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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
`
`16/909,356
`
`06/23/2020
`
`Masato OHKAWA
`
`2020-1865
`
`5020
`
`CP
`Lind&
`Wenderoth,
`Wenderoth, Lind & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`SUH,JOSEPH JINWOO
`
`2485
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/10/2021
`
`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.
`16/909,356
`Examiner
`JOSEPH SUH
`
`Applicant(s)
`OHKAWAetal.
`Art Unit
`AIA (FITF) Status
`2485
`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 7/13/21.
`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*
`1,4 and 9-13 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) 1,4 and 9-13 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) (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 20210803a
`
`

`

`Application/Control Number: 16/909,356
`Art Unit: 2485
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Status
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`This Office Action respondsto reply filed on 7/13/21 regarding application 16/909356
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`that wasinitially filed on 6/23/20. Claims 1, 4, and 9-13 are pending.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—The specification shall contain a written description ofthe
`invention, and of the manner and process of making and usingit, in suchfull, clear, concise,
`and exact terms as to enable anyperson skilled in the art to whichit pertains, or with whichit
`is mostnearlyconnected, to make and use the same, and shall setforth the bestmode
`contemplated bythe inventor or jointinventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specificationshall contain a written des cription of the invention, and of the
`manner and process of making and usingit,in such full, clear, concise, and exactterms as to
`enable anyperson skilled in the art to whichit pertains, or with whichit is mostnearly
`connected, to make and use the same, and shall set forth the bestmode contemplated bythe
`inventor of carrying out his invention.
`
`Claims 1 and 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA),
`
`first paragraph, as failing to comply with the enablement requirement. The claim(s)
`
`contains subject matter which was not described in the specification in such a way as to
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`enable one skilled in the art to which it pertains, or with which it is most nearly
`
`

`

`Application/Control Number: 16/909,356
`Art Unit: 2485
`
`Page 3
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`connected, to make and/or use the invention. The claims recite “performs a second
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`transform”, but later it states that “without performing the second transform.” As the two
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`exclusive limitations cannot be met at the same time, enablement requirement is not
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`satisfied.
`
`In addition, the claims recite “the first transform basis being same as a
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`predetermined transform basis”first, but then,
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`later they recite “the first transform basis
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`being different from the predetermined transform basis.” As the two exclusive limitations
`
`cannot be met at the same time, enablement requirement is not satisfied.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form
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`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 publicuse, onsale
`or otherwise available to the public before the effective filing date of the claimed invention.
`(a)(2) the claimed invention was described in a patentissued under section 151, orinan application
`for patent published or deemed published under section 122 (b), in which the patent or application, as
`the case maybe, namesanother inventor and was effectivelyfiled before the effective filing date of the
`claimed invention.
`
`1.
`
`Claims 9 - 13 are rejected under 35 U.S.C. as being anticipated by
`
`Lee, US 2019/0222843 A1 (hereinafter Lee).
`
`

`

`Application/Control Number: 16/909,356
`Art Unit: 2485
`
`Page 4
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`As for claim 9, Lee discloses an encoder that encodes ([0051], e.g., encoding)
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`a current block ([0055], e.g., processing units) in a picture ([0055], e.g., picture), the
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`encoder comprising: memory ([0320], e.g., RAM); and circuitry ([0320], e.g., hardware
`
`and computer components) that, in operation, performs: a first transformation ([O069],
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`e.g., transform) applied to a residual signal ([0060], e.g., residual value) of the current
`
`block to generate first transform coefficients according to a transform basis selected
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`from candidate transform bases ([0261], e.g., DCT-II); and either of(i) a first
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`quantization ([0070], e.g., quantize) applied to the first transform coefficients, or (ii) a
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`second transformation applied to the first transform coefficients to generate second
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`transform coefficients and a second quantization applied to the second transform
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`coefficients, wherein when the second transformation and the second quantization are
`
`performed, a first transform basis included in the candidate transform bases is used to
`
`generate the first transformation coefficients, and a color componentof the current block
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`is a luminance ([0062], e.g., luma pixels).
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`As for claim 10, the claim recites an encoding method of the encode of claim 9,
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`and is similarly analyzed.
`
`As for claim 11, the claim recites a decoder of the encode of claim 9, and is
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`similarly analyzed.
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`

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`Application/Control Number: 16/909,356
`Art Unit: 2485
`
`Page 5
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`As for claim 12, the claim recites a decoding of the encodeof claim 9, and is
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`similarly analyzed.
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`As for claim 13, the claim recites a non-transitory computer readable medium
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`storing a bitstream of the encode of claim 9, and is similarly analyzed.
`
`2.
`
`Claim 13 is rejected under 35 U.S.C. as being anticipated by Raber,
`
`US 2005/0206741 Ai (hereinafter Raber).
`
`As for claim 13, Raber discloses non-transitory computer-readable medium
`
`([0051], e.g., CD) storing a bitstream (the medium is utilized merely as a supportfor
`
`the data, thus, the data has no patentable weight. See MPEP 2111.05.).
`
`Response to Arguments
`
`Applicant's arguments, filed 7/13/21, have been considered but are moot because the
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`arguments do not apply to any of the references being usedin the current rejection.
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`Citation of Pertinent Prior Art
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`The prior art made of record and not relied upon is considered pertinent to applicant's
`
`disclosure:
`
`

`

`Application/Control Number: 16/909,356
`Art Unit: 2485
`
`Page 6
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`1.
`
`Rusanovskyyet al., US 2017/0332098 Ai, discloses loop sample processing
`
`for high dynamic range and wide color gamut video coding.
`
`2.
`
`Sezer, US 2013/0243083 Ai, discloses low-complexity two-dimensional (2d)
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`separable transform design with transpose buffer management.
`
`3.
`
`Sole etal., US 2012/0134426 Aj, discloses method and apparatus for reusing
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`tree structures to encode and decode binary sets.
`
`Conclusion
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`Applicant 's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP §
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`706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR
`
`1.136 (a).
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`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHSfrom the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHSof the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JOSEPH SUH whose telephone numberis 571-270-
`
`

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`Application/Control Number: 16/909,356
`Art Unit: 2485
`
`Page 7
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`7484. The examiner can normally be reached on Monday - Thursday, 7:30 AM - 6:00
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`PM.
`
`Examiner interviews are available via telephone,
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`in-person, and video conferencing
`
`using a USPTO supplied web-based collaboration tool. To schedule aninterview,
`
`applicant is encouraged to use the USPTO Automated Interview Request(AIR) at
`
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`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Jay Patel can be reached on 571-272-2988. The fax phone numberfor the
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`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
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`
`If you would like assistance from a USPTO
`
`Customer Service Representative or access to the automated information system, call
`
`800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/JOSEPH SUH/
`
`Primary Examiner, Art Unit 2485
`
`