DETAILED ACTION
This Office Action is a response to an application filed on 01/16/2024, in which claims 1-20 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 01/16/2024, 04/04/2024, and 08/06/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 13, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (1, 4, 5, and 7), 18, and 20 of U.S. Patent No. 11,917,136. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 13, and 20 of the instant application are anticipated by claims (1, 4, 5, and 7), 18, and 20 of U.S. Patent No. 11,917,136. Therefore, claim 1, 13, and 20 of the instant application are an obvious variation of claims (1, 4, 5, and 7), 18, and 20 of U.S. Patent No. 11,917,136.
Claims 1, 13, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (1, 2, 3, and 5), 15, and 17 of U.S. Patent No. 12,464,120. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 13, and 20 of the instant application are anticipated by claims (1, 2, 3, and 5), 15, and 17 of U.S. Patent No. 12,464,120. Therefore, claim 1, 13, and 20 of the instant application are an obvious variation of claims (1, 2, 3, and 5), 15, and 17 of U.S. Patent No. 12,464,120.
Claim interpretation
Claim 20’s recitation of a “non-transitory computer-readable storage medium storing a video bitstream that is generated by a video encoding method…” is a product by process claim limitation where the product is the bitstream and the decoding 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 storage medium storing the bitstream (with the structure implied by the encoding steps). The structure includes the encoder, the video block, and other information manipulated by the operation.
To be given patentable weight, the computer-readable storage 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 recording 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 20 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 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (US 2021/0203927 A1).
Regarding claim 20, Wang discloses: non-transitory computer-readable storage medium storing a video bitstream that is generated by a video encoding method (see Wang, paragraph 473).
Allowable Subject Matter
Claims 1-19 would be allowable 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.
Wang (US 2021/0203927 A1)
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached on 5712727383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM A NASRI/Primary Examiner, Art Unit 2483
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