DETAILED ACTION
This non-final action replies to application, filed July 2, 2025 that is a reissue application to reissue 11,140,373 with a co-filed amendment that amends the specification to provide notice this is a reissue application, adds new claims 14-21 and cancels original claims 1-13. Claims 14-26 are pending.
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 .
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.
Reissue Application
Excerpt from MPEP 1412.03 IV (emphasis added herein):
A broadened claim can be presented within two years from the grant of the original patent in a reissue application. In addition, a broadened claim can be presented after two years from the grant of the original patent in a broadening reissue application which was filed within two years from the grant. Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period. (Note: A statement that "the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim" is NOT an unequivocal statement of an intent to broaden.) Thus, a broadened claim may be presented in a reissue application after the two years, even though the broadened claim presented after the two years is different than the broadened claim presented within the two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing (continuation or divisional) reissue application after the two year period. See In re Staats, 671 F.3d 1350, 101 USPQ2d 1930 (Fed. Cir. 2012) which dealt with a continuation of a first reissue application in which the first reissue application was filed within two years of the patent grant. The broadened claims in the continuation reissue application were to an embodiment "alternative" to, and "unrelated" to, the broadened claims of the first reissue application that were filed within the 2-year limit. Notice of broadening was found to be sufficient in this instance, with the court holding that there is no basis for requiring the later broadened claims in the continuation reissue application to be related to, or directed to the same embodiment as in the first reissue application. Id. at 1355, 101 USPQ2d at 1934. "[A]fter a broadening reissue application has been filed within the two year statutory period, an applicant is ‘not barred from making further broadening changes’ after the two year period" regardless of whether the further broadening changes are unrelated to the prior broadening reissue application. Id. A reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964) for a similar rule in interferences.
See also the following cases which pertain to broadened reissues:
In re Graff, 111 F.3d 874, 877, 42 USPQ2d 1471, 1473-74 (Fed. Cir. 1997) (Broadened claims in a continuing reissue application were properly rejected under 35 U.S.C. 251 because the proposal for broadened claims was not made (in the parent reissue application) within two years from the grant of the original patent and the public was not notified that broadened claims were being sought until after the two-year period elapsed.)
In re Fotland, 779 F.2d 31, 228 USPQ 193 (Fed. Cir. 1985), cert. denied, 476 U.S. 1183 (1986) (The failure by an applicant to include an oath or declaration indicating a desire to seek broadened claims within two years of the patent grant will bar a subsequent attempt to broaden the claims after the two year limit.)
In re Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (en banc) (A reissue application with broadened claims was filed within two years of the patent grant; however, the declaration was executed by the assignee rather than the inventor. The Federal Circuit permitted correction of the improperly executed declaration to be made more than two years after the patent grant.)
In re Doll, 419 F.2d 925, 928, 164 USPQ 218, 220 (CCPA 1970) (If the reissue application is timely filed within two years of the original patent grant and the applicant indicates in the oath or declaration that the claims will be broadened, then applicant may subsequently broaden the claims in the pending reissue prosecution even if the additional broadening occurs beyond the two year limit.).
Excerpt from MPEP 1412.03 V (emphasis added herein):
For any broadening reissue application filed on or after September 16, 2012, the inventor’s oath or declaration must identify a specific claim that the application seeks to broaden. See 37 CFR 1.175(b). A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.
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. 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 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 co-filed reissue application states in-part: “New claim 14 presented in this reissue application narrows this feature to recite “position information representing a region position” so as to possibly infer a narrowing reissue application while not declaring this application broadens original claims (“If the reissue is a broadening reissue, a claim that the application seeks to broaden must be identified” as stated in reissue application declaration copied next).
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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, where the amendment co-filed with application on 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 further determines that to the extent there is/are narrowing limitation(s) herein as compared to ‘373 claims, the narrowing limitation(s) herein not present in ‘373 claims such as narrows each occurrence of plural “regions” with singular --a region--, narrows each occurrence of “multiple views” with --a view--, in claims 14, 20, 25 and 26, do not materially narrow the surrendered subject matter such that they are not directed to the surrendered subject matter.
Thus, Examiner specifically finds that the claims 14, 20, 25 and 26 (and their associated dependent claims) have 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, the noted narrowing features added by the preliminary amendment herein are not materially narrowed relative to the surrender-generating limitations. Specifically, independent claims 14, 20, 25 and 26 (and their associated dependent claims) herein have omitted the limitation “information for a transformation type applied for the regions, and depth information for the regions” as recited in issued claims 1, 7, 25 and 26. While to the extent there is/are added or narrowed element(s) herein that are not present in ‘373 claims, those element(s) is/are not directed to the noted surrendered subject matter. 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.
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the US Patent 10,904,492 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mark Sager whose telephone number is (571) 272-4454. The examiner can normally be reached M-Th, 6:30 AM - 3 PM, EST.
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/MARK SAGER/Primary Examiner, Art Unit 3992
Conferees:
/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992