DETAILED ACTION
I. ACKNOWLEDGEMENTS
This Non-Final Office action addresses U.S. reissue application No. 19/030,975 (“975 Reissue Application” or “instant application”). Based upon a review of the instant application, the actual filing date is Jan. 17, 2025 (“975 Actual Filing Date”). Because the instant reissue application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
The 975 Reissue Application is a reissue application of U.S. Patent No. RE49717 (“717 Patent”) which is a reissue of U.S. Patent No. 9,398,294 (“294 Patent”) titled “AUDIO OR VIDEO ENCODER, AUDIO OR VIDEO DECODER AND RELATED METHODS FOR PROCESSING MULTI-CHANNEL AUDIO OR VIDEO SIGNALS USING A VARIABLE PREDICTION DIRECTION.” The application for the 294 Patent was filed on Oct. 5, 2012 and assigned by the Office US patent application number 13/645,707 (“707 Application”) and issued on Jul. 19, 2016 with claims 1-19 (“Originally Patented Claims”). The 717 Patent was issued on Oct. 24, 2023 with claims 20-26.
Because the parent reissue application of the instant reissue application are filed more than two years after the 294 Patent is issued, no broadening relative to the 294 Patent is permitted. See MPEP § 1412.03.
II. OTHER PROCEEDINGS
Based upon Applicant’s statements as set forth in the instant application and after the Examiner's independent review of the 294 Patent itself and its prosecution history, the Examiner finds that she cannot locate any ongoing proceeding before the Office or current ongoing litigation.
Also based upon the Examiner's independent review of the 294 Patent itself and the prosecution history, the Examiner finds that she cannot locate any previous reexaminations (ex parte or inter partes), supplemental examinations, or certificates of correction
III. PRIORITY CLAIMS
Based upon a review of the instant reissue application and 294 Patent, the Examiner finds that the instant reissue application is a reissue application of 16/950,757, now US Patent RE49717, which is a reissue application of US Patent 9,398,294 filed as 13/645,707 which is a continuation of application PCT/EP2011/052354, filed on Feb. 17, 2011 which claims priority to provisional application 61/323,683, filed on Apr. 13, 2010.
The instant reissue application does not claim any foreign priority.
Because the effective filing date of the instant application is not on or after March 16, 2013, the present application is being examined under the pre-AIA first to invent provisions.
The Examiner has reviewed the provisional application 61/323,683 and could not find sufficient support for the pending claims in the provisional application 61/323,683. For example, the limitations of “first calculation rule,” “second different calculation rule” based on a prediction direction indicator to calculating the decoded multi-channel signal in independent claim 27 are not sufficiently disclosed in the provisional application 61/323,683. Other independent claims recite similar limitations such as “calculating the decoded multi-channel signal using a first calculation rule…,” which are not sufficiently described in the provisional application 61/323,683. Therefore the effective filing date of the pending claims is Feb. 17, 2011.
IV. PRELIMINARY AMENDMENT
The 975 Reissue Application contains a preliminary amendment (“975 Preliminary Amendment”). The 975 Preliminary Amendment contained, among other things, “REMARKS” (“2025 Remarks”), an IDS (“2025 IDS”), a “Reissue Application Declaration by Assignee” (“2025 Reissue Dec”), “AMENDMENTS TO THE SPECIFICATION” (“2025 Specification Amendment”) and “AMENDMENTS TO THE CLAIMS” (“2025 Claim Amendment”). The 2025 Claim Amendment added new claims 27-39 and canceled claims 20-26.
V. STATUS OF CLAIMS
In light of the above:
Claims 27-39 are currently pending (“Pending Claims”).
Claims 27-39 are currently examined (“Examined Claims”).
Claims 1-26 are canceled.
Regarding the Examined Claims and as a result of this Office action:
Claims 27-39 are rejected.
