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
This Office Action is sent in response to Applicant’s Communication received 20 February 2025 for application number 19/029,725. The Office hereby acknowledges receipt of the following and placed of record in file: Specification, Drawings, Abstract, Oath/Declaration, Claims.
Claims 1-3 are presented for examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on the following dates are in compliance with the provisions of 37 CFR 1.97 and are being considered by the Examiner: 8/19/25; 11/25/25.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim 3 is rejected under 35 U.S.C. 102(a)(1) as being unpatentable by Roswarne et al. (US 2015/0016542).
A bit stream generated by a method, the method comprising… is a product by process claim limitation where the product is the bit stream and the process is the method steps to generate the bitstream. MPEP §2113 recites “Product-by-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. Thus, the scope of the claim is the storage medium storing the bitstream (with the structure implied by the method steps). The structure includes the information and samples manipulated by the steps.
“To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated”. MPEP §2111.05(I)(A). When a claimed “computer-readable medium merely serves as a support for information or data, no functional relationship exists. MPEP §2111.05(III). The storage medium storing the claimed bitstream in claim 3 merely services as a support for the storage of the bitstream and provides no fictional relationship between the stored bitstream and storage medium. Therefor the bitstream, which scope is implied by the method steps, is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Thus, the claim scope is just a storage medium storing data and is anticipated by Roswarne which recites a storage medium storing a bitstream (par. 82; figure 2a).
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,284,081. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, ‘081 discloses a method of decoding video by a video decoding apparatus, the method comprising: receiving prediction information including a skip flag, a merge flag, prediction mode information and partition type information (claim 1);
checking the skip flag for indicating whether a skip mode is applied (claim 1);
checking the prediction mode information and the partition type information to determine a prediction mode and a partition type for a current block, based on a value of the skip flag being 0 (claim 1);
checking the merge flag for indicating whether a merge mode is applied to the current block which is derived based on the partition type (claim 1); and
performing inter prediction on the current block based on the result of the checking the merge flag to derive prediction samples (claim 1),
wherein checking the prediction mode information and the partition type information is performed prior to checking the merge flag (claim 1),
wherein a split flag related to whether a coding unit is split into coding units is obtained (claim 4),
wherein a current coding unit is derived based on the split flag before checking of the skip flag (claim 4),
wherein the current block is derived from the current coding unit based on the partition type, wherein, for the inter prediction, the partition type information includes a binary code for the partition type for the current block (claim 1), and
wherein, for the inter prediction, a binary code for 2Nx2N partition type is "1", a binary code for 2NxN partition type is "01", and a binary code for Nx2N partition type is "001" (claim 1).
Regarding claim 2, ‘081 discloses a method of encoding video by a video encoding apparatus, the method comprising: generating a skip flag for indicating whether a skip mode is applied (claim 8);
generating prediction mode information and partition type information to determine a prediction mode and a partition type for a current block, based on a value of the skip flag being 0 (claim 8);
generating a merge flag for indicating whether a merge mode is applied to the current block which is derived based on the partition type (claim 8);
performing inter prediction on the current block based on the merge flag to derive prediction samples (claim 8); and
encoding the skip flag, the merge flag, the prediction mode information and the partition type information, wherein the prediction mode information and the partition type information is signaled prior to signaling of the merge flag,
wherein a split flag related to whether a coding unit is split into coding units is signaled (claim 4),
wherein a current coding unit is derived based on the split flag before signaling of the skip flag, wherein the current block is derived from the current coding unit based on the partition type (claim 4),
wherein, for the inter prediction, the partition type information includes a binary code for the partition type for the current block, and wherein, for the inter prediction, a binary code for 2Nx2N partition type is "1", a binary code for 2NxN partition type is "01", and a binary code for Nx2N partition type is "001" (claim 8).
Regarding claim 3, the claim is interpreted and rejected for the same reason as set forth in claims 1 and 2.
Prior Art not relied upon: Please refer to the references listed in attached PTO-892, which are not relied upon for the claim rejections, since these references are pertinent to the disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGUYEN T TRUONG whose telephone number is (571)272-5262. The examiner can normally be reached on Mon - Fri, 6AM - 2PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JAMIE ATALA can be reached on 571-272-7384. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NGUYEN T TRUONG/Primary Examiner, Art Unit 2486