Detailed Action
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
2. Reissue application 19/030,457 filed 01/17/2025 is a Reissue of 16276936 , filed 02/15/2019, now U.S. Patent # 10546594 and a Continuation of 17588068, filed 01/28/2022, which is a Reissue of 16276936, filed 02/15/2019 ,now U.S. Patent # 10546594 which is a Continuation of 15581527, filed 04/28/2017, now U.S. Patent # 10297270 which is a Continuation of 15003960, filed 01/22/2016, now U.S. Patent # 9679580 which is a Continuation of 13639325, filed 10/04/2012, now U.S. Patent # 9406312 which is a National Stage entry of PCT/JP2011/059028, International Filing Date: 04/11/2011 claiming foreign priority to 2011-072380, filed 03/29/2011, 2011-017230, filed 01/28/2011 and 2010-092689, filed 04/13/2010.
3. This action is responsive to the Applicant’s Remarks and Amendments filed on 06/24/2026.
Reissue Applications
4. For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Reissue Oath/Declaration
35 U.S.C. 251
5. The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
6. Claims 4-6 are rejected as being based upon a defective reissue declaration under -35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Specification
7. The Specification is objected to as it does contain the proper markings. Specifically, 37 CFR 1.173 requires:
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
Claim Interpretation
8. 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 asuch claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
9. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless 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 a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
In claim 4:
a demultiplexing circuit configured to demultiplex input encoded data into at least low frequency encoded data and an index indicating an estimating coefficient.
a low frequency decoding circuit configured to decode said low frequency encoded data to generate a low frequency signal;
a sub-band dividing circuit configured to divide a band of said low frequency signal into a plurality of low frequency sub-bands to generate a low frequency sub-band signal for each of said plurality of low frequency sub-bands;
wherein said generating circuit comprises circuitry configured to:
calculate a plurality of feature amounts, each of which expresses a feature of a respective low frequency sub-band signal; calculate, for each of a plurality of high-frequency sub-bands making up a band of said high frequency signal, a high frequency sub-band power by multiplying said feature amount and said estimating coefficient for each of said plurality of high frequency sub-bands and summing said multiplied feature amounts and estimating coefficients; and generate said high frequency signal based on said high frequency sub-band powers and said low frequency sub-band signals.
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.
Double Patenting
10. 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.
11. Claims 4-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 17/588,086 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to remove the feature synthesize the low frequency signal and the high frequency signal to produce an output signal in instances where a more accurate signal was desired or where cost and computational resources may be limited.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
12. Claims 4-6 would be allowable over the prior art if the rejections under 35 U.S.C. 251, 35 U.S.C. 112, and Double patenting are overcome.
13. The following is an examiner’s statement of reasons for allowance:
Claims 4-6 are allowable over the prior art. Claim 4 invokes 35 USC 112 (f)/6th paragraph as outlined above. Specifically, the generating circuit alone is not sufficient for performing the recited functions and requires special programming needed to perform the functions as outlined in column 14 beginning in line 12 through column 24 of the specification.
The prior art of record fails to teach a decoding device, comprising:
wherein said generating circuit comprises circuitry configured to:
calculate a plurality of feature amounts, each of which expresses a feature of a respective low frequency sub-band signal;
calculate, for each of a plurality of high-frequency sub-bands making up a band of said high frequency signal, a high frequency sub-band power by multiplying said feature amount and said estimating coefficient for each of said plurality of high frequency sub-bands and summing said multiplied feature amounts and estimating coefficients; and
generate said high frequency signal based on said high frequency sub-band powers and said low frequency sub-band signals.
Claims 5 and 6 are allowable for the same features reciting:
calculating a plurality of feature amounts, each of which expresses a feature of a respective low frequency sub-band signal;
calculating, for each of a plurality of high-frequency sub-bands making up a band of said high frequency signal, a high frequency sub-band power by multiplying said feature amount and said estimating coefficient for each of said plurality of high frequency sub-bands and summing said multiplied feature amounts and estimating coefficients; and
generating said high frequency signal based on said high frequency sub-band powers and said low frequency sub-band signals.
Response to Arguments
Oath/Declaration
14. Examiner acknowledges the oath/declaration with appropriate signatures filed on 06/24/2026. However, as previously noted, the reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. Specifically, 1.175(a) states
The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
35 USC 112
15. The rejections under 35 U.S.C. 112 (b) have been withdrawn in light of the amendments.
The interpretation under 35 USC 112(f) is maintained.
Double Patenting
16. The Double Patenting Rejections are maintained, but modified to reflect the change in claim numbering.
Conclusion
17. 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.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHNA SINGH DESAI whose telephone number is (571)272-4099. The examiner can normally be reached on M-F 7:30-4PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on 571-272-3744. 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.
/RACHNA S DESAI/Primary Examiner, Art Unit 3992
Conferees:
/William H. Wood/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights