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
`
`17/682,139
`
`02/28/2022
`
`Kengo TERADA
`
`2022-0278
`
`8719
`
`wo
`
`o
`
`ACK
`
`WENDEROTH, LIND & PONACK L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`LEE, MICHAEL
`
`2422
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/20/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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)
`
`

`

`
`
`Disposition of Claims*
`1-3 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-3 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`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://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)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)[VM. 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) All
`1... Certified copies of the priority documents have been received.
`2.{¥} Certified copies of the priority documents have been received in Application No. 15/367,222.
`3.4.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230113
`
`Application No.
`Applicant(s)
`17/682,139
`TERADAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`Michael H Lee
`2422
`Yes
`
`
`
`-- The MAILING DATEof this 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 2/28/22.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)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.
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 2
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Double Patenting
`
`2.
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine groundedin 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 timelyfiled terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
`
`may be used to overcome an actualor 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 etseq.for
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 3
`
`applications not subject to examination under the first inventor to file provisions of the
`
`AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The 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
`
`befilled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`moreinformation about eTerminal Disclaimers, refer to
`
`www.uspto.gov/patents/process/file/efs/guidance/eT D-info-l.jsp.
`
`3.
`
`Claims1-3 are rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claims 1-3 of U.S. Patent No. 10,491,853. Although the claims at
`
`issue are not identical, they are not patentably distinct from each other because the
`
`limitation, a bit width of a code value of the video signal is 12 bits as now recited in
`
`claim 1, is obvious feature of the patented claim 1. That is, the video signals in the
`
`patented claim 1 are inherently represented by digital words and the digital words can
`
`be represented in any bit length. Thus, it would have been obvious to one of ordinary
`
`skill in the art to employ any digital word length to represent the video signals in the
`
`current application claim 1. The 12 bits length would have been a matter of obvious
`
`design choice since a digital word can be in any length.
`
`4.
`
`Claim 1
`
`is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of U.S. Patent No. 11,228,730. Although the claims at issue
`
`are not identical, they are not patentably distinct from each other becausethe limitation,
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 4
`
`a bit width of a code value of the video signalis 12 bits as now recited in claim 1, is
`
`obvious feature of the patented claim 1. That is, the video signals in the patented claim
`
`1 are inherently represented by digital words and the digital words can be represented
`
`in any bit length. Thus, it would have been obvious to one of ordinary skill in the art to
`
`employ any digital word length to represent the video signals in the current application
`
`claim 1. The 12 bits length would have been a matter of obvious design choice since a
`
`digital word can be in any length.
`
`5.
`
`Claim 1
`
`is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of U.S. Patent No. 11,233,969. Although the claims at issue
`
`are not identical, they are not patentably distinct from each other becausethe limitation,
`
`a bit width of a code value of the video signalis 12 bits as now recited in claim 1, is
`
`obvious feature of the patented claim 1. That is, the video signals in the patented claim
`
`1 are inherently represented by digital words and the digital words can be represented
`
`in any bit length. Thus, it would have been obvious to one of ordinary skill in the art to
`
`employ any digital word length to represent the video signals in the current application
`
`claim 1. The 12 bits length would have been a matter of obvious design choice since a
`
`digital word can be in any length.
`
`6.
`
`Claim 1
`
`is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of U.S. Patent No. 11,240,463. Although the claims at issue
`
`are not identical, they are not patentably distinct from each other becausethe limitation,
`
`a bit width of a code value of the video signalis 12 bits as now recited in claim 1, is
`
`obvious feature of the patented claim 1. That is, the video signals in the patented claim
`
`1 are inherently represented by digital words and the digital words can be represented
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 5
`
`in any bit length. Thus, it would have been obvious to one of ordinary skill in the art to
`
`employ any digital word length to represent the video signals in the current application
`
`claim 1. The 12 bits length would have been a matter of obvious design choice since a
`
`digital word can be in any length.
`
`7.
`
`Claim 1
`
`is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of U.S. Patent No. 11,240,462. Although the claims at issue
`
`are not identical, they are not patentably distinct from each other because the limitation,
`
`a bit width of a code value of the video signalis 12 bits as now recited in claim 1, is
`
`obvious feature of the patented claim 1. That is, the video signals in the patented claim
`
`1 are inherently represented by digital words and the digital words can be represented
`
`in any bit length. Thus, it would have been obvious to one of ordinary skill in the art to
`
`employ any digital word length to represent the video signals in the current application
`
`claim 1. The 12 bits length would have been a matter of obvious design choice since a
`
`digital word can be in any length.
`
`8.
`
`Claim 1
`
`is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of U.S. Patent No. 11,245,866. Although the claims at issue
`
`are not identical, they are not patentably distinct from each other becausethe limitation,
`
`a bit width of a code value of the video signalis 12 bits as now recited in claim 1, is
`
`obvious feature of the patented claim 1. That is, the video signals in the patented claim
`
`1 are inherently represented by digital words and the digital words can be represented
`
`in any bit length. Thus, it would have been obvious to one of ordinary skill in the art to
`
`employ any digital word length to represent the video signals in the current application
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 6
`
`claim 1. The 12 bits length would have been a matter of obvious design choice since a
`
`digital word can be in any length.
