DETAILED ACTION
This Office Action is in response to the application filed on October 9, 2025. Claims 16-22 are pending and are examined.
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
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim 22 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Publication No. 2013/0016789 (“Lou”).
With respect to claim 22, patentable weight is given to data stored on a computer-readable medium when there exists a functional relationship between the data and its associated substrate. MPEP 2111.05 III. For example, if a claim is drawn to a computer-readable medium containing programming, a functional relationship exists if the programming “performs some function with respect to the computer with which it is associated.” Id. However, if the claim recites that the computer-readable medium merely serves as a support for information or data, no functional relationship exists and the information or data is not given patentable weight. Id. Claim 22 is directed to a non-transitory computer-readable medium storing data that includes a data stream and several clauses that appear to describe how the data stream is generated/coded. These elements or steps are not performed by an intended computer, and the data/data stream is not a form of programming that causes functions to be performed by an intended computer. This shows that the computer-readable medium merely serves as support for the data/data stream and provides no functional relationship between the steps/elements that describe the generation of the data/data stream and intended computer system. Therefore, those claim elements are not given patentable weight. Thus the claim scope is just a storage medium storing data and is anticipated by Lou which recites a storage medium storing a bitstream (see ¶155).
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 16-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-22 of copending Application No. 19/060,581 (the ‘581 application) in view of U.S. Patent Publication No. 2019/0289301 (“Lim”). Although the conflicting claims are not identical, they are not patentably distinct from each other because it would be obvious to one of ordinary skill in the art at the time of invention that claims 16-22 of the ‘581 application in view of Lim and claims 16-22 of the instant invention cover substantially the same subject matter.
The table below shows claim 16, a sample of how each of these claims is rendered unpatentable by claims such as claim 16 of the ‘581 application in view of Lim:
Instant Application 19/354,759
Co-Pending Application 19/060,581
16. (Original) A method of decoding a video, the method comprising:
16. (Original) A method of decoding a video, the method comprising:
16. Limitation 1: determining a partition type of a current coding block, the current coding block being divided into a plurality of sub-blocks according to the partition type representing horizontal partitioning or vertical partitioning;
16. Limitation 1: determining a partition type of a current coding block, the current coding block being divided into a plurality of sub-blocks in response to the partition type;
16. Limitation 7: wherein, when the partition type of the current coding block is horizontal partitioning or vertical partitioning, the current coding block is divided into the plurality of sub-blocks,
16. Limitation 2: constructing an MPM (Most Probable Mode) list of the current coding block, the MPM list comprising MPM candidates derived based on an intra prediction mode of a neighboring block adjacent to the current block;
16. Limitation 2: constructing an MPM (Most Probable Mode) list of the current coding block;
16. Limitation 3: determining an intra prediction mode of the current coding block, based on the MPM list;
16. Limitation 3: determining an intra prediction mode of the current coding block, based on the MPM list;
16. Limitation 4: generating a prediction block for a sub-block based on the intra prediction mode;
16. Limitation 4: generating a prediction block for a sub-block based on the intra prediction mode;
16. Limitation 5: generating a residual block for the sub-block;
16. Limitation 5: generating a residual block for the sub-block …
16. Limitation 6: generating a reconstructed block based on the prediction block and the residual block,
16. Limitation 6: generating a reconstructed block based on the prediction block and the residual block,
16. Limitation 7: wherein a number of the sub-blocks generated by dividing the current coding block is adaptively determined as 2 or more depending on a size of the current coding block;
16. Limitation 8: wherein a number of the sub-blocks generated by dividing the current coding block is adaptively determined as 2 or more depending on a size of the current coding block;
16. Limitation 8: wherein whether to perform an inverse-transform for the sub-block for generating the residual block is determined based on a transform skip flag,
16. Limitation 5: generating a residual block for the sub-block by selectively performing inverse-transform, whether to perform the inverse-transform or not being determined based on a transform skip flag; and
16. Limitation 9: wherein, when the partition type of the current coding block is the horizontal partitioning or the vertical partitioning, the transform skip flag is not decoded from a bitstream regardless of a size of the sub-block, and
16. Limitation 9: wherein, when the partition type of the current coding block is the horizontal partitioning or the vertical partitioning, the transform skip flag is not decoded from a bitstream regardless of a size of the sub-block, and
16. Limitation 10: wherein when decoding the transform skip flag is omitted, it is determined that the inverse-transform is not skipped for generating the residual block for the sub-block.
16. Limitation 10: wherein when decoding the transform skip flag is omitted, it is determined that the inverse-transform is not skipped for generating the residual block for the sub-block.
The claims of the ‘581 application do not recite the MPM list comprising MPM candidates derived based on an intra prediction mode of a neighboring block adjacent to the current block.
However, Lim teaches that it was known for the MPM list comprising MPM candidates derived based on an intra prediction mode of a neighboring block adjacent to the current block (see Figs. 22-24, ¶¶273, 280, 288-290, 293-294, describing that the MPM candidates in the MPM candidate list may be derived from the intra modes of the neighboring blocks adjacent to the current block).
One of ordinary skill in the art at the time of the invention would have understood the different sources for obtaining MPM candidates for MPM candidate lists like that of the ‘581 patent’s claim 16. Such a person would have understood that such sources would include the intra modes of neighboring blocks adjacent to the current block, as evidenced by Lim. Accordingly, combining Lim’s method of obtaining MPM candidates from the intra modes of neighboring blocks adjacent to the current block with claim 16 of the ‘581 application would have been nothing more than the combination of prior art elements according to known methods to achieve predictable results and/or the simple substitution for one element for another to obtain predictable results.
Thereby, claim 16 is not patentably distinct from claim 16 of the ‘581 application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSAY JANE KILE UHL whose telephone number is (571)270-0337. The examiner can normally be reached 8:30 AM-5:00 PM.
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LINDSAY J UHL
Primary Examiner
Art Unit 2481
/LINDSAY J UHL/Primary Examiner, Art Unit 2481
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