DETAILED ACTION
This office action is in response to the application filed on 10/21/2024. Claims 1-3 are pending and are examined.
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
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The reference(s) listed on the Information Disclosure Statement(s) submitted on 10/21/2024 has/have been considered by the examiner (see attached PTO-1449).
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 nonstatutory double patenting as being unpatentable over Claims 1-3 of U.S. Patent No. 12,167,007 B2, in view of Kim et al., US Patent Application Publication No.: 2025/0024037 A1 (please note the foreign application priority data KR 10-2019-0098337), hereby Kim.
Claims 1-3 of the instant invention are substantially similar in scope to Claims 1-3 of U.S. Patent No. 12,167,007 B2, in which the scope of the novel features of the claims are essentially the same and directed to the same invention. Independent Claims 1-3 of the instant application disclose the additional minor feature of including the flag in the SPS. Such a feature is known and used in the prior art of record (see Kim, [0117]-[0118], Table 6). Accordingly, before the effective filing date, it would have been obvious to one of ordinary skill in the art to implement such teachings, to allow for efficiently signaling subpicture information at a particularized level and improving the coding efficiency of a video signal (see Kim, [0004] and [0117]-[0118], Table 6).
Examiner further notes that any minor differences to the wording of the claims are merely a matter of semantics and do not carry significant patentable weight.
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 3 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Boyce et al., US Patent Application Publication No.: 2022/0174304 A1 (please note the provisional application no.: 62866156 filed 06/25/2019), hereby Boyce.
Claim 3 is directed to a non-transitory computer readable medium storing a bitstream. Significantly, the claimed non-transitory computer readable medium is merely memory with non-functional descriptive material and is NOT implementing any actual method; no instructions/steps are being executed. Instead, the claimed storage medium merely stores the data output from and/or generated by a series of acts. In other words, the claims are directed to a mere machine-readable medium storing data content.
Applicant therefore seeks to patent the storage of a bitstream in the abstract. In other words, the claim seeks to patent the content of the information (bitstream comprising video information) and not the process itself. Moreover, this stored bitstream does not impose any definitive physical organization on the data as there is no functional relationship between the bitstream and the storage medium. Overall, Claim 3 and any claims depending therefrom are directed to mere data content (bitstream generated by a series of acts) stored as a bitstream on a computer readable recording medium. Under MPEP 2111.05(III), such claims are merely machine-readable media. Furthermore, the Examiner found and continues to find that there is no disclosed or claimed functional relationship between the stored data and medium. Instead, the medium is merely a support or carrier for the data being stored. Therefore, the data stored and the way such data is generated should not be given patentable weight. See MPEP 2111.05 applying In 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, this claim is subject to a prior art rejection based on any non-transitory computer readable media known before the earliest effective filing date of the present application. Therefore, Claim 3 is anticipated by Boyce, in which Boyce discloses the following:
“A non-transitory computer readable medium storing a bitstream (see Boyce, Figs. 1-2, 3-4, and 5-6; [0017], [0117], [0127], [0165]-[0170])...”
EXAMINER’S NOTE: Applicant has not used the standard non-transitory CRM (non-transitory computer-readable media) claim formats of a) a non-transitory computer-readable medium storing executable instructions that, when implemented by a processor, perform an encoding/decoding method [steps of encoding/decoding method] or a b) non-transitory computer readable medium storing instructions that, when executed by a computer, cause it to perform a specified method that was held to recite patent-eligible product under 35 USC 101 by In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) and endorsed by the USPTO in 77 Fed. Reg. 74618 (Dec. 16, 2014), 2014 Interim Guidance on Patent Subject Matter Eligibility Examples: Abstract Ideas at 1-3, 8-10.
However, such standard non-transitory CRM claim formats that recite execution/implementation of a method are not subject to a non-functional descriptive material claim interpretation because such a claimed media does not merely store output data but instead stores functional, method steps that have a functional relationship with the media.
Therefore, the examiner suggests either canceling the claim(s) or amending the claim(s) to a standard non-transitory CRM format.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Examiner notes that multiple references cited disclose encoding/decoding subpictures. For example, the following references show similar features in the claims, although not relied upon: Chen (US 2021/0044838 A1), [0049], [0101], and [0118].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN M WALSH whose telephone number is (571)270-0423. The examiner can normally be reached M-F 8:00 AM - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Kelley can be reached at (571) 272-7331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHLEEN M WALSH/Primary Examiner, Art Unit 2482