VI. SPECIFICATION
A. Multiple reissue applications should be indicated
37 CFR 1.177 states:
(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
The Examiner finds that there are at least eleven reissue applications filed for the 294 Patent, i.e., 16/950,658, 16/950,679, 16/950,696, 16/950,718, 16/950,738, 16/950,754, 16/950,757, 19/031,013, 19/266,081, 19/030,975, and 19/266,086. The specification is objected to because the specification and the 2025 Specification Amendment fails to identify each of the reissue applications by relationship, application number and filing date. The 2025 Specification Amendment need to be updated with the application numbers of all the reissue applications filed for the 294 Patent, the relationship of each of the reissue applications and the filing dates.
B. Double underlined and double bracket
MPEP 1453 VI (E) states:
(E) Making amendments in an application for reissue of a previously reissued patent:
When a copy of a first reissue patent is presented as the specification of a second reissue application (filed as a reissue of a reissue), additions made by the first reissue will already be printed in italics, and should remain in such format. Thus, applicants need only present additions to the specification/claims in the second reissue application as double underlined text. Subject matter to be deleted from the first reissue patent should be presented in the second reissue application within sets of double brackets. Examples of the form for a twice-reissued patent (a reissue of a reissue) are found in Re. 23,558 and Re. 28,488. Double underlining and double bracketing are used in the second reissue application, while bold-faced type and double bracketing appear in the printed patent (the second reissue patent) to indicate further insertions and deletions, respectively, in the second reissue patent.
Based on the above section of MPEP, the 2025 Specification Amendment is objected to because additions relative to the parent reissue patent, i.e., RE49717, need to be double underlined.
Further, deletions relative to the parent reissue patent, i.e., the 717 Patent, should be double bracketed.
VII. CLAIM OBJECTION
A. Double underlined and double bracket
MPEP 1453 VI (E) states:
(E) Making amendments in an application for reissue of a previously reissued patent:
When a copy of a first reissue patent is presented as the specification of a second reissue application (filed as a reissue of a reissue), additions made by the first reissue will already be printed in italics, and should remain in such format. Thus, applicants need only present additions to the specification/claims in the second reissue application as double underlined text. Subject matter to be deleted from the first reissue patent should be presented in the second reissue application within sets of double brackets. Examples of the form for a twice-reissued patent (a reissue of a reissue) are found in Re. 23,558 and Re. 28,488. Double underlining and double bracketing are used in the second reissue application, while bold-faced type and double bracketing appear in the printed patent (the second reissue patent) to indicate further insertions and deletions, respectively, in the second reissue patent.
Based on the above section of MPEP, the 2025 Claim Amendment is objected to because addition relative to the parent reissue patent, i.e., RE49717, need to be double underlined. In other words, the new claims, i.e., claims 27-39 need to be double underlined.
Further, deletion relative to the parent reissue patent, i.e., the 717 Patent, should be double bracketed. Correction in the 2025 Claim Amendment is required.
VII. CLAIM INTERPRETATION
A. Lexicographic Definitions
After careful review of the original specification and unless expressly noted otherwise by the Examiner, the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions in the original specification with the required clarity, deliberateness, and precision the Examiner concludes the Applicant is not their own lexicographer. See MPEP § 2111.01 IV.
l
B. 'Sources' for the 'Broadest Reasonable Interpretation'
For terms not lexicographically defined by Applicant, the Examiner hereby adopts the following interpretations under the broadest reasonable interpretation (BRI) standard. In other words, the Examiner has provided the following interpretations simply as express notice of how she is interpreting particular terms under the broadest reasonable interpretation standard. Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language.1 In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other “sources” to support his interpretation of the claims. Finally, the following list is not intended to be exhaustive in any way:
1. decoder “n. l. A device or program routine that converts coded data back to its original form. This can mean changing unreadable or encrypted codes into readable text or changing one code to another, although the latter type of decoding is usually referred to as conversion.” Microsoft Computer Dictionary, Fifth Edition, Microsoft Press, 2002.
