Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31-53 of U.S. Patent No. 11595675 (17210026). Although the claims at issue are not identical, they are not patentably distinct from each other because there is a mere difference in terminology.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11019352 (169879855). Although the claims at issue are not identical, they are not patentably distinct from each other because there is a mere difference in terminology.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13-20, 22-30 of U.S. Patent No. 1069798 (16109874). Although the claims at issue are not identical, they are not patentably distinct from each other because there is a mere difference in terminology.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 18-20 are rejected under pre-AIA 35 U.S.C. 102a as being anticipated by US 20130003823 A1-Misra et al (Hereinafter referred to as “Misra”).
Claim 18 directed to a non-transitory computer readable storage medium (CRM) storing a data stream. The claim does not recite that the CRM contains executable instruction, that when executed, implement the encoding. The bitstream is a product produced by the encoding. Therefore, the claims are not limited to the recited steps, only the structure implied by the steps. (See MPEP 2113 - Product-by-Process claims.) Hence, the encoding method steps recited are given patentable weight only to structures in the bitstream that are implied by the steps. To be given patentable weight, the CRM and the bitstream (i.e. descriptive material) must be in a functional relationship. A functional relationship can be found where the descriptive material performs some function with respect to the CRM to which it is associated. See MPEP §2111.05(I)(A). When a claimed “computer-readable medium merely serves as a support for information or data, no functional relationship exists”. MPEP §2111.05(III). The CRM storing the claimed bitstream in claim 18 merely services as a support for the CRM of the bitstream and provides no functional relationship between the stored bitstream and the CRM. Therefore, the structure bitstream, which scope is implied by the method steps, is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Thus, the claim scope is just a storage medium storing data and is anticipated by Misra which recites a storage medium storing a bitstream ([0241]).
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.
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LERON . BECK
Examiner
Art Unit 2487
/LERON BECK/Primary Examiner, Art Unit 2487
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