DETAILED ACTION
This office action is in response to an amendment filed 5/11/2026, wherein claims 1-12 and 17-21 are pending and being examined. 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
Applicant has filed a terminal disclaimer with respect to prior patent US 11,438,584. However, the double patenting rejections in the non-final office action included second prior patent, US 12,108,036 and no terminal disclaimer has been filed with respect to this second prior patent. Therefore a double patenting rejection is maintained with respect to prior patent US 12,108,036
Furthermore, the response includes new claim 21, which is notably broader than independent claims 1 and 17. A prior art rejection is provided for claim 21, as noted below.
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, and 17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,108,036. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
In regard to claim 1, claim 1 of the instant application is a broader version of claim 1 of U.S. Patent No. 12,108,036. Every claim limitation within claim 1 of the instant application is rendered obvious or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 12,108,036. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-12, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,108,036.
In regard to claim 17, claim 17 of the instant application is a broader version of claim 18 of U.S. Patent No. 12,108,036. Every claim limitation within claim 17 of the instant application is rendered obvious or anticipated by a corresponding limitation within claim 18 of U.S. Patent No. 12,108,036. Therefore the two claims are not patentably distinct and claim 17 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 18-20, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,108,036.
In regard to claim 21, claim 21 of the instant application is a broader version of claim 18 of U.S. Patent No. 12,108,036. Every claim limitation within claim 21 of the instant application is rendered obvious or anticipated by a corresponding limitation within claim 18 of U.S. Patent No. 12,108,036. Therefore the two claims are not patentably distinct and claim 21 is rejected on the grounds of nonstatutory double patenting.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 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 –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhang et al. (US 2019/0082176) (hereinafter Zhang).
In regard to claim 21, Zhang discloses an encoder [¶0046; Video encoder 20], comprising:
at least one processor [¶0046]; and
memory storing instructions executable by the at least one processor [¶0010, ¶0046] to perform operations comprising:
receiving data representing an image of a video [¶0039; captured, pre-captured, or computer-generated video may be encoded by video encoder 20];
identifying a pixel of the image to be processed by a bilateral filter [¶0077; video encoder 20 may then perform bilateral filtering similar to the bilateral filtering techniques described above with respect to bilateral filtering ¶0069-¶0070; perform bilateral filtering on the unfiltered reconstructed block… current sample of the block being filtered, video decoder 30 may determine a first window that encompasses the current sample and one or more additional samples, and may determine a second window that encompasses a neighboring sample to the current sample and one or more additional samples];
determining one or more characteristics associated with the pixel [¶0070-¶0071; determine differences in sample values (e.g., differences in luma values and/or chroma values) between samples in the first window and samples in the second window];
based on the one or more characteristics, determining a bilateral filter offset value to be applied to a value of the pixel [¶0071-¶0073; Based on the difference values, video decoder 30 may determine an input parameter variable, and determine weighting parameters of the bilateral filtering based on the input parameter variable… a first weighting parameter for bilateral filtering with the top neighboring sample based on the first and second windows… second weighting parameter for bilateral filtering with the left neighboring sample based on the first and third windows. ¶0120; Video encoder 20 and video decoder 30 may perform the example techniques described in this disclosure to determine a value for the variable X, and determine a weighting parameter for filtering with respect to sample P1 based on the value of the variable X]; and
applying the determined bilateral filter offset value to the value of the pixel to produce a filtered value for the pixel [¶0061; determine weighting parameters that are to be applied as part of the bilateral filtering. ¶0069-¶0073].
Allowable Subject Matter
Claims 1-12, and 17-20 would be allowable if a terminal disclaimer is filed to overcome the double patenting rejection noted herein.
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 REBECCA A VOLENTINE whose telephone number is (571)270-7261. The examiner can normally be reached Monday-Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joe Ustaris can be reached at (571)272-7383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA A VOLENTINE/Primary Examiner, Art Unit 2483 May 21, 2026
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