DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged (Earliest filed US Provisional Application 61/625,256 filed on April 17th, 2012).
Response to Arguments
Applicant did not amend the claims.
The pending claims are 1 – 20 [Page 9 lines 1 – 5].
Applicant comments on Examiner’s indication of Allowable Subject Matter [Page 9 lines 6 – 9].
Applicant filed a Terminal Disclaimer on July 18th, 2026 to overcome Examiner’s Obviousness-type Double Patenting Rejection [Page 9 lines 10 – 18].
Applicant amended the Specification to address Examiner’s Specification Objection [Page 9 lines 19 – 21].
Applicant's arguments filed July 20th, 2026 [Page 9 line 22 – Page 10 line 8] have been fully considered but they are not persuasive.
First, the Applicant reiterates the Examiner’s 112 2nd Paragraph Rejection of claims 1 – 8 of claim 1 reciting a limitation that was deemed Indefinite to determine as invoking Functional Analysis [Page 9 line 22 – Page 10 line 2].
Second, the Applicant argues the rejection should have prior art cited to support the reference, but rather the analysis is focused on the Applicant’s Specification as directed in MPEP2181 [MPEP2181 III: “The corresponding structure, material, or acts may be disclosed in the original drawings, figures, tables, or sequence listing. However, the corresponding structure, material, or acts cannot include any structure, material, or acts disclosed only in the material incorporated by reference or a prior art reference. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317, 94 USPQ2d 1261, 1267 (Fed. Cir. 2010) (stating, "[s]imply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references."); Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381, 53 USPQ2d 1225, 1230 (Fed. Cir. 1999). The disclosure must be reviewed from the point of view of one skilled in the relevant art to determine whether that person would understand the written description to disclose the corresponding structure, material, or acts.”]. Thus, in view of Specification Paragraphs 31 and 85, the receiver is not strictly defined nor described as connoting sufficient structure (e.g. software embodiments are contemplated by the Applicant) thus the 112 6th Paragraph analysis is inconclusive regarding the claimed “receiver”.
While the Applicant’s points may be understood, the Examiner respectfully disagrees and thus maintains the Rejection.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 5th, 2025; November 21st, 2025; and January 8th, 2026 were filed before the mailing date of the First Action on the Merits (mailed April 20th, 2026). The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Due to the excessively lengthy Information Disclosure Statement submitted by applicant, the examiner has given only a cursory review of the listed references. In accordance with MPEP 609.04(a), applicant is encouraged to provide a concise explanation of why the information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability. Applicant is required to comply with this statement for any non-English language documents. See 37 CFR § 1.56 Duty to Disclose Information Material to Patentability.
Terminal Disclaimer
The terminal disclaimer filed on July 18th, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patents #12,309,412 and #12,537,971 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
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 1 – 8 are 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 inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “a receiver configurable to receive a bit stream” [Claim 1] has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because while the claimed “decoder circuit” connotes sufficient structure to one of ordinary skill in the art, the claimed “receiver” is not clearly drawn to corresponding structure as all embodiments in the Specification are merely examples. In view of Specification Paragraphs 31 and 85, “software, firmware, and hardware” embodiments for the receiver (e.g. especially in view of Paragraph 85) are possible thus lacking the clear correspondence required should the “receiver” be intended to be functionally claimed in which the Functional Analysis is currently Indefinite. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Regarding claims 2 – 8, the dependent claims do not cure the deficiencies of independent claim 1 and thus are similarly Rejected.
Allowable Subject Matter
Claims 1 – 8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 9 – 20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The Examiner notes the reasons similar to those given in US Application 19/302,558 and are repeated for convenience. Claim 1 is taken as the representative claim with Claims 9 and 17 as reciting similar allowable subject matter thus are similarly Allowable. The claims recite a novel binarization scheme in which the code for a block size indicates the uni-directional reference picture list to use. See the Conclusion Section for closest prior art considered with different binarization schemes than those claimed.
Regarding claims 2 – 8 the dependent claims depend from an indicated Allowable independent claim and thus similar reasons apply.
The following is an examiner’s statement of reasons for allowance: The Examiner notes the reasons similar to those given in US Application 19/302,558 and are repeated for convenience. Claim 9 is taken as the representative claim with claim 17 as reciting similar allowable subject matter thus are similarly Allowable. The claims recite a novel binarization scheme in which the code for a block size indicates the uni-directional reference picture list to use. See the Conclusion Section for closest prior art considered with different binarization schemes than those claimed.
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.”
Regarding claims 10 – 16, and 18 – 20 the dependent claims depend from Allowed independent claim and thus similar reasons apply.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chien, et al. (US Patent #9,398,308 A2 referred to as “Chien” throughout) teaches setting the inter_pred_idc flag and uni-directional signaling considerations in Columns 13 – 14, but in Columns 15 – 16 and 32 uses a different binarization scheme (e.g. 10 for list 0 uni-directional instead of 00 as in the present invention) than the one in the present invention.
Reference found in updated Interference Search: Vishwanath, et al. (US PG PUB 2005/0280156 A1 referred to as “Vish” throughout) teaches considerations in coding uni-directional prediction modes for prediction blocks without block size considerations and binarization schemes as in the present invention.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tyler W Sullivan whose telephone number is (571)270-5684. The examiner can normally be reached IFP.
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.
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/TYLER W. SULLIVAN/Primary Examiner, Art Unit 2487
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