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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. US 12,177,477 B2 (reference patent) in view of Chono (US 11,736,724 B2)
Consider application claim 1, claim 1 of reference patent discloses a video decoding apparatus comprising: a memory storing instructions; and one or more processors configured to execute the instructions to: control a use range of an image for use in intra-prediction for a block to be equal to or less than a first maximum range if the image for use in intra-prediction for the block processed is located beyond an end portion of a coding tree unit in upper direction, and control the use range of the image for use in intra-prediction for the block to be equal to or less than a second maximum range if the image for use in intra-prediction for the block to be processed is not located beyond the end portion of the coding tree unit in upper direction, wherein the first maximum range is fixed value, the fixed value being equal to one line, wherein the second maximum range is wider than the first maximum range, wherein the use range comprises multiple lines when the use range is controlled to be equal to or less than the second maximum range, and wherein all of the multiple lines are successively positioned in upper direction and at least one of the multiple lines is used for intra-prediction for the block when the use range is controlled to be equal to or less than the second maximum range.
However, claims of reference patent do not explicitly disclose a difference between the first and second maximum ranges is a value larger than the one.
Chono teaches a difference between the first and second maximum ranges is a value larger than the one (claim 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the known element of a difference between the first and second maximum ranges and its value is larger than one because such incorporation would facilitate efficient decoding process.
Consider application claim 2, application claim 2 recites the method implemented by the apparatus recited in application claim 1. Thus, it is rejected for the same reasons.
Consider application claim 3, claim 3 of reference patent discloses a non-transitory recording medium which includes a bit stream encoded by video encoding method comprising: controlling a use range of an image for use in intra-prediction for a block to be equal to or less than a first maximum range if the image for use in intra-prediction for the block processed is located beyond an end portion of a coding tree unit in upper direction, and controlling the use range of the image for use in intra-prediction for the block to be equal to or less than a second maximum range if the image for use in intra-prediction for the block to be processed is not located beyond the end portion of the coding tree unit in upper direction, wherein the first maximum range is fixed value, the fixed value being equal to one line, wherein the second maximum range is wider than the first maximum range, wherein the use range comprises multiple lines when the use range is controlled to be equal to or less than the second maximum range, and wherein all of the multiple lines are successively positioned in upper direction and at least one of the multiple lines is used for intra-prediction for the block when the use range is controlled to be equal to or less than the second maximum range.
However, claims of reference patent do not explicitly disclose a difference between the first and second maximum ranges is a value larger than the one.
Chono teaches a difference between the first and second maximum ranges is a value larger than the one (claim 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the known element of a difference between the first and second maximum ranges and its value is larger than one because such incorporation would facilitate efficient decoding process.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11,736,724 B2 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because
Consider application claim 1, claim 1 of reference patent discloses a video encoding or decoding apparatus comprising: a memory storing instructions; and one or more processors configured to execute the instructions to: control a use range of an image for use in intra-prediction for a block to be equal to or less than a first maximum range if the image for use in intra-prediction for the block processed is located beyond an end portion of a coding tree unit in a predetermined direction, and control the use range of the image for use in intra-prediction for the block to be equal to or less than a second maximum range if the image for use in intra-prediction for the block to be processed is not located beyond the end portion of the coding tree unit in the predetermined direction, wherein the second maximum range is wider than the first maximum range, wherein the use range comprises multiple lines when the use range is controlled to be equal to or less than the second maximum range, and wherein all of the multiple lines are successively positioned and at least one of the multiple lines is used for intra-prediction for the block when the use range is controlled to be equal to or less than the second maximum range.
Claim 2 of reference patent discloses a difference between the first maximum range and the second maximum range is larger than one sample.
Claim 3 of reference patent discloses the one or more processors are configured to execute the instructions to control the use range to be a fixed value.
Claims 1-3 disclose all the limitations in application claim 1. Thus, non-statutory double patenting applies.
Consider application claim 2, application claim 2 recites the method implemented by the apparatus recited in application claim 1. Thus, it is rejected for the same reasons.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-9 of U.S. Patent No. US 11,736,724 B2 (reference patent) in view of Chono (US 12,177,477 B2)
Consider application claim 3, claim 7 of reference patent discloses a non-transitory computer-readable recording medium storing instructions which, when executed by one or more processors, cause the one or more processors to: control a use range of an image for use in intra-prediction for a block to be equal to or less than a first maximum range if the image for use in intra-prediction for the block processed is located beyond an end portion of a coding tree unit in a predetermined direction, and control the use range of the image for use in intra-prediction for the block to be equal to or less than a second maximum range if the image for use in intra-prediction for the block to be processed is not located beyond the end portion of the coding tree unit in the predetermined direction, wherein the second maximum range is wider than the first maximum range, wherein the use range comprises multiple lines when the use range is controlled to be equal to or less than the second maximum range, and wherein all of the multiple lines are successively positioned and at least one of the multiple lines is used for intra-prediction for the block when the use range is controlled to be equal to or less than the second maximum range.
