DETAILED ACTION
I. Introduction
This Office action addresses U.S. reissue application number 19/093,392 (“392 Reissue Application” or “instant application”), having a filing date of 28 March 2025. Because the instant application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this proceeding.
The instant application is a divisional reissue of reissue application 18/221,117, filed 12 July 2023, and a reissue of U.S. Patent 11,074,919 (“’919 patent”) titled “ENCODING METHOD, DECODING METHOD, ENCODER, DECODER, PROGRAM, AND RECORDING MEDIUM”, which issued to Takehiro Moriya et al. on 27 July 2021 with claims 1-7 (“issued claims”). The application resulting in the ‘919 patent was filed on 18 November 2019 and assigned U.S. patent application number 16/687,176 (“’176 application”).
II. Other Proceedings
After review of Applicant’s statements as set forth in the instant application, and the examiner's independent review of the ‘919 patent itself and its prosecution history, the examiner has failed to locate any current ongoing litigation. The examiner has likewise failed to locate any previous reexaminations (ex parte or inter partes), supplemental examinations, or other post issuance proceedings.
III. Priority
The ‘176 application is a continuation of application 14/007,844 (“parent ‘844 application”), filed 26 September 2013, now U.S. Patent 10,515,643 (“parent ‘643 patent”), which is the national stage application under 35 U.S.C. § 371 of PCT application PCT/JP2012/057685 (“the PCT application”), filed 26 March 2012.
The ‘176 application also claims priority under 35 U.S.C. § 119(a)-(d) to Japanese application JP 2011-083740, filed 5 April 2011.
As a reissue application, the instant application is entitled to the priority date of the ‘919 patent, the patent being reissued. Thus, the instant reissue application has a priority date of at least 26 March 2012, the filing date of the PCT application.
The Office acknowledges the priority clam under 35 U.S.C. § 119(a)-(d), but notes that the priority claim has not been perfected through the filing of a certified English language translation of the Japanese priority document, which would establish enablement and written description support for the claims, as well as establish the precise priority date for any given feature/limitation/claim. See MPEP §§ 216 and 2136(a)(II).
Priority will be determined on a claim-by-claim basis, as necessary. At this time the earliest priority date of the ‘176 application is presumed to be 5 April 2011.
Because the effective filing date of the instant application is prior to March 16, 2013, the AIA First Inventor to File (“AIA -FITF”) provisions of the AIA do not apply. Instead, the earlier ‘First to Invent’ provisions will apply.
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 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.
IV. Claim Construction
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111 et seq.
Upon review of the original specification and prosecution history, the examiner has found no instances of lexicographic definitions, either express or implied, that are inconsistent with the ordinary and customary meaning of the respective terms. Therefore, for the purposes of claim construction, the examiner concludes that there are no claim terms for which applicant is acting as their own lexicographer. See MPEP § 2111.01(IV).
If applicant intended lexicographic definitions that have not been identified as such by the examiner, they are asked to note the term and the location in the specification or prosecution history supporting the lexicographic definition in response to this Office action.
Additionally, upon review of the pending claims, the examiner finds several instances where the claim terms explicitly include functional language which invokes the provisions of 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181(I), claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
The following phrases have been identified as potentially invoking the provisions of 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. They will be analyzed under the three-prong test, and if determined to invoke § 112(f) or § 112 sixth paragraph, the corresponding structure will be identified.
Functional Phrase #1 (FP#1)
FP#1 (claim 10) includes the following limitation:
processing circuitry configured to perform an encoding step of encoding, by variable-length encoding, an integer value u(n).
The Office notes that the claimed function is computer-implemented (as are the functions associated with FP#2), as evidenced by the fact that the claim is directed to an encoder comprising processing circuitry.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. § 112(f), a general purpose computer is usually sufficient for the corresponding structure for performing a general computing function (e.g., “means for storing data”), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor. In In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011), the court stated:
Those cases involved specific functions that would need to be implemented by programming a general purpose computer to convert it into a special purpose computer capable of performing those specified functions. … By contrast, in the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of ‘processing,’ ‘receiving,’ and ‘storing.’ Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive with the structure disclosed, i.e., a general purpose processor.).
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333. In this instance, the structure corresponding to a 35 U.S.C. § 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. Aristocrat, 521 F.3d at 1338 (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’ WMS Gaming, 184 F.3d at 1349.”) An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011); In re Aoyama, 656 F.3d 1293, 1306 (Fed. Cir. 2011).
FP#1 Three Prong Analysis - Prong A:
The Office notes that FP#1 uses the nonce term “processing circuitry” in combination with a claimed function. Therefore, the Office concludes that Prong A is satisfied (i.e., the claim uses a term [i.e., processing circuitry] that does not have a sufficiently definite meaning as the name for a structure that can perform the claimed function).
FP#1 Three Prong Analysis - Prong B:
FP#1 includes the following function:
encoding, by variable-length encoding, an integer value u(n).
The Office concludes that Prong B is satisfied (i.e., the claimed “processing circuitry” is modified by functional language).
