DETAILED ACTION
This is the First Action on the Merits for U.S. Patent Application No. 19/059,933, filed 21 February 2025, which is a continuation of U.S. Patent Application No. 17/787,085, now U.S. Patent No. 12,267,488, filed 17 June 2022, which is a National Stage Entry of International Application No. PCT/EP2020/087248, filed 18 December 2020, which claims foreign priority to British Application No. GB1919033.9, filed 20 December 2019.
Claims 1–7 are pending.
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 .
Claim Rejections - 35 U.S.C. § 112
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 6 and 7 are rejected under 35 U.S.C. § 112(a). By claiming a functionally claimed “decoding unit” in claim 6 and a functionally claimed “encoding unit” in claim 7, the claims purport to invoke 35 U.S.C. § 112(f) but fail to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed functions. As such, each claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claims.
Allowable Subject Matter
Claims 1–5 are allowed as containing all the allowable material in the ‘488 patent. No double patenting rejection is made against the ‘488 patent since the claimed application is narrower in scope than the ‘488 patent; the claims of the present invention are not completely anticipated by the claims of the ‘488 patent as required by the one-way test. M.P.E.P. § 804(II)(B)(4). The present application also is not subject to any double patenting rejection against co-pending applications 19/060,065, 19/059,913, 19/060,400, or 19/060,233 as each of the five applications claims a unique feature such that the applications are not variations of each other.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure: AU 2019201649 A1 (commonly owned with present application).
The following prior art was found using an Artificial Intelligence assisted search using an internal AI tool that uses the classification of the application under the Cooperative Patent Classification (CPC) system, as well as from the specification, including the claims and abstract, of the application as contextual information. The documents are ranked from most to least relevant. Where possible, English-language equivalents are given, and redundant results within the same patent families are eliminated. See “New Artificial Intelligence Functionality in PE2E Search”, 1504 OG 359 (15 November 2022), “Automated Search Pilot Program”, 90 F.R. 48,161 (8 October 2025).
US 2019/0246128 A1
US 2021/0136399 A1
US 2022/0094942 A1
US 2019/0342543 A1
US 2019/0124366 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David N Werner whose telephone number is (571)272-9662. The examiner can normally be reached M--F 7:30--4:00 Central.
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, Dave Czekaj can be reached at 571.272.7327. 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.
/David N Werner/Primary Examiner, Art Unit 2487
Prosecution Insights