Detailed Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Reissue application 19/182,013 filed 04/17/2025 is a Reissue of 16/404,503, filed 05/06/2019, now U.S. Patent # RE49107 and a Continuation of 18/783,216, filed 07/24/2024. US application 16/404,503 is a Reissue of 15/272,653, filed 09/22/2016 ,now U.S. Patent # 10,074,377 which is a Continuation of PCT/EP2015/055945 , filed 03/20/2015 claims foreign priority to 14161605.2, filed 03/25/2014.
3. For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
4. Claims 1-54 are have been cancelled. Claims 55-74 are newly added claims.
Reissues
5. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. US 10,074,377B2 or RE49107 are involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 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.
Specification
6. The disclosure is objected to because of the following informalities: When an applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identify each of the reissue applications by relationship, application number, and filing date. The cross-reference in the specification serves as a notification to the public that more than one reissue patent may replace a single original patent; and must identify each of the reissue applications and their relationship within the family of reissue applications, and to the original patent. If the reissue applications are still pending, the applicant should be required to amend the specification to cross-reference the multiple applications (37 CFR 1.177(a)). Applicant’s current amendment to the Specification does not identify the related reissue applications by application number. Appropriate correction is required.
Consent of Assignee
7. This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
Specifically, in accordance with MPEP 1410.02 and MPEP 325, the consent of assignee must be signed by a party authorized to act on behalf of the assignee. A person having a title that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee. In this application, the consent of assignee has been signed by “Team Leader Patents”.
Specifically, MPEP 1410.02 states that “The consent of assignee must be signed by a party authorized to act on behalf of the assignee. For applications filed on or after September 16, 2012, the consent may be signed by the assignee or a patent practitioner of record. Where the assignee is a juristic entity, the consent may be signed by a person in the organization having apparent authority to sign on behalf of the organization, or a person who makes a statement of authorization to act on behalf of the assignee. For a discussion of parties authorized to act on behalf of the assignee, see MPEP § 325 (for applications filed on or after September 16, 2012).”
MPEP 325 specifically states that, “The submission may be signed by a person in the organization having apparent authority to sign on behalf of the organization. 37 CFR 3.73(d)(2). An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization…A person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee.
In this application, the consent of assignee has been signed by “Team Leader Patents” which does not meet the requirement of 37 CFR 3.73(d)(2). See MPEP 325 for a list of persons in an organization having the authority to sign on behalf of the organization. A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
35 U.S.C. 251
Reissue Oath/Declaration
8. The reissue oath/declaration filed with this application is defective because 37 CFR. 1.175(c) states:
“The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor’s oath or declaration for a reissue application may be signed by the assignee of the entire interest if:
(1) The application does not seek to enlarge the scope of the claims of the original patent; or
(2) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.”
The inventors have not signed the oath/declaration and the box indicating the application for the original patent was filed under 1.46 by the assignee of the entire interest has not been checked. Thus, the signature on the oath/declaration is not appropriate at the criteria set forth in 37 CFR 1.175(c) has not been met.
Furthermore, even if the assignee could sign the oath/declaration, the reissue oath/declaration filed with this application is defective because it must be signed by a party authorized to act on behalf of the assignee of the entire interest and may not be signed by the patent practitioner of record. See MPEP § 325, subsection V, items (A), (B), and (D) for examples of a party authorized to act on behalf of the assignee of the entire interest in signing a reissue oath or declaration.
In this application, the oath/declaration has been signed by a person for whom it is not clear if they have the authority to sign under the requirement of 37 CFR 3.73(d)(2). See MPEP 325 for a list of persons in an organization having the authority to sign on behalf of the organization. Correction is required.
Double Patenting
9. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
10. Claims 55, 64, and 70 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 12, 21 and 39 of prior U.S. Patent Nos. RE49107 & 10,074,377. This is a statutory double patenting rejection.
11. 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.
