DETAILED ACTION
This Office Action is a response to an application filed on 07/03/2025, in which claims 1-7 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 07/03/2025, 04/23/2026, and 05/28/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 this application and a copy has been placed of record in the file.
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, 2, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 7-8 of U.S. Patent No. 11,431,986 in view of Zhao (US 2020/0359049 A1).
Patent No. 11,431,986 does not disclose the limitation of “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list”.
However, Zhao from the same or similar endeavor discloses: a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list (see Zhao, paragraph 98 and 125).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list” as taught by Zhao in the video coding method and apparatus taught by Patent No. 11,431,986 to enhance prediction efficiency when adding an HMVP candidate to a merge candidate list (see Zhao, paragraph 6).
Claims 1, 2, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,812,029 in view of Zhao (US 2020/0359049 A1).
Patent No. 11,812,029 does not disclose the limitation of “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list”.
However, Zhao from the same or similar endeavor discloses: a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list (see Zhao, paragraph 98 and 125).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list” as taught by Zhao in the video coding method and apparatus taught by Patent No. 11,812,029 to enhance prediction efficiency when adding an HMVP candidate to a merge candidate list (see Zhao, paragraph 6).
Claims 1, 2, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 6-9 of U.S. Patent No. 12,088,818 in view of Zhao (US 2020/0359049 A1).
Patent No. 12,088,818 does not disclose the limitation of “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list”.
However, Zhao from the same or similar endeavor discloses: a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list (see Zhao, paragraph 98 and 125).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list” as taught by Zhao in the video coding method and apparatus taught by Patent No. 12,088,818 to enhance prediction efficiency when adding an HMVP candidate to a merge candidate list (see Zhao, paragraph 6).
Claims 1, 2, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, and 7 of U.S. Patent No. 12,753,087 in view of Zhao (US 2020/0359049 A1).
Patent No. 12,753,087 does not disclose the limitation of “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list”.
However, Zhao from the same or similar endeavor discloses: a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list (see Zhao, paragraph 98 and 125).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have “a selection unit configured to select a merging candidate to be used for inter prediction from the merging candidate list” as taught by Zhao in the video coding method and apparatus taught by Patent No. 12,753,087 to enhance prediction efficiency when adding an HMVP candidate to a merge candidate list (see Zhao, paragraph 6).
Claim interpretation
Claim 5’s recitation of a “a non-transitory computer-readable medium storing a bitstream formed by the picture coding method…” is a product by process claim limitation where the product is the bitstream and the coding 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 medium storing the bitstream (with the structure implied by the encoding steps). The structure includes the video coder, the current picture, and other information manipulated by the operation.
To be given patentable weight, the computer-readable medium (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 medium” 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 5 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 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao (US 2020/0359049 A1).
Regarding claim 5, Zhao discloses: A non-transitory computer-readable medium storing a bitstream (see Zhao, paragraph 85).
Allowable Subject Matter
Claims 1-4 and 6-7 would be allowed upon overcoming the Double Patenting rejection shown above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang (US 2021/0321092 A1)
Zhao (US 2020/0359049 A1).
Li (US 2020/0296383 A1)
Zhao (US 2020/0137398 A1)
Zhao (US 11,297,330 B2)
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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/MARYAM A NASRI/Primary Examiner, Art Unit 2483
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