DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
This application seeks to reissue US Patent No. 9,123,090 (“the ‘090 patent”). In a 02/27/2026 response to the 01/07/2026 final Office action, the applicant has amended claims 1, 5, 8-9, and 11-13; canceled claims 2, 6, 10, and 14; and introduced new claims 13 and 15. Claims 1, 3-5, 7-9, 11-13, and 15 are pending.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,123,090 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/2/2026 has been entered.
Applicant’s Response
The claims were previously rejected under §§ 112 ¶1, 112 ¶2, and 251. See final action at 5-9. The applicant’s recent amendment overcomes these issues, but introduces new issues that are described below.
In the non-final action, it was described that method claims 11-14 recited contingent language that did not limit the scope of the claims. See non-final Office action at 3-4. The applicant’s claim amendment that followed this Office action overcame this issue by amending these claims such that they no longer recited contingent steps. See the claims filed 12/16/2025 and the final Office action at 3. The recent 02/27/2026 amendment of claims 11-13 reintroduces the same contingent language that was identified in the non-final Office action. These claims now include a number of steps that are only performed when a condition is met, thus are non-limiting. See below, and the non-final Office action at 3-4, for a discussion of this issue.
In addition, the recent amendment reintroduces language that had been identified in the non-final Office action as being indefinite. Certain claims had originally recited “when pixels having the values of the n bits matching between the first image data and the second image data continue.” The non-final action described that this language was indefinite. See non-final Office action at 8-9. The amendment filed on 12/16/2025 overcame this issue, but the claims have since been amended to recite the same or similar language that was previously identified as indefinite. The applicant’s explanation for the support for this limitation is also inadequate. See below.
Claim Interpretation
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 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:
“comparison unit” in claims 1, 5, 8, and 9
“compression unit” in claims 1, 5, 8, and 9
“control unit” in claims 1, 5, 8, and 9
“decompression unit” in claims 1, 5, 8, and 9
“data amount storage unit” in claims 1, 5, 8, and 9
“display unit” in claim 8
See the non-final Office action pg. 7 for a discussion of where the structure an algorithms corresponding to these units is found in the specification of the ‘090 patent.
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.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Interpretation – Contingent Language
Method claims 11-13 and 15 recite contingent steps that are not included in the broadest reasonable interpretation (BRI) of the claims. The BRI of a method claim includes only steps that must be performed, and does not include steps that are only performed when a non-required condition is met. MPEP 2111.04 II.
Claim 11 recites that "when values of predetermined n bits (where n ≤ m) of the gradation values match each other in a comparison result, generating compressed data including identification data indicating that the values of the n bits match each other” and performing." This only recites what occurs “when” the bits “match each other,” but the claim does not require this condition to occur. To illustrate, claim 11 is reproduced below with the steps that are only performed when pixel values "match each other” shown in italics.
An image data compression and decompression method, comprising:
when first image data and second image data in which a gradation value of each of a plurality of pixels is expressed in m bits are input1, comparing gradation values of corresponding pixels of the input first image data and second image data in units of a partial region of an image expressed by the first image data and the second image data;
compressing the second image data and, when values of predetermined n bits (where n≤m) of the gradation values match each other in a comparison result, generating compressed data including identification data indicating that the values of the n bits match each other; and
performing control to output data, which indicates the gradation value of the corresponding pixel of the first image data, and the generated compressed data so as to correspond to each other2;
storing first image data including the data indicating the gradation value;
storing second image data after compression including the generated compressed data;
storing an amount of the compressed data for each partial region;
reading the first image data;
reading the second image data after compression; and
decompressing the second image data for each partial region on the basis of the stored amount of the compressed data3 for each partial region and outputting an m-bit gradation value using the values of the n bits of the corresponding pixel of the read first image data when the identification data included in the compressed data is read4.
