CTNF 19/074,738 CTNF 91679 DETAILED ACTION This Office Action is in response to the application filed on March 10, 2025. Claims 1-4 are pending and are examined. 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. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. 08-36 AIA Claim s 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 of U.S. Patent No. 12,010,292 (the ‘292 patent) in view of U.S. Patent No. 9,955,169 (“Lee”). Although the conflicting claims are not identical, they are not patentably distinct from each other because it would be obvious to one of ordinary skill in the art at the time of invention that claims 1-3 of the ‘292 patent in view of Lee and claims 1-4 of the instant invention cover substantially the same subject matter . The table below shows claim 1, a sample of how each of these claims is rendered unpatentable by claims such as claim 1 of the ‘292 patent in view of Lee: Instant Application 19/074,738 U.S. Patent No. 12,010,292 1. (Original) An image decoding method performed by a decoding apparatus, the method comprising: 1. An image decoding method performed by a decoding apparatus, the method comprising: 1. Limitation 1: parsing image information including Most Probable Mode (MPM) flag information; 1. Limitation 2: parsing MPM index information based on the MPM flag information; 1. Limitation 3: deriving a prediction mode of a neighboring block of a current block for configuring a most probable mode (MPM) list based on the MPM flag information; 1. Limitation 1: deriving a prediction mode of a neighboring block of a current block; 1. Limitation 4: deriving an intra prediction mode candidate for configuring the MPM list based on the derived prediction mode of the neighboring block; 1. Limitation 2: deriving an intra prediction mode candidate for configuring the MPM list based on the derived prediction mode of the neighboring block; 1. Limitation 5: configuring the MPM list based on the derived intra prediction mode candidate; 1. Limitation 3: configuring the MPM list based on the derived intra prediction mode candidate; 1. Limitation 6: determining an intra prediction mode for the current block based on the configured MPM list and the MPM index information; 1. Limitation 4: determining an intra prediction mode for the current block based on the configured MPM list; 1. Limitation 7: deriving prediction samples for the current block based on the determined intra prediction mode for the current block; and 1. Limitation 5: deriving prediction samples for the current block based on the determined intra prediction mode for the current block; and 1. Limitation 8: generating a reconstructed picture based on the prediction samples, 1. Limitation 6: generating a reconstructed picture based on the prediction samples, 1. Limitation 9: wherein the deriving the intra prediction mode candidate includes: 1. Limitation 7: wherein the deriving the intra prediction mode candidate includes: 1. Limitation 10: deriving an INTRA PLANAR mode as the intra prediction mode candidate based on a determination that the prediction mode of the neighboring block is not for intra prediction, without determining whether the prediction mode of the neighboring block is for a combined intra inter prediction (CIIP). 1. Limitation 8: deriving an INTRA PLANAR mode as the intra prediction mode candidate based on a determination that the prediction mode of the neighboring block is not for intra prediction, without determining whether the prediction mode of the neighboring block is for a combined intra inter prediction (CIIP). With respect to claim 1, the ‘292 patent does not disclose parsing image information including Most Probable Mode (MPM) flag information, parsing MPM index information based on the MPM flag information, and determining the intra prediction mode for the current block based on… the MPM index information. However, Lee discloses that it was known, at the time of filing, for MPM-based coding systems to parse MPM flag information and MPM index information therefrom, then use the MPM index information to determine the intra mode for the current block ( see Figs. 6, 8, 9, 13, 16, and 17, 1:55-2:4, 13:13-42, describing decoding/parsing an MPM flag and MPM index information based on the MPM flag, and that such MPM index information is used to determine the intra prediction mode of the current block ). As detailed above, the claims of the ‘292 patent recite the use of an MPM list to determine an intra prediction mode of a current block. At the time of filing, one of ordinary skill in the art was familiar with such lists, with how they were used, and of the communication of information pertaining to them. As evidenced by Lee, this included (sending at the encoder and) parsing at the decoder an MPM flag, an MPM index to the list based on that flag, and the use of the index to determine the MPM mode to be used as the intra prediction mode of the current block. Accordingly, to one of ordinary skill in the art at the time of filing, using such flags and indices to communicate appropriate information about the MPM list of the ‘292 patent to enable its selection of an intra prediction mode for the current block, as taught by Lee, would have represented nothing more than the combination of prior art elements according to known methods to obtain predictable results. Therefore, it would have been obvious to modify the current application to use Lee’s parsing of MPM flag information, MPM index information based on the MPM flag, and the use of such an MPM index to determine the intra prediction mode of the current block. Thereby, claim 1 is not patentably distinct from claim 1 of the ‘292 patent in view of Lee . 