DETAILED ACTION
I. ACKNOWLEDGEMENTS
This non-final Office action addresses U.S. reissue application No. 19/002,466 (“466 Reissue Application” or “instant application”). Based upon a review of the instant application, the actual filing date is Dec. 26, 2024 (“466 Actual Filing Date”). Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this reissue application proceeding. The 466 Reissue Application contained, among other things: Reissue Application Declarations by the Inventor and a preliminary amendment.
The 466 Reissue Application is a reissue application of U.S. Patent No. 11,070,831 (“’831 Patent”) titled “Method And Device For Processing Video Signal.” The ‘831 Patent was filed on May 18, 2020 and assigned by the Office US patent application number 16/765,027 (“027 Application”) and issued on Jul. 20, 2021 with claims 1-10 (“Originally Patented Claims”).
Because the parent reissue application of the instant reissue application was filed within two years after the ‘831 Patent was issued, broadening of claim scope is allowed. See MPEP § 1401 and 35 USC § 251.
II. OTHER PROCEEDINGS
Based upon Applicant’s statements as set forth in the instant application and after the Examiner's independent review of the ‘831 Patent itself, its prosecution history and litigation search report, the Examiner finds no litigation and no IPR involving the ‘831 Patent. The Examiner also could not find any reexamination proceedings related to the ‘831 Patent.
III. PRELIMINARY AMENDMENT
The 466 Reissue Application contains a preliminary amendment (“466 Preliminary Amendment”) that was filed on the 466 Actual Filing Date. The 466 Preliminary Amendment is hereby entered.
The 466 Preliminary Amendment contained, among other things, “REMARKS” (“2024 Remarks”), “AMENDMENTS TO THE CLAIMS” (“2024 Claim Amendment”), and Reissue Declaration by the Inventor.
The 2024 Claim Amendment amended claims 1-2, canceled claims 6 and 10 and added new claims 11-12.
IV. STATUS OF CLAIMS
In light of the above:
Claims 1-5, 7-9 and 11-12 are currently pending (“Pending Claims”).
Claims 1-5, 7-9 and 11-12 are examined.
As a result of the instant office action:
Claims 1-5, 7-9 and 11-12 are rejected.
V. PRIORITY CLAIMS
Based upon a review of the instant application and ‘831 Patent, the Examiner finds that the instant reissue application is a continuation reissue application of reissue application 17/898,055, which is a reissue application of the ‘831 Patent, which is a national state application (§371 (c)(1)) of PCT/KR2018/015032, filed on Nov. 30, 2018, which claims priority to provisional application No. 62/593,203 (“the 203 Provisional Application”), filed on Nov. 30, 2017. To the extent that the claims of the instant reissue application are supported by the 203 Provisional Application, the priority date of the corresponding claims is the filing date of the 203 Priority Application date, i.e., Nov. 30, 2017. Otherwise the effective filing date is Nov. 30, 2018.
The instant application does not claim any foreign priorities.
Because the effective filing date of the instant application is on or after March 16, 2013, the AIA First Inventor to File (“AIA -FITF”) provisions applies (to the invention or claims of the instant reissue application). Instead, the earlier ‘First to Invent’ provisions do not apply.
VI. CLAIM INTERPRETATION
A. Lexicographic Definitions
After careful review of the original specification and unless expressly noted otherwise by the Examiner, the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision the Examiner concludes the Patent Owner is not their own lexicographer. See MPEP § 2111.01 IV.
B. 'Sources' for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Patent Owner, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In other words, the Examiner has provided the following interpretations simply as express notice of how she is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support her interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. Processor: "1: one that processes 2. a: (1) a computer (2) The part of a computer system that operates on data – called also a central processing unit b : a computer program (as a compiler) that puts another program into a form acceptable to the computer " Microsoft Press Computer Dictionary , 2nd Edition, Microsoft Press, Redmond, WA, 1994.
2. Configuration: “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to a hardware configuration or software configuration.” The Authoritative Dictionary of IEEE Standards Terms 7th Ed., IEEE, Inc., New York, NY, 12/2000.
