DETAILED ACTION
This office action is in response to an application filed 11/26/2024 wherein claims 1-7 are pending and being examined. 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, 365(c), or 386(c) is acknowledged. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15/579,909, filed on 12/5/2017.
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on 1/6/2025, 1/10/2025, and 3/24/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,616,987. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following,
In regard to claim 1, this claim is drawn to a decoding method corresponding to the decoding method of claim 1 of US Patent No. 11,616,987, wherein every limitation of claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 1 of US Patent No. 11,616,987. Therefore the claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-3, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 11,616,987.
In regard to claim 4, this claim is drawn to an encoding method corresponding to the decoding method of claim 1 of US Patent No. 11,616,987, wherein every limitation of claim 4 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 1 of US Patent No. 11,616,987. Therefore the claims are not patentably distinct and claim 4 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 5-6, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 11,616,987.
In regard to claim 7, this claim is drawn to a method of transmitting a bitstream corresponding to the decoding method of claim 1 of US Patent No. 11,616,987, wherein every limitation of claim 7 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 1 of US Patent No. 11,616,987. Therefore the claims are not patentably distinct and claim 7 is rejected on the grounds of nonstatutory double patenting.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,849,152. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
In regard to claim 1, this claim is drawn to a decoding method corresponding to the decoding method of claim 1 of US Patent No. 11,849,152, wherein every limitation of claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 1 of US Patent No. 11,849,152. Therefore the claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-3, these claims are rejected as being dependent upon a previously rejected claim.
In regard to claim 4, this claim is drawn to an encoding method corresponding to the encoding method of claim 2 of US Patent No. 11,849,152, wherein every limitation of claim 4 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 2 of US Patent No. 11,849,152. Therefore the claims are not patentably distinct and claim 4 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 5-6, these claims are rejected as being dependent upon a previously rejected claim.
In regard to claim 7, this claim is drawn to a method of transmitting a bitstream corresponding to the method of transmitting a bitstream of claim 3 of US Patent No. 11,849,152, wherein every limitation of claim 7 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 3 of US Patent No. 11,849,152. Therefore the claims are not patentably distinct and claim 7 is rejected on the grounds of nonstatutory double patenting.
Claims 1-7 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,231,697. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
In regard to claim 1, this claim is drawn to a decoding method corresponding to the decoding method of claim 1 of US Patent No. 12,231,697, wherein every limitation of claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 1 of US Patent No. 12,231,697. Therefore the claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-3, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,231,697.
In regard to claim 4, this claim is drawn to an encoding method corresponding to the encoding method of claim 4 of US Patent No. 12,231,697, wherein every limitation of claim 4 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 4 of US Patent No. 12,231,697. Therefore the claims are not patentably distinct and claim 4 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 5-6, these claims are rejected as being dependent upon a previously rejected claim and/or claiming subject matter not patentably distinct from the various dependent claims of US Patent No. 12,231,697.
In regard to claim 7, this claim is drawn to a method of transmitting a bitstream corresponding to the method of transmitting a bitstream of claim 7 of US Patent No. 12,231,697, wherein every limitation of claim 7 of the instant application is rendered obvious and/or anticipated by a corresponding limitation in claim 7 of US Patent No. 12,231,697. Therefore the claims are not patentably distinct and claim 7 is rejected on the grounds of nonstatutory double patenting.
Allowable Subject Matter
Claims 1-7 would be allowable if terminal disclaimer(s) are filed to overcome the double patenting rejection(s) noted herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA A VOLENTINE whose telephone number is (571)270-7261. The examiner can normally be reached Monday-Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joe Ustaris can be reached at (571)272-7383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA A VOLENTINE/Primary Examiner, Art Unit 2483 January 9, 2026