DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1–9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–10 of U.S. Patent No. 11,758,142 B2 in view of Ahn (US 2021/0250596 A1), paras. [0103]–[0104]. Although the claims at issue are not identical, they are not patentably distinct from each other because they are nearly identical but for some minor semantic differences, like repeating clauses from earlier in the claim or changing the ordering of the description of the claimed elements, but not in a technologically distinct way. Regarding differences between the instant claims and reference claims drawn to remapped intra prediction modes, Ahn teaches the same whRatio variable and the same formulas for the remapping (¶¶ 0103–0104).
Claims 1–9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–10 of U.S. Patent No. 12,212,756 B2 in view of Ahn (US 2021/0250596 A1), paras. [0103]–[0104]. Although the claims at issue are not identical, they are not patentably distinct from each other because they are nearly identical but for some minor semantic differences, like repeating clauses from earlier in the claim or changing the ordering of the description of the claimed elements, but not in a technologically distinct way. Regarding differences between the instant claims and reference claims drawn to remapped intra prediction modes, Ahn teaches the same whRatio variable and the same formulas for the remapping (¶¶ 0103–0104).
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112:
(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.
Claims 1, 5, and 9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Specifically, the last two wherein clauses of the independent claims contain several issues requiring attention. First, it is noted that there are quotation marks setting off language, which is not permissible and confuses the skilled artisan regarding proper interpretation. Second, the dashed line prior to the numbers is unclear regarding whether such a sign should be interpreted to be a subtraction symbol. Third, there is a reference to a “variable” that is unclear. In the second to last wherein clause, the “being greater than variable” seems to be missing something critical to the invention. Fourth, “whRatio” is undefined. Fifth, the last wherein clause may be grammatically incorrect in reciting, “a value of the variable is determined to 60.”
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: Examiner found persuasive Applicant’s arguments regarding the patentability of the claimed subject matter in Remarks of the parent case dated 02/21/2023.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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
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