CTNF 19/052,056 CTNF 90173 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. 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. 07-34-12 AIA Claim s 1, 7 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: the preamble of claim 1 is for an image decoding method, however, there is no mention of any image or decoding in the body of the claim . A similar issue occurs in claim 7 with a preamble claiming an image encoding method, however, there is no mention of any image or encoding in the body of the claim. Lastly, in claim 10, the preamble claims a method of transmitting a bitstream, however, there is no mention of any transmitting or a bitstream in the body of the claim. The Examiner recommends adding “decoding the lower-layer blocks in the image” after the first splitting step in claim 1, “encoding the lower-layer blocks in the image” after the first splitting step in claim 7 and “encoding the lower-layer blocks in the image to generate the bitstream; and transmitting the bitstream” after the first splitting step in claim 10. Similar limitations were included in both allowed parent applications nos. 17/620,598 and 18/411,897 with corresponding patent nos. 11,917,147 and 12,256,069, respectively . Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 of U.S. Patent No s. 11,917,147 and 12,256,069 . Although the claims at issue are not identical, they are not patentably distinct from each other because the current application’s claims 1-6 are anticipated by claims 1-6 of the U.S. Patents. Claims 1-6 of the U.S. Patents include every limitation of claims 1-6 of the current application with additional limitations . 08-36 AIA Claim 7-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7-10 of U.S. Patent No s. 11,917,147 and 12,256,069 in view of Hsu et al. ("Description of SDR video coding technology", JVET-J0018, April 10-20, 2018), hereinafter Hsu. Hsu was cited in the Applicant’s IDS dated 1/6/26 with a copy provided in the original parent application no. 17/620,598 on 8/9/22 . The current application includes an additional limitation wherein the current block is a chroma block. However, Hsu teaches wherein the current block is a chroma block (Hsu p. 2, first 2 paragraphs). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by the U.S. Patent with the missing limitations as taught by Hsu to be able to partition chroma color components and provide a video codec with higher compression capability (Hsu p. 2 and p. i, Abstract). As shown above, all of the limitations are known, they can be applied to a known device such as a processor to yield a predictable result of improving coding efficiency. Allowable Subject Matter An attempt was made to contact Agent of Record Robin O by phone with voicemail on 6/2/26 to correct the issues above by means of an Examiner’s Amendment (for the claim language suggested above) and eTerminal Disclaimer (for the 2 parent patents in the family (11,917,147 and 12,256,069)) in an effort to allow the application with compact prosecution. However, a response was not received. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW KWAN whose telephone number is (571)270-7073. The examiner can normally be reached Monday-Friday 9am-5pm. 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, Chris Kelley can be reached at (571)272-7331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from 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. /MATTHEW K KWAN/Primary Examiner, Art Unit 2482 Application/Control Number: 19/052,056 Page 2 Art Unit: 2482 Application/Control Number: 19/052,056 Page 3 Art Unit: 2482 Application/Control Number: 19/052,056 Page 4 Art Unit: 2482 Application/Control Number: 19/052,056 Page 5 Art Unit: 2482
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