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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/840,906
`
`04/06/2020
`
`Ryuichi KANOH
`
`2020-0775A
`
`1332
`
`an
`Lind&
`Wenderoth,
`Wenderoth, Lind & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`BECK, LERON
`
`2487
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/29/2021
`
`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)
`
`

`

`Application No.
`Applicant(s)
`16/840,906
`KANOH etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LERON BECK
`2487
`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 3/15/2021.
`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 and 7-15 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 10-15 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 5and7-9 is/are rejected.
`1 Claim(s)__ is/are objected to.
`C] Claim(s)
`are subjectto restriction and/or election requirement
`* 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:/Awww.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)M The drawing(s) filed on 4/6/2020 is/are: a)M 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)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() 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 beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been received in 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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210619
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Status of Claims
`
`2. This is a final action on the merits in response to the reply received 3/15/202.
`
`Response to Arguments
`
`3.
`
`4.
`
`Applicant's arguments have been considered but are not persuasive.
`
`Applicant argues that determining a plurality of first inverse transform basis
`
`candidates and inverse-transforms the current block using an inverse transform basis
`
`included in the plurality of first inverse transform basis candidates determined, when the
`
`current block has a size equal to or smaller thanafirst size; and determines a second
`
`inverse transform basis candidate and inverse-transforms the current block using an
`
`inverse transform basis which is the second inverse transform basis
`
`candidate determined, when the current block has a secondsize larger than the first
`
`size.” The examiner would like to note that there are 112B concerns. For example, how
`
`can there be a plurality of first inverse transform basis? Inherently and logically,
`
`if you
`
`have more than one transform basis, wouldn't that be considered more than one, such
`
`as two or three, etc? Therefore, a 112B will be issuedin this office action. Zhao
`
`discloses in [0007], determining a plurality of transform subsets, each identifying more
`
`than one candidate transforms; [0027], wherein decoder applies an inverse transform to
`
`a coefficient block; [0028], discloses that when the video decoderis described as
`
`determining atransform and/or applying a transform, it should be understood that the
`
`video decoderis determining a transform that is the inverse of the transform determined
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 3
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`by the video encoder and/or that the video decoderis applying a transform that is the
`
`inverse of the transform applied by the video encoder; [0029], discloses that video
`
`encoder and the video decoder may each construct a plurality of transform subsets,
`
`each transform subsetidentifies a plurality of candidate transforms. Rejection is
`
`maintained.
`
`Election/Restrictions
`
`Newly submitted claims 10-15 are directed to an invention that is independent or distinct
`
`from the invention originally claimed for the following reasons:
`
`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`l
`
`Claims 5, 7-9, drawn to a decoder, which inverse-transform a
`
`current block to be decoded in an encoded image to decode the current
`
`block, classified in H04n19/60.
`
`Il.
`
`Claims 10-15, drawn to a decoder which determines whether a
`
`size of a luminance block to be inverse transformed satisfiesafirst
`
`condition or not, classified in H04n19/124.
`
`The inventions are distinct, each from the other because of the following reasons:
`
`Inventions | and Il are related as subcombinations disclosed as usable together
`
`in asingle combination. The subcombinations are distinct if they do not overlap in
`
`scope and are not obvious variants, andif it is shown that at least one subcombination
`
`are separately usable.
`
`In the instant case, inventions | and Il have separate utility such
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 4
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`as those different limitations indicated in the respective grouping of claimed inventions
`
`above. They lack the same or corresponding special technical features because group |,
`
`is determinesa plurality of first inverse transform basis candidates and inverse-
`
`transforms the current block using an inverse transform basis includedin the plurality of
`
`first inverse transform basis candidates determined, when the current block has a size
`
`equal to or smaller thanafirst size; and determines a second inverse transform basis
`
`candidate and inverse-transforms the current block using an inverse transform basis
`
`which is the second inverse second transform basis candidate determined, when the
`
`current block has a second size larger than the first size as claimedtherein, is not
`
`presented in the invention of group Il. The special technical feature of group Il, is
`
`determines whether a size of a luminance block to be inverse-transformed satisfies a
`
`first condition or not; performs an inverse-transformation on the luminance block using a
`
`first inverse transform scheme selected from first inverse transform scheme candidates,
`
`whenthe size of the block satisfies the first condition; and performs an inverse-
`
`transformation on the luminance block using a secondinverse transform scheme, when
`
`the size of the block does not satisfy the first condition as claimed therein,
`
`isn’t present
`
`in the invention of group |. See MPEP § 806.05(d).
`
`The examiner has required restriction between subcombinations usable together.
`
`Where applicant elects a subcombination and claims thereto are subsequently found
`
`allowable, any claim(s) depending from or otherwise requiring all the limitations of the
`
`allowable subcombination will be examined for patentability in accordance with 37 CFR
`
`1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a
`
`continuation or divisional application is anticipated by, or includesall the limitations of, a
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 5
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`claim that is allowable in the present application, such claim may be subjectto
`
`provisional statutory and/or nonstatutory double patenting rejections over the claims of
`
`the instant application.
`
`Restriction for examination purposes as indicated is proper because all these
`
`inventions listed in this action are independent or distinct for the reasons given above
`
`and there would be a serious search and/or examination burden if restriction were not
`
`required because at least the following reason(s) apply:
`
`
`
`
`
`
`the inventions have acquired a separate status in the art in view of their
`different classification
`
`
`
`
`
`the inventions have acquired a separate status in the art due to their
`recognized divergent subject matter
`
`
`the inventions require a different field of search (e.g., searching different
`
`
`classes /subclassesor electronic resources, or employing different search
`strategies or search queries).