3. encode “(1) (general) To express a single character or a message in terms of a code. (2) (electronic control) To produce a unique combination of a group of output signals in response to each of a group of input signals. (3) (computers) To apply the rules of a code. See also: matrix; translate; code; decode. (4) (modeling and simulation) To represent data in symbolic Form using a code or a coded character set such that reconversion to the original form is possible.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
4. decode: “decode (1) To produce a single output signal from each combination of a group of input signals. (2) (data management) To convert data by reversing the effect of previous encoding.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
5. Intra Linear Interpolation prediction: using a reference sample derived from linear interpolation for prediction. Described in association with Figs. 8, 13 and 14 in Heo et al (US Patent 2018/0234679, Heo). In summary, the prediction sample P is derived by linear interpolation of reference samples A and B depending on an intra-prediction mode of a current block. The second reference sample P’ is derived by linear interpolation of reference samples A’ and B’. See Fig. 14 of Heo below:
PNG
media_image1.png
365
494
media_image1.png
Greyscale
-Fig. 14 of Heo showing the prediction value of C is derived by reference sample P which is obtained by linear interpolation of A and B and reference sample P’ which is derived by linearly interpolation of A’ and B’.
C. Claims Not Invoking 35 U.S.C. § 112 (f)
The Examiner finds that claims 1-5, 7-9 and 11-12 do not invoke 35 U.S.C. § 112 (f) . For support of this position the Examiner notes the following;
Claims 1-5, 7-9 and 11 are method claims. Claim 12 is a digital storage medium claim for storing a bitstream generated by a method. Claims 1-5, 7-9 and 11-12 recite neither "step for" nor "means for," nor a generic placeholder for "step for" or "means for." Therefore claims1-5, 7-9 and 11-12 fail Prong (A) as set forth in MPEP § 2181 I. Because claims 1-5, 7-9 and 11-12 fail Prong (A) as set forth in MPEP § 2181 I., the Examiner concludes that claims 1-5, 7-9 and 11-12 do not invoke 35 U.S.C. § 112 (f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008) (precedential).
VII. SPECIFICATION
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the followings is required:
Claims 1 and 11-12 recite “specific sample line,” However there is no antecedent basis for each of the above terms in the specification of the ‘831 Patent.
VIII. CLAIM OBJECTIONS
A. Explanation of Changes
Claims 1-2 and 11-12 are objected to because they do not comply with 37 C.F.R. § 1.173(c). See MPEP § 1453(V)(D). Claims 1-2 have been amended and claims 11-12 are new. Applicant has not pointed out specifically the support for each of the amendments and new limitation.
B. Minor Informality
Claim 1 recites “which is adjacent to the top boundary and the left boundary the current block;”
Correction is required.
C. Notice
Although the presentation of the amended claim need not contain any indication of what is changed from the previous version of the claim, applicant must point out what is changed in the "Remarks" portion of the amendment along with the support for the change. See MPEP §1453(V) (D).
The Examiner note that the indication can be via a separate appendix to the remarks showing the changes with respect to the last submission. Although the official claim amendments must only show markings with respect to the original patent, an appendix to the remarks showing changes with respect to the last submission would satisfy the requirement of the Remarks pointing out what has changed.
Applicant is notified that any amendment or subsequent amendment to the specification and/or claims must comply with 37 C.F.R. §1.173, which sets forth the manner of making amendments in reissue applications. For example, matter deleted should be enclosed with brackets and added subject matter should be identified by underlining. Furthermore, all amendments to the original patented claims must be made with respect to the patent. For the new claims, amendment must preserve the claim ordering as they were first presented during the prosecution. Finally, claims must have proper status identifiers.
In order to facilitate compact prosecution, the Examiner has, this one time only, entered the 2024 Claim Amendment. Nevertheless, should Applicant(s) submit any subsequent claim amendment that does include an explanation of support, the Examiner may indicate that the claim amendment(s) are improper and therefore not completely responsive.
IX. DRAWINGS
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. The features of claim 11, e.g., “determining whether an intra prediction is performed based on neighboring reference samples,” etc., and new limitations in other claims including claims 11-12 must be shown or the feature(s) canceled from the claim(s). Further amended limitation/feature of claims 1-2 should also be shown in a drawing. No new matter should be entered.
X. CLAIM REJECTIONS - 35 USC § 251
A. Improper Recapture
Claims 1-5, 7-9 and 11-12 are rejected under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenland Systems, Inc. et al v. Micro LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shah ram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Below are the pertinent Examiner’s findings of fact in the prosecution history of the 027 application relevant to this rejection:
May 18, 2020 Claims 1-10 were originally filed. The originally filed independent claim 1 and claim 10 are
1. A method of decoding a bitstream for a video signal by a decoding apparatus, the method comprising:
obtaining a first flag information from the bitstream, the first flag information indicating whether an intra linear interpolation prediction is performed for a current block;
when the intra linear interpolation prediction is performed for the current block according to the first flag information, skipping parsing of a second flag information indicating whether an intra prediction mode of the current block is derived from a neighboring block of the current block and obtaining a first index information from the bitstream;
constructing a candidate mode list based on an intra prediction mode of the neighboring block of the current block;
determining a candidate mode indicated by the first index information in the candidate mode list as the intra prediction mode of the current block; and
generating a predictor for the current block by performing an intra LIP based on the determined intra prediction mode.
