www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/801,797
`
`02/26/2020
`
`Virginie DRUGEON
`
`2020-0393A
`
`6087
`
`CP
`Lind&
`Wenderoth,
`Wenderoth, Lind & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`DANG,PHILIP
`
`2488
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/30/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`eoa@ wenderoth.com
`kmiller@wenderoth.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/801 ,797
`Examiner
`Philip P Dang
`
`Applicant(s)
`DRUGEON etal.
`Art Unit
`AIA (FITF) Status
`2488
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 8/6/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5,15 and 23-24 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 5,15 and 23-24 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1.2 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`Interview Summary (PTO-413)
`Paper No(s)/Mail Date 8/19/2021,
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210811
`
`

`

`Application/Control Number: 16/801,797
`Art Unit: 2488
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Applicant Responseto Official Action
`
`2.
`
`The responsefiled on 8/6/2021 has been entered and madeofrecord.
`
`Acknowledgment
`
`3.
`
`4.
`
`5.
`
`Claims 1-4, 6-14, and 16-22 canceled on 8/6/2021, are acknowledged by the examiner.
`
`Claims 5, and 15, amended on 8/6/2021, are acknowledged by the examiner.
`
`Claims 23-24, added on 8/6/2021, are acknowledged by the examiner.
`
`Response to Arguments
`
`6.
`
`Applicant's arguments with respect to claims 5 and 15 have been considered but they
`
`are mootin view of the new grounds of rejection necessitated by amendmentsinitiated by the
`
`applicant.
`
`Claim Rejection — 35 U.S.C. § 112
`
`7.
`
`The following is a quotation of 35 U.S.C. 112(a):
`
`(a) INGENERAL.— The specification shall contain a written description of the invention,
`and of the manner and process of making andusing it, in such full, clear, concise, and
`exact terms as to enable any person skilled in the art to which it pertains, or with whichit
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`

`

`Application/Control Number: 16/801,797
`Art Unit: 2488
`
`Page 3
`
`The specification shall contain a written description of the invention, and of the manner
`and process of making and usingit, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same andshall set forth the best mode contemplated
`by the inventor of carrying out his invention.
`
`8.
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`(B) CONCLUSION.— The specification shall conclude with one or more claims
`particularly pointing out and distinctly claiming the subject matter which the inventor or a
`foint inventor regards as the invention.
`
`The following is a quotation of pre-AlA 35 U.S.C. 112, second paragraph:
`
`The specification shall conclude with one or more claims particularly pointing out and
`distinctly claiming the subject matter which the applicant regards as his invention.
`
`9.
`
`Claims 5, 15, and 23-14 are rejected under 35 U.S.C. 112(a) or pre-AlA 35 U.S.C. 112,
`
`first paragraph because of a new matter. The amended claims include following claim limitations
`
`“when @ horizontal size of the block is larger inan a vertical size of ihe blook (7) the
`
`crouitry calculates the first average pixel value as fhe one of the first average pixel value
`
`and the second average pixel value and (ii) when generating the prediction image, the
`
`circuilry applies the first average pixel value to the inner sarnpies’. It is noted that paragraphs
`
`[0054; 0074; 0380; 0404] discuss the case wherethe horizontal size of the blockis larger than
`
`the vertical size of the block. However there is nowherein these paragraphs, or in the
`
`specification, indicates that “when a herizenial size of fhe Block is larger than a vertical size
`
`of the Bleck, 4) the circutry calculates the first average pixel value as the one of the first
`
`average pixel value and ihe second average pixel value anc (i) when generating ihe
`
`prediction imacge, the circuitry aonlies the lirst average pixel value to ihe inner samples’. Asa
`
`result, the claim limitation
`
`
`
`“when a Sorizantal size of ihe block is larger than a vertical size
`
`
`
`
`of the block 4)
`
`
`the circuitry calculates the first average oixel value as the one of ine first
`
`average pixel value and the second average pixel vaiue and fii) when generating the
`3393
`
`prediction image, the circuitry applies the first average pixel yalue fo the inner samples”
`
`is a
`
`

`

`Application/Control Number: 16/801,797
`Art Unit: 2488
`
`Page 4
`
`new matter, which is not described in the application as originally filed. The new matter is
`
`required to be canceled from the claims (Please see MPEP 608.04).
`
`10.
`
`Claims 5, 15, and 23-14 are rejected under 35 U.S.C. 112(a) or pre-AlA 35 U.S.C. 112,
`
`first paragraph because of a new matter. The amended claims include following claim limitations
`
`“when ihe verfical size of ihe block is larger han ihe horizontal sige of the Block, (1) the
`
`elreuliry calculates the second average oixel value as the one of the first average pixel
`
`
`
`
`Valueand the second average pixel value and {li} when generating the prediction image, ine
`
`crecuiry applies the second average pixel value ic the inner sampte’. It is noted that paragraphs
`
`[0054; 0074; 0380; 0404] discuss the case wherethe horizontal size of the blockis larger than
`
`the vertical size of the block. However there is nowherein these paragraphs, or in the
`
`specification, indicates that “wher ihe vertical size of the block is larger than the horizontal
`
`
`
`size of the bloek, the circuitry caloulates the second averace pixel value as the one of ft)
`
`
`
`the first average pixel value and the second average pixel value and (i) when generating the
`
`prediction image, the circuilry applies the second average pixel value fo ine inner sample’. Asa
`
`result, the claim limitation “whenthe vertical size oftheDiock islarger thanihehorizontal
`
`size of the Block, () ihe circuitry calculates the second average pixel value as ihe one of
`
`ihe first average pixel value and the second average pixel value and (u} when generating the
`
`Drediction image, the circuitry applies the second average pixel value to the inner sampleisa
`
`new matter, which is not described in the application as originally filed. The new matter is
`
`required to be canceled from the claims (Please see MPEP 608.04).
`
`11.
`
`Claims 5, 15, and 23-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter, which the inventor or a joint inventor, or for pre-AlA the applicant regards as the
`
`invention. First, it is noted that claims 5, 15, and 23-14 recite "2 frstaverage pine! value of first
`
`relerence samples,” wherein “ihe firsi reference samples being referable and located outside
`
`ihe block and adjacent to an upper side of the block", which definesthe first average pixel value
`
`

