DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract without significantly more.
When considering subject matter eligibility under 35 USC 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Specifically, claims 1 - 12 are directed to a method/system. They hereby fall under one of the four statutory classes of invention.
If the claim does not fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
Claims 1 - 12 recite steps of observation, evaluation, and judgement that can be practically performed by a human, either mentally or with the use of pen and paper (mathematical algorithm).
The limitation of " compressing coded residual sub-vectors, to obtain corresponding compressed residual sub-vectors; rejecting compressed residual sub-vectors that do not fulfill a predetermined sparseness criterion; and concatenating the remaining compressed residual sub-vectors to form the virtual codebook;" in claims 1 - 12, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components. That is, other than reciting " an apparatus comprising: means for", nothing in the claim element precludes the steps from practically being performed in a human mind (mathematical algorithm).
The mere nominal recitation of a generic apparatus comprising: means for do not take the claim limitations out of the mental processes grouping.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgement, and opinion). Accordingly, the claims 1 - 12 recite an abstract idea.
The insignificant extra-solution activities identified above, which include the data- gathering (rejecting, concatenating and generating) steps, are recognized by the courts as well- understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d)(II). The claims are not patent eligible.
Claims 1 - 12 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of an apparatus comprising: means for to perform the rejecting, concatenating steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Even when considered in combination, these additional elements (an apparatus comprising: means for) represent mere instruction to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept.
Claims 1- 12 as a whole, do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
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 – 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17 – 21, 24 - 29 U.S. Patent No. 9,424,856. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 - 20 of the instant application are similar in scope and content of claims 1 - 18 of the cited patent.
It would have been obvious to an artisan at the time the invention was made to use the teaching of claims 17 – 21, 24 - 29 of the patent (856) as a general teaching for compressing coded residual sub-vectors, to perform method/system as claimed in the present invention. The instant claims obviously encompass the claimed invention of the '856' patent and differ only in the method steps. The extent that the instant claims are broaden and therefore generic to claimed invention of '856' patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a patent/copending application. And since the structure is as recited, the method step is obtained and therefore, obvious.
Here is a comparison between claim 1 of the instant application and claim 18 of the cited patent.
Instant Application 18/823,018
Cited patent 9,424,856
Comparison
1.A method of generating a virtual codebook for filling non-coded residual sub-vectors of a transform coded audio signal below a predetermined frequency, said method including the steps of:
18.A method of filling residual sub-vectors that were not coded in a transform coded audio signal, which are referred to as non-coded residual sub-vectors, said method performed by a processing circuit configured as an audio decoder and comprising:
Similar
compressing coded residual sub-vectors, to obtain corresponding compressed residual sub-vectors;
compressing the residual sub-vectors that were coded in the transform coded audio signal, which are referred to as coded residual sub-vectors, to obtain compressed residual sub-vectors;
Similar
rejecting compressed residual sub-vectors that do not fulfill a predetermined sparseness criterion;
rejecting those compressed residual sub-vectors that do not fulfill a pre-determined sparseness criterion, to obtain remaining compressed residual sub-vectors;
Similar
concatenating the remaining compressed residual sub-vectors to form the virtual codebook;
concatenating the remaining compressed residual sub-vectors to obtain coefficients comprising a first virtual codebook;
Similar
the virtual codebook is a first virtual codebook and wherein the method further comprises generating a second virtual codebook for filling non-coded residual sub-vectors of the transform coded audio signal above the predetermined frequency, based on combining pairs of coefficients of the first virtual codebook;
combining pairs of the coefficients of the first virtual codebook to obtain coefficients comprising a second virtual codebook;
filling the non-coded residual sub-vectors to obtain corresponding filled residual sub- vectors, based on using coefficients from the first virtual codebook to fill the non- coded residual sub-vectors that correspond to frequency bands below a predetermined frequency and, using coefficients from the second virtual codebook to fill the non-coded residual sub-vectors that correspond to frequency bands above the predetermined frequency; and forming an audio signal using the coded residual sub-vectors and the filled residual sub- vectors
Similar
wherein coefficients X (k) of the coded residual sub-vectors are compressed in accordance with:
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where Y(k) are the coefficients of the compressed residual sub-vectors
compressing the coded residual sub-vectors comprises, for coefficients X(k) comprising each coded residual sub-vector, obtaining coefficients Y (k) comprising the corresponding compressed residual sub-vector, in accordance with:
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Similar
Claim Rejections - 35 USC § 112
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.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are: “means for compressing coded residual sub-vectors; means for rejecting compressed residual sub-vectors; means for concatenating the remaining compressed residual sub-vectors in claims 6 - 12.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 1 – 12 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Khojastepour et al. (US Patent 8,619,918).
As per claims 1, 6, Khojastepour et al. teach a method of generating a virtual codebook for filling non-coded residual sub-vectors of a transform coded audio signal below a predetermined frequency, said method including the steps of:
compressing coded residual sub-vectors, to obtain corresponding compressed residual sub-vectors; rejecting compressed residual sub-vectors that do not fulfill a predetermined sparseness criterion ("updating the plurality of residual vectors by removing all of the residual vectors"; col.12, line 42 - col.13, line 20);and
concatenating the remaining compressed residual sub-vectors to form the virtual codebook (col.2, lines 19 - 67; col.12, line 42 -col.13, line 20);
wherein coefficients X (k) of the coded residual sub-vectors are compressed in accordance with:
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where Y(k) are the coefficients of the compressed residual sub-vectors (col.2, lines 19 - 67; col.5, line 26 - col.6, line 59; col.12, line 42 -col.13, line 20).
As per claims 2, 7, Khojastepour et al. further disclose compressed residual sub-vectors having less than a predetermined percentage of non-zero components are rejected (col.2, lines 19 - 67; col.5, line 26 - col.6, line 59; col.12, line 42 -col.13, line 20).
As per claims 3, 8, Khojastepour et al. further disclose compressed residual sub-vectors that do not fulfill the criterion:
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where the sub-vector dimension M is 8, are rejected (col.2, lines 19 - 67; col.5, line 26 - col.6, line 59; col.12, line 42 -col.13, line 20).
As per claims 4, 9, Khojastepour et al. further disclose the virtual codebook is a first virtual codebook and wherein the method further comprises generating a second virtual codebook for filling non-coded residual sub-vectors of the transform coded audio signal above the predetermined frequency, based on combining pairs of coefficients of the first virtual codebook (col.2, lines 19 - 67; col.5, line 26 - col.6, line 59; col.12, line 42 -col.13, line 20).
As per claims 5, 10, Khojastepour et al. further disclose pairs of the coefficients Y(k) of the first virtual codebook are combined in accordance with:
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where N is the size of the first virtual codebook (col.2, lines 19 - 67; col.5, line 26 - col.6, line 59; col.12, line 42 -col.13, line 20).
As per claim 11, Khojastepour et al. further disclose a decoder including an apparatus in accordance with claim 6 (col.2, lines 19 - 67; col.5, line 26 - col.6, line 59; col.12, line 42 -col.13, line 20).
As per claim 12, Khojastepour et al. further disclose a user equipment including a decoder in accordance with claim 11 (col.2, lines 19 - 67; col.5, line 26 - col.6, line 59; col.12, line 42 -col.13, line 20).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Eksler teaches Multi-Rate Algebraic Vector Quantization With Supplemental Coding Of Missing Spectrum Sub-Bands. Zador teaches method for compressing data.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEONARD SAINT-CYR whose telephone number is (571)272-4247. The examiner can normally be reached Monday- Friday.
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/LEONARD SAINT-CYR/ Primary Examiner, Art Unit 2658
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