DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Interpretation
Non-Functional Descriptive Material
Claim 3 recites “An integrated circuit that executes sending a bitstream”. The Examiner finds that there is no disclosed or claimed functional relationship between the bitstream and the integrated circuit. Instead, the integrated circuit is merely for sending the bitstream. "To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated". MPEP §2111.05(I)(A). When a claimed integrated circuit merely serves as a support for information or data, no functional relationship exists. MPEP §2111.05(III). Therefore, the bitstream and the way such bitstream is generated should not be given patentable weight. Therefore, the bitstream is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). See MPEP 2111.05 applying n re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). As such, claim 3 is subject to a prior art rejection based on any integrated circuit known before the claimed invention was made.
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 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12149695, claims 1-3 of U.S. Patent No. 11770536, claim 1 of U.S. Patent No. 10638134, claim 1 of U.S. Patent No. 10015494, claim 1 of U.S. Patent No. 9681137, claim 5 of U.S. Patent No. 9258558, and claim 5 of U.S. Patent No. 8755620. Although the claims at issue are not identical, they are not patentably distinct from each other because: The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claims, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Claims 1-3 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12149695, claims 1-2 of U.S. Patent No. 11350096, claim 1 of U.S. Patent No. 9258558, and claim 1 of U.S. Patent No. 8755620, in view of Sole Rojals et al (US 8902988).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are rendered obvious by the claims of the patent. Patent claims recite all limitations found in instant claims except for “An integrated circuit”.
However, it is well-known in the art to use an integrated circuit for image/video coding as evidenced by Sole Rojals (see col. 10, lines 12-22).
At the time the invention was made, it would have been obvious to one of ordinary skills in the art to perform image/video coding using an integrated circuit to improve coding efficiency (Sole Rojals; col. 4, lines 34-56).
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.
Claim 3 is 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.
Regarding claim 3, the limitations "wherein in the selecting process: a shared context is selected as the first context for the first signal to be decoded in the case where a size of the first processing unit which includes the first signal to be decoded is a block size of 16x16, and in the case where the size of the first processing unit which includes the first signal to be decoded is a block size of 32x32; and a dedicated context is selected as the first context for the first signal to be decoded in the case where the size of the first processing unit which includes the first signal to be decoded is smaller than the block size of 16x16" renders the claim indefinite because it is unclear whether the limitation(s) are part of the claimed invention. It is unclear whether the decoder which perform the selecting process is part of the claimed integrated circuit. For the purpose of prior art rejection, the decoder is interpreted to be separate from the integrated circuit and therefore the above limitations will not be given any patentable weight as they are not performed by the integrated circuit.
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.
Claim(s) 3 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Sole Rojals et al (US 8902988).
Claim 3 has been interpreted above as nonfunctional descriptive material under MPEP 2111.05(ID and the case law cited therein because it recites “An integrated circuit that executes sending a bitstream.” As such, the proper interpretation of claim 3 is merely an integrated circuit that executes sending a bitstream in which the circuit is merely for sending bitstream wherein the bitstream and the way such bitstream is generated should not be given patentable weight.
Sole Rojals which is an analogous art discloses an integrated circuit that executes sending a bitstream (see col. 10, lines 12-22; col. 28, lines 14-17). As such, Sole Rojals clearly anticipates the integrated circuit that executes sending a bitstream.
Allowable Subject Matter
Claims 1-2 are allowable over the prior art. Claims 1-2 would be allowable if the non-statutory double patenting rejection set forth in this office action is overcome.
The following is an examiner’s statement of reasons for allowance:
The closest prior art of record fails to teach or render obvious the combination of elements "wherein, in said selecting, a shared context is selected as the context for the current signal to be decoded in the case where a size of the processing unit which includes the current signal to be decoded is a block size of 16×16, and in the case where the size of the processing unit which includes the current signal to be decoded is a block size of 32×32, and wherein, in said selecting, a dedicated context is selected as the context for the current signal to be decoded in the case where the size of the processing unit which includes the current signal to be decoded is smaller than the block size of 16×16" with limitations taken in combination with others in the claims.
Sole Rojals et al (US 8902988) discloses maintaining a joint context model shared by transform units having the first size with coefficients that are zeroed out to generate the retained coefficient block and transform units having the second size, and select contexts for the coefficients of a transform unit of one of the first size with the retained coefficient block and the second size according to the joint context model. Joint context model store may store a joint context model shared by retained coefficient blocks having size 16.times.16 within TUs originally having size 32.times.32 and TUs originally having size 16.times.16.
However, the various claimed limitations mentioned in the claims are not taught or suggested by the prior art taken either singly or in combination, with emphasis that it is each claim, taken as a whole, including the interrelationships and interconnections between various claimed elements that make them allowable over the prior art of record.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOUBACAR ABDOU TCHOUSSOU whose telephone number is (571)272-7625. The examiner can normally be reached M-F 8am-4pm.
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/BOUBACAR ABDOU TCHOUSSOU/Primary Examiner, Art Unit 2482