2. encoder “ n. 1. In general, any hardware or software that encodes information—that is, converts the information to a particular form or format. For example, the Windows Media Encoder converts audio and video to a form that can be streamed to clients over a network. 2. In reference to MP3 digital audio in particular, technology that converts a WAV audio file into an MP3 file. An MP3 encoder compresses a sound file to a much smaller size, about one-twelfth as large as the original, without a perceptible drop in quality. Also called: MP3 encoder. See also MP3, WAV. Compare rip, ripper.” Microsoft Computer Dictionary, Fifth Edition, Microsoft Press, 2002.
3. encode “(1) (general) To express a single character or a message in terms of a code. (2) (electronic control) To produce a unique combination of a group of output signals in response to each of a group of input signals. (3) (computers) To apply the rules of a code. See also: matrix; translate; code; decode. (4) (modeling and simulation) To represent data in symbolic Form using a code or a coded character set such that reconversion to the original form is possible.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
4. decode: “decode (1) To produce a single output signal from each combination of a group of input signals. (2) (data management) To convert data by reversing the effect of previous encoding.” The Authoritative Dictionary of IEEE Standards Terms, 7th Ed., IEEE, Inc., New York, NY, 12/2000.
5. Processor: "1: one that processes 2. a: (1) a computer (2) The part of a computer system that operates on data – called also a central processing unit b : a computer program (as a compiler) that puts another program into a form acceptable to the computer " Microsoft Press Computer Dictionary , 2nd Edition, Microsoft Press, Redmond, WA, 1994.
6. Configuration: “(C) The physical and logical elements of an information processing system, the manner in which they are organized and connected, or both. Note: May refer to a hardware configuration or software configuration.” The Authoritative Dictionary of IEEE Standards Terms 7th Ed., IEEE, Inc., New York, NY, 12/2000.
7. Algorithm: a step-by-step procedure for accomplishing a given result: An algorithm may be expressed “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Typhoon Touch [Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011)] (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Even described “in prose,” an algorithm is still “a step-by-step procedure for accomplishing a given result.” Id. at 1385. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).2
C. 35 U.S.C. § 112 6th Paragraph (§ 112 ¶ 6)
A second exception to BRI is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112 ¶ 6 paragraph. See MPEP § 2181 et seq. To invoke 35 U.S.C. § 112 ¶ 6 paragraph, a claimed phrase must meet the three (3) prong analysis as set forth in MPEP § 2181 I. The following phrases will be analyzed to determine if the claimed phrases invoke §§ 112 ¶ 6 paragraph. If a phrase invokes § 112 ¶ 6 paragraph, the corresponding structure or materials will also be determined.
For computer-implemented means-plus-function limitations, a general purpose computer is only sufficient as the corresponding structure for performing a general computing function. When there is a specific function to be performed, it is required that an algorithm for performing the function be disclosed, and the corresponding structure becomes a general purpose computer transformed into a special purpose computer by programming the computer to perform the disclosed algorithm. The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. See MPEP § 2181 II B.
The Examiner has reviewed the Examined claims of the instant application and concludes that based on the three Prong analysis set forth in MPEP§ 2181 I, the following limitations or functional phrases of the pending claims invokes § 112 ¶ 6 paragraph.
(1) Functional Phrase #1
a signal decoder for decoding the encoded first combination signal to acquire a decoded first combination signal, and for decoding the encoded residual signal to acquire a decoded residual signal.
--“Functional Phrase #1” or “FP#1” as recited in e.g. claim 27.
The claimed functions of FP#1 is:
decoding the encoded first combination signal to acquire a decoded first combination signal and decoding the encoded residual signal to acquire a decoded residual signal.
--“Claim Functions of FP#1” or “Functions of FP#1.”
i. 3-Prong Analysis: Prong (A)
In accordance with Prong (A), the MPEP states:
(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 ....
MPEP § 2181 I. — Prong (A) (emphasis added).