`

`Application/Control Number: 16/801,797
`Art Unit: 2488
`
`Page 5
`
`as an average value ofthe first reference samples. Second, these claims redefine and indicate
`
`that “the circuitry calculates the first average pixel value as the one ofthe first average pixel
`
`value and the second average pixel value’. Later, the claims recite “the circuitry applies the first
`
`average pixel value to the inner samples’. Henceit is not clear to readers whetherthe original
`
`value, or the redefined value, of the first average pixel value would be applied to inner
`
`samples. As a result, claims 5, 15, and 23-14 are indefinite and are rejected under 35 U.S.C.
`
`112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph.
`
`12.
`
`Claims 5, 15, and 23-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter, which the inventor or a joint inventor, or for pre-AlA the applicant regards as the
`
`invention. First, it is noted that claims 5, 15, and 23-14 recite "4 second average pixel value of
`a
`second reference samples,” wherein “ihe second reference samples being referable and iocated
`
`outside the black and adjacent to a ieft side of the biock", which defines the second average
`
`pixel value as an average value of the second reference samples. Second, these claims
`
`redefine and indicate that “the circuitry calculates the second average pixel value as the one
`
`of the first average pixel value and the second average pixel value”. Later, the claims recite “the
`
`circuitry applies the second average pixel value to the inner samples’. Henceit is not clear to
`
`readers whetherthe original value, or the redefined value, of the second average pixel value
`
`would be applied to inner samples. As a result, claims 5, 15, and 23-14 are indefinite and are
`
`rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph.
`
`13.
`
`Claims 5, 15, and 23-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter, which the inventor or a joint inventor, or for pre-AlA the applicant regards as the
`
`invention. Claims 5, 15, and 23-14 recite following limitations: “when a horizontal size of the
`
`block is larger than a vertical size of the block, (i) the circuitry calculates the first average pixel
`
`value as the oneofthe first average pixel value and the second average pixel value and(ii)
`
`

`

`Application/Control Number: 16/801,797
`Art Unit: 2488
`
`Page 6
`
`when generating the prediction image, the circuitry applies the first average pixel value to the
`
`inner samples, when the vertical size of the block is larger than the horizontal size of the block,
`
`(i) the circuitry calculates the second average pixel value as the one ofthe first average pixel
`
`value and the second average pixel value and (ii) when generating the prediction image, the
`
`circuitry applies the second average pixel value to the inner samples”. These claims indicate
`
`that in either cases, when the horizontal size of the block is larger than the vertical size of the
`
`block, or vice versa, one of the first average pixel value and the second average pixelvalue will
`
`be calculated as an average value, then this average value is applied to the inner samples. As a
`
`result, it is not clear to readers whythere are two different scenarios in these claims when both
`
`scenarios describe a same process, which leads to a same outcome. As a result, claims 5, 15,
`
`and 23-14 doesnot contain distinctly claim subject matter and are rejected under 35 U.S.C.
`
`112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph.
`
`Allowable Subject Matter
`
`14.
`
`Prior arts were applied for the claims in the previous Office action. Please see the Office
`
`action mailed on 5/6/2021 for details. During the interview conducted on 7/21/2021, the
`
`Examiner suggested the Applicant to include equations in claim5into all of the independent
`
`claims in order to place the application in an allowable condition. Please see the Interview
`
`Summary Record mailed on 7/26/2021 for details. In a responsefiled on 8/6/2021, the Applicant
`
`included these suggestions. However the amendmentfiled on 8/6/2021 creates few objections
`
`and rejections. As a result, claims 5, 15, and 23-14 would be allowed with a condition thatall
`
`objections and rejections of related claims are addressed.
`
`

`

`Application/Control Number: 16/801,797
`Art Unit: 2488
`
`Page 7
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`Reference Notice
`
`15.
`
`Additional prior arts, included in the Notice of Reference Cited, made of record and not
`
`relied upon is considered pertinent to applicant's disclosure.
`
`Conclusion
`
`16.
`
`Applicant's amendment necessitated the new ground(s) of rejection presentedin 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 shortenedstatutory period, then the shortened statutory period
`
`will expire on the date the advisory action is mailed, and any extension fee 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 date of this
`
`final action.
`
`Contact Information
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to Philip Dang whose telephone numberis (408) 918-7529. The examiner
`
`can normally be reached on Monday-Thursday between 8:30 am - 5:00 pm (PST).
`
`Examinerinterviews are available via telephone, in-person, and video conferencing
`
`using a USPTO supplied web-basedcollaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request(AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/801,797
`Art Unit: 2488
`
`Page 8
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Sath Perungavoor can be reached on 571-272-7455. The fax phone numberfor the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on accessto the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
`
`would like assistance from a USPTO CustomerService Representative or access to the
`
`automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Philip P. Dang/
`
`Primary Examiner, Art Unit 2488
`
`