10. An apparatus for decoding a bitstream for a video signal, the apparatus comprising:
a memory; and
a processor connected to the memory upon operation,
wherein the processor is configured to:
obtain a first flag information from the bitstream, the first flag information indicating whether an intra linear interpolation prediction is performed for a current block;
when the intra linear interpolation prediction is performed for the current block according to the first flag information, skip parsing of a second flag information indicating whether an intra prediction mode of the current block is derived from a neighboring block of the current block and obtain a first index information from the bitstream;
construct a candidate mode list based on an intra prediction mode of the neighboring block of the current block;
determine a candidate mode indicated by the first index information in the candidate mode list as the intra prediction mode of the current block; and
generate a predictor for the current block by performing an intra LIP based on the determined intra prediction mode.
Dec.14, 2020 The originally filed claims 1-10 were rejected under 35 USC 103 over Heo et al (US 20180234679) in view of Koo et al (US 20180324418).
Feb. 24, 2021 Applicant filed a response to the non-final office action and amended claims 1 and 10 as follows:
1. (Currently Amended) A method of decoding a bitstream for a video signal by a decoding apparatus, the method comprising:
obtaining a first flag information from the bitstream, the first flag information indicating whether an intra linear interpolation prediction is performed for a current block;
information from the bitstream based on the first flag information indicating that the intra linear interpolation prediction is performed for the current block, or
parsing the second flag information based on the first flag information indicating that the intra linear interpolation prediction is not performed for the current block;
constructing a candidate mode list based on an intra prediction mode of the neighboring block of the current block;
determining a candidate mode indicated by the first index information in the candidate mode list as the intra prediction mode of the current block; and
generating a predictor for the current block by performing an intra LIP based on the determined intra prediction mode.
10. (Currently Amended) An apparatus for decoding a bitstream for a video signal, the apparatus comprising:
a memory; and
a processor connected to the memory
wherein the processor is configured to:
obtain a first flag information from the bitstream, the first flag information indicating whether an intra linear interpolation prediction is performed for a current block;
based on the first flag information indicating that the intra linear interpolation prediction is performed for the current block, or
parsing the second flag information based on the first flag information indicating that the intra linear interpolation prediction is not performed for the current block;
construct a candidate mode list based on an intra prediction mode of the neighboring block of the current block;
determine a candidate mode indicated by the first index information in the candidate mode list as the intra prediction mode of the current block; and
generate a predictor for the current block by performing an intra LIP based on the determined intra prediction mode.
Applicant also argued that neither Heo nor Koo disclosed the amended feature in claims 1 and 10.
Mar. 19, 2021 The Office mailed a notice of allowance indicating the reason of allowance being the amended features in claims 1 and 10.
A reissue will not be granted to “recapture” claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” See MPEP §1412.02(I).
As to Step (1) above, claims 1 and 10 of the 027 application were amended and argued specifically by the Applicant and the Examiner allowed the claims based on the amendment and the arguments. The new independent claims 1 and 11-12 of the instant reissue application broadened the above amended limitation.
1. An image decoding method performed by a decoding apparatus, the method comprising:
obtaining first information from a bitstream, the first information indicating whether an intra prediction is performed based on neighboring reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block;
skipping parsing of second information indicating whether an intra prediction mode of the current block is derived from a neighboring block of the current block and obtaining index information from the bitstream based on the first information indicating that the intra prediction is performed based on the neighboring reference samples in the specific sample line which is not adjacent to the top boundary and the left boundary of the current block, or
parsing the second information based on the first information indicating that the intra prediction is performed based on the neighboring reference samples only in the specific sample line which is adjacent to the top boundary and the left boundary the current block;
constructing a candidate mode list based on an intra prediction mode of the neighboring block of the current block;
determining a candidate mode indicated by the index information in the candidate mode list as the intra prediction mode of the current block; and generating a predicted sample for the current block by performing the intra prediction based on the determined intra prediction mode and the first information.