As an initial matter, the Examiner finds that Functional Phrase #1 does not use the term “means.” Therefore, the issue arising under Invocation Prong (A) then becomes whether or not FP#1, including the claimed “signal decoder” is a generic placeholder for “means.”
In assessing whether or not FP#1 invokes § 112 ¶ 6, the Examiner must not only consider the introductory phrase “signal decoder,” but the entire FP#1. “In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘signal decoder' ) in isolation, but look to the entire passage including functions performed by the introductory phrase. [Emphasis added.]” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019).
Second, the Examiner has reviewed the original specification and drawings as set forth in the 707 Application or the 975 Reissue Application, general and subject matter specific dictionaries, and the prior art now of record to determine if FP#1 provides a description sufficient to inform one of ordinary skill in this particular art that FP#1 denotes a particular structure.
Third, the Examiner finds that “signal decoder” may denote structure. However, the claimed “signal decoder” as set forth in FP#1 has a particular configuration (i.e. it is configured for executing instructions [and perform the claimed functions]). In light of the claimed ‘configuration,' the Examiner concludes that the claimed “signal decoder” is not a generic computer processor or a general purpose computer but a particular processor requiring special programming since the two claimed “decoding …” functions as set forth in FP#1 cannot be performed by a general purpose processor or computer.
In light of the above, the Examiner concludes that the phrase “signal decoder for decoding …” is a generic placeholder. Because “signal decoder” is merely a generic placeholder, the Examiner concludes that Functional Phrase #1 meets invocation Prong (A).
ii. 3-Prong Analysis Prong (B):
In accordance with the MPEP prong (B) requires:
(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” ....
MPEP § 2181 I. — Prong (B).
Based upon a review of claim 20, the Examiner finds that the function associated with Functional Phrase #1 is: Functions of FP#1.
Because Functional Phrase #1 includes the function expressly noted above, the Examiner concludes that Functional Phrase #1 meets invocation Prong (B). Additionally, the Examiner notes that because nothing in the written description contradicts the plain language describing this function, the function within Functional Phrase #1 will have its ordinary and accustomed meaning.
iii. 3-Prong Analysis: Prong (C)
In accordance with the MPEP, Prong (C) requires:
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
MPEP § 2181 (I) — Prong (C)
Based upon a review of Functional Phrase #1, the Examiner finds that Functional Phrase #1 does not contain sufficient structure for performing the entire Functions of FP#1. See also Williamson v. Citrix Online, LLC, 115 USPQ2d 1105 (Fed. Cir. 2015).
Because Functional Phrase #1 does not contain sufficient structure for performing the entire claimed function(s), the Examiner concludes that Functional Phrase #1 meets invocation Prong (C).
Because Functional Phrase #1 meets the three prong analysis as set forth in MPEP §2181 I, the Examiner concludes that Functional Phrase #1 invokes 35 U.S.C. §112, 6th paragraph.
iv. Corresponding Structure or Materials
“The step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 99 USPQ2d 4936 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333, 1334, [69 USPQ2d 1481, 1486] (Fed. Cir. 2004).
“Under this second step, structure disclosed in the specification is `corresponding' structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” In re Aoyama, , 99 USPQ2d at 4939 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210, [68 USPQ2d 1263, 1267] (Fed. Cir. 2003).
Based upon a review of the 975 Reissue application itself, the Examiner concludes that the corresponding structure for FP#1 appears to be illustrated as 110 in Fig. 1 which comprises a CPU or a processor performing entropy decoding such as Huffman decoding or arithmetic decoding and/or de-quantization as described in col. 8, lines 35-41 of the 294 Patent, i.e., “Depending on the encoding processing on an audio encoder side, the signal decoder may comprise an entropy-decoder such as a Huffman decoder, an arithmetic decoder or any other entropy-decoder and a subsequently connected dequantization stage for performing a dequantization operation matching with a quantizer operation in an associated audio encoder.”