FP#1 Three Prong Analysis - Prong C:
Based upon a review of FP#1, the Office finds that the phrase “processing circuitry configured to perform an encoding step of encoding, by variable-length encoding, an integer value u(n)” does not contain sufficient structure for performing the entire function of FP#1.
The Office concludes that Prong C is satisfied (i.e., the term “processing circuitry” is not modified by sufficient structure, material, or acts for performing the entire claimed function.)
FP#1 Corresponding Structure:
Claim 10 is directed to an encoder comprising “processing circuitry configured to perform an encoding step of encoding, by variable-length encoding, an integer value u(n).” This limitation invokes 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Upon review of applicant’s specification, the Office has identified Encoding Unit 19, discussed at col. 6, lines 8-19, as the corresponding structure for FP#1.
The limitation will be interpreted consistent with this disclosure.
Functional Phrase #2 (FP#2)
FP#2 (claim 10) includes the following limitation:
processing circuitry configured to perform an error encoding step of encoding each of quantized errors r(n).
FP#2 Three Prong Analysis - Prong A:
The Office notes that FP#2 uses the nonce term “processing circuitry” in combination with a claimed function. Therefore, the Office concludes that Prong A is satisfied (i.e., the claim uses a term [i.e., processing circuitry] that does not have a sufficiently definite meaning as the name for a structure that can perform the claimed function).
FP#2 Three Prong Analysis - Prong B:
FP#2 includes the following function:
perform an error encoding step of encoding each of quantized errors r(n).
The Office concludes that Prong B is satisfied (i.e., the claimed “processing circuitry” is modified by functional language).
FP#2 Three Prong Analysis - Prong C:
Based upon a review of FP#2, the Office finds that the phrase “processing circuitry configured to perform an error encoding step of encoding each of quantized errors r(n)” does not contain sufficient structure for performing the entire function of FP#2.
The Office concludes that Prong C is satisfied (i.e., the term “processing circuitry” is not modified by sufficient structure, material, or acts for performing the entire claimed function.)
FP#2 Corresponding Structure:
Claim 10 is directed to an encoder comprising “processing circuitry configured to perform an error encoding step of encoding each of quantized errors r(n).” This limitation invokes 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Upon review of applicant’s specification, the Office has identified Error Encoding Unit 110, discussed at col. 6, lines 31-67, as the corresponding structure for FP#2.
The limitation will be interpreted consistent with this disclosure.
V. Information Disclosure Statement
Applicant’s Information Disclosure Statement (IDS), filed 28 March 2025, has been received and entered into the record. Since the Information Disclosure Statement complies with the provisions of MPEP § 609, the references cited therein have been considered by the examiner.
See attached form PTO-1449.
VI. Preliminary Amendment
Applicant’s preliminary amendment, filed 28 March 2025, has been received and entered into the record.
Claims 1-7 have been canceled, and new claims 8-13 have been added. Claims 8-13 are now pending.
VII. Recapture under 35 U.S.C. § 251
In In re Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three-step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
The Office notes that the ’919 patent is part of a patent family that variously includes claims directed to encoders, and also claims directed to decoders. As the instant claims are directed to encoders, the recapture analysis will be limited to claims in the patent family directed to encoders. Specifically, the parent ‘643 patent and sibling 11,024,319 patent (“sibling ‘319 patent”) issued with claims directed to encoders.
Step 1
Claim 8 of the instant reissue application is directed to an encoding method, analogous to issued claim 1 of the parent ‘643 patent, and also to issued claim 1 of the sibling ‘319 patent.
Claim 10 of the instant reissue application is directed to an encoder, analogous to issued claim 5 of the parent ‘643 patent, and also to issued claim 4 of the sibling ‘319 patent.
Claim 12 of the instant reissue application is directed to a program for executing an encoding method, analogous to issued claim 4 of the parent ‘643 patent, and also to issued claim 7 of the sibling ‘319 patent.
With respect to step 1 (see MPEP § 1412.02(I)(A)), applicants seek to broaden the reissue claims by at least deleting/omitting the following limitations:
encoding information indicating whether each of the error values/quantization errors is positive or negative
error values/quantization errors whose corresponding integers are not zero are encoded with priority in the encoding step.
Step 2
With respect to step 2 (see MPEP § 1412.02(I)(B)), there were several instances where applicants surrendered subject matter during prosecution of the original application. Note that the "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010).
During prosecution of the parent ‘844 application, applicant filed a response to a final rejection on 16 October 2015. Therein, applicant amended independent claims 1, 13, and 22, incorporating the limitation that error values whose corresponding integers are not 0 are encoded with priority in the error encoding step, and presented the following supporting arguments.
With respect to pending rejections under 35 U.S.C. § 101, applicant argued that
“…amended claim 1 now recites the features of dependent Claim 2 by reciting ‘wherein, among said error values, error values whose corresponding integers are not 0 are encoded with priority in the encoding step.’ This is another feature which adds significantly more to the broad concept of ‘a mathematical procedure for converting one form of numerical representation to another.’” (see pages 11-12).
