DETAILED ACTION
This Office Action is a response to an application filed on 06/25/2025, in which claims 1-20 are pending and ready for examination.
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/19/2026 and 05/26/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 03/16/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent No. 11,979,600, and Patent No. 11,595,679 has been reviewed, but is not accepted. Some of the required applications and patents has not been disclaimed in the Terminal Disclaimer filed on 03/16/2026. More specifically, Patent No. 12,375,711, Copending Application No. 19/249,639, and Copending Application No. 19/249,787 are not identified in the Terminal Disclaimer filed on 03/16/2026.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21, 35, and 38 of U.S. Patent No. 12,375,711. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 16, and 20 of the current application are obvious variation of claims 21, 35, and 38 of U.S. Patent No. 12,375,711. That is, claims 1, 16, and 20 of the instant application are related to a method for video encoding and decoding that is similar to a decoding method of the claims 21, 35, and 38 of the Patented No. 12,375,711.
Claims 1, 16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, and 20 of U.S. Application No. 19/249,639. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 16, and 20 of the current application are obvious variation of claims 1, 16, and 20 of U.S. Application No. 19/249,639. That is, claims 1, 16, and 20 of the instant application are related to a method for video encoding and decoding that is similar to a decoding method of the claims 1, 16, and 20 of the U.S. Application No. 19/249,639.
Claims 1, 16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, and 20 of U.S. Application No. 19/249,787. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 16, and 20 of the current application are obvious variation of claims 1, 16, and 20 of U.S. Application No. 19/249, 787. That is, claims 1, 16, and 20 of the instant application are related to a method for video encoding and decoding that is similar to a decoding method of the claims 1, 16, and 20 of the U.S. Application No. 19/249, 787.
Claim interpretation
Claim 20’s recitation of a “One or more non-transitory computer-readable media having programmed thereon encoded data, in a bitstream, for the current picture, the encoded data including…” is a product by process claim limitation where the product is the bitstream and the decoding process is the operations to generate the bitstream. MPEP §2113 recites “Product-by-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. Thus, the scope of the claim is the computer readable media storing the bitstream (with the structure implied by the encoding steps). The structure includes the encoder, the current picture, and other information manipulated by the operation.
To be given patentable weight, the computer-readable media (a storage medium) 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 storage medium to which it is associated. See MPEP §2111.05(I)(A). When a claimed “computer-readable media” merely serves as a support for information or data, no functional relationship exists”. MPEP §2111.05(III). The storage medium storing the claimed bitstream in claim 20 merely services as a support for the storage of the bitstream and provides no functional relationship between the stored bitstream and storage medium. Therefor the structure of the 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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki (US 2005/0226333 A1)
Regarding claim 20, Suzuki discloses: One or more non-transitory computer-readable media having programmed thereon encoded data, in a bitstream, for a current picture (see Suzuki, paragraph 48-49, and Fig. 9).
Allowable Subject Matter
Claims 1-19 would be allowed over the prior art of record upon overcoming the Double Patenting issue shown above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ogura (US 6,249,612 B1)
Suzuki (US 2005/0226333 A1)
Kobayashi (US 2018/0063547 A1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARYAM A NASRI whose telephone number is (571)270-7158. The examiner can normally be reached 10:00-8:00 M-T.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached on 5712727383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM A NASRI/Primary Examiner, Art Unit 2483
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