DETAILED ACTION
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.
Claims 1–4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–3 of U.S. Patent No. 11,825,117 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because their subject matter substantially overlaps such that one skilled in the art would find the claim language to represent substantially equivalent features.
Claims 1–4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–4 of U.S. Patent No. 12,323,624 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because their subject matter substantially overlaps such that one skilled in the art would find the claim language to represent substantially equivalent features.
Claims 1–4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–4 of U.S. Patent No. 12,284,388 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because their subject matter substantially overlaps such that one skilled in the art would find the claim language to represent substantially equivalent features.
Claim 1–4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–4 of copending Application No. 19/085,144 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because their subject matter substantially overlaps such that one skilled in the art would find the claim language to represent substantially equivalent features.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1–4 are allowed subject to filing a terminal disclaimer.
The following is an examiner’s statement of reasons for allowance: Most of the features of the recited claim were found in the prior art. The feature found allowable is the feature drawn to limiting the filter length (i.e. number of taps) to 2 for DMVR. Lim (US 2019/0268594 A1) explains that filter parameters can be based on the type of prediction being employed and specifically lists Applicant’s affine and DMVR modes as modes envisaged to influence the choice of filter taps and filter coefficients (e.g. Lim, ¶¶ 0840–0841). Lee (US 2015/0139317 A1) teaches, in view of asymmetrical partitioning (e.g. 2x8 sub-PU), filter lengths that exceed the boundaries of the prediction unit (PU) make little sense due to low correlation between the current partition and neighboring partitions (after all, there is a reason the partition was selected to exclude neighboring pixels) and that the filter length should be shortened to match the dimension of the sub-block (e.g. Lee, ¶ 0080 and Fig. 4). It is noted that the length of the filter is the same as the number of taps, which is the same as the number of coefficients. The reasons for allowance of the parent application are instructive and provide a representative rejection of subject matter very similar to claim 1. However, none of the cited references teach or suggest a 2-tap filter for DMVR to reduce memory bandwidth as disclosed and claimed by Applicant.
The closest prior art is Chuang (US 2018/0199057 A1) and Chen (US 2019/0320199 A1). Chuang’s paragraph [0059], for example, explains that a reduced tap-length interpolation filter is desirable for DMVR, but fails to state that the normal HEVC length of 8 should be reduced, specifically, to 2 when encountering DMVR mode. Chen, for example paragraph [0056], explains that additional bandwidth is required for DMVR when the HEVC 8-tap filter is used, but fails to offer the solution of reducing filter length to keep bandwidth low. For these reasons, the claimed feature of 2-tap DMVR appears allowable in view of the prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kemal Ugur et al., “CE3: Interpolation filter with shorter tap-length for small PUs,” Joint Collaborative Team on Video Coding (JCT-VC) of ITU-T SG16 WP3 and ISO/IEC JTC1/SC29/WG11, Document JCTVC-F248, July 2011.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J Hess whose telephone number is (571)270-7933. The examiner can normally be reached Mon - Fri 9:00am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Vaughn can be reached on (571)272-3922. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8933.
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/MICHAEL J HESS/Examiner, Art Unit 2481
Prosecution Insights