DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/774,293 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain overlapping subject matter, the difference being the limitation “wherein one subblock among the three subblocks obtained by the triple tree division has a size different from sizes of other two subblocks among the three subblocks”. Any differences between the application’s claims and the copending claims are not patentably distinct as shown below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/774,309 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain overlapping subject matter, the difference being the limitation “wherein one subblock among the three subblocks obtained by the triple tree division has a size different from sizes of other two subblocks among the three subblocks”. Any differences between the application’s claims and the copending claims are not patentably distinct as shown below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/774,318 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims contain overlapping subject matter, the difference being the limitation “wherein one subblock among the three subblocks obtained by the triple tree division has a size different from sizes of other two subblocks among the three subblocks”. Any differences between the application’s claims and the copending claims are not patentably distinct as shown below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-4 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.
Claims 1-4 recite the limitation “determining, based on the first information, whether or not a first block is divided, through the tree-based partitioning, … obtaining, from the bitstream, second information…and third information…. based on the determination”. The applicant’s originally filed specification fails to disclose this limitation.
Claims 1-4 recite the limitation “obtaining, from the bitstream, second information indicating one among a quad tree division…and third information indicating whether the first block is divided in a vertical direction or a horizontal direction”. The applicant’s originally filed specification fails to disclose the use of a horizontal or vertical split syntax for performing a quad tree division.
Claims 1-4 recite the limitation “wherein the generating the prediction block of the second block is performed by a unit of the second block”. The applicant’s originally filed specification fails to disclose a “unit” of a block performing then action of a prediction.
Claims 1-4 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 1-4 recite the limitation “wherein the first block is divided into the plurality of second blocks based on the tree- based partitioning and type-based partitioning”, however, the applicant’s originally filed specification does not disclose the process or steps for dividing a block using both tree-based and type-based partitioning in conjunction for partitioning a single block for enabling one of ordinary skill in the art to make and/or use the invention.
In support of this conclusion of non-enablement the following Wands factors were considered: A) the breadth of the claims is overly immense. It covers nearly all ways and methods of partitioning a block. B) the nature of the invention is directed toward partitioning a block, not all ways of combining both tree-based and type-based partitioning. C) the state of the prior art is very large, as it covers all methods of using both tree-based and type-based partitioning. D) the level of ordinary skill in the art is hard to determine as the claims cover all methods of using both tree-based and type-based partitioning for partitioning a single block. E) the level of predictability in the art is high as there are many ways for partitioning a block. F) the amount of direction provided by the inventor is limited as the claims cover all methods of using both tree-based and type-based partitioning for partitioning a single block. G) the existence of working examples is unknown to the examiner. H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure is unduly high because the disclosure recites the blanket statement both tree-based and type-based partitioning may be used in conjunction for partitioning a block and the disclosure teaches the steps for performing both tree-based and type-based partitioning as separate processes and at different steps in the encoding/decoding process (i.e. tree based partitioning is applied for a first leaf node and type-based partitioning is applied to subsequent nodes), however, the disclosure does not teach the process (i.e. how to use 3 flags for performing tree based partitioning in conjunction with an index for type based partitioning or how to apply both types of partitioning simultaneously for a single block) or expected outcome (i.e. how a single block would look or function after both tree-based and type-based partitioning is applied) of using both tree-based and type-based partitioning in combination for splitting a single block and the claimed invention is directed toward nearly all methods of combining both tree-based and type-based partitioning for partitioning a single block.
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.
Claims 1-4 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.
Claims 1-4 recites the limitation “generating a prediction of a second block” in line 14. It is unclear if the term “a second block” refers to a second block within “the plurality of second blocks” in line 13 or another second block.
Claims 1-4 recites the limitation “wherein the first block is divided into the plurality of second blocks based on the tree- based partitioning and type-based partitioning” in lines 18-19, however, limitations “obtaining, from the bitstream, first information indicating whether or not tree-based partitioning is applied” and “obtaining, in case the type-based partitioning is determined to be performed, an index…” contemplate conditions in which both tree-based and type-based partitioning are not to be performed. Thus, the limitation is unclear.
Claims 1-4 recites the limitation “wherein the generating the prediction block of the second block is performed by a unit of the second block”. It is unclear what is meant by a “unit” of a second block or how a “unit” of a block is able to perform prediction processing.
Claims 1-4 recite the limitation “dividing, based on the second information and the third information, the first block into the plurality of second blocks” in line 11, however, it is also recited in line 18 “wherein the first block is divided into the plurality of second blocks based on the tree- based partitioning and type-based partitioning”. It is unclear is if only the second and third information or both tree-based and type-based partitioning is to be used for partitioning the block into a plurality of second blocks.
Claim 4 is directed toward “a method of transmitting a bitstream”, however, the claim only recites steps for an encoding method”. Thus, the claims is unclear.
Claims 1-4 recite the limitation “wherein the generating the prediction block of the second block is performed by a unit of the second block”. It is unclear what is meant by a “unit” of a second block or how a “unit” performs the function of prediction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Guo et al. (Guo) (US 2013/0163664) ([0041], split enable, direction flags, and partition mode information is signaled; FIG. 6, quad, binary splits of a block are performed).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY A WILLIAMS whose telephone number is (571)270-7579. The examiner can normally be reached M-F 8:00-5:00.
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, Sath Perungavoor can be reached at 571-272-7455. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFERY A WILLIAMS/Primary Examiner, Art Unit 2488
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