11. (New) An image encoding method performed by an encoding apparatus, the method comprising:
determining whether an intra prediction is performed based on neighboring reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block;
generating first information indicating whether the intra prediction is performed based on the neighboring reference samples in the specific sample line which is not adjacent to the top boundary and the left boundary of the current block;
constructing a candidate mode list based on an intra prediction mode of a neighboring block of the current block;
determining an intra prediction mode of the current block based on the candidate mode list;
generating second information indicating whether the intra prediction mode of the current block is derived from the neighboring block of the current block and index information for indicating a candidate mode in the candidate mode list as the intra prediction mode of the current block
generating a predicted sample for the current block by performing the intra prediction based on the determined intra prediction mode and the first information; and
encoding the first information, the second information, and the index information to generate a bitstream, wherein the method further comprises:
signaling the index information and skipping signaling of the second information based on the first information indicating that the intra prediction is performed based on the neighboring reference samples in the specific sample line which is not adjacent to the top boundary and the left boundary of the current block, or signaling the second information based on the first information indicating that the intra prediction is performed based on the neighboring reference samples only in the specific sample line which is adjacent to the top boundary and the left boundary of the current block.
Claim 12 of the instant reissue application recites similar limitation as claim 11 above.
For example, Claims 1 and claims 11-12 of the instant reissue application eliminate the limitations related to “intra linear interpolation prediction” such as “obtain a first index information from the bitstream based on the first flag information indicating that the intra linear interpolation prediction is performed for the current block” present in the original claim 1 and claim 10 of the 027 Application or the ‘831 Patent and corresponds to the broader aspect of claims 1 and 11-12 of the instant reissue application.
As to Step (2) above, as indicated by the facts summarized above dated Feb. 24, 2021, the eliminated features cited above of claims 1 and 10 of the 027 application or claims 1 and 10 of the ‘831 Patent were surrendered in the original prosecution and related to the broader aspects of the reissue claims 1 and 11-12.
As to Step (3) above and based on the comparison of claims 1 and 11-12 of the instant reissue application and claims 1 and 10 of the ‘831 patent, the Examiner determines that the reissue claims are not materially narrowed in other respects and the scope of the reissue claims have indeed been enlarged, and hence the recapture rule applies. See MPEP §1412.02 I. See also MPEP §1412.02 II.B.1 which states:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.
Therefore claims 1 and 11-12 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Dependent claims 2-5 and 7-9 of claim 1 fail to cure the deficiencies in claim 1 and are rejected as well.
B. Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. Forum US Inc. v. Flow Valve LLC (decided: June 17, 2019).
Claims 1-5, 7-9 and 11-12 are rejected under 35 U.S.C. §251 because they do not comply with the original patent requirement. In summary the invention as now claimed was not unequivocally disclosed in the specification of the ‘831 Patent as a separate invention or not for the same invention as that disclosed as being the invention in the original patent. In more detail the Examiner notes the following:
As provided in §251, the Director shall issue reissue the patent for the invention disclosed in the “original patent.” To meet the original patent requirement, the specification of the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” See Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014). “[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Id. Specifically, the invention now being claimed in reissue must be expressly disclosed in the specification of the original patent. Id. at 1363.2
Based on these decisions, Examiners find this analysis involves a simple two-step process: (1) determine what is the new invention now being claimed, i.e., how the claims have been broadened, and (2) is that new invention or new scope of invention unequivocally disclosed in the specification as a separate invention.
As to (1), the Examiners finds that the original patent claims 1-5 and 7-9 have been broadened and also been broaden via new claims 11-12. For example, independent claims 1 and 11-12 of this instant reissue application no longer require the claim elements related to “intra linear interpolation prediction.”
The invention being claimed now does not require limitations related to “intra linear interpolation prediction” to be performed which includes “obtaining a first flag from a bitstream, the first flag indicating whether an intra linear interpolation prediction is performed…, ” etc..
As to (2), after the Examiners reviewed the ‘831 Patent, the Examiners could not find an equivocal disclosure in the ‘831 Patent that does not have an embodiment that does not involve either checking or performing intra linear interpolation prediction. Further, without the features related to intra linear interpolation prediction, the Examiners do not find the encoding and decoding methods would operate as intended. Rather the encoding and decoding as disclosed in the ‘831 Patent are dependent on the intra linear interpolation prediction. In other words, the Examiner could not find an embodiment that does not require checking or performing intra linear interpolation prediction.
Because claims 1-5, 7-9 and 11-12 are broader in scope than the patented claims of the ‘831 Patent, and because the new scope of claims 1-5, 7-9 and 11-12 is directed to an invention not unequivocally disclosed in the ‘831 Patent as a separate invention, claims 1-5, 7-9 and 11-12 are rejected under 35 U.S.C. §251 as not complying with the original patent requirement.
Examiners further find this situation is analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled in FIGS. 4 and 5 at issue):
PNG
media_image3.png
267
600
media_image3.png
Greyscale
Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to simply remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id. Similarly, the 800 Patent here does not clearly and unequivocally disclose a chuck assembly with an electrostatic puck without the electrode and heating element. Thus, to broaden the claims to permit Applicant to claim such an invention runs afoul of the original patent requirement in the same manner as at issue in Forum.
