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 .
Response to Arguments
Applicant's arguments filed 03/19/2026 have been fully considered but they are not persuasive.
As per Applicant’s argument that there is a functional relationship between the bitstream and the storage medium in claim 9. As discussed above, the bitstream is generated/defined by the process recited in claim 9. The steps of generating the bitstream quality as “performing some function with respect to the computer which it is associated”.” MPEP 2111.05(III) When determining the scope of a claim directed towards a computer-readable medium containing certain programming, the examiner should first look to the relationship between the programming and the intended compute system. Where the programming performs some function with respect to the computer with which it is associated, a functional relationship will be found). That section of MPEP clarifies that a data manipulation in the intended computer system establishes the required functional relationship. See also id. (“For instance, a claim to a computer-readable medium programmed with attribute data objects that perform the function of facilitation retrieval, addition, and removal of information in the intended computer system, establishes a functional relationship such that the claimed attribute data objects are given patentable weight”.). Similarly, claim 9 recites several data manipulation steps as the process of generating the bitstream that stored in the storage medium of the intended computer system. Those steps include: “constructing a first candidate list”, “generating a first prediction block of the current block”, “generating a second prediction block of the current block”, and “generating a final prediction block of the current block.” These steps specifically fall with “facilitating .. addition … of information in the intended computer system” within MPEP’s example functional relationship recited above.
The Examiner respectfully disagrees. Patentable weight is given to data stored on a computer-readable medium when there exists a functional relationship between the data and its associated substrate. MPEP 2111.05(III). For example, if a claim is drawn to a computer-readable medium containing programming, a functional relationship exists if the programming “performs some function with respect to the computer with which it is associated.” However, if the claim recites that the computer-readable merely serves as a support for information or data, no functional relationship exists and the information or data is not given patentable weight. Id. Claim 9, recites, “A non-transitory computer-readable storage medium for storing a bitstream by an image encoding method, … including steps performed by the encoding method. The encoded method steps are not performed by an intended computer and the bitstream is not a form of programming that causes functions to be performed by an intended computer. This shows that the computer-readable medium merely serves to support the bitstream and provides no functional relationship between the encoding method steps describing the generation of the bitstream and an intended computer system. Therefore, the claim elements are not given patentable weight. Additionally, the non-transitory computer-readable storage medium does not include instructions to execute the encoding method by a computer. Therefore, the Examiner maintains the rejection of claim 9.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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.
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Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,192,450 B2 (herein referenced as “Kim”) in view of Lim et al., (U.S. Pub. No. 2020/0280735 A1).
As per claim 1, Kim teaches a method of decoding an image, the method comprising (claim 1, col. 35 lines 36-37, “a method of decoding an image, the method comprising: ): constructing a candidate list of a current block in the image, the first candidate list including a plurality of merge candidates (claim 1, col. 35 lines 38-40, “constructing a first candidate list of a current block in the image, the first candidate list including a plurality of merge candidates”), generating a first prediction block of the current block by performing inter prediction based on the first candidate list and a merge index, the merge index specifying one of the plurality of merge candidates included in the first candidate list (claim 1, col. 35 lines 41-44, “generating a first prediction block of the current block by performing inter prediction based on one of the plurality of merge candidates included in the first candidate list”); generating a second prediction block of the current block based on a pre-defined intra prediction mode in a decoding apparatus, the pre-defined intra prediction mode being representative of a Planar mode (claim 1, col.35 lines 45-48, “generating a second prediction block of the current block based on a pre-defined intra prediction mode in a decoding apparatus, the pre-defined intra prediction mode representative of a Planar mode”); generating a final prediction block of the current block on a weighted sum of the first prediction block and the second prediction block (claim 1, col. 35 lines 49-51, “generating a final prediction block of the current based on a weighted sum of the first prediction block and the second prediction block”); and reconstructing the current block based on the final prediction block of the current block (claim 1, col. 35 lines 51-53, “and reconstructing the current block based on the final prediction block of the current block, “), wherein a weight for the weighted sum is determined based on a prediction mode of a neighboring block of the current block (claim 1, col. 35 lines 54-56, “wherein a weight for the weighted sum is determined based on a prediction mode of a neighboring block of the current block, “), wherein the first candidate list includes a merge candidate having motion information of a previously decoded block (claim 1, col. 35 lines 57-59, “wherein the first candidate list includes a merge candidate having motion information of a previously decoded block, “), wherein the merge candidate having the motion information of the previously decoded block is derived from a second candidate list (claim 1, col. 35 lines 60-62, “wherein the merge candidate having the motion information of the previously decoded block is derived from a second candidate list, “), and wherein the second candidate list is constructed based on motion information previously decoded blocks (claim 1, col. 35 lines 63-64, “wherein the second candidate list is constructed based on motion information of previously decoded blocks”). Although Kim discloses generating a first prediction block of the current lock by performing inter prediction based the first candidate list (claim 1), Kim does not explicitly disclose generating a first prediction block of the current block by performing inter prediction based on the first candidate list and a merge index, the merge index specifying one of the plurality of merge candidates included in the first candidate list, as recited in claim 1.
However, Lim teaches generating a first prediction block of the current block by performing inter prediction based on the first candidate list and a merge index, the merge index specifying one of the plurality of merge candidates included in the first candidate list ([0089], [0092], [0260-0261]; “… In order to generate a prediction bock of the current block, the encoder may select a merge candidate from the merge candidate list by using the merge candidate index and determine motion information of the current block. Then, the encoder may perform motion compensation based on the determined motion information, thereby generating a prediction block of the current block”. Further disclosed, is “the term “motion compensation” may have the same meaning as inter-prediction”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the inventio to incorporate the teachings of Lim with Kim in order for encoding and decoding efficiency of an image can be improved, [0028]).
