Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
Claim 4 recitation of “a bitstream generated by a encoding method performed by a encoding apparatus, the method comprising…” is 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 recording medium storing the bitstream (with the structure implied by the method steps). The structure includes reference picture list, reference picture set, target picture and other information manipulated by the steps.
To be given patentable weight, recording 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 recording 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 recording medium recording the claimed bitstream in claim 4 merely services as a support for the recording of the bitstream and provides no functional relationship between the stored bitstream and recording 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).
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 4 is/are rejected under pre-AIA 35 U.S.C. 102(a)(2) as being anticipated by Chien et al. US 2012/0250773.
As to claim 4, a non-transitory computer-readable recording medium storing a bitstream that is generated by a encoding method performed by a encoding apparatus, the method comprising: identifying, at an encoder, a target picture and a reference picture set (RPS); generating RPS information usable for generating the RPS at a decoder; generating, based on the target picture and the RPS, a reference picture list (RPL); generating RPL modification information usable for generating the RPL, the RPL modification information including information regarding list sorting associated with the RPL; generating, based on the RPS information, RPL modification information, and the target picture, one or more coding parameters and a slice header, wherein the one or more coding parameter includes a first flag that indicates whether the information regarding the list sorting is included within the slice header and a parameter that represents a number of current-picture referable pictures; encoding the target picture based in part on the RPL to generate encoded picture data; and generating a bitstream representing the target picture, the bitstream including the slice header, the encoded picture data, and the one or more coding parameters, wherein generating the bitstream comprises: including a reference picture sorting presence or absence flag and a reference list sorting order in the RPL modification information if the first flag and the parameter representing the number of current-picture referable pictures have predetermined values. [¶ 0057-0064; ¶ 0231; see Claim Interpretation]
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 2-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5 and 7-8 of U.S. Patent No. 11924451; claims 1 and 3-4 of U.S. Patent No. 11284098; claims 1 of U.S. Patent No. 9667984; claims 1 and 4-5 of U.S. Patent No. 9866856; claims 1-2 and 6-8 of U.S. Patent No. 10194161; claims 1 and 4-5 of U.S. Patent No. 10708609; and claims 1-6 and 10-18 of U.S. Patent No. 12477139. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims are not identical in terms of wording and terminology, the scopes of the claims are the same, and they are not patentably distinct from each other as they are obvious variations of one another.
Allowable Subject Matter
Claims 2-3 are allowed.
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to explicitly (or expressly) anticipate or render obvious each limitation as recited in the claims (independent claims).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNER HOLDER whose telephone number is (571)270-1549. The examiner can normally be reached M-F 7:30-4.
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, Joseph 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.
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.
/ANNER HOLDER/Primary Examiner, Art Unit 2483
Prosecution Insights