XII. CLAIM REJECTIONS - 35 USC § 112 (a) (§ 112 (a))
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7-9 and 11-12 are rejected under 35 U.S.C. 112 (a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to § 112 (a), the inventor(s), at the time the application was filed, had possession of the claimed invention.
A. New Matter
Claim 1 recites: among other things:
obtaining first information from a bitstream, the first information indicating whether an intra prediction is performed based on neighboring reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block;
skipping parsing of second information indicating whether an intra prediction mode of the current block is derived from a neighboring block of the current block and obtaining index information from the bitstream based on the first information indicating that the intra prediction is performed based on the neighboring reference samples in the specific sample line which is not adjacent to the top boundary and the left boundary of the current block, …
Above limitations are recited based on a “reference samples in specific sample line which is not adjacent to a top boundary and a left boundary of a current block.” However, the specification of the ‘831 Patent fails to provide sufficient support for a “specific reference sample line which is not adjacent to a top boundary and a left boundary of a current block” and therefore these limitations are new matter.
Dependent claims of claim 1, i.e., claims 2-5 and 7-9 also rejected because they depend on claim 1 and fails to cure the deficiency of claim 1.
Claims 11-12 also recite “reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block.” Claims 11-12 are rejected based on the same reason.
Claims 11 and 12 recite, among other things: “skipping signaling of the second information based on the first information indicating that the intra prediction is performed based on the neighboring reference samples …” However, the Examiner could not locate sufficient support for this limitation among the sections provided as support by the Applicant.
XIII. CLAIM REJECTIONS - 35 USC § 112 2nd paragraph (§ 112 ¶ 2)
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 7-9 and 11-12 are rejected under 35 U.S.C. § 112 ¶ 2, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A. Indefinite limitation
1) specific sample line
Claims 1 and 11-12 recites, among other things, “in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block.” However the specification fails to provide sufficient support for such term and the meaning of the term cannot be ascertained. Because the scope of the limitation cannot be ascertained, the limitation is indefinite.
Dependent claims of claim 1, i.e., claims 2-5 and 7-9, are also rejected because they fail to cure the deficiencies of the claims they depend on.
XIV. 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 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.
A. US Patent 11,317,086
Claims 1 and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,317,086 (“086 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because:
i. Claims 1 and 11-12 and claim 15 of the 086 Patent recite common subject matter respectively;
ii. Whereby claims 1 and 11-12, which recites the open ended transitional phrase “comprising”, do not preclude the additional elements recited by claim 15 of the 086 patent, and
iii. claim 1 is decoding method claims while claim 15 of the 086 Patent is an encoding method claim. It is well known in the art that prediction method performed by an video encoder is also performed by a video decoder to decode the bitstream generated by the encoding method and the decoding process is reverse of the encoding process. Claim 12 is a bitstream claim generated by an encoding method and bitstream generated by an encoding method is well-known in the art. Therefore claims 1 and 11-12 are obvious over claim 15 of the 086 Patent to one of ordinary skills in the art, at the time the invention was effectively filed.
B. US Patent Application 11,632,544
Claims 1 and 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent Application 11,632,544 (“544 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
i. Claims 1 and 11-12 and claim 4 of the 544 Patent recite common subject matter respectively;
ii. Whereby claims 1 and 11-12, which recites the open ended transitional phrase “comprising”, do not preclude the additional elements recited by claim 4 of the 544 patent, and
iii. Although claims 1 and 11-12 use different language from that of claim 4 of the 544 Patent, the claims are not patentably distinct from that of claim 4 of the 544 Patent. For example, “obtaining first information from a bitstream, the first information indicating whether an intra prediction is performed based on neighboring reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block” of claim 1 is met by “acquiring specific information specifying whether an intra prediction is performed based on neighboring reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block” of claim 4 of the 544 Patent.
Claim 12 recites the bitstream generated by the method of claim 11. Generating bitstream using computer-implemented method is well known in the art. Therefore claims 1 and 11-12 are obvious over claim 4 of the 544 Patent to one of ordinary skills in the art, at the time the invention was effectively filed.
