REISSUE OFFICE ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is a reissue office action for US Patent 11,140,373, which included original patent claims 1–13. Applicant requested amendment of the claims on 7/2/2025. Claims 14–26 are pending.
Declaration and Reason for Reissue
This Reissue has been filed pursuant to the original patent being at least partly inoperative or invalid by reason of “claiming more or less than he had the right”, specifically:
“Independent claim 1 of U.S. Patent No. 11,140,373 (at col. 53, line 27) inadvertently broadly recited "position information." Accordingly, new claim 14 presented in this reissue application narrows this feature to recite "position information representing a region position".” (7/2/2025 declaration p. 1).
Specification
The amendment to the specification filed 6/8/2026 has not been approved for entry for the following reasons:
It should use single bracketing rather than double bracketing, as required by 37 CFR § 1.173. Double bracketing should be reserved for situations where the patent to be reissued already includes bracketing as described in MPEP 1453 IV(A).
Provisional application 62/653,527 was not filed “Apr. 8, 2018”, but rather Apr. 5, 2018.
35 USC § 251 Rejections
Claims 14–26 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period.
35 U.S.C. 251 states in part that:
“No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent”.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Claims 14, 20, 25 and 26 and their respective dependent claims are improperly broadened herein in this reissue beyond the two-year statutory period for at least omitting the limitation of “information for a transformation type applied for the regions, and depth information for the regions” as recited in issued claims 1, 7, 12 and 13, as highlighted in the recapture rejection discussed elsewhere herein where facts therein are relied on herein in conjunction with facts below to show timing of broadening herein is beyond two-year statutory period.
The ‘373 patent under reissue herein was published on Oct. 5, 2021, while the instant reissue application was filed on July 2, 2025 with a co-filed amendment that includes new claims broader than the claims of ‘373 due to omitting the limitation noted above. This amendment submitted Oct. 5, 2021 is beyond the two year statutory period.
Claims 14–26 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application (e.g. surrender-generating limitation). Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Below are the pertinent findings of fact relevant to this rejection:
06/25/2020
The 16/958033 application (hereafter the ‘033 application) was filed with 14 claims, after entry of a preliminary amendment.
09/11/2020
A first official action on the merits was mailed rejecting the claims 1-5, 9, 16-21, as indefinite, rejecting claims 1-4, 9, 16-19, and 21 anticipated by PG Pub. 2020/0045286 (Boyce), and rejecting claims 5 and 20 as unpatentable over Boyce in view of PG Pub. 2020/0045286 (Boyce II).
11/25/2020
Applicant filed an amendment/reply amending claims 1-5, 9, and 16-21 where claims 6-8 and 10-15 were previously cancelled. On pages 3, 5 and 6, applicant amends claim 1 (and similarly for claims 16 and 21) to recite “wherein the metadata includes information related to the regions, the information related to the regions includes information representing a position of a region in the decoded pictures, an identifier identifying a view that is associated with the region, and information representing a position of the region in the view identified by the identifier.” (Emphasis in original). On pages 9-12, applicant asserts in-part, “Boyce and Boyce II fail to teach or suggest the emphasized features in claim 1” and “Boyce and Boyce II, either alone or combination do not teach or suggest do not teach all the features of claim 1. Accordingly, claim 1 recites patentable subject matter. Claims 16 and 21 recite similar features, and thus are patentable at least for the reasons as discussed with respect to claim 1.” Applicant also asserts “Claims 2-5, 9, and 17-20 are patentable at least by virtue of their dependency from respective claims 1 and 8.”