(2) Functional Phrase #2
a decoder calculator for calculating a decoded multi-channel signal comprising a decoded first channel signal, and a decoded second channel signal using the decoded residual signal, the prediction information, the decoded first combination signal and a prediction direction indicator indicating a prediction direction associated with the decoded prediction residual signal, so that the decoded first channel signal and the decoded second channel signal are at least approximations of a first channel signal and a second channel signal of a multi-channel signal,
wherein the decoder calculator is configured for using a first calculation rule for calculating the decoded multi-channel signal in case of a first state of the prediction direction indicator and for using a second different calculation rule for calculating the decoded multi-channel signal in case of a second different state of the prediction direction indicator
--“Functional Phrase #2” or “FP#2” as recited in e.g. claim 27.
The claimed functions of FP#2 is:
calculating a decoded multi-channel signal comprising a decoded first channel signal, and a decoded second channel signal using the decoded residual signal, the prediction information, the decoded first combination signal and a prediction direction indicator indicating a prediction direction associated with the decoded prediction residual signal, so that the decoded first channel signal and the decoded second channel signal are at least approximations of a first channel signal and a second channel signal of a multi-channel signal,
wherein the decoder calculator is configured for using a first calculation rule for calculating the decoded multi-channel signal in case of a first state of the prediction direction indicator and for using a second different calculation rule for calculating the decoded multi-channel signal in case of a second different state of the prediction direction indicator
--“Claim Functions of FP#2” or “Functions of FP#2.”
i-iii. 3-Prong Analysis: Prongs (A)-(C)
Three throng analysis similar to that for FP#1 is performed for FP#2 and the Examiner concludes that FP#2 also invokes § 112 ¶ 6 paragraph.
iv. Corresponding Structure or Materials
Based upon a review of the 975 Reissue application itself, the Examiner concludes that the corresponding structure for FP#2 is comprised of a CPU or a processor performing the algorithm of as illustrated in as 116 in Fig. 1 and described in association with Figs. 4A-4C, 11B and 13C-13D and described in col. 9, lines 19-61, col. 10, lines 14-41 and col. 28, line 66-col. 29, line 22 of the 294 Patent.
PNG
media_image1.png
453
596
media_image1.png
Greyscale
-Fig. 11B of the 294 Patent.
PNG
media_image2.png
353
461
media_image2.png
Greyscale
-Fig. 13C and Fig. 13D of the 294 Patent.
(3) Functional Phrase #3
the audio or video decoder further comprises an input interface for extracting the prediction direction indicator and for forwarding the prediction direction indicator to the decoder calculator.
--“Functional Phrase #3” or “FP#3” as recited in e.g. claim 28.
The claimed functions of FP#3 is:
extracting the prediction direction indicator and forwarding the prediction direction indicator to the decoder calculator.
--“Claim Functions of FP#3” or “Functions of FP#3.”
i-iii. 3-Prong Analysis: Prongs (A)-(C)
Three throng analysis similar to that for FP#1 is performed for FP#3 and the Examiner concludes that FP#3 also invokes § 112 ¶ 6 paragraph.
iv. Corresponding Structure or Materials
Based upon a review of the 975 Reissue application itself, the Examiner concludes that the corresponding structure for FP#3 is comprised of a CPU or a processor that extract a prediction indicator flag as described in col. 8, line 61 -col. 9, line 3 of the 294 Patent.
(4) Functional Phrase #4
a spectral-time converter for generating a time-domain first channel signal and a time-domain second channel signal using a spectral-time conversion algorithm matched to the time-spectral conversion algorithm.
--“Functional Phrase #4” or “FP#4” as recited in e.g. claim 33.
The claimed functions of FP#4 is:
generating a time-domain first channel signal and a time-domain second channel signal using a spectral-time conversion algorithm matched to the time-spectral conversion algorithm.
