DETAILED ACTION
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 .
Response to Amendment
This office action is in response to communications filed 08/20/2026. Claims 1-24 are pending.
Response to Arguments
Applicant's arguments filed 0have been fully considered but they are not persuasive.
Regarding the prior rejections, the applicant argues the MTS index is not an index indicating an index indicating whether a low frequency non-separable transform is used. The applicant argues that the selection either happens separately or the selection happens before the index.
In response to the arguments, the examiner respectfully disagrees. The examiner notes that the claim states selecting a vertical transform type and a horizontal transform type based on the index and the flag. The claim does not specify how the selection occurs. The applicant is arguing specific limitations that are not found in the claim language. The claim language requires that the selection occurs in some manner depending or based on the index and the flag. Nam discloses selecting a vertical transform type and a horizontal transform type based on the index and the flag (Page 9, paragraph 0113 –Table 6, flag determines intra prediction mode, Figure 11, Page 22, paragraph 0229, Table 11, Page 15, paragraph 0195). It is also noted that in non-separable secondary transform, a transform kernel is selected (paragraph 0128) and NSST index may represent NSST transform kernel (paragraph 0138). It is noted that LFNST discloses that LFNST index may be signaled if the MIP is applied (paragraph 0194-0195). It is also noted that Nam discloses in the Table 6 that the std_idx may indicate one of the transform kernels in the LFNST transform set. Therefore, the limitation is met that the selection is based on the index and the flag.
Regarding the double patenting rejection, the applicant traverses the rejection as the claim is not broader.
In response to the arguments, the examiner respectfully disagrees. The instant applicant is broader than US 12,267,529. US 12,267,529 includes additional limitations (part of one limitation and a second limitation) which are missing from the instant application.
The instant application’s selecting a vertical transform type and a horizontal transform type based on the index and the flag corresponds to US 12,267,529’s selecting at least one transform type based on a size of a transform block responsive to the determining. The examiner notes the selection based on the index and the flag and the Us 12,267,529 it is based on determining of the index and the flag (syntax elements). The rejection is maintained.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 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 –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 7, 8, 13, 14 and 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nam et al (US 2022/0038744 and hereafter referred to as “Nam”).
Regarding Claim 1, Nam discloses a method comprising:
decoding an index indicating whether a low frequency non-separable transform is used and decoding a flag indicating whether matrix-based intra prediction is used (Table 2-5, Page 15, paragraph 0194, Table 6, Page 23, paragraph 0300, Figure 3, 310);
selecting a vertical transform type and a horizontal transform type based on the index and the flag (Page 9, paragraph 0113 –Table 6, flag determines intra prediction mode, Figure 11, Page 22, paragraph 0229, Table 11, Page 15, paragraph 0195); and
decoding at least one video block using the selected vertical transform type and horizontal transform type (Page 19, paragraph 0201-0203, Page 22, paragraph 0229).
Regarding Claim 7, Nam disclose an apparatus comprising a processor (Page 5, paragraph 0076, Figure 3, processors, chipsets)configured to perform:
decoding an index indicating whether a low frequency non-separable transform is used and decoding a flag indicating whether matrix-based intra prediction is used (Table 2-5, Page 15, paragraph 0194, Table 6, Page 23, paragraph 0300, Figure 3, 310);
selecting a vertical transform type and a horizontal transform type based on the index and the flag (Page 9, paragraph 0113 –Table 6, flag determines intra prediction mode, Figure 11, Page 22, paragraph 0229, Table 11, Page 15, paragraph 0195); and
decoding at least one video block using the selected vertical transform type and horizontal transform type (Page 19, paragraph 0201-0203, Page 22, paragraph 0229).
Regarding Claim 13, Nam discloses a method comprising:
obtaining an index indicating whether a low frequency non-separable transform is used and obtaining a flag indicating whether matrix-based intra prediction is used (Page 4-5, paragraph 0069, Table 10, Table 11, Tables 2-6, paragraph 0182, Page 23, paragraph 0235, Page 26, paragraph 0262, Page 27, paragraph 0269, Page 18, paragraph 0199);
selecting a vertical transform type and a horizontal transform type based on the index and the flag (Page 9, paragraph 0113 –Table 6, flag determines intra prediction mode, Figure 11, Page 22, paragraph 0229, Table 11, Page 15, paragraph 0195);
encoding the index and the flag (Page 18, paragraph 0199, Page 4-5, paragraph 0069, Table 10, Table 11, Tables 2-6, paragraph 0182, Page 23, paragraph 0235, Page 26, paragraph 0262, Page 27, paragraph 0269,Tables 2-6); and
encoding at least one video block using the selected vertical transform type and horizontal transform type (Page 9, paragraph 0115).
