Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 102
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 1 rejected under pre-AIA 35 U.S.C. 102b as being anticipated by US 20110002381 A1-Yang et al (Hereinafter referred to as "Yang”).
Regarding claim 1, Yang discloses a method for transcoding video data (Fig 2), the method comprising:
receiving a first plurality of encoded images from a storage device (Fig 1, [0023], wherein Video decoder receives compressed video frame bitstreams from the video decoder buffer (storage device) as shown in Fig 1);
decoding the first plurality of encoded images based on a first coding scheme to generate a plurality of decoded images (Fig 1, [0023], wherein decoder decode video frame bitstream in a first coding format);
receiving a plurality encoding parameters from the storage device (Fig 1, [0023], wherein complexity information is an encoding parameter. In addition, the examiner would like to note that these encoding parameters are located within the bitstream that is sent to the buffer); and
encoding the plurality of decoded images into a second plurality of encoded images based on a second coding scheme and the plurality of encoding parameters (Fig 1, [0023], encoding bitstreams with parameters according to a second coding format. The examiner would like to note that transcoded data means that images have been taking and encoded for a second time (hence second encoded images)).
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 11849112 (16896967). Although the claims at issue are not identical, they are not patentably distinct from each other because conflicting patent includes all of the limitations of the instant application.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 10 of copending Application No. 18501905 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because conflicting application includes all of the limitations of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, and 21 of U.S. Patent No. 10715806 (16298345). Although the claims at issue are not identical, they are not patentably distinct from each other because conflicting patent includes all of the limitations of the instant application.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 13 of U.S. Patent No. 10264255 (15905695). Although the claims at issue are not identical, they are not patentably distinct from each other because conflicting patent includes all of the limitations of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LERON BECK whose telephone number is (571)270-1175. The examiner can normally be reached M-F 8 am-5pm.
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LERON . BECK
Examiner
Art Unit 2487
/LERON BECK/Primary Examiner, Art Unit 2487
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