12/20/2020
A final official action was mailed maintaining the rejections of claims 1-4, 9, 16-19, and 21 anticipated by PG Pub. 2020/0045286 (Boyce), and claims 5 and 20 as unpatentable over Boyce in view of PG Pub. 2020/0045286 (Boyce II). In reply to applicant remarks, the examiner stated, “Boyce discloses a system used to playback a portion of an entire panoramic video while providing supplemental enhancement information (SEI) messages containing metadata to signal a suggested “most” interesting viewport (See Par. [0020]-[0021]) where the metadata representing a viewport position may contain three or more parameters, such as longitude, latitude and field of view, pitch, yaw, and roll, or azimuth, elevation, and tilt (Par. [0032]). Therefore Boyce clearly teaches pictures including regions for the multiple views (i.e. portions of the entire panoramic video or multiple viewports), and an identifier identifying a view associated with the region and information representing a position of the region (i.e. SEI messages specifies the coordinates of one or more regions corresponding to viewports recommended for display, see Par. [0039]). Therefore, Boyce discloses the amended limitations as claimed. Accordingly, the rejection is maintained”
02/04/2021
Applicant filed a Request for Continued Examination (RCE) under 37 CFR 1.114 with a submission of an amendment/reply amending claims 1-5, 9, and 16-21 where claims 6-8 and 10-15 were previously cancelled, the amendment also added new claims 22 and 23. On pages 7-8, applicant asserts, “receiving video data including pictures for multiple views in which regions for multiple views are packed and metadata; decoding the pictures, the decoded pictures including regions for the multiple views; and rendering a specific view of the multiple views; wherein a region in a decoded picture is mapped to the specific view based on information related to the region in the metadata, wherein the metadata includes information related to the regions, wherein the transformation is further applied for the region based on at least one of rotating the region and mirroring the region, wherein the information related to the region includes information representing a position of the region in the decoded picture, an identifier identifying the specific view, information representing a position of the region mapped on the specific view and information for a transformation applied for the region” and “In particular, claim 1 requires that a region in a decoded picture is mapped to the specific view based on information related to the region in the metadata, and the transformation is further applied for the region based on at least one of rotating the region and mirroring the region. Boyce and Boyce II, individually or in combination, simply do not teach or suggest the above-noted features of Claim 1. Accordingly, claim 1 recites patentable subject matter. Claims 16 and 21 recite similar subject matters, and thus are patentable at least for the reasons as discussed with respect to claim 1. Claims 2-5, 9, and 17-20 are patentable at least by virtue of their dependency from respective claims 1 and 16. Newly added claim 22 is patentable at least by virtue of its dependency from claim 1. Claim 23 recites similar subject matters as claim 1, and thus is patentable at least for the reasons as discussed with respect to claim 1.” (Emphasis in original).
02/19/2021
A non-final official action was mailed maintaining the rejections of claims 1-4, 9, 16-19, and 21 anticipated by PG Pub. 2020/0045286 (Boyce), and claims 5 and 20 as unpatentable over Boyce in view of PG Pub. 2020/0045286 (Boyce II). In reply to applicant remarks, the examiner stated, “Boyce clearly discloses the amended limitation “a region in a decoded picture is mapped to the specific view based on information related to the region in the metadata” in Par. [0077], A viewport may then be generated for the decoded video based on the viewport metadata and more specifically in Fig. 9 and Par. [0039], the omnidirectional viewport SEI message specifies the coordinates of one or more regions of spherical-coordinate geometry (i.e. regions mapped), bounded by four great circles, corresponding to viewports (i.e. specific view) recommended for display. Boyce further discloses amended limitation “the transformation is further applied for the region based on at least one of rotating the region and mirroring the region” in Par. [0077], the client has a decoder to decode the video at 424 and to extract the viewport metadata at 426. A viewport may then be generated for the decoded video based on the viewport metadata. If rotation orientation metadata (i.e. rotating the region) is also included in the metadata, then a rotation may be performed (i.e. transformation) at 427 that is determined by a pitch, roll, and yaw angle or in some other way as indicated in the message. Therefore, Boyce discloses the limitation as claimed. Accordingly, the rejection is maintained.” Emphasis in original.
05/13/2021
Applicant filed an amendment/reply amending claims 1, 2-5, 9, and 16-20 and 23, cancels claim 22, where claims 6-8 and 10-15 were previously cancelled. On pages 8-11, applicant asserts, “In sum, Boyce is about displaying to a user a recommended viewport, a user's selected viewport, or
both. However, Boyce is not directed to providing a picture including regions for multiple views to be multi-represented for each multi-view based on the information for the regions. That is, Boyce does not disclose or suggest: receiving video data including a picture in which regions for multiple views are packed and metadata; decoding the picture; and rendering pictures for the multiple views, wherein the regions are mapped to the multiple views for view representation based on information for the regions in the metadata, wherein the information for the regions includes position information for the regions in the picture, view identifier information representing multiple views for the regions, position information in which the regions are represented in the multiple views for the view identifier information, information for a transformation type applied for the regions, and depth information for the regions” and “Boyce II is used for disclosing a guard band flag and does not compensate for the deficiencies of Boyce above. Accordingly, claim 1 recites patentable subject matter. Claims 16, 21, and 23 recite similar subject matter, and thus are patentable at least for the reasons as discussed with
respect to claim 1. Claims 2-5, 9, and 17-20 are patentable at least by virtue of their dependency from respective claims 1 and 16.” Emphasis in original.