Because it is possible that none of the pixels in the two images will “match,” the steps shown in italics are not required by the claim to be performed. As such, they are not included in the BRI of claim 11, and do not need to be met by the prior art in order to perform the claimed method. Claims 12 and 13 include similar language and are interpreted in the manner described above and in the claim rejections below. Claim 15 depends from claim 13 and inherits this language.
Objection, 37 CFR 1.173 – Insufficient Explanation of Support
This application is objected to for failing to meet the requirement of 37 CFR 1.173(c), which requires an “an explanation of the support in the disclosure of the patent for the changes made to the claims.” The applicant has amended claim 1 to recite “when pixels having the values of the n bits matching between the first image data and the second image data continue, the compression unit generates the compressed data including the identification data and the number of pixels by which the pixels continue.” Other claims have been amended to include similar language. In describing support for this change, the applicant refers to the ‘090 patent at 4:3-11. See Appendix A at 6. The passage referred to by the applicant is unrelated to this claim limitation and does not show support for this subject matter. See below, and the non-final Office action at 8-9 for a discussion of this limitation.
The applicant is required to submit a supplemental explanation of support for this claim amendment.
Claim Rejections - 35 USC § 112
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, 3-5, and 7 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.
Claim 1 recites “when pixels having the values of the n bits matching between the first image data and the second image data continue, the compression unit generates the compressed data including the identification data and the number of pixels by which the pixels continue.” The bounds of this limitation are not clear, and therefore this language renders the scope of the claim indefinite. It cannot be determined whether the “when [matching] pixels … continue” language requires that further, different matching pixels must be immediately spatially (or temporally) adjacent to initial matches, and if so, it is unclear if this requires adjacent matches in a specific scan direction. While the ‘090 patent gives examples of how this language may be interpreted (see e.g. ‘090 patent at 9:22-53), this does not amount to a limiting definition of the claim language, whose breadth permits various interpretations. In addition, it is not clear if the “pixels” recited in this limitation refer to the same “pixels” that are previously recited in claim 1, or different pixels.
Claim 5 includes similar language and is indefinite for reasons given above. Claims 3, 4, and 7 depend from these claims and inherit this indefiniteness.
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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 11-13 and 15 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Kajiki, US 20040247192.
Examiner’s Note: the claim limitations shown below with strikethrough are contingent steps that do not limit the BRI of the claim, thus do not need to be met by the prior art in order to perform the claimed method. See the “Claim Construction” heading above for a discussion of this claim interpretation.
Claim 11: Kajiki discloses an image data compression and decompression method, comprising:
when first image data and second image data in which a gradation value of each of a plurality of pixels is expressed in m bits are input, comparing gradation values of corresponding pixels of the input first image data and second image data in units of a partial region of an image expressed by the first image data and the second image data (The intensity (that is, a gradation value: see ‘090 patent at 6:5-15) of pixel values at the same location in frames t and t-1 are compared. Kajiki ¶¶ 57 and 60. The pixels are in a digital image, thus their intensity value is expressed in m bits. See e.g. id. at ¶59.);
compressing the second image data and, when values of predetermined n bits (where n≤m) of the gradation values match each other in a comparison result (When the pixel values match to within a threshold, that is the pixel value does not change from the previous frame, the pixel values need not be stored and are deleted. Id. ¶60. This is performed based on the bit map that shows which pixels are changed, and which pixels are unchanged, from frame t-1. Id. This compresses the second image data),
storing first image data including the data indicating the gradation value (The frame t-1 is intra-compressed, thus gradation values of its pixels are stored in memory. Id. ¶63.);
storing second image data after compression (Id. ¶¶ 60-63.)
reading the first image data; reading the second image data after compression; and decompressing the second image data for each partial region (Id. ¶¶ 22, 60, and 75)
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 12-13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kajiki in view of Owen, GB 2372390 (provided previously).