XV. CLAIM REJECTIONS - 35 USC § 103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
A. Claims 1-5, 7-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Heo et al (US Patent Pub No. 20180234679, “Heo”).
Regarding claim 1, Heo teaches an image decoding method performed by a decoding apparatus (Fig. 2), the method comprising:
obtaining first information from a bitstream, the first information indicating whether an intra prediction is performed based on neighboring reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block ([0328]-[0329], prev_intra_luma_pred_flag reads on the first information, see also Table 3, Figs. 2, 5, 9A-9B and Figs. 10-16 and associated descriptions, See also Figs. 7A-7C and associated descriptions. bottom right and bottom left samples may be used as reference samples for i);
skipping parsing of second information indicating whether an intra prediction mode of the current block is derived from a neighboring block of the current block ([0328]-[0337], only when prev_intra_luma_pred_flag is not zero that the parsing is performed, see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions. Heo does not expressly disclose this limitation. Heo discloses only when prev_intra_luma_pred_flag is not zero, parsing is performed. In other words, when prev_intra_luma_pred_flag is zero, parsing is not performed. Therefore this limitation is at least obvious from what is disclosed by Heo.) and
obtaining index information from the bitstream based on the first information indicating that the intra prediction is performed based on the neighboring reference samples in the specific sample line which is not adjacent to the top boundary and the left boundary of the current block ([0328]-[0329], [0333]-[0338], see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions.), or
parsing the second information based on the first information indicating that the intra prediction is performed based on the neighboring reference samples only in the specific sample line which is adjacent to the top boundary and the left boundary the current block ([0328]-[0329], [0333]-[0338], “if the intra-prediction mode of the current prediction unit is included in the most probable mode (MPM), the decoder parses MPM index mpm_idx.” see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions);
constructing a candidate mode list based on an intra prediction mode of the neighboring block of the current block ([0336]-[0339], see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions, most probable mode list reads on the candidate mode list);
determining a candidate mode indicated by the index information in the candidate mode list as the intra prediction mode of the current block ( [0337]-[0343] see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions); and
generating a predicted sample for the current block by performing the intra prediction based on the determined intra prediction mode and the first information ([0342]-[0364], predicted sample is generated based on different conditions. see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions).
Regarding claim 2, Heo teach the method of claim 1, wherein the first information includes LIP (Linear Interpolation Prediction) flag information, wherein based on the LIP flag information indicating that an intra linear interpolation prediction is performed for the current block (Table 3, under descriptor “ae(v)”, lip_flag [x0][y0]), the step of performing the intra prediction comprises:
generating a bottom right reference sample for the current block (Figs. 9A-9B-15 and associated descriptions);
generating bottom reference samples for the current block, wherein the bottom reference samples include a reference sample generated by performing a first linear interpolation based on a bottom left reference sample adjacent to a bottom left of the current block and the bottom right reference sample, the bottom left reference sample, and reference samples generated by copying left reference samples adjacent to a left of the current block onto same vertical coordinates as the bottom reference samples respectively (Fig. 12 and associated descriptions, see also Figs. 9A-9B-15 and associated descriptions, Figs. 7A-7C and associated descriptions, bottom right and bottom left samples may be used); and
generating a prediction sample by performing a second linear interpolation based on the determined intra prediction mode, the bottom reference samples, and top reference samples adjacent to a top of the current block (Figs. 12, 13 and 14, especially Fig. 14, two linear interpolation may be performed.)
Regarding claim 3, Heo teaches the method of claim 2, wherein the bottom right reference sample is generated based on a top right reference sample adjacent to a top right of the current block and the bottom left reference sample (Figs. 9A-9B-15 and associated descriptions. See also Figs. 7A-7C and associated descriptions).
Regarding claim 4, Heo teach the method of claim 2, wherein the bottom right reference sample is generated based on a bottom right corner reference sample within a top right neighboring block adjacent to a top right of the current block and having a same size as the current block and a bottom right corner reference sample within a bottom left neighboring block adjacent to a bottom left of the current block and having the same size as the current block ([0194], [0196], Figs. 9A-9B-15 and associated descriptions).
Regarding claim 5, Heo teach the method of claim 2, wherein a weight for the second linear interpolation is determined based on a difference of a vertical coordinate between a sample of the current block and the top reference samples and a difference of a vertical coordinate between the sample of the current block and the bottom reference samples ([0210]-[0211], Fig. 11, “the encoder/decoder may generate the prediction sample of the current sample 1103 by performing linear interpolation by applying a weight value according to a vertical distance ratio to the value of the first prediction sample 1101 and the value of the second prediction sample 1102.” ).
Regarding claim 7, Heo teach the method of claim 1, wherein the candidate mode list is constructed to include 3 candidate modes including at least one of an intra prediction mode of a left neighboring block adjacent to the current block or an intra prediction mode of a top neighboring block adjacent to the current block (Table 1 and Fig. 6).
