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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
`
`UP
`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
`
`01/11/2022
`
`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)
`
`

`

`
`
`Disposition of Claims*
`5 and 7-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 5and7-9 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://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) The drawing(s) filed on 4/6/2020 is/are: a) 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)Z) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)X) All
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) 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) (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 20220106
`
`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 10/28/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) 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: 16/840,906
`Art Unit: 2487
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013,
`
`is being examined
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`under the first inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), wasfiled in this application after final rejection. Sincethis
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissionfiled on
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`10/28/2021 has been entered.
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`Response to Amendment
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`3.
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`Amendments filed in response to office action dated 9/28/2021 with respectto
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`the USC 112(b) rejections are not persuasive. The phrase “a plurality of first candidate
`
`inverse transform bases”still reflect the previous concerns for a 112b issue. How can
`
`there be a plurality of first candidate inverse transform bases? Inherently and logically,if
`
`you have more than one basis, wouldn't that be considered more than one, such as two
`
`or three, etc?
`
`Response to Arguments
`
`4.
`
`3.
`
`Applicant's arguments have been considered but are not persuasive.
`
`Applicant argues that Zhao fails to disclose the features of claim 5. The examiner
`
`would like to first note that there is vague information or lack thereof describing the
`
`definition of a basis candidate. However, as best understood, Zhao discloses in [0007],
`
`determining a plurality of transform subsets, each identifying more than one candidate
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 3
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`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. In addition, [0125] discloses
`
`multiple inverse transform subset. Rejection is maintained.
`
`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.
`
`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.
`
`4.
`
`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 candidate inverse transform bases? Inherently and logically,
`
`if you have more
`
`than one basis, wouldn't that be considered more than one, such as two orthree, etc?
`
`In addition, there is vague information or lack thereof describing the definition of a basis
`
`candidate. Whatis the definition of the phrase basis candidate? Furthermore, whatis
`
`this predetermined size that the applicant is referring to? Is the predetermined size
`
`

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`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 4
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`related to another block or the same block as the current block? As of this moment,
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`examiner will interpret a predetermined size relates to any other block not being the
`
`current block.
`
`Claim Rejections - 35 USC § 102
`
`6.
`
`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.
`
`7.
`
`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’).
`
`8.
`
`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)):
`
`determining a plurality of first candidate inverse transform bases and
`
`inverse-transforms the current block using an inverse transform basis included in
`
`the plurality of first candidate inverse transform bases 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
`
`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 5
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`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; In addition, [0125] discloses
`
`multiple inverse transform subset), when the current block has a size equalto or
`
`smaller than a predetermined size ([0285], shows that a current block is 8x8, which is
`
`smaller than a first size of another block in [0092], which is 16x16)and
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`determines one second candidate inverse transform basis and inverse
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`transforms the current block using an inverse transform basis which is the
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`second candidate inverse transform basis determined ([0124]) when the current
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`block has a secondsizelarger than the predetermined size ((0086)).
`
`9.
`
`Regarding claim 7, Zhao discloses the decoder according to claim 5.
`
`wherein the second candidate inverse transform basis is included in the plurality
`
`of first candidate inverse transform bases ((0124)).
`
`10.
`
`Regarding claim 8, analyses are analogous to those presented for claim 5
`
`and are applicable for claim 8 analyses.
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`11.|Regarding claim 9, Zhao discloses the decoder according to claim 5,
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`wherein the predetermined size having a length of 16 ((0092]).
`
`Conclusion
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`12.=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 MF 8 am-5pm.
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`

`

`Application/Control Number: 16/840,906
`Art Unit: 2487
`
`Page 6
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`
`LERON . BECK
`
`Examiner
`Art Unit 2487
`
`/LERON BECK/
`Primary Examiner, Art Unit 2487
`
`