Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/30/2026 has been entered.
DETAILED ACTION
Claims 1-13 and 15-21 are pending and have been examined.
The information disclosure statement (IDS) submitted on 07/30/2026 was considered by the examiner.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/248,832, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The disclosure of the prior filed application does not provide adequate support for performing a conversion between a media file of a first video and a bitstream of the first video as claimed. Accordingly, claims 1-21 have an effective filing date of 09/26/2022.
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.
Claims 1-13 and 15-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 17 of copending Application No. 18/618,814 in view of Sodagar (US 2023/0108426).
Application No. 18/618,820
Application No. 18/618,814
1. (Currently Amended) A method for video processing, comprising:
1. (Currently Amended) A method for video processing, comprising:
performing a conversion between a media file of a first video and a bitstream of the first video,
performing a conversion between a media file of a first video and a bitstream of the first video,
wherein the media file is based on an international organization for standardization base media file format (ISOBMFF), and
wherein the media file is based on an international organization for standardization base media file format (ISOBMFF), and
the media file comprises an indication indicating that a first track carrying the bitstream of the first video and a second track carrying a bitstream of a second video
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 data units associated with a second video,
However, the patented claims do not explicitly teach the first track and second track are a track pair for providing a picture-in-picture service.
In an analogous art, Sodagar, which discloses a system for video distribution, clearly teaches the first track and second track are a track pair for providing a picture-in-picture service. (The main video stream and picture-in-picture (pip) video stream are grouped using a Preselection element identifying the main video stream as the “main” role value and the pip video stream as the “pip” role value, [0034], [0035], [0040]-[0045].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the patented claims by the first track and second track are a track pair for providing a picture-in-picture service, as taught by Sodagar, for the benefit of improving identification of the video streams.
Claim 2 of the application corresponds to claim 1 of the copending application and Sodagar [0034].
Claim 3 of the application corresponds to claim 2 of the copending application and Sodagar [0034].
Claim 4 of the application corresponds to claim 2 of the copending application and Sodagar [0034].
Claim 5 of the application corresponds to claim 1 of the copending application and Sodagar [0034].
Claim 6 of the application corresponds to claim 1 of the copending application and Sodagar [0034], [0035], [0040]-[0045].
Claim 7 of the application corresponds to claim 17 of the copending application and Sodagar.
Claim 8 of the application corresponds to claim 17 of the copending application and Sodagar.
Claim 9 of the application corresponds to claim 1 of the copending application and Sodagar [0034], [0035], [0040]-[0045].
Claim 10 of the application corresponds to claim 1 of the copending application and Sodagar [0034].
Claim 11 of the application corresponds to claim 2 of the copending application and Sodagar [0034].
Claim 12 of the application corresponds to claim 2 of the copending application and Sodagar [0034].
Claim 13 of the application corresponds to claim 1 of the copending application and Sodagar [0034].
Claim 15 of the application corresponds to claim 17 of the copending application and Sodagar.
Claim 16 of the application corresponds to claim 17 of the copending application and Sodagar.
Claim 17 of the application corresponds to claim 1 of the copending application and Sodagar [0034], [0035], [0040]-[0045].
Claim 18 of the application corresponds to claim 2 of the copending application and Sodagar [0034].
Claim 19 of the application corresponds to claim 2 of the copending application and Sodagar [0034].
Claim 20 of the application corresponds to claim 1 of the copending application and Sodagar [0034], [0035], [0040]-[0045].
Claim 21 of the application corresponds to claim 2 of the copending application and Sodagar [0034].
This is a provisional nonstatutory double patenting rejection.
Conclusion
In the case of amending the claimed invention, applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R SCHNURR whose telephone number is (571)270-1458. The examiner can normally be reached M-F 6a-4p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Pendleton can be reached at (571)272-7527. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN R SCHNURR/ Primary Examiner, Art Unit 2425
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