitory memory with instruction thereon (paragraphs 0098-0099).
13. Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Information technology – Dynamic adaptive streaming over HTTP (DASH) – Part1: Media presentation description and segment formats” in view of DRUGEON, V., (TM-AVC1221r1_Guidelines for personalization and accessibility with VVC) Digital Video Broadcasting, Panasonic Business Support Europe GMBH, XP01786179, June 10, 2021.
As per claim 9, ISO 23009 discloses the method of claim 8; however, ISO 23009 does not explicitly disclose wherein an entity in the "pinp" entity group is a track carrying the bitstream of the first video.
In the same field of endeavor, DRUGEON discloses wherein an entity in the "pinp" entity group is a track carrying the bitstream of the first video (see the data structure on Figure M.6 and page 5 lines 13-16, Providing such a personalized service using DASH-based delivery would be easier, since carriage of VVC in ISO Base Media File Format was designed to support subpicture sub-bitstreams. Each VVC subpicture sub-bitstream may be encapsulated into its own VVC subpicture track, and each version of the video intended to be consumed may be signalled using VVC base tracks referencing the relevant VVC subpicture tracks).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the elements taught by ISO 23009, with those of DRUGEON, because both references are drawn to the same field of endeavor, because indeed both references teach DASH media presentation and delivery related to Picture-in-Picture (PiP) services using DASH preselections and DASH-based delivery system, and because such a combination represents a mere combination of prior art elements, according to known methods, to yield a predictable result. This rationale applies to all combination of ISO 23009 and DRUGEON used in this Office Action unless otherwise noted.
As per claim 10, DRUGEON discloses wherein the data structure further includes a second indication indicating a set of tracks carrying the bitstream of the first video (see the data structure on Figure M.6 and page 5 lines 13-16, Providing such a personalized service using DASH-based delivery would be easier, since carriage of VVC in ISO Base Media File Format was designed to support subpicture sub-bitstreams. Each VVC subpicture sub-bitstream may be encapsulated into its own VVC subpicture track, and each version of the video intended to be consumed may be signalled using VVC base tracks referencing the relevant VVC subpicture tracks; see also the indices 01, 02, 03, 04 and 05 related to the subpicture sub-bitstreams within the bitstream).
As per claim 11, arguments analogous to those applied for claim 10 are applicable for claim 11.
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (US 2016015470, US 20240040131, US 20210409767, US 20210176509)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED JEBARI whose telephone number is (571)270-7945. The examiner can normally be reached M-F: 09:00am-06:00pm.
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/MOHAMMED JEBARI/Primary Examiner, Art Unit 2482