Regarding Claim 19, Nam discloses an apparatus comprising a processor (Page 3, paragraph 0061) configured to perform:
obtaining an index indicating whether a low frequency non-separable transform is used and obtaining a flag indicating whether matrix-based intra prediction is used (Page 4-5, paragraph 0069, Table 10, Table 11, Tables 2-6, paragraph 0182, Page 23, paragraph 0235, Page 26, paragraph 0262, Page 27, paragraph 0269, Page 18, paragraph 0199);
selecting a vertical transform type and a horizontal transform type based on the index and the flag (Page 9, paragraph 0113 –Table 6, flag determines intra prediction mode, Figure 11, Page 22, paragraph 0229, Table 11, Page 15, paragraph 0195);
encoding the index and the flag (Page 18, paragraph 0199, Page 4-5, paragraph 0069, Table 10, Table 11, Tables 2-6, paragraph 0182, Page 23, paragraph 0235, Page 26, paragraph 0262, Page 27, paragraph 0269,Tables 2-6); and
encoding at least one video block using the selected vertical transform type and horizontal transform type (Page 9, paragraph 0115).
Regarding Claim 2, 8, 14 and 20, Nam discloses all the limitations of Claim 1, 7, 13 and 19 respectively. Nam discloses further comprising decoding information indicative of use of an implicit multiple transform selection mode and wherein selecting the vertical transform type and the horizontal transform type based on the index and the flag comprises implicitly selecting the vertical transform type and the horizontal transform type based on the index and the flag (Page 9, paragraph 0113 –Table 6, flag determines intra prediction mode, Figure 11, Page 22, paragraph 0229, Table 11, Page 15, paragraph 0195).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 16, 20, 21, 25, 26, 30, 31 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Nam in view of Zhao et al (US 2020/0014924 and hereafter referred to as “Zhao”)
Regarding Claim 3, 9, 15, and 21, Nam discloses all the limitations of Claim 1, 7, 13 and 19 respectively. Nam discloses wherein, in a case where the index indicates the low frequency non-separable transform is not used and the second syntax element indicates matrix-based intra prediction mode is not used, selecting the at least one transform (Page 19, paragraph 0202, Page 4-5, paragraph 0069, Table 10, Table 11, Tables 2-6, paragraph 0182, Page 23, paragraph 0235, Page 26, paragraph 0262, Page 27, paragraph 0269, Page 18, paragraph 0199) selecting the vertical transform type and the horizontal transform type comprises selecting the vertical transform type and the horizontal transform type (Table 7).
Nam does not explicitly disclose selecting the at least one transform comprises selecting the at least one transform based on a size of a transform block.
Zhao discloses encoding syntax elements (Figure 5, Page 6, paragraph 0077), selecting at least one transform based on a block size in a case where the first syntax element indicates the low frequency non-separable transform is not used and the second syntax element indicates matrix-based intra prediction mode is not used (Page 4, paragraph 0041, Page 6, paragraph 0077), selecting the at least one transform comprises selecting the at least one transform based on a size of a transform block (Figure 5). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to modify Nam to include the missing limitation as taught by Zhao in order to have a default setting if there is no primary transform type that is signaled (Page paragraph 0041) as disclosed by Zhao as it is beneficial for coding.
It is noted that in claim 3 and 15, the broadest reasonable limitation of in a case is not a limitation that must be performed as it is a contingent limitation and therefore is not required. See MPEP 2111.04(II). The Office is providing a rejection for claim 3 and 15 and is teaching the limitation in order to further prosecution.
Claim 4-6, 10-12, 16-18 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Nam in view of Zhao, as applied to claim 16, 21, 26 and 31 above, further in view of Chiang et al (US 2022/0046240 and hereafter referred to as “Chiang”).
