DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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.
Claim 1 is rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,120,356 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Application claim differs from Patent claim in that Application claim recites “apply the DB filter to one or more lines of pixels” while Patent claim recites “apply the DB filter to at least two lines of pixels”. In view of that, the features of Application claim are within the scope of the Patent claim. Application claim further omits the claimed features “the at least two lines of pixels are adjacent to one another”, as recited in the Patent claim. It is clear that all the elements of the Application claim are to be found in Patent claim (as the Application claim fully encompasses Patent claim). The difference between the Application claim and the Patent claim lies in the fact that the Patent claim includes many more elements and is thus more specific. Thus the invention of the Patent claim is in effect a “species” of the “generic” invention of the Application claim. It has been held that the generic invention is “anticipated” by the “species”. Since Application claim is anticipated by the Patent claim, it is not patently distinct from the Patent claim.
Claim 2 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 3 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 4 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 5 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 6 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 7 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 8 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 9 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 10 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 11 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 12 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 13 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 14 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 15 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 16 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 17 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 18 is rejected on the same ground, as discussed in claim 1 rejection, of non-statutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 19 is rejected on the ground of non-statutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,120,356 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Application claim differs from Patent claim in that Application claim recites “apply the DB filter to one or more lines of pixels” while Patent claim recites “apply the DB filter to at least two lines of pixels”. In view of that, the features of Application claim are within the scope of the Patent claim. Application claim further omits the claimed features “the at least two lines of pixels are adjacent to one another”, as recited in the Patent claim. It is clear that all the elements of the Application claim are to be found in Patent claim (as the Application claim fully encompasses Patent claim). The difference between the Application claim and the Patent claim lies in the fact that the Patent claim includes many more elements and is thus more specific. Thus the invention of the Patent claim is in effect a “species” of the “generic” invention of the Application claim. It has been held that the generic invention is “anticipated” by the “species”. Since Application claim is anticipated by the Patent claim, it is not patently distinct from the Patent claim.
Claim 20 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 21 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 21 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 22 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 22 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 23 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 23 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 24 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 24 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 25 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 25 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 26 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 27 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 27 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 28 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 28 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 29 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 29 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Claim 30 is rejected on the same ground, as discussed in claim 19 rejection, of non-statutory double patenting as being unpatentable over claim 30 of U.S. Patent No. 12,120,356 B2 because of similar scope. Although the claims at issue are not identical, they are not patentably distinct from each other because the Application claim defines an invention that is merely an obvious variation of the invention of the Patent claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pu et al. U.S. Patent 11,223,832 B2 discloses “Method and Apparatus for Encoding Video Data Using Block Palettes and Sub-Block and Pixel Scanning Orders”.
Li et al. U.S. Patent Application Publication No. 2016/0286232 A1 discloses “Deriving Motion Information for Sub-Blocks in Video Decoding”.
Tsai et al. U.S. Patent 11,765,365 B2 discloses “A Method and Apparatus of Subblock Deblocking in Video Decoding”.
Saxena et al. U.S. Patent Application Publication No. 2016/0050442 A1 discloses “In-Loop Filtering in Video Coding”.
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KCT
/KHANH C TRAN/Primary Examiner, Art Unit 2631