DETAILED ACTION
Summary
This office action for US Patent application 18/949770 is responsive to communications filed on October 13th, 2025. Currently, claims 1-10 are pending are presented for examination.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-10 inprovisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of copending Application No 18/326550, now US Patent 12,177,451. Although the conflicting claims are not identical, they are not patentably distinct from each other because it is merely in the terminology used in both sets of claims.
This is an inprovisional obviousness-type double patenting rejection because the conflicting claims have in fact been patented. Below is a list of limitations that perform the same function. However different terminology is used in both sets to describe the limitations.
Conflicting Co-pending Application 18/326,550
Instant Application-18/949770-
1.A decoding method performed by a decoding apparatus, comprising: receiving a bitstream including prediction information and residual information; deriving prediction samples for a coding block based on the prediction information; deriving transform coefficients for the coding block based on the residual information; deriving residual samples for the coding block based on an inverse transform for the transform coefficients, the inverse transform including at least one of an inverse non-separable transform or an inverse primary transform; and generating a reconstructed picture based on the prediction samples and the residual samples for the coding block, wherein based on the coding block having a width or height greater than a predetermined maximum transform block, a Low Frequency Non-Separable Transform (LFNST) index indicating a predetermined transform kernel matrix used for the inverse non-separable transform is not obtained from the bitstream, and the inverse non-separable transform is not applied to the coding wherein[[,]] based on a size of the coding block being less than or equal to a size of the predetermined maximum transform block, the LFNST index is obtained from the bitstream, and the inverse non-separable transform is applied to the coding block based on the LFNST index, and wherein based on a tree type of the coding block being a dual tree chroma and a color format being 4:2:0, a width and height of a block to which the inverse non-separable transform is applied are derived as half the width and height of the coding block, respectively.
Claims 2-10
1.An image decoding method performed by a decoding apparatus, comprising: deriving prediction samples for a coding block based on prediction information; deriving transform coefficients for the coding block based on residual information; deriving residual samples for the coding block based on an inverse transform for the transform coefficients, the inverse transform including at least one of an inverse non- separable transform or an inverse primary transform; and generating a reconstructed picture based on the prediction samples and the residual samples for the coding block; wherein based on a size of the coding block being less than or equal to a size of a predetermined maximum transform block, a Low Frequency Non-Separable Transform (LFNST) index is obtained from bitstream, and the inverse non-separable transform is applied to the coding block based on the LFNST index; and wherein based on a tree type of the coding block being a dual tree chroma and a color format being 4:2:0, a width and height of a block to which the inverse non-separable transform is applied are derived as half the width and height of the coding block, respectively.
Claims 2-10
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-10 are generic to all that is recited in claims 1-10 respectively of co-pending application. That is, claims 1-10 is/are anticipated by claims 1-10 respectively of co-pending application.
Claims 1-10 inprovisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 respectively of copending Application.
Claim Rejections - 35 USC § 102
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.
Claim 10 is rejected under 35 U.S.C. § 112(b) as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See M.P.E.P. § 2172.01. The omitted steps are: any steps for bitstream transmission in what is supposedly “a method of transmitting a bitstream’. The claim as a whole, directed substantially to a bitstream generated by an image encoding method, appears to be the latest tactic for sneaking a claim to a per se bitstream past the statutory category requirement. See In re Nuijten, 500 F.3d 1346, 1356-57, 84 U.S.P.Q.2d 1495, 1501-03 (Fed. Cir. 2007) (encoded signal not within any of the four statutory categories of invention). It is suggested that Applicant amend claim 10 to recite a positive method step of “transmitting the bitstream to an image decoding apparatus”. Such an amendment would be a fig leaf actually big enough to cover the claim from the piercing gaze of Section 101.
Allowable Subject Matter
Claims 1-10 is/are rejected on the ground of nonstatutory obviousness-type double patenting. However, these claims would be allowable if the obvious-type double patenting is overcome and the bitstream rejection is addressed.
Conclusion
Any inquiry concerning this communication or earlier communications form the examiner should be directed to Nam Pham, whose can be contacted by phone at (571)270-7352. The examiner can normally be reached on Mon—Thurs.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, CZEKAJ DAVID, can be reached on (571)272-7327.
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/NAM D PHAM/ Primary Examiner, Art Unit 2487