CTNF 18/943,168 CTNF 88064 DETAILED ACTION Double Patenting 08-33 AIA 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. 08-36 AIA Claim s 1 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1–17 of U.S. Patent No. 12,170,793 B2 in view of Kim (US 2019/0082178 A1). The subject matter of the instant claims substantially overlaps the subject matter of the reference patent’s claims except with respect to the last limitation of representative claim 1, which is a nominal recitation of a well-known feature in the prior art. Kim’s paragraph [0434] teaches slice address information in a picture parameter set (PPS) such that one skilled in the art would consider the instant claims obvious in view of the reference claims in view of the further teachings of Kim . 08-37 AIA Claim s 1 – 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1–18 of copending Application No. 18/943,161 in view of Kim (US 2019/0082178 A1). The subject matter of the instant claims substantially overlaps the subject matter of the reference patent’s claims except with respect to the last limitation of representative claim 1 wherein the instant claims recite slice location information found in the PPS whereas the reference claims merely recite the use of PPS, which is a nominal recitation of a well-known feature in the prior art. Kim’s paragraph [0434] teaches a slice address in a picture parameter set (PPS) such that one skilled in the art would consider the instant claims obvious in view of the reference claims in view of the further teachings of Kim . This is a provisional nonstatutory double patenting rejection. Claim Objections Claim 12 is objected to for the following informality: Claim 12 is objected to for stating in the preamble “a method of decoding” when the claim is clearly drawn to a method of encoding. Appropriate correction is required. Compare claim 11, which has an identical preamble, but is clearly drawn appropriately to decoding, whereas claim 12 is not. Allowable Subject Matter Claims 1 – 18 are indicated as allowable subject to filing a terminal disclaimer to overcome the double patenting rejections, supra . 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Examiner was unable to find a teaching or suggestion in the prior art linking the approach of signaling the picture header in the slice header, which dictates that only a single slice is included in the picture, with the claimed features of determining there is only a single slice in the picture when raster slice scan is enabled, a number of tiles in the picture is greater than one, and the number of tiles in a slice is equal to a number of tiles in the picture AND wherein the APS ID signaling structure for weighted prediction and adaptive loop filter is utilized as claimed . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Samuelsson et al., “AHG9: Picture Header in Slice Header,” JVET-Q0775, 17 th Meeting: Brussels, BE, January 2020. Bross et al., “Versatile Video Coding (Draft 8),” JVET-Q2001-vE, 17 th Meeting: Brussels, BE, January 2020. Hendry, “AHG9/AHG12: A summary of HLS contributions on tiles and slices,” JVET-Q0586-v2, 17 th Meeting: Brussels, BE, January 2020. Chen et al., “AHG17/AHG12: On associating slices with a subpicture,” JVET-P0144-v1, 16 th Meeting: Geneva, CH, October 2019. Teaches subpics_present_flag. EP 4093030 is very salient to the claims. It is found on Applicant’s IDS dated 10/27/2023. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J Hess whose telephone number is (571)270-7933. The examiner can normally be reached Mon - Fri 9:00am-5:30pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Vaughn can be reached on (571)272-3922. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8933. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MICHAEL J HESS/Examiner, Art Unit 2481 Application/Control Number: 18/943,168 Page 2 Art Unit: 2481 Application/Control Number: 18/943,168 Page 3 Art Unit: 2481 Application/Control Number: 18/943,168 Page 4 Art Unit: 2481 Application/Control Number: 18/943,168 Page 5 Art Unit: 2481
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