Regarding claim 8, Heo teaches the method of claim 1, wherein the candidate mode list is constructed to include 6 candidate modes including at least one of an intra prediction mode of a left neighboring block adjacent to the current block, an intra prediction mode of a bottom left neighboring block adjacent to the current block, an intra prediction mode of a top neighboring block adjacent to the current block, an intra prediction mode of a top left neighboring block adjacent to the current block, or an intra prediction mode of a top right neighboring block adjacent to the current block (Table 1 and Fig. 6, Table 1 shows a total of 35 modes).
Regarding claim 9, Heo teaches the method of claim 1, wherein the candidate mode list includes an intra angular prediction mode other than an intra planar prediction mode and an intra DC prediction mode (Table 1 and Fig. 6).
Regarding claim 11, Heo teaches an image encoding method performed by an encoding apparatus, the method comprising:
determining whether an intra prediction is performed based on neighboring reference samples in a specific sample line which is not adjacent to a top boundary and a left boundary of a current block ([0328]-[0329], see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions);
generating first information indicating whether the intra prediction is performed based on the neighboring reference samples in the specific sample line which is not adjacent to the top boundary and the left boundary of the current block (Figs. 7A-7C and associated descriptions, top right, bottom right and bottom left samples may be used. see also Table 3, Figs. 2, 5, 9A-9B-16 and associated descriptions);
constructing a candidate mode list based on an intra prediction mode of a neighboring block of the current block (Table 3, most probable most list corresponds to the candidate mode list, mpm_idx is an index for candidate mode list, [0336]. See also Figs. 2, 5, 9A-9B-16 and associated descriptions);
determining an intra prediction mode of the current block based on the candidate mode list ([00336]-[0339], See also Figs. 2, 5, 9A-9B-16 and associated descriptions);
generating second information indicating whether the intra prediction mode of the current block is derived from the neighboring block of the current block and index information for indicating a candidate mode in the candidate mode list as the intra prediction mode of the current block (Table 3, [0335]-[0339]. See also Figs. 2, 5, 9A-9B-16 and associated descriptions)
generating a predicted sample for the current block by performing the intra prediction based on the determined intra prediction mode and the first information (Table 3, [0344]-[064], the prediction_unit function generate a predicted sample for the current block); and
encoding the first information, the second information, and the index information to generate a bitstream (Table 3, See also Figs. 2, 5, 9A-9B-16 and associated descriptions), wherein the method further comprises:
signaling the index information and skipping signaling of the second information based on the first information indicating that the intra prediction is performed based on the neighboring reference samples in the specific sample line which is not adjacent to the top boundary and the left boundary of the current block (Table 3, See also Figs. 2, 5, 9A-9B-16 and associated descriptions), or
signaling the second information based on the first information indicating that the intra prediction is performed based on the neighboring reference samples only in the specific sample line which is adjacent to the top boundary and the left boundary of the current block (Table 3, See also Figs. 2, 5, 9A-9B-16 and associated descriptions).
Table 3 of Heo is describing decoding process while this claim is directed to encoding process. However, it is well known in the art that decoding is the reverse of encoding or vice versa. Therefore the encoding process as recited in claim 11 is obvious in view of the decoding process disclosed by Heo.
Claim 12 is the digital storage medium claim storing a bitstream generated by the method of claim 11. Heo teaches storing bitstream obtained from an encoding method ([0067], [0002]-[0003]) and storing encoded bitstream is well known in the art. Therefore claim 12 is obvious based on the same reason as claim 11.
B. Claims 1-5, 7-9 and 11-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Heo et al (US Patent Pub No. 20180234679) in view of Moon et al (US Patent Pub. 20190149821).
Regarding claims 1-5, 7-9 and 11-12, it is Examiner’s primary position that Heo disclose “constructing a candidate mode list based on an intra prediction mode of a neighboring block of the current block” and “determining a candidate mode ….” To the extent that Heo does not disclose these limitations, in the same field of video encoding/decoding Moon discloses constructing a candidate mode list comprising L, A, the intra-prediction modes (i.e., L-1 and L+1), etc. and “determination of an MPM candidate of a current block” ([0304]-[0305], once an MPM candidate is determined, the candidate mode is also determined.).
[0304] For example, FIG. 26 is a diagram illustrating determination of an MPM candidate of a current block. In FIG. 26, L may indicate an intra-prediction mode with a highest frequency of use among intra-prediction modes of left neighboring blocks adjacent to a left side of the current block, A may indicate an intra-prediction mode with a highest frequency of use among intra-prediction modes of top neighboring blocks adjacent to a top side of the current block. Alternatively, L may indicate an intra-prediction mode of a left neighboring block at a specific position, and A may indicate an intra-prediction mode of a top neighboring block at a specific position.