Claim 8 of reference patent discloses a difference between the first maximum range and the second maximum range is larger than one sample.
Claim 9 of reference patent discloses the stored instructions, when executed by one or more processors, cause the one or more processors to control the use range to be a fixed value.
However, claims of reference patent do not explicitly disclose storing a bitstream.
Chono teaches storing a bitstream (claim 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the known technique of storing a bitstream because such incorporation would allow the bitstream to be transmitted between different devices by the medium.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11,785,255 B2 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because
Consider application claim 1, claim 1 of reference patent discloses a video encoding or decoding apparatus comprising: a memory storing instructions; and one or more processors configured to execute the instructions to: control a use range of an image for use in intra-prediction for a block to be processed, to be equal to or less than a first maximum range for the intra-prediction beyond an end portion of a coding tree unit in a predetermined direction, the coding tree unit including the block to be processed, and control, when the use range is not controlled to be equal to or less than the first maximum range, the use range to be a second maximum range larger than the first maximum range, wherein the use range includes multiple lines, all of the multiple lines being contiguously positioned and at least one of the multiple lines is used for intra-prediction for the block, when the use range is controlled to be the second maximum range.
Claim 2 of reference patent discloses a difference between the first and second maximum ranges is a value larger than one sample.
Claim 3 of reference patent discloses the one or more processors are configured to execute the instructions to control, in case of a predetermined condition, the use range to be a fixed value.
Claims 1-3 disclose all the limitations in application claim 1. Thus, non-statutory double patenting applies.
Consider application claim 2, application claim 2 recites the method implemented by the apparatus recited in application claim 1. Thus, it is rejected for the same reasons.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-14 of U.S. Patent No. US 11,785,255 B2 (reference patent) in view of Chono (US 12,177,477 B2).
Consider application claim 3, claim 12 of reference patent discloses a non-transitory computer readable recording medium storing a program that causes a processor to execute a video encoding or decoding process including controlling a use range of an image for use in intra-prediction for a block to be processed, to be equal to or less than a first maximum range for the intra-prediction beyond an end portion of a coding tree unit in a predetermined direction, the coding tree unit including the block to be processed, and controlling, when the use range is not controlled to be equal to or less than the first maximum range, the use range to be a second maximum range larger than the first maximum range, wherein the use range includes multiple lines, all of the multiple lines being contiguously positioned and at least one of the multiple lines is used for intra-prediction for the block, when the use range is controlled to be the second maximum range.
Claim 13 of reference patent discloses a difference between the first and second maximum ranges is a value larger than one sample.
Claim 14 of reference patent discloses the controlling comprising controlling, in case of a predetermined condition, the use range to be a fixed value.
However, claims of reference patent do not explicitly disclose storing a bitstream.
Chono teaches storing a bitstream (claim 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the known technique of storing a bitstream because such incorporation would allow the bitstream to be transmitted between different devices by the medium.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 3 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Said claim discloses “recording medium.”. Under the broadest reasonable interpretation, a " recording medium" can encompass non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se. A claim directed to only signals per se is not a process, machine, manufacture, or composition of matter and therefore is not directed to statutory subject matter. MPEP 2106.03.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (US 2016/0219276 A1).
Consider claim 3, a bit stream generated by an apparatus, the apparatus comprising… is a product by process claim limitation where the product is the bitstream and the process is the steps performed by the apparatus when the instructions are executed to generate the bitstream. MPEP §2113 recites “Product-by-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. Thus, the scope of the claim is the storage medium storing the bitstream (with the structure implied by the method steps). The structure includes the information and samples manipulated by the steps. “
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 “computer-readable medium merely serves as a support for information or data, no functional relationship exists. MPEP §2111.05(III). The storage medium storing the claimed bitstream in claim 18 merely services as a support for the storage of the bitstream and provides no fictional relationship between the stored bitstream and storage medium. Therefor the structure bitstream, which scope is implied by the method steps, is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Thus, the claim scope is just a storage medium storing data and is anticipated by Li which recites a storage medium storing a bitstream ([0037] and [0125]).
Conclusion
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/TAT C CHIO/ Primary Examiner, Art Unit 2486