--“Claim Functions of FP#4” or “Functions of FP#4.”
i-iii. 3-Prong Analysis: Prongs (A)-(C)
Three throng analysis similar to that for FP#1 is performed for FP#4 and the Examiner concludes that FP#4 also invokes § 112 ¶ 6 paragraph.
iv. Corresponding Structure or Materials
Based upon a review of the 975 Reissue application itself, the Examiner concludes that the corresponding structure for FP#4 is comprised of a CPU or a processor performing inverse MDCT, DCT, an FFT where only the real part is used or a processor performing MDST or MDCT algorithms as described in col. 5, lines 28-36, col. 13, lines 2-8, col. 17, lines 25-30 of the 294 Patent.
(5) Functional Phrase #5
an overlap/add processor for conducting an overlap-add processing for the time-domain first channel signal and for the time-domain second channel signal to acquire an aliasing-free first time-domain signal and an aliasing-free second time-domain signal.
--“Functional Phrase #5” or “FP#5” as recited in e.g. claim 33.
The claimed functions of FP#5 is:
conducting an overlap-add processing for the time-domain first channel signal and for the time-domain second channel signal to acquire an aliasing-free first time-domain signal and an aliasing-free second time-domain signal.
--“Claim Functions of FP#5” or “Functions of FP#5.”
i-iii. 3-Prong Analysis: Prongs (A)-(C)
Three throng analysis similar to that for FP#1 is performed for FP#5 and the Examiner concludes that FP#5 also invokes § 112 ¶ 6 paragraph.
iv. Corresponding Structure or Materials
Based upon a review of the 975 Reissue application itself, the Examiner concludes that the corresponding structure for FP#5 is illustrated as 522 in Fig. 8B and is comprised of a CPU or a processor performing the algorithm as described in col. 17, lines 54-64 of the 294 Patent, i.e., “...applies a 50% overlap between two subsequent frames and, then, performs a sample by sample addition so that a 2048 samples block finally results in 1024 new samples of the aliasing free output signal.”.
(6) Functional Phrase #6
using a first calculation rule for calculating the decoded multi-channel signal in case of a first state of the prediction direction indicator and using a second different calculation rule for calculating the decoded multi-channel signal in case of a second different state of the prediction direction indicator.
--“Functional Phrase #6” or “FP#6” as recited in e.g. claim 38.
The claimed functions of FP#6 is:
calculating the decoded multi-channel signal in case of a first state of the prediction direction indicator and calculating the decoded multi-channel signal in case of a second different state of the prediction direction indicator.
--“Claim Functions of FP#6” or “Functions of FP#6.”
i-iii. 3-Prong Analysis: Prongs (A)-(C)
Three throng analysis similar to that for FP#1 is performed for FP#6 and the Examiner concludes that FP#6 also invokes § 112 ¶ 6 paragraph.
iv. Corresponding Structure or Materials
Based upon a review of the 975 Reissue application itself, the Examiner concludes that the corresponding structure for FP#6 is comprised of a CPU or a processor performing the algorithm illustrated in Figs. 4A-4C, 11B and 13A-13D and described in col. 9, lines 19-61, col. 10, lines 14-41 and col. 28, line 66-col. 29, line 22 of the 294 Patent.
(7) Functional Phrase #7
A non-transitory storage medium having stored thereon a computer program for performing, when running on a computer or a processor, the method of decoding an encoded multi-channel audio signal, the encoded multi-channel audio signal comprising an encoded first combination signal, an encoded prediction residual signal and prediction information, said method comprising:
calculating a decoded multi-channel signal comprising a decoded first channel signal, and a decoded second channel signal using the decoded residual signal, the prediction information, the decoded first combination signal and a prediction direction indicator indicating a prediction direction associated with the decoded prediction residual signal, so that the decoded first channel signal and the decoded second channel signal are at least approximations of the first channel signal and the second channel signal of the multi-channel signal,
wherein calculating the decoded multi-channel signal comprises using a first calculation rule for calculating the decoded multi-channel signal in case of a first state of the prediction direction indicator and using a second different calculation rule for calculating the decoded multi-channel signal in case of a second different state of the prediction direction indicator,
--“Functional Phrase #7” or “FP#7” as recited in e.g. claim 39.
