CTNF 19/177,183 CTNF 88017 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 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. 08-35 Claim 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 15, and 20 of copending Application No. 18759749 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims of instant application anticipate conflicting claims . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-34 AIA Claim s 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 12526401 (18758417) . Although the claims at issue are not identical, they are not patentably distinct from each other because claims of instant application anticipate conflicting claims . Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 10 and 20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre- AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. By using "and/or," the aforementioned claims recite broad limitations designated with "or," followed by narrower limitations designated with "and” in the same claim. The scope of the claim would not be ascertainable since the term raises a question or doubt as to whether the elements listed with "and/or" are merely exemplary of the remainder of the claim, and therefore not required. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Exparte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Exparte Steigewald, 131 USPQ 74 (Bd. App. 1961); Exparte Hall, 83 USPQ 38 (Bd. App. 1948); and Exparte Hasche, 86 USPQ 481 (Bd. App. 1949). 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. 07-15-aia AIA Claim (s) 1 and 11 are rejected under 35 U.S.C. 102 a2 as being anticipated by US 20220329824 A1-Liao et al Hereinafter referred to as “Liao”) .. Regarding claim 1, Liao discloses a video decoding method (Fig. 12, 14, 19-22) , comprising: determining N candidate weight derivation modes ([0102], weights for GPM and weights for AWP; [0103], wherein 56 different kind of weights)) , wherein N is a positive integer ([0102], 2 is a positive integer; [0103], wherein 56 is a positive integer)) ; determining a candidate prediction mode list ([0047], list of prediction modes) , wherein the candidate prediction mode list comprises at least one candidate prediction mode ([0047], atleast prediction mode; [0073], candidate prediction mode) , and the at least one candidate prediction mode comprises a prediction mode determined based on partitioning a template of a current block (decide what prediction mode to use; [0093]; [0142], wherein the first partition 1810 is predicted using a first motion indicated by a first merge index, and a second partition 1820 is predicted using a second motion indicated by a second merge index. ; determining a first weight derivation mode and K first prediction modes based on the N candidate weight derivation modes and the candidate prediction mode list ([0102], weights for GPM and weights for AWP; [0103], wherein 56 different kind of weights; ([0047], atleast prediction mode; [0073], candidate prediction mode))) ,, wherein K is a positive integer and K> 1( [0047], wherein more than 1 prediction mode) ; and predicting the current block based on the first weight derivation mode and the K first prediction modes, to obtain a prediction value of the current block ([0080]) ; wherein determining the candidate prediction mode list comprises: for each first candidate weight derivation mode in the N candidate weight derivation modes, determining a candidate prediction mode list corresponding to the first candidate weight derivation mode ([0103], wherein 56 different kind of weights) . Regarding claim 11, analyses are analogous to those presented for claim 1 and are applicable for claim 11 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220329824 A1-Liao et al Hereinafter referred to as “Liao”), in view of Patent 10397569 B2-Liu et al (Hereinafter referred to as “Liu”) . Regarding claim 10, Liao discloses the method of claim 1 (See claim 1) , Liao fails to disclose wherein a height of a top template of the current block is 1, and/or a width of a left template of the current block is 1. However, in the same field of endeavor, Liu discloses wherein a height of a top template of the current block is 1, and/or a width of a left template of the current block is 1 (Fig. 18) . Therefore, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the claimed invention to modify the method disclosed by Liao to disclose wherein a height of a top template of the current block is 1, and/or a width of a left template of the current block is 1 as taught by Liu, to improve coding efficiency (column 1, lines 13-25). Regarding claim 20, analyses are analogous to those presented for claim 10 and are applicable for claim 20. Allowable Subject Matter 07-43 Claims 2-9, 11-19 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if Double Patent is overcome. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LERON BECK whose telephone number is (571)270-1175. The examiner can normally be reached M-F 8 am-5pm. 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. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Czekaj can be reached at (571) 272-7327. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent- center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. LERON . BECK Examiner Art Unit 2487 /LERON BECK/ Primary Examiner, Art Unit 2487 Application/Control Number: 19/177,183 Page 2 Art Unit: 2487 Application/Control Number: 19/177,183 Page 3 Art Unit: 2487 Application/Control Number: 19/177,183 Page 4 Art Unit: 2487 Application/Control Number: 19/177,183 Page 5 Art Unit: 2487 Application/Control Number: 19/177,183 Page 6 Art Unit: 2487 Application/Control Number: 19/177,183 Page 7 Art Unit: 2487 Application/Control Number: 19/177,183 Page 8 Art Unit: 2487 Application/Control Number: 19/177,183 Page 9 Art Unit: 2487
