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 . 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.
Response to Preliminary Amendment
The Examiner acknowledges the preliminary amendments made in the claim dated 07/02/2025 and specification dated 03/26/2025 and enters both for consideration. Claims 1-16 have been cancelled. New claims 17-32 have been added. Therefore, claims 17-32 remain pending in the current application.
EXAMINER’S COMMENTS
The current application is a continuation of a previously filed application 17/762295 (now Patent No. 12,225,210 B2). The Examiner called the Applicant’s representative on 02/26/2026 requesting filing a Terminal Disclaimer (TD) to process the issuance of the application since the claims can be rejected under Double Patenting (DP) rejection . However, the Applicant’s representative wanted to see a formal office action with the DP rejection.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use generic placeholders in place of “means”, and are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses means plus functional languages without reciting sufficient structures to perform the recited function and the generic placeholders are not preceded by a structural modifier. Such claim limitation(s) is/are: “a receiver operable to receive a bitstream comprising a coded picture partitioned into one or more slices and one or more subpictures” in claim(s) 26-30.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: “a receiver” is denoted by reference numeral 847 (Fig. 8) with the function of enabling apparatus 800 to transmit data to and receive data from other nodes connected to a network (P27, [0109], L12-13) without elaborating any structure associated with it.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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.
The following is a quotation of 35 U.S.C. 112, 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 26 - 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Claim element “a receiver” appears to be the part of a decoding apparatus which also comprises a memory and a processing circuitry. It is not clear what the functionality of the receiver is with respect to the apparatus and/or the memory/processing circuitry combination. Since the receiver is recited separately from the memory/processing circuitry combination, it is not clear what the structure of the receiver is and what is controlling the functionality of the receiver. As a result this has resulted in ambiguity in interpreting the claim limitation(s). Claims 27-30 are rejected on the same basis because of their dependence on the rejected claim 26.
Claim element “a receiver” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function through the use of the generic placeholders as identified in the previous claim interpretation.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 17-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.12,225,210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because.
Claim 17 of the instant application is rejected on the ground of nonstatutory obvious type double patenting as being unpatentable over claim 1 of Patent 12,225,210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the following table describes the double patenting rejection basis of claim 17 between the instant application and the patent.
19014618 (Instant Application)
12,225,210 B2 (Patent)
Claim 17
Claim 1
1
A method performed by a decoder, the method comprising:
A method performed by a decoder, the method comprising:
2
receiving a bitstream comprising a coded picture partitioned into one or more slices and one or more subpictures;
receiving a coded video stream (CVS); and processing the CVS, wherein:
3
decoding a first syntax element in a slice header of a slice, the first syntax element representing a subpicture identifier (ID) that indicates a subpicture to which the slice belongs;
the CVS comprises a slice header comprising a first codeword that encodes a first value representing a first part of a slice address for a slice that belongs to a subpicture, wherein the first value is a subpicture ID which indicates the subpicture to which the slice belongs,
4
decoding a second syntax element in the slice header, the second syntax element representing a local address which indicates the spatial positioning of the slice relative to the position of the subpicture to which the slice belongs;
the slice header comprises a second codeword that encodes a second value representing a second part of the slice address, wherein the second value is a local slice address which indicates the spatial positioning of the slice relative to the subpicture position that the slice belongs to, and
5
deriving a slice address that specifies the spatial positioning of the slice within the picture using the decoded first syntax element and the decoded second syntax element; and
the slice address specifies the spatial location of a slice within a picture, wherein processing the CVS comprises,
6
deriving a length of the second syntax element using a value derived using a third syntax element in the bitstream.
prior to decoding the second value from the second codeword, deriving a length of the second codeword using a value N derived from a third codeword in the CVS.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the instant application are claiming common subject matter, as follows:
The equivalencies in claim limitations of the instant application and the patent are highlighted in bold italics text. It is to be noted that all the limitations of the instant application are directly or indirectly recited in the patent. The only part in the instant application that is not explicitly recited in the patent claim is that “a coded picture partitioned into one or more slices and one or more subpictures”. However, the patent claim already recites decoding a coded video bitstream which comprises a slice header having two codeword values, first one indicating a subpicture ID which indicates the subpicture to which the slice belongs, and the second one indicating the spatial positioning of the slice relative to the subpicture position that the slice belongs to. Which means the coded picture is partitioned into one or more slices and one or more subpictures. Therefore, the instant application claim 17 as a whole is not patentably distinct from the patent claim 1.
