DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/05/2026 has been entered.
Response to Arguments
On pages 3–5 of the Remarks, Applicant contends the claimed term, “circuitry” does not invoke 35 U.S.C. 112(f). Examiner disagrees for the reasons already stated in this record. See preceding Response to Arguments in the Final Office Action. In addition, Applicant appears to essentially admit the “circuitry” term is a placeholder for a CPU, and I/O interface, and RAM working in combination to run a stored program. Remarks, 4. This argument is similar, if not identical, to claiming a generic processor according to its function. Therefore, Examiner’s finding that the claim language invokes 35 U.S.C. 112(f) appears proper. Accordingly, the interpretation that the claims are functional claims under 35 U.S.C. 112(f) is maintained.
However, because the CPU, the I/O interface, and the RAM are structural components working as a combination of elements, Examiner withdraws the single-means rejection under 35 U.S.C. 112(a) triggered by the interpretation under 35 U.S.C. 112(f). In other words, the analysis, infra, regarding 35 U.S.C. 112(f), is not a rejection and can persist while not encumbering allowability. On the contrary, the 35 U.S.C. 112(a) rejection was a rejection encumbering allowability, but has been withdrawn in view of Applicant’s Remarks demonstrating the Specification (paragraph [0449]) described a structural combination rather than a single element comprising the claimed “circuitry.” Accordingly, the rejection under 35 U.S.C. 112(a) is withdrawn. Remarks, 5.
Likewise, because the CPU, the I/O interface, and the RAM are structural components working as a combination of elements, Examiner withdraws the single-means and lack of structure rejections under 35 U.S.C. 112(b) triggered by the interpretation under 35 U.S.C. 112(f). In other words, the analysis, infra, regarding 35 U.S.C. 112(f), is not a rejection and can persist while not encumbering allowability. On the contrary, the 35 U.S.C. 112(b) rejection was a rejection encumbering allowability, but has been withdrawn in view of Applicant’s Remarks demonstrating the Specification (paragraph [0449]) described a structural combination rather than a single element comprising the claimed “circuitry.” Accordingly, the rejection under 35 U.S.C. 112(b) is likewise withdrawn. Remarks, 5.
On pages 5–10 of the Remarks, Applicant contends the prior art combination of Chen and Seregin fails to teach or suggest the limitation drawn to the primary transform identifier for chrominance being set to a value of the primary transform identifier for luminance under the conditions recited in claim 1. In view of the present arguments and consistent with the finding in the parent case, now U.S. Patent No. 11,997,316 B2, Examiner agrees the prior art rejections are overcome and thus withdraws the rejections under 35 U.S.C. 103.
35 USC § 112(f)
35 U.S.C. 112(f) reads as follows:
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.
Claims 1–12 and 14 disclose limitations that invoke 35 U.S.C. 112(f) under the analysis described in MPEP 2181.
According to MPEP 2181, 35 U.S.C. 112(f) is invoked by claim limitations that meet the following conditions: (1) 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; (2) the non-structural term is modified by functional language, typically, but not always linked by the transition word “for” or another linking word or phrase, such as “configured to” or “so that”; and (3) the non-structural term is not modified by sufficient structure, material, or acts for achieving the specified function. “Where a claim limitation meets the 3-prong analysis and is being treated under 35 U.S.C. 112, sixth paragraph, the examiner will include a statement in the Office action that the claim limitation is being treated under 35 U.S.C. 112, sixth paragraph.” MPEP 2181(I)(C).
In claims 1–12 and 14, Applicant uses the phrase “circuitry configured to” for several limitations. In each case, Examiner interprets such language as a non-structural term followed by a linking word or phrase, which links the non-structural term to recited functions. In each case, the non-structural term is modified by functional language and is not modified by sufficient structure. Therefore, the claims invoke 35 U.S.C. 112(f). MPEP 2181(I).
Examiner finds that the circuitry operable to perform the recited functions of claims 1–12 and 14 could be broadly construed as a computer or similar processing circuit or system of processors. Regarding the interpretation that the units might be a processor or group of processors, the Examiner considered whether the functions recited in claims 1–12 and 14 are functions typically found in a commercially available off-the-shelf processor. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (functions such as "processing," "receiving," and "storing" that can be achieved by any general purpose computer without special programming do not require disclosure of more structure than the general purpose processor that performs those functions). Because the recited functions are the substance and focus of the invention claimed, the Examiner finds these functions are not typically available in an off-the-shelf processor. Therefore, the Examiner finds the functional recitations do not connote to the skilled artisan sufficient structure of the processors (or similar) claimed. Accordingly, the phrase “[unit] configured to” is interpreted as invoking the application of 35 U.S.C. § 112(f).
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 1–14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–14 of U.S. Patent No. 11,997,316 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims and reference claims represent substantially overlapping subject matter such that the skilled artisan would find them obvious in view of one another.
Allowable Subject Matter
Claims 1–14 are allowed subject to filing a terminal disclaimer to overcome the double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter: Examiner was unable to find a teaching or suggestion in the prior art, without the benefit of hindsight, that would render obvious the subject matter drawn to the condition of an adaptive primary transform flag for chroma informing the value of a primary transform identifier (see also Applicant’s published paragraph [0139]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tanizawa (US 2014/0056357 A1) explains DCT or DST are orthogonal transforms (¶ 0053).
Lu (US 2012/0230394 A1) teaches the chroma transform can be derived from the luma transform or independently (¶¶ 0065 and 0070, respectively) and explains the decoder performs an inverse transform according to type of transform signaled from the encoder (¶ 0044).
Andersson (US 2020/0036990 A1) teaches the coded bit flag (cbf) indicates whether there are residuals present and further teaches transform can be skipped when the cbf is 0 (¶ 0048).
Rosewarne (US 2015/0249828 A1) teaches the coded block flag signals whether there are non-zero coefficients in the transform unit for a color channel, which further indicates whether a transform is performed (¶ 0084). Given these teachings of the prior art, it is obvious to conclude it would not make sense to inherit transform information from luminance when there is no transform to be performed, i.e. no coefficient values to transform.
Zhao (US 2016/0219290 A1) teaches IBC mode may indicate a certain subset of available transforms to use (e.g. ¶ 0195).
Saxena (US 2015/0016516 A1) teaches choosing a transform mode based on IBC mode (e.g. ¶ 0002). It also teaches choosing transform type, e.g. DCT or DST, based on direction of IBC prediction and teaches either DCT or DST may be selected for either vertical or horizontal prediction directions (¶ 0129). It also teaches “derived mode,” which means chroma components use the same parameters as derived from the corresponding luma component (¶ 0111).
Kao (US 2017/0280163 A1) teaches using the prediction block’s transform parameters when determining the transform parameters for a current IBC-predicted block; Examiner notes that this would mean where the prediction block utilizes an inheritance rule between luma and chroma, the current IBC-predicted block would likewise use the same rule (¶ 0058).
Lee (US 2018/0124420 A1) teaches determining between DCT, DST, and KLT on the basis of intra prediction mode (¶ 0070).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J Hess whose telephone number is (571)270-7933. The examiner can normally be reached on Mon - Fri 9:00am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Vaughn can be reached on (571)272-3922. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MICHAEL J. HESS
Primary Examiner
Art Unit 2481
/MICHAEL J HESS/Primary Examiner, Art Unit 2481
Prosecution Insights