Claim 12: Kajiki discloses an image data compression and decompression method, comprising:
reading, from a first memory that stores first image data indicating a gradation value of each of a plurality of pixels, the first image data (The frame t-1 is intra-compressed, thus gradation values of its pixels are stored in memory. Kajiki ¶63.);
reading second image data from a second memory that stores the second image data after compression that indicates a gradation value of each of a plurality of pixels and that, for a pixel whose values of predetermined n bits match a gradation value of a corresponding pixel of the first image data, includes identification data indicating that the values of the n bits match each other (A bit map stores compressed information that indicates whether the pixel value of frame t is the same as the pixel in the same location of frame t-1. Id. ¶60. This is a data that indicates that the (n) bits of frames t and t-1 match each other. Because the POSITA would appreciate that the intra-coded frame t-1 and the bit-map coded frame t must inherently be stored separately in a memory for the reconstruction to function properly, they are stored in first and second memory locations. This meets the BRI of “first memory” and “second memory” as recited in this claim.); and
decompressing the second image data and outputting an m-bit gradation value using the values of the n bits of the corresponding pixel of the read first image data when the identification data is read (Reconstruction of frame t is based on the pixel-wise bit map and the pixel data of frame t-1. Kajiki ¶¶ 22 and 75. After the bit map is entropy decoded, the pixel values are obtained based on the information indicating whether they are the same as those in frame t-1. Id. ¶60.);
when first image data and second image data in which a gradation value of each of a plurality of pixels is expressed in m bits are input, comparing gradation values of corresponding pixels of the first image data and the second image data in units of a partial region of an image expressed by the first image data and the second image data (The intensity (that is, a gradation value: see ‘090 patent at 6:5-15) of pixel values at the same location in frames t and t-1 are compared. Kajiki ¶¶ 57 and 60. The pixels are in a digital image, thus their intensity value is expressed in m bits. See e.g. id. at ¶59.);
compressing the second image data (When the pixel values match to within a threshold, that is the pixel value does not change from the previous frame, the pixel values need not be stored and are deleted. Id. ¶60. This is performed based on the bit map that shows which pixels are changed, and which pixels are unchanged, from frame t-1. Id. This generates compressed data that indicates that the pixels match each other.) and,
wherein the decompressing of the second image data includes decompressing the second image data for each partial region (Id. ¶¶ 22, 60, and 75)
Kajiki does not disclose that the number m bits is ≥ than the number n bits.
Owen discloses comparing pixels to determine a match, and determining that pixels match when values of predetermined n bits (where n ≤ m) of the values of the pixels match (A match between pixels is determined when the n-most significant bits of two m-bit pixels match. Owen pg. 13 lines 12 – pg. 14 line 9.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify the system of Kajiki with the teachings of Owen, the motivation being to reduce computation requirements when determining pixel matches. See Owen pg. 13 line 25 – pg. 14 line 6.
Claim 13: the Kajiki-Owen combination discloses an image data compression and decompression method, comprising:
reading, from a first memory that stores first image data indicating a gradation value of each of a plurality of pixels, the first image data (The frame t-1 is intra-compressed, thus gradation values of its pixels are stored in memory. Kajiki ¶63.);
decompressing the first image data (Reconstruction of frame t is based on the pixel-wise bit map and the pixel data of frame t-1. Kajiki ¶¶22 and 75. This implicitly requires that the intra-coded frame t-1 is decoded, or decompressed, first.);
reading second image data from a second memory that stores the second image data after compression that indicates a gradation value of each of a plurality of pixels and that, for a pixel whose values of predetermined n bits match a gradation value of a corresponding pixel of the first image data, includes identification data indicating that the values of the n bits match each other (A bit map stores compressed information that indicates whether the pixel value of frame t is the same as the pixel in the same location of frame t-1. Id. ¶60. This is a data that indicates that the (n) bits of frames t and t-1 match each other. Because the POSITA would appreciate that the intra-coded frame t-1 and the bit-map coded frame t must inherently be stored separately in a memory for the reconstruction to function properly, they are stored in first and second memory locations. This meets the BRI of “first memory” and “second memory” as recited in this claim.); and