Claim 23 of the instant application is rejected on the ground of nonstatutory obvious type double patenting as being unpatentable over claim 15 of Patent 12,225,210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the following table describes the double patenting rejection basis of claim 23 between the instant application and the patent.
19014618 (Instant Application)
12,225,210 B2 (Patent)
Claim 23
Claim 15
1
A method performed by an encoder, the method comprising:
A method performed by an encoder, the method comprising:
2
generating a bitstream comprising a coded picture partitioned into one or more slices and one or more subpictures, wherein
generating a coded video stream (CVS), wherein
3
the bitstream further comprises a slice header,
the CVS comprises a slice header comprising a first codeword that encodes a first value representing a first part of a slice address, wherein
4
the slice header comprises a first syntax element representing a subpicture identifier (ID) that indicates a subpicture to which the slice belongs,
the first value is a subpicture ID which indicates the subpicture that the slice belongs to,
5
the slice header further comprises a second syntax element representing a local address which indicates the spatial positioning of the slice relative to the position of the subpicture to which the slice belongs,
the slice header comprises a second codeword that encodes a second value representing a second part of the slice address, wherein the second value is a local slice address which indicates the spatial positioning of the slice relative to the subpicture position that the slice belongs to,
6
a slice address that specifies the spatial positioning of the slice within the picture can be derived using the first syntax element and the second syntax element, and
the slice address specifies the spatial location of a slice within a picture, and
7
the bitstream further comprises a third syntax element that encodes a value for use in deriving a length of the second syntax element.
the CVS further comprises a third codeword that encodes a third value representing a third part of the address and the third part of the address represents an address in a second hierarchy level that is lower than a first hierarchy level.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the instant application are claiming common subject matter, as follows:
The equivalencies in claim limitations of the instant application and the patent are highlighted in bold italics text. It is to be noted that all the limitations of the instant application are directly or indirectly recited in the patent. The only part in the instant application that is not explicitly recited in the patent claim is that “a coded picture partitioned into one or more slices and one or more subpictures”. However, the patent claim already recites decoding a coded video bitstream which comprises a slice header having two codeword values, first one indicating a subpicture ID which indicates the subpicture to which the slice belongs, and the second one indicating the spatial positioning of the slice relative to the subpicture position that the slice belongs to. Which means the coded picture is partitioned into one or more slices and one or more subpictures. Therefore, the instant application claim 23 as a whole is not patentably distinct from the patent claim 15.
Claim 26 of the instant application is rejected on the ground of nonstatutory obvious type double patenting as being unpatentable over claim 19 of Patent 12,225,210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the following table describes the double patenting rejection basis of claim 26 between the instant application and the patent.
19014618 (Instant Application)
12,225,210 B2 (Patent)
Claim 26
Claim 19
1
A decoding apparatus, comprising:
A decoding apparatus, comprising:
2
a receiver operable to receive a bitstream comprising a coded picture partitioned into one or more slices and one or more subpictures;
3
memory; and processing circuitry coupled to the memory, wherein the decoding apparatus is configured to perform a method comprising:
memory; and processing circuitry coupled to the memory, wherein the decoding apparatus is configured to:
4
decoding a first syntax element in a slice header of a slice, the first syntax element representing a subpicture identifier (ID) that indicates a subpicture to which the slice belongs;
obtain a coded video stream (CVS); and process the obtained CVS, wherein:
5
decoding a second syntax element in the slice header, the second syntax element representing a local address which indicates the spatial positioning of the slice relative to the position of the subpicture to which the slice belongs;
the CVS comprises a slice header comprising a first codeword that encodes a first value representing a first part of a slice address, wherein the first value is a subpicture ID which indicates the subpicture that the slice belongs to,
6
deriving a slice address that specifies the spatial positioning of the slice within the picture using the decoded first syntax element and the decoded second syntax element; and
the slice header comprises a second codeword that encodes a second value representing a second part of the slice address, wherein the second value is a local slice address which indicates the spatial positioning of the slice relative to the subpicture position that the slice belongs to, and
7
deriving a length of the second syntax element using a value derived using a third syntax element in the bitstream.
the slice address specifies the spatial location of a slice within a picture, wherein
8
processing the CVS comprises, prior to decoding the second value from the second codeword, deriving a length of the second codeword using a value N derived from a third codeword in the CVS.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the instant application are claiming common subject matter, as follows:
The equivalencies in claim limitations of the instant application and the patent are highlighted in bold italics text. It is to be noted that all the limitations of the instant application are directly or indirectly recited in the patent. The only part in the instant application that is not explicitly recited in the patent claim is that “a coded picture partitioned into one or more slices and one or more subpictures”. However, the patent claim already recites decoding a coded video bitstream which comprises a slice header having two codeword values, first one indicating a subpicture ID which indicates the subpicture to which the slice belongs, and the second one indicating the spatial positioning of the slice relative to the subpicture position that the slice belongs to. Which means the coded picture is partitioned into one or more slices and one or more subpictures. Therefore, the instant application claim 26 as a whole is not patentably distinct from the patent claim 19.
