DETAILED ACTION
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 .
Priority
This application discloses and claims only subject matter disclosed in prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed.
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.
Instant Application (US19/305646)
US12058368
Claim 1: A method for decoding an image, the method comprising: decoding enabled information indicating whether an Intra Block Copy (IBC) mode is enabled or not from sequence parameter set (SPS); decoding maximum number information indicating a maximum number of candidates that can be included in a block vector candidate list, the maximum number information being decoded when the enabled information indicates that the IBC mode is enabled; deriving the block vector candidate list for the current block by inserting at least one block vector candidate; deriving a block vector for the current block based on the block vector candidate list; and obtaining a prediction block of the current block based on the block vector, wherein the block vector for the current block is derived from one of block vector candidates included in the block vector candidate list, wherein when an IBC mode based merge mode is applied to the current block, the one of block vector candidates is selected by a merge index, wherein when an IBC mode based advanced motion vector prediction mode is applied to the current block, the one of block vector candidates is selected by an LO motion vector predictor flag, and wherein when the maximum number of candidates is not greater than 1, decoding the LO motion vector predictor flag is omitted, and a value of the LO motion vector predictor flag is inferred to 0.
Claim 1: A method for decoding an image, the method comprising: decoding enabled information indicating whether an Intra Block Copy (IBC) mode is enabled or not from sequence parameter set (SPS); decoding first maximum number information indicating a maximum number of candidates that can be included in a block vector candidate list, the maximum number information being decoded when the enabled information indicates that the IBC mode is enabled; determining a prediction mode of the current block as the IBC mode; deriving the block vector candidate list for the current block by inserting at least one block vector candidate; and deriving a block vector for the current block based on the block vector candidate list, wherein the block vector for the current block is derived from one of block vector candidates included in the block vector candidate list, wherein when an IBC mode based merge mode is applied to the current block, the one of block vector candidates is selected by a merge index, wherein when an IBC mode based advanced motion vector prediction mode is applied to the current block, the one of block vector candidates is selected by an LO motion vector predictor flag, and wherein when the maximum number of candidates is not greater than 1, decoding the LO motion vector predictor flag is omitted, and a value of the LO motion vector predictor flag is inferred to.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US12058368. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate determining a prediction mode of the current block as the IBC mode and deriving a block vector for the current block based on the block vector candidate list.
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 10 is rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Chang et al. (US20200288175) (hereinafter Chang).
Regarding claim 10, claim 10 claims a product by process claim limitation where the product is the bitstream and the process is the method steps 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 storage medium storing the bitstream (with the structure implied by the method steps). The structure includes the information and samples manipulated by the steps.
“To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated”. 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 memory storing the claimed bitstream in claim 10 merely services as a support for the storage of the bitstream and provides no functional relationship between the stored bitstream and storage medium. Therefore, 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 and is anticipated by Chang which recites a storage medium storing a bitstream.
Chang discloses, a non-transitory computer-readable recording medium storing bitstream generated by the encoding method (0047; receiving an encoding video bitstream from CRM).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALHA M NAWAZ whose telephone number is (571)270-5439. The examiner can normally be reached Flex, M-R 6:30am-3:30pm; F 8:30am-12:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joe G Ustaris can be reached at 571-272-7383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALHA M NAWAZ/ Primary Examiner, Art Unit 2483
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