decompressing the second image data and outputting an m-bit gradation value using the values of the n bits of the corresponding pixel of the read first image data when the identification data is read (Reconstruction of frame t is based on the pixel-wise bit map and the pixel data of frame t-1. Kajiki ¶¶ 22 and 75. After the bit map is entropy decoded, the pixel values are obtained based on the information indicating whether they are the same as those in frame t-1. Id. ¶60.);
when first image data and second image data in which a gradation value of each of a plurality of pixels is expressed in m bits are input, comparing gradation values of corresponding pixels of the first image data and the second image data in units of a partial region of an image expressed by the first image data and the second image data (The intensity (that is, a gradation value: see ‘090 patent at 6:5-15) of pixel values at the same location in frames t and t-1 are compared. Kajiki ¶¶ 57 and 60. The pixels are in a digital image, thus their intensity value is expressed in m bits. See e.g. id. at ¶59.);
compressing the second image data (When the pixel values match to within a threshold, that is the pixel value does not change from the previous frame, the pixel values need not be stored and are deleted. Id. ¶60. This is performed based on the bit map that shows which pixels are changed, and which pixels are unchanged, from frame t-1. Id. This generates compressed data that indicates that the pixels match each other.) and,
wherein the decompressing of the second image data includes decompressing the second image data for each partial region (Id. ¶¶ 22, 60, and 75)
wherein a first compression algorithm used to compress the first image data is different from a second compression algorithm used to compress the second image data (The first image, or frame t-1, is intra-coded. Kajiki ¶63. The second image, or frame t, is compressed using the bit map. Id. ¶60. Therefore the first and second images are compressed based on different compression algorithms).
Kajiki does not disclose that the number m bits is ≥ than the number n bits.
Owen discloses comparing pixels to determine a match, and determining that pixels match when values of predetermined n bits (where n ≤ m) of the values of the pixels match (A match between pixels is determined when the n-most significant bits of two m-bit pixels match. Owen pg. 13 lines 12 – pg. 14 line 9.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify the system of Kajiki with the teachings of Owen, the motivation being to reduce computation requirements when determining pixel matches. See Owen pg. 13 line 25 – pg. 14 line 6.
Claim 15 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kajiki and Owens in view of Collar, US 20090102914.
Claim 15: the Kajiki-Owen combination fails to disclose that the first image data and the second image data are multiple viewpoint image data.
However, Collar discloses encoding stereoscopic image data by calculating the difference between pixels of a left-eye and a right-eye image. See Collar ¶55.
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify the system of Kajiki-Owen with the teachings of Collar. The POSITA would have been motivated by the disclosure in Collar ¶55 to enable the Kajiki-Owen combination to also operate on three dimensional (that is, multiple viewpoint) image data, because it would have been understood that left- and right-eye images in 3D content were highly-correlated, and would benefit from the Kajiki-Owen compression algorithm. Therefore modifying the system in this way would have provided broader applicability to the algorithm and would have generated 3D content of reduced file size.
Allowable Subject Matter
Claims 8 and 9 are allowed. Claims 1, 3-5, and 7 recite allowable subject matter but are rejected under §112 ¶2 above. The allowable claims all require limitations that are similar to original claim 10. See the non-final Office action pg. 23 for a discussion of this language and reasons for the indication of allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed,
/ROBERT J HANCE/Primary Examiner, Art Unit 3992
Conferees:
/CHARLES R CRAVER/Reexamination Specialist, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992
1 While describing steps that occur “when” data is input, this is taken to limit the claim. Otherwise the entire claim would recite contingent steps that would not be given weight. This would contradict the preamble and would render the claim meaningless.
2 See ‘090 patent Fig. 5 steps SA3, SA7, and SA8, which shows this step to only be performed when the values “match each other”
3 “the compressed data” is only generated “when values of predetermined n bits… match each other,” thus is not required to be generated. Therefore “decompressing the second image” is not required to be performed on the basis of this compressed data.
4 The “identification data” is only “read” when the n bits “match each other,” thus not always performed