DETAILED ACTION
This office action is in response to the application filed on 07/02/2025. Claims 1-4 are pending and are examined.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 14/001,024, filed on 08/22/2013.
Information Disclosure Statement
The reference(s) listed on the Information Disclosure Statement(s) submitted on 07/29/2025 03/09/2026 has/have been considered by the examiner (see attached PTO-1449).
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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-4 of US 12382045 B2, in view of 1-10 of US 10609371 B2, since it would have been obvious to one of ordinary skill in the art to utilize a mapping table, which would allow for increased precision during the coding processes and reducing coding costs. Furthermore, the elements are shown by the above-mentioned claims, as noted above, in which it would have been obvious to combine known techniques ready for improvement, to provide predictable results in increasing image quality and coding efficiency while also reducing coding complexity. As such, the invention is made obvious, since they were previously shown in the parent patented claims, albeit in different embodiments.
Regarding independent Claim 4 of the instant application and Claim 4 of US 12382045 B2, examiner notes that the claims are substantially similar in scope, in which a minor difference is an encoding process versus a decoding process. An encoder provides the exact reverse/reciprocal process of a decoder. Therefore, it would have been obvious to one of ordinary skill in the art to recognize that the encoding process is an obvious variant of the decoding process, since the use of an encoding process would necessitate an encoding process to have any value (and vice versa) (see Claim 4 of US 12382045 B2).
Examiner notes that the broader “method” of Claims 1-2 and 4 in the instant application is anticipated by using the “apparatus” in Claims 1-3 of US 12382045 B2 as an obvious variant.
Examiner further notes that any minor differences to the wording of the claims are merely a matter of semantics and do not carry significant patentable weight.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-10 of US 10609371 B2, in view of Claims 1-4 of US 12382045 B2, since it would have been obvious to one of ordinary skill in the art to utilize sequence level coding, which would allow for increased precision during the coding processes and reducing coding costs. Furthermore, the elements are shown by the above-mentioned claims, as noted above, in which it would have been obvious to combine known techniques ready for improvement, to provide predictable results in increasing image quality and coding efficiency while also reducing coding complexity. As such, the invention is made obvious, since they were previously shown in the parent patented claims, albeit in different embodiments.
Regarding independent Claim 4 of the instant application and Claims 1-10 of US 10609371 B2, examiner notes that the claims are substantially similar in scope, in which a minor difference is an encoding process versus a decoding process. An encoder provides the exact reverse/reciprocal process of a decoder. Therefore, it would have been obvious to one of ordinary skill in the art to recognize that the encoding process is an obvious variant of the decoding process, since the use of an encoding process would necessitate an encoding process to have any value (and vice versa) (see Claims 1-10 of US 10609371 B2).
Examiner notes that the broader “method” of Claims 1-2 and 4 in the instant application is anticipated by using the “apparatus” and CRM in Claims 1-10 of US 10609371 B2 as an obvious variant.
Examiner further notes that any minor differences to the wording of the claims are merely a matter of semantics and do not carry significant patentable weight.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3 of US 10045026 B2, in view of 1-4 of US 12382045 B2, since it would have been obvious to one of ordinary skill in the art to utilize sequence level coding, which would allow for increased precision during the coding processes and reducing coding costs. Furthermore, the elements are shown by the above-mentioned claims, as noted above, in which it would have been obvious to combine known techniques ready for improvement, to provide predictable results in increasing image quality and coding efficiency while also reducing coding complexity. As such, the invention is made obvious, since they were previously shown in the parent patented claims, albeit in different embodiments.
Regarding independent Claim 2-4 of the instant application and Claims 1-3 of US 10045026 B2, examiner notes that the claims are substantially similar in scope, in which a minor difference is an encoding process versus a decoding process. An encoder provides the exact reverse/reciprocal process of a decoder. Therefore, it would have been obvious to one of ordinary skill in the art to recognize that the encoding process is an obvious variant of the decoding process, since the use of an encoding process would necessitate an encoding process to have any value (and vice versa) (see Claims 1-3 of US 10045026 B2).
Examiner notes that the broader “method” of Claims 1-2 and 4 in the instant application is anticipated by using the “apparatus” in Claims 1-3 of US 10045026 B2 as an obvious variant.
Examiner notes that the broader CRM of Claim 3 in the instant application is anticipated by using the “apparatus” in Claims 1-3 of US 10045026 B2 as an obvious variant.
