Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
The 15 page information disclosure statement filed 7/25/24 contains multiple errors and repeat numbers which have been struck through as not considered by the Examiner. For instance, on p. 6, the application numbers of foreign reference #19 and #20 appear to be incorrect. The same issue occurs on p. 8, foreign reference #24. Also on pgs. 8-9, foreign reference #15-16, 22-25, 31 and 33 appear to be repeated from earlier listings. On p. 7, U.S. Patent Application Publication #13 and #14 are repeated with different Patentees or Applicants. The Examiner requests that the Applicant provide the correct numbers for the listed applications in the next formal response.
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 21, 28 and 41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 12 and 20 of U.S. Patent No. 12,075,082 in view of Wu et al. (U.S. 2012/0163470), hereinafter Wu.
The abovementioned claims of the U.S. Patent do not explicitly disclose a third syntax element representing a sign of the offset value.
However, Wu teaches a third syntax element representing a sign of the offset value (Wu [0071]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the U.S. Patent with the missing limitations as taught by Wu to reduce the bitrate of digital video by decreasing the cost of storing and transmitting video information by converting the information into a lower bitrate form (Wu [0001]).
As shown above, all of the limitations are known, they can be applied to a known device such as a processor to yield a predictable result of improving coding efficiency.
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.
Claims 21, 28 and 41 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. Although the Applicant’s Specification discloses syntax elements and an offset in relation to a wedgelet separation line (p. 51, paragraph [0132] of the Applicant’s Specification as filed), the Applicant’s Specification does not appear to disclose syntax elements and an offset in relation to a wedgelet partition pattern as currently claimed.
Dependent claims are also rejected as a result of being dependent on the independent claims.
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.
Claim 46 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: there is no storing step or even any step related to storing in the method for storing of claim 46.
Response to Arguments
Applicant's arguments filed 10/28/25 in regards to the previously presented portions of the claims have been fully considered but they are not persuasive.
Regarding the issues with the IDS filed 7/25/24, the Applicant has not commented on these issues in the Remarks filed 10/28/25. As a result, the Examiner takes the Applicant’s silence on the matter as accepting that certain references with errors that have been struck through will not be listed on the patent if the current application is later patented.
On pg. 7 of the Applicant's Response, the Applicant requests that the Office hold the double patenting rejection in abeyance until other rejections are withdrawn. MPEP section, 804(I)(B)(1) states that only objections and requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Moreover, MPEP §707 citing 37 CFR 1.104(a)(1) and 37 CFR 1.104(b) states that the Examiner’s action will be complete as to all matters of compliance with applicable statutes and rules. Therefore, since the double patenting rejection is based on the subject matter of the claims and MPEP §707 cited above requires an Examiner’s action to be complete, the double patenting rejection is being upheld. While the Examiner understands that the claims may change as prosecution advances, the rejection is still upheld based on the aforementioned rationale.
On pgs. 7-8 of the Applicant’s Response, the Applicant argues that paragraph [0103] of the Specification supports the amended limitations of the independent claims.
The Examiner respectfully disagrees. The Examiner made the 112(a) rejection based on the currently undisclosed relation (in the Applicant’s Specification as filed) between the claimed “offset” and previously presented “wedgelet pattern”, currently amended as “wedgelet partition pattern”. The Applicant states that the “offset” is related to both a “wedgelet separation line” and a “wedgelet partition pattern” while citing a paragraph with no mention of “offset”. The cited paragraph only discloses Wedgelet block partitions and partition patterns without mentioning any relation to an offset. As a result, the 112(a) rejection still applies until the Applicant provides citation with explanation of the support in the Specification for the offset in relation to a wedgelet partition pattern as currently amended in the independent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. George et al. (U.S. 2014/0140400) teaches syntax for an absolute value and a sign (George [0233] and [0239]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW KWAN whose telephone number is (571)270-7073. The examiner can normally be reached Monday-Friday 9am-5pm.
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, Chris Kelley can be reached at (571)272-7331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW K KWAN/Primary Examiner, Art Unit 2482
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