`
`9.
`
`Claim 1
`
`is rejected on the ground of nonstatutory double patenting as being
`
`unpatentable over claim 1 of U.S. Patent No. 11,290,676. Although the claims at issue
`
`are not identical, they are not patentably distinct from each other becausethe limitation,
`
`a bit width of a code value of the video signalis 12 bits as now recited in claim 1, is
`
`obvious feature of the patented claim 1. That is, the video signals in the patented claim
`
`1 are inherently represented by digital words and the digital words can be represented
`
`in any bit length. Thus, it would have been obvious to one of ordinary skill in the art to
`
`employ any digital word length to represent the video signals in the current application
`
`claim 1. The 12 bits length would have been a matter of obvious design choice since a
`
`digital word can be in any length.
`
`10.
`
`Claims 1 and are rejected on the ground of nonstatutory double patenting as
`
`being unpatentable over claim 1 of U.S. Patent No. 11,297,278. Although the claims at
`
`issue are not identical, they are not patentably distinct from each other because the
`
`limitation, a bit width of a code value of the video signal is 12 bits as now recited in
`
`claim 1, is obvious feature of the patented claim 1. That is, the video signals in the
`
`patented claim 1 are inherently represented by digital words and the digital words can
`
`be represented in any bit length. Thus, it would have been obvious to one of ordinary
`
`skill in the art to employ any digital word length to represent the video signals in the
`
`current application claim 1. The 12 bits length would have been a matter of obvious
`
`design choice since a digital word can be in any length.
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 7
`
`Claim Rejections - 35 USC § 103
`
`11.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
`
`12.
`
`Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Hattori et al. (9,826,248).
`
`Regarding claim 1, Hattori discloses a display apparatus comprising: an electro-
`
`optical transfer function (EOTF) converter that receives a videosignal having a first luminance
`
`range and performs EOTF conversion on the videosignal to obtain a first luminance value (Fig.
`
`69); a luminance converter (Fig. 4), which is provided for converting the video signal into a
`
`pseudo High Dynamic Rangesignal having a second luminance range, a maximum value of the
`
`second luminance range being smaller than a maximum value of the first luminance range, the
`
`luminance converter that converts the first luminance value into a second luminance value
`
`within the second luminance range, the maximum value of the second luminance range being
`
`larger than a maximum value of a luminance of a Standard Dynamic Range (SDR) signal, and the
`
`maximum luminance value of the SDR signal being 100 nit (note Fig. 4, the 4000 nit of the
`
`camera is converted to SDR image of 100 nit); and a display (note Fig. 4, the 100 nit imageis
`
`displayed either on a SDR display or on a 400 nit SDR extension display) that displays the
`
`pseudo High Dynamic Rangesignal having the second luminance range based on the second
`
`luminance value, wherein the maximum value of the second luminance range is a maximum
`
`possible display peak luminance (DPL) that the display is capable of displaying, and is greater
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 8
`
`than the maximum luminance value of the SDR signal, wherein the luminance converter
`
`performs conversion of the first luminance value into the second luminance value, based on
`
`characteristic information on a characteristic of the display apparatus (note that the 100 nit or
`
`400nit display is the display peak luminance of the output display device), except
`
`wherein a bit width of a code value of the video signal is 12 bits. However, Hattori teaches that
`
`the number of bits of the luminance value can be set to anybit length (8:41-53).
`
`In the
`
`instance, Hattori selects 10 bits. Thus, it would have been obvious to one of ordinaryskill in the
`
`art before the effective filing date of the claimed invention to modify the luminance value bit
`
`length to 12.
`
`It is considered an obvious design choice based on Hattori’s teaching.
`
`Regarding claim 2, Hattori inherently discloses the characteristic information indicates
`
`one of the display peak luminance (DPL) displayable by the display (such as the 100 nit and 400
`
`nit of the display), a display mode of the display (such as the HDR at 8:18-31, and the SDR mode
`
`at 8:60 to 9:5), and an input-output characteristic supported by the display (9:12-23).
`
`Regarding claim 3, Hattori discloses the characteristic information is acquired via the
`
`Internet (52:1-12) or HDMI (30:18-30).
`
`13.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MICHAEL LEE whosetelephone number 571-272-7349.
`
`The examiner can normally be reached on Mondaythrough Thursday from 9:00 am to
`
`6:00 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, John Miller, can be reached on 571-272-7353. The fax phone number for
`
`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 17/682,139
`Art Unit: 2422
`
`Page 9
`
`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).
`
`/MICHAEL LEE/
`Primary Examiner,
`Art Unit 2422
`
`