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 .
Detailed Action
Response to Amendment
This Office Action is in response to the correspondence on 04/28/2026. Applicant’s argument, filed on 04/28/2026 has been entered and carefully considered. Claims 1-12 are pending.
Double Patenting rejection against US 12,231,655 B2, hereinafter ‘655, is maintained based on the arguments submitted on 04/28/2026.
The application filed on 01/16/2025 is a CON of 18/493,496 10/24/2023 PAT 12231655, is a CON of 17/819,175 08/11/2022 PAT 11924439, is a CON of 17/361,625 06/29/2021 PAT 11451792, is a CON of PCT/CN2019/070148 01/02/2019.
Response to Arguments
Applicant’s arguments in the 04/28/2026 Remarks have been fully considered but they are not persuasive because of the following:
Regarding claims, on page 2-3 argues “based on at least one modified candidate mode”. While the applicant’s argument points are understood, the examiner respectfully disagrees it is because ‘655 teaches (MPEP 804.II.B.2.Anticipation Analysis, “….., i.e., the entire scope of the reference claim falls within the scope of the examined claim.”, so, the narrower claim would teach the broader claim and the double patenting rejection is maintained).
Therefore, the rejection is maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3, 5, 7, 9, 11 and similar dependent claims are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Conflicting Patent PAT US 12,231,655 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is anticipated by the Conflicting Patent and is covered by the Patent since the Patent and the application are claiming common subject matter, below is a list of limitations that perform the same function, however, different terminology may be used in both sets to describe the limitations, as follows, Claim 1 is used as an example to analyze the common subject matter:
Conflicting Patent No. US 12,231,655 B2
Instant Application:-19/025,004
1. A chroma intra prediction method, applied to a decoder, the method comprising: parsing bitstream data corresponding to a current chroma block, and determining that a prediction mode corresponding to the current chroma block is a direct mode (DM); before determining a set of chroma prediction modes based on at least one modified candidate mode, acquiring a linear mode corresponding to the current chroma block from the bitstream data; determining an intra prediction mode of the current chroma block from the set of chroma prediction modes, wherein the set of chroma prediction modes comprises at least one of the DM, linear mode (LM), LM_T or LM_L, wherein when a luma prediction mode corresponding to the DM is a direct current (DC) mode or a planar mode, the set of chroma prediction modes comprises a diagonal angular mode with prediction direction index number 66, determining a reconstructed value of the current chroma block according to the intra prediction mode.
1. A chroma intra prediction method, applied to a decoder, the method comprising: determining a direct mode (DM) corresponding to a current chroma block; determining an intra prediction mode of the current chroma block from a set of chroma prediction modes, wherein the set of chroma prediction modes comprises at least one of the DM, linear mode (LM), LMT or LML, wherein when a luma prediction mode corresponding to the DM is a direct current (DC) mode or a planar mode, the set of chroma prediction modes comprises a diagonal angular mode with prediction direction index number 66, wherein the linear mode is acquired from a bitstream before determining the set of chroma prediction modes; and determining a reconstructed value of the current chroma block according to the intra prediction mode.
As demonstrated, the claim of US patent US 12,231,655 B2 anticipate the features of the claim of instant application 19/025,004.
A nonstatutory type (35 U.S.C. 101) double patenting rejection can be overcome by amending the conflicting claims so they are no longer coextensive in scope or filing of a terminal disclaimer.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD J RAHMAN whose telephone number is (571)270-7190. 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, David Czekaj can be reached at (571) 272-7327. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohammad J Rahman/Primary Examiner, Art Unit 2487
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