In addition, with respect to the pending rejections under 35 U.S.C. § 103(a), applicant argued that
“…Applicants respectfully submit that ‘among said error values, error values whose corresponding integers are not 0 are encoded with priority in the encoding step’ is not disclosed by Atlas. An advantage of this claimed feature is that it reduces quantization error statistically with consideration for range of error values. Such an advantage is not disclosed or recognized in Atlas. In Atlas, perceptual relevance is considered. By contrast, perceptual relevance is not considered in the present amended claim 1.” (see page 14).
Later in prosecution, after the Patent Trial and Appeal Board (PTAB) affirmed the examiner’s rejections under 35 U.S.C. § 103(a), applicant filed an amendment on 6 July 2018, incorporating the feature of encoding information indicating whether each of the error values is positive or negative, and arguing in their response that the amended claims patentably distinguished over the applied prior art (see pages 11-13).
The examiner subsequently issued a notice of allowance on 21 August 2019. The examiner indicated that the limitation that distinguished the claims over the prior art of record was the error calculation step of calculating the error values including subtracting the integer of each sample divided by the gain. The Office notes that the actual amended limitation that apparently resulted in the allowance of the claims was that in the error calculation step, the value of the sample is obtained by dividing the value of each sample in the frequency domain sample sequence by the gain (see amendment filed 28 March 2019).
As noted in MPEP § 1412.02, “If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable over the art, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art.”
With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome, for example, an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, "[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made." Id.
Given the above-cited surrendered subject matter, and in consideration of the subject matter omitted in independent reissue claims 8, 10, and 12 (cited above in step 1 of the analysis), the Office concludes that the following broader aspects of reissue claims 8-13 are related to the subject matter surrendered during original prosecution of the ‘176 application (including the prosecution of the entire patent family):
encoding information indicating whether each of the error values/quantization errors is positive or negative
error values/quantization errors whose corresponding integers are not zero are encoded with priority in the encoding step.
These limitations have been entirely eliminated from independent reissue claims 8, 10, and 12.
Step 3
With respect to step 3 (see MPEP § 1412.02(I)(C)), the Office has reviewed and analyzed reissue independent claims 8, 10, and 12, and concluded that there has been no material narrowing of the reissue claims in such a way that recapture has been avoided. Therefore, in view of the surrendered subject matter that has been broadened in the reissue claims, claims 8, 10, and 12 are subject to rejection under 35 U.S.C. § 251.
Dependent claims 9, 11, and 13 are likewise rejected, as they fail to restore all of the surrendered subject matter to the claims.
Claims 8-13 are therefore rejected under 35 U.S.C. § 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. § 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
VIII. 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 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 5, and 5 of U.S. Patent No. 10,515,643. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims would be anticipated by the respective reference claims.
It is noted that the recitation of the quantization errors r(n)=x(n)/g-u(n) in reissue claims 8 and 10 are analogous to the error calculation step of reference claims 1 and 5 respectively.
Claims 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 4, 4, 7/1, and 7/1 of U.S. Patent No. 11,024,319. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined claims would be anticipated by the respective reference claims.
IX. Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9, 11, and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, claims 9, 11, and 13 include the limitation that among said quantization errors r(n), quantization errors r(n) whose corresponding integers are not 0 are encoded in the error encoding step.
However, respective parent claims 8, 10, and 12 include the error encoding step of encoding each of quantization errors r(n).
In other words, while the dependent claims include the step of encoding quantization errors whose corresponding integers are not 0, the independent claims already include the step of encoding all quantization errors, without regard for the value of corresponding integers.
Thus, the dependent claims fail to further limit their respective parent claims.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
X. Conclusion
In accordance with MPEP § 1406, the examiner has reviewed and considered the prior art cited or of record in the original prosecution of the ‘919 patent. Applicants are reminded that a listing of the information cited or of record in the original prosecution of the ‘919 patent need not be resubmitted in this reissue application unless Applicant(s) desire the information to be printed on a patent issuing from this reissue application.
Applicant(s) are reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which ‘919 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, other post-grant proceedings in the Office, and litigation.
Applicant(s) are further reminded of the continuing obligation under 37 C.F.R. § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant(s) are also reminded that any amendments to the claims must comply with the provisions of 35 U.S.C. § 112 first paragraph, having clear support and antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Luke S. Wassum whose telephone number is (571) 272-4119. The examiner can normally be reached on Monday - Friday 8 AM-5 PM, alternate Fridays off.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on 571-270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
In addition, INFORMAL or DRAFT communications may be faxed directly to the examiner at 571-273-4119. Such communications must be clearly marked as INFORMAL, DRAFT or UNOFFICIAL.
Patent Center
Patent Center is available to all users for electronic filing and management of patent applications. For more information, please visit the Patent Center information page at www.uspto.gov/patents/apply/patent-center.
/LUKE S WASSUM/Primary Examiner, Art Unit 3992
Conferees:
/Stephen J. Ralis/Primary Examiner, Art Unit 3992 Michael Fuelling /MF/
Supervisory Patent Examiner
Art Unit 3992
lsw
10 September 2026
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