`
`Applicant
`
`is advised that the reply to this requirement to be complete must
`
`include (i) an election of a invention to be examined even though the requirement
`
`may be traversed (37 CFR 1.143) and(ii) identification of the claims encompassing
`
`the elected invention.
`
`The election of an invention may be made with or without traverse. To reserve a
`
`right to petition, the election must be made with traverse. If the reply does not distinctly
`
`and specifically point out supposederrors in the restriction requirement, the election
`
`shall be treated as an election without traverse. Traversal must be presented at the time
`
`of election in order to be considered timely. Failure to timely traverse the requirement
`
`will result in the loss of right to petition under 37 CFR 1.144.
`
`If claims are added after
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 6
`
`the election, applicant must indicate which of these claims are readable upon the
`
`elected invention.
`
`Should applicant traverse on the ground that the inventions are not patentably
`
`distinct, applicant should submit evidence or identify such evidence now of record
`
`showing the inventions to be obvious variants or clearly admit on the record that this is
`
`the case. In either instance, if the examiner finds one of the inventions unpatentable
`
`over the prior art, the evidence or admission may be usedin a rejection under 35 U.S.C.
`
`103(a) of the other invention.
`
`Applicant is reminded that upon the cancellation of claims to a non-elected
`
`invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one
`
`or more of the currently named inventors is no longer an inventor of at least one claim
`
`remaining in the application. Any amendmentof inventorship must be accompanied by
`
`a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
`
`2.
`
`Since applicant has received an action on the merits for the originally
`
`presented invention, this invention has been constructively elected by original
`
`presentation for prosecution on the merits. Accordingly, claims 10-15 are withdrawn
`
`from consideration as being directed to anon-elected invention. See 37 CFR 1.142(b)
`
`and MPEP § 821.03.
`
`Claim Rejections - 35 USC § 112
`
`5.
`
`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 distinctlyclaiming the subject matter which the inventor ora jointinventor
`regards as the invention.
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 7
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specifications hall conclude with one or more claims particulary pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`6.
`
`Claim 1 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 applications subject to pre-
`
`AIA 35 U.S.C. 112, the applicant), regards as the invention. How can there be a plurality
`
`of first inverse transform basis? Inherently and logically,
`
`if you have more than one
`
`transform basis, wouldn't that be considered more than one, such as twoor three, etc?
`
`In addition, what is this first size that the applicant is referring to? Is the first size related
`
`to another block or the same block as the current block? As of this moment, examiner
`
`will interpret a first size relates to any other block not being the current block.
`
`Claim Rejections - 35 USC § 102
`
`7.
`
`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, orin public use,
`on sale, or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`8.
`
`Claim(s) 1, 4-5, 8 are rejected under 35 U.S.C. 102a1 as being anticipated by US
`
`20160219290-Zhao et al (Hereinafter referred to as “Zhao’).
`
`9.
`
`Regarding claim 1, Zhao discloses a decoder which inverse-transforms a
`
`current block to be decoded in an image to decodethe current block(fig. 6), the
`
`decoder comprising: circuitry ([0068]); and memory ((0068), wherein the circuitry,
`
`using the memory ([0068}):
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 8
`
`determining a plurality of first inverse transform basis candidates and
`
`inverse-transforms the current block using an inverse transform basis included in
`
`the plurality of first inverse transform basis candidates determined((0007],
`
`determining a plurality of transform subsets, each identifying more than one candidate
`
`transforms; [0027], wherein decoder applies an inverse transform to a coefficient block;
`
`[0028], discloses that when the video decoder is described as determining a transform
`
`and/or applying a transform, it should be understood that the video decoderis
`
`determining a transform that is the inverse of the transform determined by the video
`
`encoder and/or that the video decoder is applying a transform that is the inverse of the
`
`transform applied by the video encoder; [0029], discloses that video encoder and the
`
`video decoder may each constructa plurality of transform subsets, each transform
`
`subsetidentifies a plurality of candidate transforms, when the current block has a size
`
`equal to or smaller than a first size ([0285], shows that a current block is 8x8, which
`
`is smaller thanafirst size of another block in [0092], which is 16x16)and
`
`determines one or more second transform basis candidates different from
`
`the plurality of first transform basis candidates and transforms the current block
`
`using a transform basis included in the one or more second transform basis
`
`candidates determined ([0124]) when the current block has a secondsize larger
`
`than thefirst size ([0086)]).
`
`10.
`
`Regarding claim 7, Zhao discloses the decoder according to claim 5.
`
`wherein the second inverse transform basis candidate is included in the plurality
`
`of first inverse transform basis candidates ([(0124]).
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 9
`
`11.
`
`Regarding claim 8, analyses are analogous to those presented for claim 5
`
`and are applicable for claim 8 analyses.
`
`12.
`
`Regarding claim 9, Zhao discloses the decoder according to claim 5,
`
`wherein thefirst size having a length of 16 ([0092]).
`
`Conclusion
`
`13.|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
`
`MONTHSfrom the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHSof 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
`
`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.
`
`14.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LERON BECK whose telephone numberis (571)270-
`
`1175. The examiner can normally be reached on M-F 8 am-5pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 10
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/AWwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, David Czekaj can be reached on (571) 272-7327. The fax phone number
`
`for the organization wherethis application or proceeding is assignedis 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 https://ppair-
`
`my.uspto.gov/pair/PrivateP air. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO Customer Service Representative or access
`
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`
`272-1000.
`
`LERON . BECK
`
`Examiner
`Art Unit 2487
`
`/LERON BECK/
`Primary Examiner, Art Unit 2487
`
`