DETAILED ACTION
Response to Arguments
Applicant’s arguments, see application, filed 02/26/2026, with respect to the 103 rejections have been fully considered and are persuasive. The 103 rejections have been withdrawn.
Applicant's arguments filed 02/26/2026 have been fully considered but they are not persuasive. Applicant argues that the non-statutory double patenting rejections are overcome due to the amendments. The examiner respectfully disagrees. The co-pending applications are being amended in an analogous manner as compared to this instant application.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/695,638, filed on 03/30/2022.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 01/28/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/01/2026 has been entered.
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 1-3, 5-6 and 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6 and 8-9 of copending Application No. 18/910,585 in view of Lim et al. (herein after will be referred to as Lim ‘396) (US 20150334396). The only difference between this instant application and the co-pending application is the size of the first and second quantization matrix. This instant application contains 8x8, whereas copending app. claims 4x4. However, Lim ‘396 does disclose wherein in a case where a size of the first quantization matrix to be encoded is 8×8, the size of the second quantization matrix is 8×8. [See Lim ‘396 [0019] Quantization matrix having the same size as a quantization matrix when coding/decoding is being performed. Also, see 0038, 8x8 quantization matrices.] It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the apparatus by the claims of copending Application No. 18/910,585 to add the teachings of Lim ‘396, in order to improve upon coding efficiency [See Lim ‘396 [0005]].
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-6 and 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9 and 11-12 of copending Application No. 18/910,601 in view of Lim et al. (herein after will be referred to as Lim ‘396) (US 20150334396). Co-pending App. ‘601 does not explicitly claim wherein in a case where a size of the first quantization matrix to be encoded is 8×8, the size of the second quantization matrix is 8×8. However, Lim ‘396 does disclose wherein in a case where a size of the first quantization matrix to be encoded is 8×8, the size of the second quantization matrix is 8×8. [See Lim ‘396 [0019] Quantization matrix having the same size as a quantization matrix when coding/decoding is being performed. Also, see 0038, 8x8 quantization matrices.] It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the apparatus by the claims of copending Application No. 18/910,601 to add the teachings of Lim ‘396, in order to improve upon coding efficiency [See Lim ‘396 [0005]].
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5-6 and 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-9 and 11-15 of copending Application No. 18/910,615 in view of Lim et al. (herein after will be referred to as Lim ‘396) (US 20150334396). Co-pending App. ‘615 does not explicitly claim wherein in a case where a size of the first quantization matrix to be encoded is 8×8, the size of the second quantization matrix is 8×8. However, Lim ‘396 does disclose wherein in a case where a size of the first quantization matrix to be encoded is 8×8, the size of the second quantization matrix is 8×8. [See Lim ‘396 [0019] Quantization matrix having the same size as a quantization matrix when coding/decoding is being performed. Also, see 0038, 8x8 quantization matrices.] It would have been obvious to the person of ordinary skill in the art at the time of the effective filing date to modify the apparatus by the claims of copending Application No. 18/910,615 to add the teachings of Lim ‘396, in order to improve upon coding efficiency [See Lim ‘396 [0005]].
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 112
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.
Claims 1-3, 5-6 and 8-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The independent claims recite “wherein only three sizes of the second quantization matrix are encoded regardless of block size”. For example, applicant’s published spec para. [0084] states “In VVC, orthogonal transformation from a minimum 2×2 pixel size to a 64×64 pixel size is used, and it is also possible to adopt a configuration in which for loops from a 2×2 pixel size whose sizeId is 1 to a 64×64 pixel size whose sizeId is 6 are set, and quantization matrices respectively corresponding thereto are encoded. However, in the present embodiment, the maximum orthogonal transformation size, that is, the maximum size of the subblocks is 8×8, and thus the upper limit value of a for loop is a sizeId of 3 corresponding to the 8×8 pixel size. This enables unnecessary quantization matrix encoding to be omitted and redundant code generation to be prevented, by setting the upper limit value of the for loop based on the maximum value of the orthogonal transformation size that is actually used.” Therefore, this paragraph states that the quantization matrices have an upper limit of 8x8 due to the maximum size of the subblocks being 8x8. In other words, the quantization matrices are dependent on block size. Therefore, it is unclear how there is support for “wherein only three sizes of the second quantization matrix are encoded (i.e. 2x2, 4x4 and 8x8) regardless of block size”.
Additionally, applicant’s published spec para. [0072] states in part “The quantization matrices that are generated are, however, not limited thereto, and quantization matrices corresponding to the shape of the subblocks such as 4×8 and 8×4 may be generated. Therefore, it is unclear how there is support for “wherein only three sizes of the second quantization matrix are encoded (i.e. 2x2, 4x4 and 8x8)”. The specification provides support for non-square quantization matrices.
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, 5-6 and 8-9 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. The independent claims recite ““wherein only three sizes of the second quantization matrix are encoded regardless of block size”. This limitation is unclear. For example, applicant’s published spec para. [0084] states “In VVC, orthogonal transformation from a minimum 2×2 pixel size to a 64×64 pixel size is used, and it is also possible to adopt a configuration in which for loops from a 2×2 pixel size whose sizeId is 1 to a 64×64 pixel size whose sizeId is 6 are set, and quantization matrices respectively corresponding thereto are encoded. However, in the present embodiment, the maximum orthogonal transformation size, that is, the maximum size of the subblocks is 8×8, and thus the upper limit value of a for loop is a sizeId of 3 corresponding to the 8×8 pixel size. This enables unnecessary quantization matrix encoding to be omitted and redundant code generation to be prevented, by setting the upper limit value of the for loop based on the maximum value of the orthogonal transformation size that is actually used.” Therefore, this paragraph states that the quantization matrices have an upper limit of 8x8 due to the maximum size of the subblocks being 8x8. It is further unclear why the claimed invention would only utilize 2x2, 4x4, and 8x8 quantization matrices when the block size is, for example, 32x32, 64x64 or larger. Para. [0084] (recited above) states that a sizeId of 6 is utilized in VVC for when the block size is 64x64. Please clarify.
Allowable Subject Matter
Claims 1-3, 5-6 and 8-9 would be allowable if rewritten or amended to overcome the rejection(s) under obviousness double patenting, 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph,35 U.S.C. 112(b) and 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach the limitation of “wherein only three sizes of the second quantization matrix are encoded/decoded regardless of block size”. The closest prior art is Lim ‘885 which discloses the quantization matrix size is less than or equal to the block size (para. 0297), sizes of 2x2, 4x4 and 8x8 (para. 0298) and the blocks are in square form.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES T BOYLAN whose telephone number is (571)272-8242. The examiner can normally be reached Monday-Friday 7am-3pm.
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/JAMES T BOYLAN/Examiner, Art Unit 2486
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