As per claim 2, Kim (modified by Lim) as a whole teaches everything as claimed above, see claim 1. In addition, Kim teaches wherein the first candidate list further includes at least one of a spatial merge candidate or a temporal merge candidate (claim 2, col. 35 lines 65-67, “wherein the first candidate list further includes at least one of spatial candidate or a temporal merge candidate”).
As per claim 3, Kim (modified by Lim) as a whole teaches everything as claimed above, see claim 1. In addition, Kim teaches wherein the weighted sum is performed based on a flag indicating the weighted sum of the first prediction block and the second prediction block (claim 3, col. 36 lines 1-3, “wherein the weighted sum is performed based on a flag indicating the weighted sum of the first prediction block and the second prediction block”).
As per claim 4, Kim (modified by Lim) as a whole teaches everything as claimed above, see claim 3. In addition, Kim teaches wherein the flag is adaptively signaled or derived based on at least one of a type of a slice to which the current block belongs or an inter prediction of the current block (claim 4 , col. 36 lines 4-7; “wherein the flag is adaptively signaled or derived based on at least one of type of a slice to which the current block belongs or an inter prediction mode of the current block”).
As per claim 5, Kim (modified by Lim) as a whole teaches everything as claimed above, see claim 1. In addition, Kim teaches wherein a number of the previously decoded block is less than or equal to 5 (claim 5, col. 36 lines 8-9; “wherein a number of the previously decoded blocks is less than or equal to 5”).
As per claim 6, Kim (modified by Lim) as a whole teaches everything as claimed above, see claim 1. In addition, Kim teaches wherein the neighboring block includes at least one of a top neighboring block or a left neighboring block, and wherein, in response to a case where a plurality of blocks exists at a top of the current block, a right most block among the plurality of blocks is used as the top neighboring block (claim 6, col. 36 liners 10-16; “wherein the neighboring block includes at least one of a top neighboring block or a left neighboring block, and wherein, in response to a case where a plurality of blocks exist at a top of the current block, a right-most among the plurality of blocks is used as the top neighboring-block”).
As per claim 7, Kim (modified by Lim) as a whole teaches everything as claimed above, see claim 6. In addition, Kim teaches wherein, in response to a case where prediction modes of the top neighboring block and the left neighboring block are not intra mode, the weight is determined as 3 (claim 7, col. 36 lines 17-20; “wherein in response to a case where prediction modes of the top neighboring block and the left neighboring block are not an intra mode, the weight is determined as 3”).
As per claim 8, which is the corresponding the method of encoding an image with the limitations of the method of decoding an image as recited in claim 1, thus the rejection and analysis made for claim 1 also applies here. In addition, Kim discloses the corresponding method of encoding an image as recited in claim 8.
As per claim 9, which is the corresponding non-transitory computer-readable storage medium for storing a bitstream generated by an image encoding method, with the limitations of the method of decoding as image as recited in claim 1. Thus, the rejection and analysis made for claim 1, also applies here. In addition, Kim teaches the corresponding non-transitory computer-readable storage medium for storing a bitstream generated by an image encoding method, as recited in claim 9.
Claim Objections
Claims 10-15 are objected to under 37 CFR 1.75 as being a substantial duplicate of claims 10-15 (the second instance of claims 10-15). When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant is advised that should claim16-20 be found allowable, claims 16-20 (the second instance of claims 16-20) will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 9, and 16-20 is/are rejected under 35 U.S.C. 102(a2) as being anticipated by Lim et al., (U.S. Pub. No. 2020/0280735 A1).
Regarding claim 9, the recitation of “ a non-transitory computer-readable medium storing a bitstream…” is a product by process claim limitation where the product is the bitstream and the process is the encoding method. MPEP §2113 recites “Product-by-Process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps”. Thus, the scope of claim 9 is the storage medium storing 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 printer 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 servers as support for information or data, no functional relationship exists. MPEP 2111.05(III). The storage medium storing the claimed bitstream in claim 9 merely servers as support for the storage of the bitstream and provides no functional relationship between the stored bitstream and the storage medium. Therefore, the bitstream, which scope is implied by the method steps, is non-functional descriptive material and given non patentable weight. MPEP 2111.05(III). Thus, the claim scope of claim 9 is just a storage medium storing data and is anticipated by Lim et al., (U.S. Pub. No. 2020/0280735 A1) , paragraph [0001], where Lim discloses the present invention relates to a method and apparatus for encoding/decoding an image. Particularly, the present invention relates to a method and apparatus for performing motion compensation by refining motion information and a recording medium storing a bitstream generated by an image encoding method/apparatus of the present invention.
Claim 16 has been analyzed with respect to claim 9.
Claim 17 has been analyzed with respect to claim 9.
Claim 18 has been analyzed with respect to claim 9.
Claim 19 has been analyzed with respect to claim 9.
Claim 20 has been analyzed with respect to claim 9.
Allowable Subject Matter
Claims 10-15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hsu et al., (U.S. Pub. No. 2018/0199054 A1), “Multi-Hypothesis Merge Mode”
Hinz et al., (U.S. Pub. No. 2016/0014416 A1) “Scalable Video Coding Using Inter-Layer Prediction of Spatial Intra Prediction Parameters”
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA PRINCE whose telephone number is (571)270-1821. The examiner can normally be reached M-F 7:30-3:30 P.M..
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JESSICA PRINCE
Examiner
Art Unit 2486
/JESSICA M PRINCE/ Primary Examiner, Art Unit 2486