i-iii. 3-Prong Analysis: Prongs (A)-(C)
Three throng analysis similar to that for FP#1 is performed for FP#7 and the Examiner concludes that FP#7 also invokes § 112 ¶ 6 paragraph.
iv. Corresponding Structure or Materials
Based upon a review of the 975 Reissue application itself, the Examiner concludes that the corresponding structure for FP#7 is comprised of a CPU or a processor performing the algorithm illustrated in Figs. 2, 3A-3C, 5A, 6A, 11A and 13A-13D and described in col. 10, lines 41-col. 13, line 40 and col. 28, line 66-col. 29, line 22 of the 294 Patent.
(8) Dependent claims
Dependent claims 28-37 of claim 27 also invoke § 112 ¶ 6 because sufficient structures are not provided in these claims for the functional phrases identified above for claim 27 or relevant claims above. The three prong analysis will be the same as those above.
(9) How To Prevent FP#1-FP#7 From Invoking § 112 ¶ 6
If Applicant does not intend to have the claim limitations invoke § 112 ¶ 6, Applicant may amend claims so that it will clearly not invoke § 112 ¶ 6.
Moreover, if Applicant believes FP#1-FP#7 has a structural meaning known to a person of ordinary skill in this particular art, Applicant should in their next appropriately filed response, expressly state on the record that FP#1-FP#7 has a structural meaning known to a person of ordinary skill in this particular art and provide appropriate evidence in support thereof (e.g. a prior art U.S. patent).
Additionally, in order to show that FP#1-FP#7 does not meet 3 Prong Analysis: Invocation Prong (C), Applicant must also state on the record and provide evidence in support thereof that the claimed structure (whatever it is) can perform the entire function for the respective phrase.
Applicant is reminded that should Applicant amend a claimed phrase so that a claimed phrase does not invoke § 112 ¶ 6 or successfully argue that a claimed phrase does not invoke § 112 ¶ 6, elements from the specification (including any algorithms) will not be read into the claims. “This court [the Federal Circuit] has repeatedly and clearly held that it will not read unstated limitations into claim language.” Northern Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1290 (Fed. Cir. 2000).
VIII. CLAIM REJECTIONS - 35 USC § 112
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), 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 25-35 and 37 and 39 are rejected under 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 applicant regards as the invention.
A. Lack of Antecedent Basis
Claim 27 recites, among other things,
a signal decoder for decoding the encoded residual signal to acquire a decoded residual signal;
However, there is no antecedent basis for “the encoded residual signal.” The limitation is indefinite because it is not clear which signal it refers to. Does it mean the “encoded prediction residual signal?”
Claims 33, 38 and 39 recite similar limitation and are rejected as well.
Claim 28 recites “the audio or video decoder.” However, there is no antecedent basis for “the audio or video decoder.” The limitation is indefinite because it is not clear which audio or video decoder it refers to.
IX. 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 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.
A. US Patent Application 19/031,013
Claims 27, 38 and 39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 30 of U.S. Patent Reissue Application 19/031,013 (“013 Application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
i. Claim 27 and claim 30 of the 013 Application recite common subject matter respectively; so are claims 38-39 and claim 30 of the 013 Application respectively. For Example, claim 27 in this reissue application recites FP #1 and FP #2 discussed above and further claim 30 of the 013 Application recites the same FP #1 and FP #2. Further, as provided above, Examiners find FP#1 and FP#2 invoke interpretation under 35 U.S.C. § 112 ¶ 6 and thus these same limitation in claim 30 of the 013 Application would similarly invoke interpretation under 35 U.S.C. § 112 ¶ 6. Additionally, since these limitations in both this reissue application and in the 013 Application invoke and are based on the same patent disclosure, both FP #1 and FP #1 in claim 27 of this application and these limitations in claim 30 of the 013 Application would have the same corresponding structures. Thus, the corresponding structures for claim 30 of the 013 Application read on FP #1 and FP #2 in this reissue application.