12. Claims 59 (dependent on 55), 65 (dependent on 64) and 70-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 55, 63 and 68-72 of copending Application No. 19/182,047 in view of Krishnamurthy, Kapil et al. “Audio Compression using Entropy Coding and Perceptual Noise Substitution, 2009. This is a provisional nonstatutory double patenting rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to a skilled artisan at the time of the invention to have removed entropy encoding because it causes more computational power and time (See Krishnamurthy page 11) and/or added the representation of time information of one or more nodes in a way that the one or more shifted nodes may be identified using the time information (for claims 70-74) in order to provide explicit temporal context so that the decoder knows how many nodes have been shifted back to the previous frame and where they are located.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
13. Claims 55, 64 and 70-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 55, 67 and 76-80 of copending Application No. 19/182,114 in view of Krishnamurthy, Kapil et al. “Audio Compression using Entropy Coding and Perceptual Noise Substitution, 2009. This is a provisional nonstatutory double patenting rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to a skilled artisan at the time of the invention to have removed entropy encoding because it causes more computational power and time (see page 11 of Krishnamurthy) and/or added the shift procedure such that the first node of the nodes of the one reference dynamic range control frame was not selected as one of the shifted nodes because the first node typically does not have a preceding node and its gain value is not encoded in an explicit manner.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
14. Claims 55, 64 and 70-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 55, 65 and 72-76 of copending Application No. 19/181,967 in view of Krishnamurthy, Kapil et al. “Audio Compression using Entropy Coding and Perceptual Noise Substitution, 2009 and Unser, et al., “Cardinal Exponential Splines: Part I – Theory and Filtering Algorithms IEEE Transactions on Signal Processing., Vol. 53, No. 4, April 2005. This is a provisional nonstatutory double patenting rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to a skilled artisan at the time of the invention to have removed entropy encoding because it causes more computational power and time (see page 11 of Krishnamurthy) and added the selecting of the one or more nodes of the dynamic control frame from a uniform time grid in order to provide an equal temporal size because it allowed for better interpolation based on its precision. See Unser.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
15. Claims 55, 64 and 70-74 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 55, 67 and 76-80 of copending Application No. 19/182,088 in view of Krishnamurthy, Kapil et al. “Audio Compression using Entropy Coding and Perceptual Noise Substitution, 2009 and Tiwari, Brijesh, et al., “A New Ultra Low Delay Audio Communication Coder”, October 2013.
Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to a skilled artisan at the time of the invention to have removed entropy encoding because it causes more computational power and time (see page 11 of Krishnamurthy) and used a delay mode to produce the encoded audio bitstream because it does not have to wait for a node to be transmitted which is a critical requirement in real many time applications. See Tiwari.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
16. 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claims 55 and 70:
“an audio encoder configured for producing an encoded audio bitstream”
“a dynamic range control encoder for producing an encoded dynamic range control bitstream”
“the dynamic range control encoder is configured for executing a shift procedure”
“a dynamic range control encoder is configured for encoding the nodes using an entropy encoding technique”
In claim 64:
“an audio decoder configured for decoding an encoded audio bitstream”
“a dynamic range control decoder configured for decoding an encoded dynamic range control bitstream”
“a dynamic range control decoder is configured for decoding the bit representation...using an entropy decoding technique”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Allowable Subject Matter
17. Claims 55-74 are allowable over the prior art; however, the rejections under 35 U.S.C. 251 and double patenting outlined above are still pending.
The prior art of record fails to show either singularly or in combination the feature of “wherein the dynamic range control encoder is configured for executing a shift procedure, wherein one or more of the nodes of one reference dynamic range control frame of the dynamic range control frames are selected as shifted nodes, wherein a bit representation of each of the one or more shifted nodes of the one reference dynamic range control frame is embedded in the bitstream portion corresponding to the dynamic range control frame subsequent to the one reference dynamic range control frame, wherein a bit representation of each remaining node of the nodes of the one reference dynamic range control frame of the dynamic range controls frames is embedded into the bitstream portion corresponding to the one reference dynamic range control frame” as recited in claims 55 and similarly in claims 70, 71, and 73
-or-
“wherein the encoded dynamic range control bit stream comprises bit representations of shifted nodes selected from the nodes of one reference dynamic range control frame of the dynamic range control frames, which are embedded in a bitstream portion corresponding to the dynamic range control frame subsequent to the one reference dynamic range control frame, wherein the bit representation of each remaining node of the nodes of the one reference dynamic range control frame of the dynamic range control frames is embedded into the bitstream portion corresponding to the one reference dynamic range control frame; wherein the dynamic range control decoder is configured for decoding the bit representation of each remaining node of the remaining nodes of the one reference dynamic range control frame of the dynamic range control frames in order to reproduce each remaining node of the one reference dynamic range control frame of the dynamic range control frames, for decoding the bit representation of each shifted node of the shifted nodes selected form the nodes of the one reference dynamic range control frame of the dynamic range control frames in order to reproduce each shifted node of the shifted nodes selected from the nodes of the one reference dynamic range control frame of the dynamic range control frames and for combining the reproduced remaining nodes and the reproduced shifted nodes in order to reconstruct the reference dynamic range control frame” as recited in claim 64 and similarly in claims 72, and 74.
Conclusion
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHNA SINGH DESAI whose telephone number is (571)272-4099. The examiner can normally be reached on M-F 7:30-4PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHNA S DESAI/Primary Examiner, Art Unit 3992
Conferees:
/William H. Wood/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
Prosecution Insights