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 .
DETAIL ACTION
Priority
This application claims priority to U.S provisional Patent Application No. 62779703, filed on 12/14/2018 and is hereby incorporated by references.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 3/3/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Non-Statutory 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.
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Claim 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12273522 in view of Zou et al (US 20170332095 A1) [e.g. FIG. 14; [0129-0131]], if allowed, would improperly extend the “right to exclude” already granted in the patent. Although the claims at issue are not identical, they are not patentably distinct from each other because it is merely in the terminology used in both sets of claims.
Below is a list of limitations that perform the same function. However different terminology is used in both sets to describe the limitations.
Instant application- 19068264: - Note* bold means different in instant application
Patented application 12273522
1. An encoder, comprising: circuitry; and memory coupled to the circuitry, wherein the circuitry, in operation:
determines whether a first block is available and whether a second block is available, the first block and the second block being defined relative to a current block to be processed;
determines whether a first block is available and whether a second block is available, the first block and the second block being defined relative to a current block to be processed;
determining, from a plurality of prediction modes including the intra mode and the inter mode, the prediction mode used to decode the current block of the image based on the prediction mode information;
sets a value of a first parameter to a common value to specify a context model (i) when intra prediction is applied to the first block and inter prediction is applied to the second block in a case where the first block and the second block are both available and (ii) when inter prediction is applied to the first block and intra prediction is applied to the second block in the case where the first block and the second block are both available;
sets the value of the first parameter to a different value from the common value when inter prediction is applied to both the first block and the second block in the case where the first block and the second block are both available;
encodes, using the context model specified, a second parameter indicating which of intra prediction and inter prediction is to be applied to the current block; and
encodes, using the context model specified, a second parameter indicating which of intra prediction and inter prediction is to be applied to the current block, and
generates a bitstream including the encoded second parameter.
generates a bitstream including the encoded second parameter.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 3 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Zou et al (US 20170332095 A1).
Regarding claim 3, claim 3 claims a product by process claim limitation where the product is the bitstream and the process is the method steps to generate the bitstream. MPEP §2113 recites “Product-by-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. Thus, the scope of the claim is the storage medium storing the bitstream (with the structure implied by the method steps). The structure includes the information and samples manipulated by the steps.
“To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated”. MPEP §2111.05(I)(A). When a claimed “computer-readable medium merely serves as a support for information or data, no functional relationship exists. MPEP §2111.05(III).
The memory storing the claimed bitstream in claim 3 merely services as a support for the storage of the bitstream and provides no fictional relationship between the stored bitstream and storage medium. Therefor the bitstream, which scope is implied by the method steps, is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Thus, the claim scope is just a storage medium storing data and is anticipated by Zou which recites a storage medium storing a bitstream [See Zou; [0046]; storage media for storing encoded video data].
Conclusion
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/ZHUBING REN/Primary Examiner, Art Unit 2483