Regarding Claim 4, 10, 16, and 22, Nam and Zhao disclose all the limitations of Claim 3, 9, 15, and 21 respectively. The combination does not explicitly disclose the limitations. Chiang discloses wherein selecting the vertical transform type and the horizontal transform type based on the size of the transform block comprises, in a case where a width of the transform block is greater than 4 and lower than 16, selecting a horizontal discrete sine transform of type 7, and selecting a horizontal discrete cosine transform of type 2 otherwise (Page 5, paragraph 0065, 0066). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Chiang in order to provide better video compression to improve the coding performance (Paragraph 0002) as disclosed by Chiang.
It is noted that in claim 4 and 16, the broadest reasonable limitation of in a case is not a limitation that must be performed as it is a contingent limitation and therefore is not required. See MPEP 2111.04(II). The Office is provided a rejection for claim 5 and 17 and is teaching the limitation in order to further prosecution.
Regarding Claim 5, 11, 17, and 23, Nam and Zhao disclose all the limitations of Claim 3, 9, 15, and 21 respectively. The combination does not explicitly disclose the limitations. Chiang discloses wherein selecting the at least one transform based on the size of the transform block comprises, in a case where a height of the transform block is greater than 4 and lower than 16, selecting a vertical discrete sine transform of type 7, and selecting a vertical discrete cosine transform of type 2 otherwise (Page 5, paragraph 0065, 0066). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Chiang in order to provide better video compression to improve the coding performance (Paragraph 0002) as disclosed by Chiang.
It is noted that in claim 5 and 17, the broadest reasonable limitation of in a case is not a limitation that must be performed as it is a contingent limitation and therefore is not required. See MPEP 2111.04(II). The Office is provided a rejection for claim 5 and 17 and is teaching the limitation in order to further prosecution.
Regarding Claim 6, 12, 18, and 24, Nam and Zhao disclose all the limitations of Claim 3, 9, 15, and 21 respectively. The combination does not explicitly disclose the limitations. Chiang discloses wherein in a case where the index indicates low frequency non-separable transform is used or the flag indicates matrix-based intra prediction mode is used, selecting the vertical transform type and the horizontal transform type comprises selecting a horizontal discrete cosine transform of type 2 and a vertical discrete cosine transform of type 2 (Page 5, paragraph 0065, 0066). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combination to include the missing limitation as taught by Chiang in order to provide better video compression to improve the coding performance (Paragraph 0002) as disclosed by Chiang.
It is noted that in claim 6 and 18, the broadest reasonable limitation of in a case is not a limitation that must be performed as it is a contingent limitation and therefore is not required. See MPEP 2111.04(II). The Office is provided a rejection for claim 6 and 18 and is teaching the limitation in order to further prosecution.
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 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,267,529. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application is broader than US 12,267,529.
Regarding Claim 1 of the instant application
Corresponds to Claim 11 of 12,267,529
A method comprising:
decoding an index indicating whether a low frequency non-separable transform is used and decoding a flag indicating whether matrix-based intra prediction is used;
selecting a vertical transform type and a horizontal transform type based on the index and the flag; and
decoding at least one video block using the selected vertical transform type and horizontal transform type.
A method, comprising:
parsing a bitstream for a first syntax element indicating whether a low frequency non-separable transform is used and a second syntax element indicating whether a matrix-based intra prediction is used;
determining that the first syntax element indicates the low frequency non-separable transform is not used and that the second syntax element indicates the matrix-based intra prediction is not used;
selecting at least one transform type based on a size of a transform block responsive to the determining; and
decoding at least one video block based on the selected at least one transform type.
Claim 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, and 24 of the instant application corresponds to claim 4 and 1, 2, 3, 2 and 3, 5, 8 and5, 6, 7, 6 and 7, 9, 12 and 9, 10, 11, 10 and 11, 13, 16 and 13, 14, 15 and 14-15 of US 12,267,529 respectively.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARZANA HOSSAIN whose telephone number is (571)272-5943. The examiner can normally be reached 9:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher 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.
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/FARZANA HOSSAIN/Primary Examiner, Art Unit 2482
September 30, 2026
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