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 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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,160,614. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to the encoding and decoding of a video using a decoding parameter set (DPS) which is identified based on presence of the DPS in a bitstream and is identified without an identifier for the DPS and a sequence parameter set (SPS) which is identified based on an identifier for the SPS.
Allowable Subject Matter
Claims 1-3 are allowable over the prior art. As stated previously in parent application 17/750,950, the claimed invention is directed towards an encoding/decoding means that specifically identifies the presence of a DPS by its presence within a bitstream without the use of an identifier while simultaneously identifying a SPS using an identifier of said SPS. The prior art generally teaches using one approach rather than a mixed approach as claimed. Hannukesla et al. (12,034,973, provided by applicant, col. 19 lines 40-60) teaches using a predefined parameter set that is inferred from other values. Kim (2006/0023795, paragraph 0038) teaches identifying a DPS using the last bit of a particular sequence. Wang et al. (2016/0234526, provided by applicant, paragraphs 0126, 0138, 0151) teaches identifying parameter sets based upon their presence within a bit stream. Stockhammer (2019/0068946, provided by applicant, paragraphs 0161-0162) teaches identifying parameter sets using explicit identifiers. The prior art appears to lack any suggestion at the time of effective filing for modifying any one of these method with another that results in the claimed invention of identifying a DPS based on its presence in the bit stream while using an explicit identifier to identify the SPS.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC D SALTARELLI whose telephone number is (571)272-7302. The examiner can normally be reached 9:00 am - 5:00 pm EST.
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/DOMINIC D SALTARELLI/Primary Examiner, Art Unit 2421