06/03/2021
An allowability notice was mailed with reasons for allowance stating “Applicant has amended independent claim to incorporate detailed subject matter of the video data processing method and apparatus. The closest prior art Boyce (US 2020/0045286 A1) and Boyce (US 2018/0192001 A1) do not disclose the claimed element, “rendering pictures for the multiple views, wherein the regions are mapped to the multiple views for view representation based on information for the regions in the metadata, wherein the information for the regions includes position information for the regions in the picture, view identifier information representing multiple views for the regions, position information in which the regions are represented in the multiple views for the view identifier information, information for a transformation type applied for the regions, and depth information for the regions”. Therefore, the prior art references taken either alone or in combination fails to anticipate or fairly suggest the limitations of the independent claims. While a video data processing method and apparatus for rending pictures for multiple views was known at the time of the invention, Applicant's very specific claimed structure is considered patentable over the prior art of record.”
A reissue will not be granted to "recapture" claimed subject matter which was surrendered in an application to obtain the original patent. See MPEP §1412.20. A three step process is used to apply the recapture rule:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” See MPEP §1412.02(I).
The first step of the three-step process we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims. Upon review of the new independent claims 14 of the present reissue application in comparison to claims 1-13 of ‘373 Patent, the Examiner finds that the Applicant through the July 2, 2025 Amendment herein has broadened the claims by omitting a limitation (bolded text in ‘373 as compared to similar text is broadening herein as shown in table next.
Claim 14 herein
Claim 1 of ‘373
A video data processing method performed by a video reception apparatus, the method comprising:
A video data processing method performed by a video reception apparatus, the method comprising:
receiving video data including a picture in which a region for a view are packed and metadata;
decoding the picture; and
rendering pictures for the view,
wherein the region is mapped to the view for view representation based on information for the region in the metadata,
wherein the information for the region includes position information for the region in the picture,
view identifier information representing a view of related to the region,
position information representing a region position in the view for the view identifier information.
receiving video data including a picture in which regions for multiple views are packed and metadata;
decoding the picture; and
rendering pictures for the multiple views,
wherein the regions are mapped to the multiple views for view representation based on information for the regions in the metadata,
wherein the information for the regions includes position information for the regions in the picture,
view identifier information representing multiple views for the regions,
position information in which the regions are represented in the multiple views for the view identifier information,
information for a transformation type applied for the regions, and
depth information for the regions.
For instance, the claims in the amendment broadens by omitting the feature “information for a transformation type applied for the regions, and depth information for the regions” as recited in issued claims 1, 7, 12 and 13.
Regarding step 2, Examiner finds that some of the broadening aspects relate to subject matter surrendered during prosecution of the 16/958033 Application leading to the original claims of ‘373 Patent. The Examiner finds that the Applicant through their July 2, 2025 Amendment in this reissue has broadened the claims by omitting a feature relating to the above identified limitation added and argued during examination of the ‘033 application as now particularly recited in issued claims 1, 7, 12 and 13, that regards language added and concurrently argued by Applicant in the reply filed Feb. 4, 2021 amendment (slightly different wording) and May 13, 2021 amendment (original wording of allowed claims) in 16/958033. As noted above in the findings of fact, Examiner stated reason for allowance allowed certain claims because the prior art of record do not disclose the added/argued limitations of claims 1, 8, 21 and 23 during examination of ‘033 application as present in issued claims 1, 7, 12 and 13 in ‘373 patent. It is emphasized that Applicant added these limitations and concurrently argued in their response that the added limitation relating to the now omitted feature with consideration of the Comparison of claims 34, 20, 25 and 26 herein as compared to issued claims 1, 7, 12 and 13 in ‘373 Patent) were a distinguishing limitation over the applied art (e.g., a surrender-generating limitation). As noted above, Applicant argued this feature in their response/amendment during examination. Thus, the noted limitation in issued claims 1, 7, 12 and 13 in ‘373 regards subject matter surrendered during prosecution of the '033 Application leading to the original ‘373 Patent. From prosecution of ‘033 Application, the noted limitation regarding surrendered subject matter must be recited in present claims to avoid improper recapture.