Examiner further notes that any minor differences to the wording of the claims are merely a matter of semantics and do not carry significant patentable weight.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3 of US 9749632 B2, in view of 1-4 of US 12382045 B2, since it would have been obvious to one of ordinary skill in the art to utilize sequence level coding, which would allow for increased precision during the coding processes and reducing coding costs. Furthermore, the elements are shown by the above-mentioned claims, as noted above, in which it would have been obvious to combine known techniques ready for improvement, to provide predictable results in increasing image quality and coding efficiency while also reducing coding complexity. As such, the invention is made obvious, since they were previously shown in the parent patented claims, albeit in different embodiments.
Regarding independent Claim 2-4 of the instant application and Claims 1-3 of US 9749632 B2, examiner notes that the claims are substantially similar in scope, in which a minor difference is an encoding process versus a decoding process. An encoder provides the exact reverse/reciprocal process of a decoder. Therefore, it would have been obvious to one of ordinary skill in the art to recognize that the encoding process is an obvious variant of the decoding process, since the use of an encoding process would necessitate an encoding process to have any value (and vice versa) (see Claims 1-3 of US 9749632 B2).
Examiner notes that the broader “method” of Claims 1-2 and 4 in the instant application is anticipated by using the “apparatus” in Claims 1-3 of US 9749632 B2 as an obvious variant.
Examiner notes that the broader CRM of Claim 3 in the instant application is anticipated by using the “apparatus” in Claims 1-3 of US 9749632 B2 as an obvious variant.
Examiner further notes that any minor differences to the wording of the claims are merely a matter of semantics and do not carry significant patentable weight.
EXAMINER’S NOTE: After careful review and consideration of the parent application(s), the remaining parent application(s) are not given an obviousness type double patenting rejection because the instant application is narrower/differing in scope and/or includes non-obvious elements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim 3 is rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Chen et al., US Patent Application Publication No.: 2010/0086025 A1, hereby Chen.
Claim 3 is directed to a non-transitory computer-readable recording medium storing a bitstream. Significantly, the claimed non-transitory computer-readable recording medium is merely memory with non-functional descriptive material and is NOT implementing any actual method; no instructions/steps are being executed. Instead, the claimed storage medium merely stores the data output from and/or generated by a series of acts. In other words, the claims are directed to a mere machine-readable medium storing data content.
Applicant therefore seeks to patent the storage of a bitstream in the abstract. In other words, the claim seeks to patent the content of the information (bitstream comprising video information) and not the process itself. Moreover, this stored bitstream does not impose any definitive physical organization on the data as there is no functional relationship between the bitstream and the storage medium. Overall, Claim 3 and any claims depending therefrom are directed to mere data content (bitstream generated by a series of acts) stored as a bitstream on a computer readable recording medium. Under MPEP 2111.05(III), such claims are merely machine-readable media. Furthermore, the Examiner found and continues to find that there is no disclosed or claimed functional relationship between the stored data and medium. Instead, the medium is merely a support or carrier for the data being stored. Therefore, the data stored and the way such data is generated should not be given patentable weight. See MPEP 2111.05 applying In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). As such, this claim is subject to a prior art rejection based on any non-transitory computer readable media known before the earliest effective filing date of the present application. Therefore, Claim 3 is anticipated by Chen, in which Chen discloses the following:
“A non-transitory computer-readable recording medium storing a bitstream (see Chen, Figs. 1-2, [0013] and [0082])...”
EXAMINER’S NOTE: Applicant has not used the standard non-transitory CRM (non-transitory computer-readable media) claim formats of a) a non-transitory computer-readable medium storing executable instructions that, when implemented by a processor, perform an encoding/decoding method [steps of encoding/decoding method] or a b) non-transitory computer readable medium storing instructions that, when executed by a computer, cause it to perform a specified method that was held to recite patent-eligible product under 35 USC 101 by In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) and endorsed by the USPTO in 77 Fed. Reg. 74618 (Dec. 16, 2014), 2014 Interim Guidance on Patent Subject Matter Eligibility Examples: Abstract Ideas at 1-3, 8-10.
However, such standard non-transitory CRM claim formats that recite execution/implementation of a method are not subject to a non-functional descriptive material claim interpretation because such a claimed media does not merely store output data but instead stores functional, method steps that have a functional relationship with the media.
Therefore, the examiner suggests either canceling the claim(s) or amending the claim(s) to a standard non-transitory CRM format or other standard statutory class.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Examiner notes that reference(s) cited disclose coding chrominance component QPs. For example, the following references show similar features in the claims, although not relied upon: Kim (US 20060018559 A1), Figs. 9, 12-13, and 15.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN M WALSH whose telephone number is (571)270-0423. The examiner can normally be reached M-F 8:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Kelley can be reached at (571) 272-7331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHLEEN M WALSH/Primary Examiner, Art Unit 2482
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