ii. Whereby claims 27 and 38-39, which recites the open ended transitional phrase “comprising”, do not preclude the additional elements recited by claim 30 of the 013 Application, and
iii. Claim 38 is the corresponding method claim of claim 27 and claim 39 is the corresponding non-transitory storage medium claim of claim 27. Claim 30 of the 013 Application also recite method steps performed by the apparatus of claim 30 and using a computer to implement the method of claim 30 is obvious to one of ordinary skills in the art.
iv. Therefore claims 27, 38, and 39 of the instant reissue application are obvious over claims 25, 37 and 39 of the 013 Application.
X. ALLOWABLE SUBJECT MATTER
Claims 27-39 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112 (pre-AIA ), 2nd paragraph set forth in this Office action and if a terminal disclaimer is filed to overcome the double patenting rejection set forth in this Office action above. The following is an examiner’s statement of reasons for allowance:
FP#2 in claim 27, FP#6 in claim 38 and FP#7 in claim 39 invoke § 112 ¶ 6. Prior art including Novell (US Patent Pub 2011/0224994) and Moriya (US Patent Pub 2009/0190693) fail to disclose the corresponding structure associated with at least FP#2. The corresponding structure associated with at least FP#2 is the algorithm illustrated in Figs. 4A-4C, 11B and 13A-13D and described in col. 9, lines 19-61, col. 10, lines 14-41 and col. 28, line 66-col. 29, line 22 of the 294 Patent, specifically, the algorithm of first calculation rule based on the formula described in Fig. 13C. See the section of Claim Interpretation above.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
XI. CONCLUSION
A. Reissue Application Reminders
Disclosure of other proceedings. Applicants are reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 C.F.R. § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
B. Suggested Examples: Preventing Both New Matter Rejections & Objections to the Specification in the Future
Applicants are respectfully reminded that any suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. To be especially clear, any suggestion or example provided in this Office Action (or in any future office action) does not constitute a formal requirement mandated by the Examiner.
Should Applicants decide to amend the claims, Applicant is also reminded that—like always—no new matter is allowed. The Examiner therefore leaves it up to Applicants to choose the precise claim language of the amendment in order to ensure that the amended language complies with § 112 ¶ 1.
Independent of the requirements § 112 ¶ 1, Applicants are also respectfully reminded that when amending a particular claim, all claim terms must have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Should Applicants amend the claims such that the claim language no longer has clear support or antecedent basis in the specification, an objection to the specification may result. Therefore, in these situations where the amended claim language does not have clear support or antecedent basis in the specification and to prevent a subsequent ‘Objection to the Specification’ in the next office action, Applicants are encouraged to either (1) re-evaluate the amendment and change the claim language so the claims do have clear support or antecedent basis or, (2) amend the specification to ensure that the claim language does have clear support or antecedent basis. See again MPEP § 608.01(o) (¶3). Should Applicants choose to amend the specification, Applicants are reminded that—like always—no new matter in the specification is allowed. See 35 U.S.C. § 132(a). If Applicants have any questions on this matter, Applicants are encouraged to contact the Examiner via the telephone number listed below.
C. Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to YUZHEN GE whose telephone number is (571)272-7636. The Examiner can normally be reached on Monday-Thursday 8:00-6:00.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor Andrew J. Fischer can be reached on 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of reissue applications may be obtained from the USPTO’s “Patent Center.” Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/Yuzhen Ge/
Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While most interpretations are cited because these terms are found in the claims, the Examiner may have provided additional interpretations to help interpret words, phrases, or concepts found in the interpretations themselves, the instant patent, or in the prior art.
2 See also “An algorithm is defined, for example, as ‘a finite sequence of steps for solving a logical or mathematical problem or performing a task.’” MPEP § 2181 II. B. (quoting Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002).
Prosecution Insights