Regarding step 3, Examiner specifically finds that the claims 14, 20, 25 and 26 (and their associated dependent claims) have entirely eliminated a feature/limitation through amendment in this application for which the claims of the original Patent were allowed. The July 2025 amendment herein attempts to improperly recapture surrendered subject matter explicitly surrendered during prosecution of ‘033 Application leading to the ‘373 Patent since an added/argued limitation during examination of ‘033 is eliminated in this reissue application that coincidently regards subject matter relied on during prosecution of parent application to obtain the original patent. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. In re Mostafazadeh, 98 USPQ2d 1639 (Fed Cir 2011), In re Youman, 102 USPQ2d 1862 (Fed Cir 2012).
Next, if surrendered subject matter has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. See MPEP 1412.02 (I)(C). Stated another way, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim. See Id.
In view of the forgoing, the Applicant has attempted in the July 2025 Amendment herein to improperly recapture subject matter explicitly surrendered during prosecution of the ‘033 Application leading to the ‘373 Patent for reasons stated above.
Response To Arguments
§ 251 - Broadening After Two Years
Applicant states:
“Office Action states that claims 14, 20, 25, and 26, and their respective dependent claims, are broader than issued claims 1, 7, 12, and 13 because the reissue claims do not expressly recite "information for a transformation type applied for the regions, and depth information for the regions." The Office Action further compares pending claim 14 with issued claim 1 and identifies this omission as the basis for the alleged broadening.” (6/8/2026 Remarks, p. 8).
“The pending reissue claims should not be considered broadened when the claims are properly read as a whole” (6/8/2026 Remarks, p. 8).
“Pending claim 14 is not directed to the same plural-region and multiple-view subject matter recited in issued claim 1. Rather, pending claim 14 has been rewritten to a narrower single-region and single-view framework.” (6/8/2026 Remarks, p. 8–9).
“The omitted language in originally issued claim 1 is tied to "the regions" and "the multiple views" of the issued claim. Pending claim 14, however, does not claim the same plural "regions" and "multiple views" structure. Instead, pending claim 14 is limited to "the region" and "the view,"” (6/8/2026 Remarks, p. 9).
“pending claim 14 recites a different and narrower implementation in which a single region is mapped to a single view based on the recited information for that region. The pending claim therefore should not be characterized as broader merely because it does not repeat all limitations of the issued claim that were specific to plural regions and multiple views.” (6/8/2026 Remarks, p. 9).
Examiner disagrees. At least the claim language including the transformation type and the depth information that was required by the patent is no longer required by the reissue claims. This represents broadening. That applicant argues there is narrowing otherwise present in the claims does not show a lack of broadening. See MPEP 1412.03 which states in part:
“A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects. See, e.g., 37 CFR 1.175(b).”
In addition and inasmuch as pertinent, examiner believes that amending from “regions for multiple views” to “a region for a view” represents broadening, not narrowing. The patent required plural regions (for example), yet the reissue claims now only require a single region.
Applicant admits that reissue claim 14 (for example) “is not directed to the same plural-region and multiple-view subject matter recited in issued claim 1”. That the reissue claims no longer encompass the patented subject matter effectively demonstrates the broadening.
Examiner recommends restoring the claims to the “multiple-view subject matter”, including the entirety of the patented language, in order to avoid further § 251 broadening rejections.
§ 251 - Recapture
Applicant states:
“Applicant respectfully traverses this rejection as well. As explained above, pending claim 14 is materially narrowed relative to issued claim 1 by changing the claimed framework from "regions for multiple views" to "a region for a view." This narrowing is directly related to the alleged surrendered subject matter because the alleged surrendered language in issued claim 1 was recited in the context of "the regions" and "the multiple views." Pending claim 14 does not seek to reclaim that plural-region/multiple-view subject matter” (6/8/2026 Remarks, p. 10).
Examiner disagrees that this demonstrates material narrowing to avoid recapture. As an example, the phrase “information for a transformation type applied for the regions, and depth information for the regions” was identified as an example of surrender generating language (SGL). The reissue claims now have entirely eliminated this language. This SGL has not been modified or presented in a broader form, this SGL has been eliminated. This indicates improper recapture.
Notification of Proceedings and Material Information
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 this patent 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.
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 extension fee 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 JEFFREY D CARLSON whose telephone number is (571)272-6716. The examiner can normally be reached Mon-Fri 7:30 am to 5:00 pm, off 1st Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached on (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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/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992
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