Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-8, 10-14 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 10,070,152 or 10,536,722, claim 1 of U.S. Patent No. 12,418,646 or claim 5 of U.S. Patent No. 8,923,407 in view of Chen et al. (U.S. 2011/0200111), hereinafter Chen. Chen was cited in the Applicant’s IDS dated 8/26/25.
Regarding claim 1, the instant application includes additional limitations of a complementary encoding method for U.S. Patent No. 12,418,646, distributing the encoded video sequence over a communication channel; and causing a decoding of the encoded video sequence in a decoder device, wherein the causing comprises receiving the encoded video sequence by the decoder device.
However, Chen teaches a complementary encoding method to a decoding method, distributing the encoded video sequence over a communication channel; and causing a decoding of the encoded video sequence in a decoder device, wherein the causing comprises receiving the encoded video sequence by the decoder device (Chen fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the system taught by any claim listed above of the U.S. Patents with the missing limitations as taught by Chen to be able to transmit and receive digital video information more efficiently (Chen [0004] and [0068]).
As shown above, all of the limitations are known, they can be applied to a known device such as a video encoder or decoder to yield a predictable result of being able to present the digital video information to a user.
Regarding claim 2, any claim listed above of the U.S. Patents in view of Chen teaches the method of claim 1, further comprising displaying the decoded video sequence (Chen fig. 1).
The same motivation for claim 1 applies to the missing limitations of claim 2.
Regarding claim 3, any claim listed above of the U.S. Patents in view of Chen teaches the method of claim 1, wherein the video sequence includes real-time video (Chen [0067]).
The same motivation for claim 1 applies to the missing limitations of claim 3.
Regarding claims 4 and 11, any claim listed above of the U.S. Patents in view of Chen teaches the method of claims 1 and 10, wherein the video sequence includes archived video (Chen [0067]).
The same motivation for claim 1 applies to the missing limitations of claims 4 and 10.
Regarding claims 5, 12 and 17, any claim listed above of the U.S. Patents in view of Chen teaches the method of claims 1, 10 and 16, wherein the video sequence includes a combination of video from a video content provider and computer-generated graphics (Chen [0067]).
The same motivation for claim 1 applies to the missing limitations of claims 5, 12 and 17.
Regarding claim 6, 13 and 18, any claim listed above of the U.S. Patents in view of Chen teaches the method of claims 1, 10 and 16, wherein the video sequence includes a combination of real-time video and computer-generated graphics (Chen [0067]).
The same motivation for claim 1 applies to the missing limitations of claims 6, 13 and 18.
Regarding claims 7 and 19, any claim listed above of the U.S. Patents in view of Chen teaches the method of claims 1 and 16, wherein distributing the encoded video sequence includes streaming the encoded video sequence over the communication channel (Chen [0066]).
The same motivation for claim 1 applies to the missing limitations of claims 7 and 19.
Regarding claims 8 and 14, any claim listed above of the U.S. Patents in view of Chen teaches the method of claims 1 and 10, wherein the communication channel includes a wide area network (Chen [0069]).
The same motivation for claim 1 applies to the missing limitations of claims 8 and 14.
Regarding claim 10, the instant application includes additional limitations of encoding for U.S. Patent No. 12,418,646, distributing the encoded video sequence over a communication channel; receiving the encoded video sequence by a decoder device; and causing the video sequence to be displayed.
However, Chen teaches complementary encoding to a decoding method, distributing the encoded video sequence over a communication channel; receiving the encoded video sequence by a decoder device; and causing the video sequence to be displayed (Chen fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the system taught by any claim listed above of the U.S. Patents with the missing limitations as taught by Chen to be able to transmit and receive digital video information more efficiently (Chen [0004] and [0068]).
As shown above, all of the limitations are known, they can be applied to a known device such as a video encoder or decoder to yield a predictable result of being able to present the digital video information to a user.
Regarding claim 16, the instant application includes additional limitations of encoding for U.S. Patent No. 12,418,646, causing a distribution of the encoded video sequence over a communication channel; and receiving the encoded video sequence by a decoder device.
However, Chen teaches complementary encoding to a decoding method, causing a distribution of the encoded video sequence over a communication channel; and receiving the encoded video sequence by a decoder device (Chen fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the system taught by any claim listed above of the U.S. Patents with the missing limitations as taught by Chen to be able to transmit and receive digital video information more efficiently (Chen [0004] and [0068]).
As shown above, all of the limitations are known, they can be applied to a known device such as a video encoder or decoder to yield a predictable result of being able to present the digital video information to a user.
Claim 9, 15 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 10,070,152 or 10,536,722, claim 1 of U.S. Patent No. 12,418,646 or claim 5 of U.S. Patent No. 8,923,407 in view of Chen as applied to claim 1 above, and further in view of Chien et al. (U.S. 2012/0170645), hereinafter Chien. Chien was cited in the Applicant’s IDS dated 8/26/25.
Regarding claims 9, 15 and 20, the instant application includes additional limitations of wherein the slice data portion of the encoded video sequence corresponds to a slice in a picture of the video sequence, and wherein the slice includes a largest coding unit including the first region and the second region
However, Chien teaches the method of claims 1, 10 and 16, wherein the slice data portion of the encoded video sequence corresponds to a slice in a picture of the video sequence, and wherein the slice includes a largest coding unit including the first region and the second region (Chien [0034] and [0050]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the system taught by any claim listed above of the U.S. Patents in view of Chen with the missing limitations as taught by Chien to display the filtered video (Chien [0003] and [0005]).
As shown above, all of the limitations are known, they can be applied to a known device such as a video decoder to yield a predictable result of displaying a video.
Remarks
The Examiner attempted to call the Applicant’s Representative on file Carl Peterson on 7/14/26 to request an eTerminal Disclaimer to allow the application for compact prosecution, however, the Applicant’s Representative requested an office action on 7/15/26.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW KWAN whose telephone number is (571)270-7073. The examiner can normally be reached Monday-Friday 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW K KWAN/Primary Examiner, Art Unit 2482
Prosecution Insights