Claim 31 of the instant application is rejected on the ground of nonstatutory obvious type double patenting as being unpatentable over claim 20 of Patent 12,225,210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the following table describes the double patenting rejection basis of claim 31 between the instant application and the patent.
19014618 (Instant Application)
12,225,210 B2 (Patent)
Claim 31
Claim 20
1
An encoding apparatus, comprising:
An encoding apparatus, comprising:
2
memory; and processing circuitry coupled to the memory, wherein
memory; and processing circuitry coupled to the memory, wherein the encoding apparatus is configured to generating a coded video stream (CVS), wherein
3
the encoding apparatus is configured to generate a bitstream comprising a coded picture partitioned into one or more slices and one or more subpictures, wherein
4
the bitstream further comprises a slice header, the slice header comprises a first syntax element representing a subpicture identifier (ID) that indicates a subpicture to which the slice belongs,
the CVS comprises a slice header comprising a first codeword that encodes a first value representing a first part of a slice address, wherein the first value is a subpicture ID which indicates the subpicture that the slice belongs to,
5
the slice header further comprises a second syntax element representing a local address which indicates the spatial positioning of the slice relative to the position of the subpicture to which the slice belongs,
the slice header comprises a second codeword that encodes a second value representing a second part of the slice address, wherein the second value is a local slice address which indicates the spatial positioning of the slice relative to the subpicture position that the slice belongs to,
6
a slice address that specifies the spatial positioning of the slice within the picture can be derived using the first syntax element and the second syntax element, and
the slice address specifies the spatial location of a slice within a picture, and
7
the bitstream further comprises a third syntax element that encodes a value for use in deriving a length of the second syntax element.
the CVS further comprises a third codeword that encodes a third value representing a third part of the address and the third part of the address represents an address in a second hierarchy level that is lower than a first hierarchy level.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the instant application are claiming common subject matter, as follows:
The equivalencies in claim limitations of the instant application and the patent are highlighted in bold italics text. It is to be noted that all the limitations of the instant application are directly or indirectly recited in the patent. The only part in the instant application that is not explicitly recited in the patent claim is that “a coded picture partitioned into one or more slices and one or more subpictures”. However, the patent claim already recites decoding a coded video bitstream which comprises a slice header having two codeword values, first one indicating a subpicture ID which indicates the subpicture to which the slice belongs, and the second one indicating the spatial positioning of the slice relative to the subpicture position that the slice belongs to. Which means the coded picture is partitioned into one or more slices and one or more subpictures. Therefore, the instant application claim 31 as a whole is not patentably distinct from the patent claim 20.
Claims 18-22, 24-25, 27-30, 32 of the instant application are rejected on the ground of nonstatutory obvious type double patenting as being unpatentable over combination of claims 1-14 of Patent 12,225,210 B2. Although the claims at issue are not identical, they are not patentably distinct.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
1. "AN APPARATUS, A METHOD AND A COMPUTER PROGRAM FOR VIDEO ENCODING AND DECODING" - Hannuksela, US PGPub 2022/0239949 A1.
2. "VIDEO ENCODING AND DECODING METHODS AND APPARATUS" - Li et al., US PGPub 2021/0218965 A1.
3. "IMAGE SIGNAL ENCODING/DECODING METHOD AND DEVICE THEREFOR" - Lee et al., US PGPub 2022/0007035 A1.
4, "SUB-PICTURE LAYOUT SIGNALING IN VIDEO CODING" - Hendry et al., WO 2020/146582 A1.
5. “SUB-PICTURE BASED SLICE ADDRESSES IN VIDEO CODING” – Wang et al., WO 2020/185883 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAINUL HASAN whose telephone number is (571)272-0422. The examiner can normally be reached on MON-FRI: 10AM-6PM, Alternate FRIDAYS, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JAY PATEL can be reached on (571)272-2988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mainul Hasan/
Primary Examiner, Art Unit 2485