DETAILED ACTION
This office action is in response to an application filed 1/7/2025, wherein claims 1-5 are pending and being examined. The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 1/7/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
In regard to claims 3, 4, and 5, each claim recites “A non-transitory computer-readable medium for storing a bitstream, the bitstream… [steps of encoding/decoding method]. Significantly, the claimed non-transitory computer readable medium is NOT implementing any encoding/decoding method; no instructions/steps are being executed. Instead, the claimed storage medium merely stores the data output from and/or generated by an encoding/decoding method. In other words, these claims are directed to a mere machine-readable medium storing data content (a bitstream generated by an encoding/decoding method).
Applicant seeks to patent the storage of a bitstream in the abstract. In other words, the claims seek to patent the content of the information (bitstream with encoded/decoded video content). Moreover, this stored bitstream does not impose any definitive physical organization on the data as there is no functional relationship between the bitstream and the storage medium. In conclusion, claims 3-5 are directed to mere data content (bitstream generated by the recited encoding/decoding method) stored as a bitstream on a decoder-readable storage medium. Under MPEP 2111.05(III), such claims are merely machine-readable media. Furthermore, the Examiner found and continues to find that there is no disclosed or claimed functional relationship between the stored data and medium. Instead, the medium is merely a support or carrier for the data being stored. Therefore, the data stored and the way such data is generated should not be given patentable weight. See MPEP 2111.05 applying In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). As such, claims 3-5 are subject to a prior art rejection based on any non-transitory computer readable medium known before the earliest effective filing date of the present application. Therefore, claims 3-5 have been rejected based on prior art that discloses a method of generating an encoded/decoded data stream (bitstream) as noted below.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,106,919. Although the claims at issue are not identical, they are not patentably distinct from each other.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 9,106,919. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-5, these claims are rejected for the same reason as claim 1. Specifically, although drawn to different statutory categories, these independent claims contain subject matter analogous to that recited and claim 1. Every claim limitation within these claims is rendered obvious and/or anticipated by a corresponding limitation within claim 1. Therefore the claims are rejected for the same rational noted in the rejection of claim 1.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,794,578. Although the claims at issue are not identical, they are not patentably distinct from each other.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 9,794,578. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-5, these claims are rejected for the same reason as claim 1. Specifically, although drawn to different statutory categories, these independent claims contain subject matter analogous to that recited and claim 1. Every claim limitation within these claims is rendered obvious and/or anticipated by a corresponding limitation within claim 1. Therefore the claims are rejected for the same rational noted in the rejection of claim 1.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,200,696. Although the claims at issue are not identical, they are not patentably distinct from each other.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 10,200,696. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-5, these claims are rejected for the same reason as claim 1. Specifically, although drawn to different statutory categories, these independent claims contain subject matter analogous to that recited and claim 1. Every claim limitation within these claims is rendered obvious and/or anticipated by a corresponding limitation within claim 1. Therefore the claims are rejected for the same rational noted in the rejection of claim 1.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,109,043. Although the claims at issue are not identical, they are not patentably distinct from each other.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 11,109,043. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-5, these claims are rejected for the same reason as claim 1. Specifically, although drawn to different statutory categories, these independent claims contain subject matter analogous to that recited and claim 1. Every claim limitation within these claims is rendered obvious and/or anticipated by a corresponding limitation within claim 1. Therefore the claims are rejected for the same rational noted in the rejection of claim 1.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,457,225. Although the claims at issue are not identical, they are not patentably distinct from each other.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 11,457,225. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-5, these claims are rejected for the same reason as claim 1. Specifically, although drawn to different statutory categories, these independent claims contain subject matter analogous to that recited and claim 1. Every claim limitation within these claims is rendered obvious and/or anticipated by a corresponding limitation within claim 1. Therefore the claims are rejected for the same rational noted in the rejection of claim 1.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,758,158. Although the claims at issue are not identical, they are not patentably distinct from each other.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 11,758,158. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-5, these claims are rejected for the same reason as claim 1. Specifically, although drawn to different statutory categories, these independent claims contain subject matter analogous to that recited and claim 1. Every claim limitation within these claims is rendered obvious and/or anticipated by a corresponding limitation within claim 1. Therefore the claims are rejected for the same rational noted in the rejection of claim 1.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,231,656. Although the claims at issue are not identical, they are not patentably distinct from each other.
