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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 have been considered but are moot in view of the new grounds of rejection.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/426392 (reference application), the difference being the limitation “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/411,191 (reference application), the difference being the limitation “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/426,402 (reference application), the difference being the limitations “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block” and “wherein the reconstructed image before the image resizing is used as a reference image for predicting an image other than the reconstructed image whereas the reconstructed image after the image resizing is not used as a reference image for predicting an image other than the reconstructed image”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/426,432 (reference application), the difference being the limitations “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block” and “wherein the reconstructed image before the image resizing is used as a reference image for predicting an image other than the reconstructed image whereas the reconstructed image after the image resizing is not used as a reference image for predicting an image other than the reconstructed image”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/317,151 (reference application), the difference being the limitation “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/320,777 (reference application), the difference being the limitation “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/411,190 (reference application), the difference being the limitation “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/411,192 (reference application), the difference being the limitation “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/411,193 (reference application), the difference being the limitation “wherein the reconstructing the image comprises generating a prediction block for a block included in the image and a residual block corresponding to the prediction block”. Any differences between the application’s claims the patent claims are not patentably distinct as shown by the prior art rejections below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 6, and 7 recite the limitation “whereas the reconstructed image after the image resizing is not used as a reference image for predicting an image other than the reconstructed image” (i.e. only spatial prediction using the resized image is performed). The applicant’s originally filed specification fails to disclose this limitation. In the applicant’s remarks filed 7/22/2026 in co-pending application 19/426,392, the applicant cites [0230] and [0231] of the applicant’s specification as disclosing this limitation. The examiner notes, [0231] states both the original image region and the padded region may be used for spatial reference and the data regarding the image before resizing (i.e. the original image region of the padded image) may be temporally referenced and the data regarding the added or deleted region cannot be temporally referenced (i.e. the original image portion may be temporally referenced while the padded portion is not temporally referenced although padding has been performed). Further, the cited paragraphs [0230] and [0231] do not explicitly preclude (as denoted by the word “not” in line 12 of claim 1) using a resized image for temporal prediction or for prediction of another frame other than the current resized frame.
Claims 2-5 are rejected based on their dependence upon claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY A WILLIAMS whose telephone number is (571)270-7579. The examiner can normally be reached M-F 8:00-5:00.
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, Sath Perungavoor can be reached at 571-272-7455. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFERY A WILLIAMS/Primary Examiner, Art Unit 2488
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