08-36 AIA Claim s 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 of U.S. Patent No. 12,267,487 (the ‘487 patent) in view of Lee. Although the conflicting claims are not identical, they are not patentably distinct from each other because it would be obvious to one of ordinary skill in the art at the time of invention that claims 1-3 of the ‘487 patent in view of Lee and claims 1-4 of the instant invention cover substantially the same subject matter . The table below shows claim 1, a sample of how each of these claims is rendered unpatentable by claims such as claim 1 of the ‘292 patent in view of Lee: Instant Application 19/074,738 U.S. Patent No. 12,267,487 1. (Original) An image decoding method performed by a decoding apparatus, the method comprising: 1. A decoding apparatus for image decoding, the decoding apparatus comprising: a memory; and at least one processor connected to the memory, the at least one processor configured to: 1. Limitation 1: parsing image information including Most Probable Mode (MPM) flag information; 1. Limitation 2: parsing MPM index information based on the MPM flag information; 1. Limitation 3: deriving a prediction mode of a neighboring block of a current block for configuring a most probable mode (MPM) list based on the MPM flag information; 1. Limitation 1: derive a prediction mode of a neighboring block of a current block; 1. Limitation 4: deriving an intra prediction mode candidate for configuring the MPM list based on the derived prediction mode of the neighboring block; 1. Limitation 2: derive an intra prediction mode candidate for configuring the MPM list based on the derived prediction mode of the neighboring block; 1. Limitation 5: configuring the MPM list based on the derived intra prediction mode candidate; 1. Limitation 3: configure the MPM list based on the derived intra prediction mode candidate; 1. Limitation 6: determining an intra prediction mode for the current block based on the configured MPM list and the MPM index information; 1. Limitation 4: determine an intra prediction mode for the current block based on the configured MPM list and the MPM index information; 1. Limitation 7: deriving prediction samples for the current block based on the determined intra prediction mode for the current block; and 1. Limitation 5: derive prediction samples for the current block based on the determined intra prediction mode for the current block; and 1. Limitation 8: generating a reconstructed picture based on the prediction samples, 1. Limitation 6: generate a reconstructed picture based on the prediction samples, 1. Limitation 9: wherein the deriving the intra prediction mode candidate includes: 1. Limitation 7: wherein an INTRA PLANAR mode is derived as the intra prediction mode candidate based on… 1. Limitation 10: deriving an INTRA PLANAR mode as the intra prediction mode candidate based on a determination that the prediction mode of the neighboring block is not for intra prediction, without determining whether the prediction mode of the neighboring block is for a combined intra inter prediction (CIIP). 1. Limitation 7: wherein an INTRA PLANAR mode is derived as the intra prediction mode candidate based on a determination that the prediction mode of the neighboring block is not for intra prediction, without determining whether the prediction mode of the neighboring block is for a combined intra inter prediction (CIIP). With respect to claim 1, the ‘487 patent does not disclose parsing image information including Most Probable Mode (MPM) flag information, parsing MPM index information based on the MPM flag information, and determining the intra prediction mode for the current block based on… the MPM index information. However, as detailed above with respect to the ‘292 patent, such elements are disclosed by Lee ( s ee citations above ). The same reasons for combining Lee and the claims of the ‘292 patent above also apply to the claims of the ‘487 patent Thereby, claim 1 is not patentably distinct from claim 1 of the ‘487 patent in view of Lee . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-12-aia AIA (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. 07-06 AIA 15-10-15 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. 07-15-03-aia AIA Claim 3 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Publication No. 6 (“Lou”) . With respect to claim 3, patentable weight is given to data stored on a computer-readable medium when there exists a functional relationship between the data and its associated substrate. MPEP 2111.05 III. For example, if a claim is drawn to a computer-readable medium containing programming, a functional relationship exists if the programming “performs some function with respect to the computer with which it is associated.” Id. However, if the claim recites that the computer-readable medium merely serves as a support for information or data, no functional relationship exists and the information or data is not given patentable weight. Id . Claim 3 is directed to a non-transitory computer-readable medium storing a bitstream generated by the method of claim 2. Neither claim 2, nor claim 3 recite elements or steps are performed by an intended computer, and the bitstream is not a form of programming that causes functions to be performed by an intended computer. This shows that the computer-readable medium merely serves as support for the bitstream and provides no functional relationship between the steps/elements that describe the generation of the bitstream and intended computer system. Therefore, those claim elements are not given patentable weight. Thus, the claim scope is just a storage medium storing data and is anticipated by Lou which recites a storage medium storing a bitstream ( see ¶155 ). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSAY JANE KILE UHL whose telephone number is (571)270-0337. The examiner can normally be reached 8:30 AM-5:00 PM. 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. 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LINDSAY J UHL Primary Examiner Art Unit 2481 /LINDSAY J UHL/Primary Examiner, Art Unit 2481 Application/Control Number: 19/074,738 Page 2 Art Unit: 2481 Application/Control Number: 19/074,738 Page 3 Art Unit: 2481 Application/Control Number: 19/074,738 Page 4 Art Unit: 2481 Application/Control Number: 19/074,738 Page 5 Art Unit: 2481 Application/Control Number: 19/074,738 Page 6 Art Unit: 2481 Application/Control Number: 19/074,738 Page 7 Art Unit: 2481 Application/Control Number: 19/074,738 Page 8 Art Unit: 2481
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