In regard to claim 1, every claim limitation within claim 1 of the instant application is rendered obvious and/or anticipated by a corresponding limitation within claim 1 of U.S. Patent No. 12,231,656. Therefore the two claims are not patentably distinct and claim 1 is rejected on the grounds of nonstatutory double patenting.
In regard to claims 2-5, these claims are rejected for the same reason as claim 1. Specifically, although drawn to different statutory categories, these independent claims contain subject matter analogous to that recited and claim 1. Every claim limitation within these claims is rendered obvious and/or anticipated by a corresponding limitation within claim 1. Therefore the claims are rejected for the same rational noted in the rejection of claim 1.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 3-5 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Suzuki (US 2005/0152452).
In regard to claim 3, Suzuki discloses a non-transitory computer-readable medium storing a bitstream [¶0089; coded bitstream data are stored], the bitstream being generated by performing an encoding method [¶0099; storage medium (recording medium) on which the coded bitstream created by the software encoder.. is recorded] comprising:
determining a context for a current block in the image, from among a plurality of contexts; and
performing arithmetic coding on the control parameter for the current block, using the determined context to generate a bitstream corresponding to the current block,
wherein the determining further includes:
determining a signal type under which the control parameter for the current block is classified;
determining the context by using both of coded control parameters for a left block and an upper block, when the signal type is a first type, the left block being a neighboring block to the left of the current block, and the upper block being a neighboring block on top of the current block; and
determining the context by using a predetermined fixed value, without using any coded control parameters for the left block and the upper block, when the signal type is a second type different from the first type,
wherein a split flag is classified under the first type, the split flag indicating whether or not the current block is partitioned into a plurality of blocks, and
wherein a reference picture index is classified under the second type, the reference picture index indicating a reference picture used to predict the current block.
Note that claim 3 is directed to a non-transitory computer-readable medium storing a bitstream generated by an encoding method. See the claim interpretation above.
In regard to claim 4, Suzuki discloses a non-transitory computer-readable medium storing a bitstream [¶0089; coded bitstream data are stored. ¶0099; storage medium (recording medium) on which the coded bitstream created by the software encoder.. is recorded], the bitstream comprising:
an encoded first block corresponding to a first block of an image;
an encoded left block corresponding to a left block of the image, the left block being a neighboring block to the left of the first block;
an encoded upper block corresponding to an upper block of the image, the upper block being a neighboring block on top of the first block; and
a control parameter for the first block,
the bitstream being generated by performing an encoding method comprising:
determining a context for the first block in the image, from among a plurality of contexts; and performing arithmetic coding on the control parameter for the first block, using the determined context to generate the bitstream,
wherein the determining further includes:
determining a signal type under which the control parameter for the first block is classified;
determining the context by using both of coded control parameters for the left block and the upper block, when the signal type is a first type; and
determining the context by using a predetermined fixed value, without using any coded control parameters for the left block and the upper block, when the signal type is a second type different from the first type,
wherein a split flag is classified under the first type, the split flag indicating whether or not the first block is partitioned into a plurality of blocks, and
wherein a reference picture index is classified under the second type, the reference picture index indicating a reference picture used to predict the first block.
Note that claim 4 is directed to a non-transitory computer-readable medium storing a bitstream generated by encoding. See the claim interpretation above.
In regard to claim 5, Suzuki discloses a non-transitory computer-readable medium storing a bitstream [¶0089; coded bitstream data are stored. ¶0099; storage medium (recording medium) on which the coded bitstream created by the software encoder.. is recorded], the bitstream comprising:
an encoded first block corresponding to a first block of an image;
an encoded left block corresponding to a left block of the image, the left block being a neighboring block to the left of the first block;
an encoded upper block corresponding to an upper block of the image, the upper block being a neighboring block on top of the first block; and
a control parameter for the first block, the control parameter being encoded by arithmetic coding using a determined context from among a plurality of contexts,
wherein the context is determined by using both of coded control parameters for the left block and the upper block, when the control parameter is a split flag,
the context is determined by using a predetermined fixed value, when the control parameter is a reference picture index,
the split flag indicates whether or not the first block is partitioned into a plurality of blocks, and
the reference picture index indicates a reference picture used to predict the first block.
Note that claim 5 is directed to a non-transitory computer-readable medium storing a bitstream generated by encoding. See the claim interpretation above.
Allowable Subject Matter
Claims 1 and 2 would be allowable if a terminal disclaimer is filed to overcome the double patenting rejections 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 December 23, 2025