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 .
Response to Arguments
2. Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
On page 7 from Applicant’s remarks, Applicant argued that R(BitDepth) is a function dependent on the bit-depth of the image. While Applicant’s arguments are understood, the expression R(BitDepth) does not clearly explain the relationship between the bit-depth and R. It is unclear how R changes in relation to BitDepth. Paragraph 0197 teaches that R(BitDepth) = R = 0 , where R is considered as a rounding positive integer value (see for instance paragraphs 0041, 0067, 0080, 0082 and 0197 of the instant specification as-published). Therefore, the amount of guidance or direction in the application, as-originally filed, are not sufficient to enable a person skilled in the art on how to make and use the invention without undue experimentation.
On page 8 from Applicant’s remarks, Applicant argued that in Norkin, there is no teaching of the offset varying according to the bit-depth and the cited col. 15 lines 14-16 of Norkin merely states that tc depends on the clipping and possibly some other conditions.
While Applicant’s arguments are understood, col. 4 lines 39-42 of Norkin were also cited to show that the clipping depends on the bit-depth. Therefore, since tc depends on the clipping, as taught by col. 15 lines 14-16 of Norkin, and the clipping depends on the bit-depth, as taught by col. 4 lines 39-42 of Norkin; therefore, the offset which is part of the clipping parameter depends on the bit-depth, for example 8 or 10).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). On pages 8-10 from Applicant’s remarks, Applicant argued that Zhu makes no reference to performing bit-shifting in relation to a clipping parameter and that the bit-shifting in Zhu is directed to a completely different “target” parameter (pixel values) relative to the present disclosure/Norkin (clipping parameter tc). While Applicant’s arguments are understood, Norkin clearly teaches performing bit-shifting in relation to a clipping parameter (see fig. 13 and col. 11 lines 1-20). Zhu, on the other hand, teaches right bit-shifting as a function dependent on bit-depth. The bit-shifting in Zhu is related to a deblocking process. Similarly, in Norkin, the bit-shifting is also related to a deblocking process. Therefore, Norkin in view of Zhu teach performing bit-shifting in relation to a clipping parameter, wherein the bit-shifting can be a function dependent on bit-depth of an image. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Double Patenting
3. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 1-5 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. US 11,284,116 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘116 claims list all the features recited in claims 1-5 of the current application.
5. Claims 1-5 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. US 12,081,804 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘804 claims list all the features recited in claims 1-5 of the current application; also they are more narrow and therefore anticipates the instant claims.
6. Claim 1-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of copending Application No. 18/796,148 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘148 claims list all the features recited in claims 1-5 of the current application; also they are more narrow and therefore anticipates the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
7. Claim 1-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. 18/796,142 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘142 claims list all the features recited in claims 1-5 of the current application; also they are more narrow and therefore anticipates the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
8. Claim 1-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of copending Application No. 18/796,131 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘131 claims list all the features recited in claims 1-5 of the current application; also they are more narrow and therefore anticipates the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
9. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
10. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) 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;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: an obtaining unit configured to… and a filtering unit configured to… in claim 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
11. A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: Specification does not support individual structure for each functionality claimed unit. Specification describes these routines as software embodied in a structure of a processor, see paragraphs 0225-0235. Thus, the claimed units are interpreted to be embodied on a processor.
Claim Rejections - 35 USC § 112
12. 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.
13. Claims 1-5 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, 3 and 5 discloses “wherein the offset varies according to the bit-depth of the image.” It is unclear where said limitation is taught in the specification as-originally filed. The published version of the specification teaches an offset “R” as a rounding positive integer value (see paragraphs 0040, 0042, 0054, 0066, 0079, 0081 and 0191); however, nowhere in the specification the relationship between the bit-depth and R is taught. The amount of guidance or direction in the application, as-originally filed, are not sufficient to enable a person skilled in the art on how to make and use the invention without undue experimentation.
Claims 2 and 4, which depend on claims 1 and 3, when analyzed as a whole are held to be rejected under 35 U.S.C. 112 because the additional recited limitations fail to solve the enablement issue of the independent claims 1 and 3.
Claim Rejections - 35 USC § 103
14. 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.
15. 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.
16. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
17. Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Norkin (US 10,575,021) in view of English Machine Translation of ZHU (CN 106911934 A).
As per claim 1, Norkin discloses a method of deblocking filtering for an image (fig. 9), the method comprising:
obtaining a first parameter value for deblocking filtering based on a second parameter value (see fig. 13, for instance tc2=(tc+1)>>1; col. 11 lines 1-20); and
obtaining a filtered sample value by performing deblocking filtering on a sample in a block of samples (see S1 of fig. 9) by using the first parameter value (col. 14 lines 5-25 show tc2 is used in the filtering process to obtain filtered pixels), the filtered sample value being limited by a range based on the first parameter value (see S2 of fig. 2),
wherein obtaining the first parameter value(i.e. tc2) comprises:
obtaining the second parameter value based on a quantization parameter value for the block of samples (col. 11 lines 46-58, the value of the parameter tc can be obtained based on the QP value determined for or associated with the block 10 of pixels 12, 14, 16, 18. For instance, the QP value can be used to retrieve tc from a look-up table, such as Table 1); and
obtaining the first parameter value by adding an offset to the second parameter value, and bit-shifting a result of the adding to right by N bits (see fig. 13, tc2=(tc+1)>>1, tc2 is obtained by adding 1 to tc and bit-shifting the result of the adding to right by 1), wherein the offset varies according to the bit-depth of the image (since the clipping parameter tc of the current block depends on the clipping, as taught in col. 15 lines 14-16, and the clipping depends on bit-depth, as taught in col. 4 lines 39-42; therefore, the offset that is part of the clipping parameter depends on the bit-depth).
However, Norkin does not explicitly disclose obtaining a value N using a parameter value indicating a bit-depth of the image.
In the same field of endeavor, ZHU discloses obtaining a value N using a parameter value indicating a bit-depth of the image (according to the claimed invention, the deblocking process uses right-shift operation according to bit number precision. See also page 11, the right shift values 3 or 4 are obtained based on the bit number precision).
Therefore, it would have been obvious for one having skill in the art before the effective filing date of the invention to modify the right shift operation in the deblocking filter of Norkin, as taught by ZHU, in order to improve filtering process by adjusting the deblocking function.
As per claim 2, Norkin discloses wherein the second parameter value is obtained from a table associating the value with the quantization parameter value (col. 11 lines 46-58, the value of the parameter tc can be obtained based on the QP value determined for or associated with the block 10 of pixels 12, 14, 16, 18. For instance, the QP value can be used to retrieve tc from a look-up table, such as Table 1).
As per claims 3-4, arguments analogous to those applied for claims 1-2 are applicable for claims 3-4.
As per claim 5, arguments analogous to those applied for claim 1 are applicable for claim 5; in addition, Norkin teaches a non-transitory computer readable storage medium containing computer-executable instructions which causes a computer to perform the claimed method (col. 25, lines 40-60).
Conclusion
THIS ACTION IS MADE FINAL. 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 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