Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see pgs. 12-14 of the Remarks, filed 8/20/2026, with respect to the rejection of claims 1, 17 and 20, which include the limitations of previous claims 7 and 8, under 35 U.S.C. 103 in view of Flierl, Chen and Li have been fully considered and are persuasive. Particularly the argument on pgs. 12-14 that Chen is specifically directed to multi-hypothesis prediction using only two predictors and hence teaches away from using third and fourth intermediate predictors as required by the claims. The rejection of claims 1-5 and 9-20 over Flierl, Chen and Li has been withdrawn.
However, upon further examination the claims are rejected under 35 U.S.C. 112b for lack of clarity regarding certain claim limitations as detailed below. Further the claims remain rejected for Double Patenting as indicated in the previous Office Action dated 5/20/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-5 and 9-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,871,022. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are entirely encompassed by the claims of the ‘022 application. Particularly note claims 1 and 7 of the ‘022 application as corresponding to the limitations of claims 1, 17 and 20 of the instant application. The examiner notes that the ‘022 application includes additional limitations in regard to the use of bi-directional prediction. However, a rejection of double patenting is proper for later filed, broader claims in view of earlier filed, narrow claims.
Claims 1-5 and 9-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,348,759. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are entirely encompassed by the claims of the ‘759 application. Particularly note claims 1 and 7 of the ‘759 application as corresponding to the limitations of claims 1, 17 and 20 of the instant application. The examiner notes that the ‘759 application includes additional limitations in regard to the use of bi-directional prediction. However, a rejection of double patenting is proper for later filed, broader claims in view of earlier filed, narrow claims.
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 1-5 and 9-23 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.
Independent claims 1, 17 and 20 recite:
“wherein partitioning the video block into the second set of sub-blocks is performed for a motion compensation of the video block based on a reference picture in a second reference picture list that is the same as the first reference picture list”
The claim, as written, seems to indicate that the first and second reference picture lists are the same list, which renders the meets and bounds of the ‘second reference picture list’ unclear because if the two reference picture lists are identical, then there is only a single reference picture list.
Claims 1, 17 and 20 further indicate that the partitioning the video block into a second set of sub-blocks is performed for a motion compensation of the video block by partitioning the video block into third and fourth sets of sub-blocks, generating third and fourth intermediate prediction blocks determining a second prediction block based on the third and fourth intermediate blocks and determining a third prediction block based on the first and second prediction blocks. However, the claims also indicate that the first prediction block is determined from first and second intermediate prediction blocks generated from the first and second set of sub-blocks.
Hence the claims indicate that the video block is partitioned into a second set of sub-blocks that is used to generate the first prediction block, and also that the second set of sub-blocks is determined by a motion compensation that determines third and fourth sets of sub-blocks that are combined with the first prediction to generate a third prediction block. The meets and bounds of the claims is unclear as it is unclear how the second set of sub-blocks relates to the third and fourth sets of sub-blocks, and it is also unclear how the first prediction block is formed separately from the third and fourth sets of sub-blocks it requires the second set of sub-blocks which seems to require the third and fourth sets of sub-blocks.
The examiner believes the claim is conflating different embodiments described in par. 187 of the applicant’s specification (par. 146 of PgPub 20250294179). Par. 187 describes an embodiment in which a first set of sub-blocks is determined from a reference picture in the first reference picture list, and a second set of sub-blocks is determined from either the same reference picture or a different reference picture in a second reference picture list. Par. 187 describes a different embodiment in which third and fourth sets of sub-blocks may be determined from a reference picture in a second reference picture list and combined into a second prediction block based on third and fourth intermediate pictures. However, the specification does not indicate an embodiment in which all of the second, third and fourth sets of sub-blocks are obtained from a reference picture in the second reference picture list. The examiner recommends amending the claims to recite only one of the two mutually exclusive embodiments of par. 187.
Claims 2-5, 9-16, 18-19 and 21-23 depend from claims 1, 17 and 20 respectively and are rejected under 112b for including the same unclear claim language.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH CHARLES HALLENBECK-HUBER whose telephone number is (571)272-5248. The examiner can normally be reached Monday to Friday from 9 A.M. to 5 P.M.
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/JEREMIAH C HALLENBECK-HUBER/ Primary Examiner, Art Unit 2423
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