[0305] In FIG. 26, it is shown that the MPM candidates of the current block are three, and the three MPM candidates may include at least one of L, A, the intra-prediction modes (i.e., L−1 and L+1) having similar direction to L, non-directional mode (Planar, DC) and a predetermined directional mode (vertical mode). However, the present invention is not limited to the illustrated example, and MPM candidates of the current block may be generated by a method different from that shown. For example, MPM candidates of the current block may include more than three.
-[0304]-[0305] of Moon, emphasis added.
Moon further discloses encoding intra prediction mode information ([0299]-[0303], Fig. 25).
As can be seen above, Moon discloses “constructing a candidate mode list based on an intra prediction mode of a neighboring block of the current block” and “encoding the first information, the second information, and the index information to generate a bitstream” by signaling necessary information for decoder to decode the bitstream.
TSM
It is desirable to improve compression efficiency of an image ([0016]-[0018] of Moon). Therefore it would have been obvious to one of ordinary skills in the art, at the time the invention was effectively filed, to use the method of Moon in the method of Heo to improve compression efficiency of Heo.
KSR
The combination of Heo with Moon is also supported by KSR rationale (A) Combining Prior Art Elements According to Known Methods To Yield Predictable Results because each of the claim elements is disclosed by either Heo or Moon, an ordinary skill could have combined Heo with Moon and each element after combination still performs the same function as it does separately and the result of combination of constructing a candidate mode list and encoding the mode list are predictable.
XVI. 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 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)(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.
A. Claim 12 is alternatively rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Heo et al (US Patent Pub No. 20180234679, “Heo”).
Regarding Claim 12, Heo teaches a non-transitory computer readable digital storage medium storing a bitstream generated by a method ([0067], [0002]-[0003]). This is a product-by-process claim and because Heo anticipates the bitstream stored in a computer-readable median, Heo anticipates claim 12. See MPEP 2113, especially MPEP2113.III enclosed below:
MPEP 2113.III states:
III. A REJECTION BASED ALTERNATIVELY ON 35 U.S.C. 102 OR 103 FOR PRODUCT-BY-PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS
“[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Office personnel should note that reliance on the alternative grounds of 35 U.S.C. 102 or 35 U.S.C. 103 does not eliminate the need to explain both the anticipation and obviousness aspects of the rejections.
XVII. CONCLUSION
A. Reissue Application Reminders
Disclosure of other proceedings. Applicants are reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
B. Suggested Examples: Preventing Both New Matter Rejections & Objections to the Specification in the Future
Applicants are respectfully reminded that any suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. To be especially clear, any suggestion or example provided in this Office Action (or in any future office action) does not constitute a formal requirement mandated by the Examiner.
Should Applicants decide to amend the claims, Applicant is also reminded that—like always—no new matter is allowed. The Examiner therefore leaves it up to Applicants to choose the precise claim language of the amendment in order to ensure that the amended language complies with 35 U.S.C. § 112 1st paragraph.
Independent of the requirements under 35 U.S.C. § 112 1st paragraph, Applicants are also respectfully reminded that when amending a particular claim, all claim terms must have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Should Applicants amend the claims such that the claim language no longer has clear support or antecedent basis in the specification, an objection to the specification may result. Therefore, in these situations where the amended claim language does not have clear support or antecedent basis in the specification and to prevent a subsequent ‘Objection to the Specification’ in the next office action, Applicants are encouraged to either (1) re-evaluate the amendment and change the claim language so the claims do have clear support or antecedent basis or, (2) amend the specification to ensure that the claim language does have clear support or antecedent basis. See again MPEP § 608.01(o) (¶3). Should Applicants choose to amend the specification, Applicants are reminded that—like always—no new matter in the specification is allowed. See 35 U.S.C. § 132(a). If Applicants have any questions on this matter, Applicants are encouraged to contact the Examiner via the telephone number listed below.
C. Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to YUZHEN GE whose telephone number is (571)272-7636. The Examiner can normally be reached on Monday-Thursday 8:00-6:00.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of reissue applications may be obtained from the USPTO’s “Patent Center.” Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/Yuzhen Ge/
Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992 /ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While most interpretations are cited because these terms are found in the claims, the Examiner may have provided additional interpretations to help interpret words, phrases, or concepts found in the interpretations themselves, the 523 Patent, or in the prior art.
2 See also Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 at 1351 (Fed. Cir. 1029, precedential) (For broadening reissue claims, “the specification of the original patent must do more than merely suggest or indicate the invention recited in the reissue claims,” rather “it must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.”).
Prosecution Insights