DETAILED ACTION
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 .
Reissue Applications
This application seeks to reissue US Patent No. 12,028,503 (“the ‘503 patent”). In a January 28, 2026 response to the October 24, 2025 non-final Office action, the applicant has amended claims 1, 7, and 8. Claims 1-8 are pending.
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.
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. 12,028,503 is or was involved. These proceedings would include any trial before 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.
Applicant’s Response
The previous Office action described that claim 8 contained nonfunctional language that did not limit the claim. See non-final Office action, 4-6. Claim 8 was also rejected under §112(b) due to this language. The recent amendment of claim 8 overcomes these issues.
The Declaration was objected to in the previous action for failing to include a proper error statement. Id., 6-7. All claims were rejected under § 251 as being based on a defective declaration. Id., 14. In response, the applicant has submitted a new Declaration. However, this Declaration is not legible. See below for a reproduction of the Declaration as it appears in the file:
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Because the error statement in this Declaration cannot be read, a proper error statement has not been filed. Accordingly, the objections and rejections relating to this issue are maintained.
The claims were rejected under double patenting based on US Patent 12,192,522, and provisionally rejected based on a series of related applications. Id., 8-10. The applicant has filed a terminal disclaimer to obviate the provisional double patenting rejections, but argues that the claims of this application are patentably distinct from the claims of the ‘522 patent. Remarks, 11. This is not persuasive. The double patenting rejection stated that “the only limitations found in instant claim 1 that are not found in claim 1 of the '522 patent describe the various information obtained from the bitstream that indicates partitioning type and direction. The POSITA would recognize that this was well known in the art before the effective filing date of the claimed invention.” Non-final Office action, 10-11. Thus the previous action asserted that these features were “common knowledge.” See MPEP 2144.03. The “information obtained from the bitstream that indicates partitioning type and direction” here clearly referred to the “first,” “second,” and “third information” of the claims.
In response, the applicant argues that “Patent No. US12,192,522B2 is silent on ‘first information, second information, third information’.” Remarks, 11. The rejection of the claims acknowledged that the ‘522 patent claims do not include these features, but submitted that they were common knowledge. See above. The applicant has not responded to the substance of the rejection and has not properly traversed the assertion of common knowledge, which is accordingly rendered admitted prior art. See MPEP 2144.03(C). The examiner maintains that it is “beyond dispute” that including information in a bitstream that indicates partitioning type and direction was well-known. Id. Further, the previous action described why the POSITA would have been motivated to include this known feature in the claims of this application. Therefore the claims of this application recite an obvious and patentably indistinct invention over the claims of the ‘522 patent This double patenting rejection is therefore maintained.
Claims 1-8 were rejected under §§ 112(a), 112(b), and 251 due to limitations describing quadtree partitioning. See previous Office action, 11-13. The recent claim amendment to remove these limitations overcomes these rejections.
Objection, 37 CFR 1.173 – Improper Amendments
This application is objected to for failing to comply with the requirements of 37 CFR 1.173(g), which states that claim amendments “must be made relative to the patent.” The 01/28/2026 claim amendments show insertions and deletions relative to the previously-filed amendment, and not relative to the claims of the ‘503 patent. See MPEP 1453. Correction is required.
Objection, 37 CFR 1.175 – Defective Declaration
The reissue declaration that has been filed with this application is defective. The declaration that was filed on 01/28/2026 is not legible. See above. Therefore a proper error statement and declaration have not been received.
The amended claims cover an invention that the claims of the patent did not, therefore this claim has been broadened. MPEP 1412.03 I. In a reissue application that “seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application.” MPEP 1414 II.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,192,522. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application recite only obvious variants of the claims of the ‘522 patent. For instance, the only limitations found in instant claim 1 that are not found in claim 1 of the ‘522 patent describe the various information obtained from the bitstream that indicates partitioning type and direction. The POSITA would recognize that this was well known in the art before the effective filing date of the claimed invention, and thus its inclusion into the claims of the ‘522 patent would have been obvious in order to ensure that the block partition type is properly communicated. All other claims of this application contain subject matter that corresponds to that found in the claims of the ‘522 patent, or only obvious variants thereof.
Claim Rejection, 35 USC § 251 – Defective Declaration
Claims 1-8 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Allowable Subject Matter
Claims 1-8 are rejected above, but recite allowable subject matter. See the previous Office action pg. 14-15 for reasons why these claims recite an allowable invention.
Conclusion
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 ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992