CTNF 19/256,896 CTNF 92054 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of the second paragraph of 35 U.S.C. 112: (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. 07-34-01 AIA Claim 2 is 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 pre-AIA the applicant regards as the invention. Regarding claim 2 , this claim recites “ [a]n encoding apparatus comprising: determining an intra prediction. ” The effect of the current claim language is that the apparatus claim is infringed only when the device is actively performing the steps (performing the method), and not infringed when the device is not performing the step. Because this claim recites both an apparatus and a method for using that apparatus, they do not apprise a person of ordinary skill in the art of their scope, and it is invalid under 35 U.S.C. 112, second paragraph. See IPXL Holding, L.L.C.v. Amazon.com, Inc, 430 F.3d 1377, 1384 (Fed. Cir. 2005) and Ex parte Ezawa (Appeal 2010-006832) for details. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 of U.S. Patent No. 12395678 . Although the claims at issue are not identical, they are not patentably distinct from each other because claim(s) 1-3 of the reference patent recite a method, and claim(s) 1-3 of the present application recites an apparatus comprising a memory and a processor configured to perform the same method steps. The difference in statutory class does not render the claims patentably distinct. The recitation of a generic computer components merely reflects an obvious apparatus implementation for practicing the patent method and does not add patentably distinct structure, function, or result. A person of ordinary skill in the art would have recognized that a generic processor and memory configured to carry out the steps of the referenced method represent a routine and conditional implementation. Accordingly, a terminal disclaimer is required to overcome this rejection . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15-03-aia AIA Claim 3 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Leleannec et al. (US 20220038719 A1), hereinafter referred to as Leleannec . Regarding claim 3 , this claim is directed to an apparatus for transmitting data (bitstream )generated by an encoding method. The limitations related to the operations that generated the bitstream are irrelevant as in terms of determining patentability of the method of transmitting a bitstream Therefore, the operations referenced in the claim(s) that generates the bitstream do not form part of apparatus for transmitting data, and thus are not limiting to the scope of the claim. Thus, the claim scope is just an apparatus for transmitting data (bitstream) comprising: at least one processor configured to obtain and transmit a bitstream of image information which is anticipated by Leleannec (See Leleannec, ¶¶ [0140], [0153] and [0154] ) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for additional references . Any inquiry concerning this communication or earlier communications from the examiner should be directed to FABIO S LIMA whose telephone number is (571)270-0625. The examiner can normally be reached on Monday through Friday, 7:30 AM - 4:00 PM (EST). 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, JAMIE ATALA can be reached on (571)272-7384. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /FABIO S LIMA/Primary Examiner, Art Unit 2486 Application/Control Number: 19/256,896 Page 2 Art Unit: 2486 Application/Control Number: 19/256,896 Page 3 Art Unit: 2486 Application/Control Number: 19/256,896 Page 4 Art Unit: 2486 Application/Control Number: 19/256,896 Page 5 Art Unit: 2486 Application/Control Number: 19/256,896 Page 6 Art Unit: 2486
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