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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`18/083,819
`
`12/19/2022
`
`Toshiyasu SUGIO
`
`2022-2470A
`
`3754
`
`Pp
`Lind&
`Wenderoth,
`Wenderoth, Lind & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`HESS, MICHAELJ
`
`PAPER NUMBER
`
`ART UNIT
`2481
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/22/2024
`
`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*
`1-9 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`5a) Of the above claim(s) _ is/are withdrawn from consideration.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) 1-9 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`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://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 19 December 2022 is/are: a)¥) accepted or b)L) 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)£) 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)Q) All
`1.1) Certified copies of the priority documents have been received.
`2.1.) 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 12/19/2022.
`U.S. Patent and Trademark Office
`
`3)
`
`Interview Summary (PTO-413)
`Paper No(s)/Mail Date 05/17/2024
`4) ( Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240517
`
`Application No.
`Applicant(s)
`18/083,819
`SUGIO et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`Michael J Hess
`2481
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 19 December 2022.
`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) 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)(2) 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: 18/083,819
`Art Unit: 2481
`
`Page 2
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`Double Patenting
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`Examiner notesthis application appears to havethe earliest patent term filing
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`date of the applications listed in the double patenting rejection. MPEP 1490 VI.D. This
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`determination is relevant to determining in which application should the double
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`patenting rejection be withdrawn to permit the application to issue as a patent. MPEP
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`1490 VI.D.2.(a).
`
`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`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
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`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
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`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 scopeof a joint research agreement. See
`
`

`

`Application/Control Number: 18/083,819
`Art Unit: 2481
`
`Page 3
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`MPEP § 717.02 for applications subject to examination underthe first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146etseq.for
`
`applications not subject to examination underthe first inventor to file provisions of the
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`AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The filing of a terminal disclaimerbyitself is not a complete reply to a
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`nonstatutory double patenting (NSDP)rejection. A complete reply requires that the
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`terminal disclaimer be accompanied by a reply requesting reconsideration of the prior
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`Office action. Even where the NSDP rejection is provisional the reply must be complete.
`
`See MPEP § 804, subsection |.B.1. For a reply to a non-final Office action, see 37 CFR
`
`1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A requestfor
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`reconsideration while not provided for in 37 CFR 1.113(c) may befiled after final for
`
`consideration. See MPEP §§ 706.07(e) and 714.13.
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The actualfiling 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 more information about eTerminal Disclaimers, refer to
`
`
`Claims 1-9 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 1-4, 7-10, 13, and 14 of copending
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`Application No. 17/945,352 (reference application). Although the claims at issue are not
`
`

`

`Application/Control Number: 18/083,819
`Art Unit: 2481
`
`Page 4
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`identical, they are not patentably distinct from each other because they represent
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`substantially overlapping subject matter regarding information indicating geometric
`
`residual data bit counts and second information indicating the bit count of the first bit
`
`count information in the bitstream.
`
`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
`
`Claims 1-9 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 1-11 of copending Application No.
`
`17/709,966 (reference application). Although the claims at issue are notidentical, they
`
`are not patentably distinct from each other because they represent substantially
`
`overlapping subject matter regarding information indicating geometric data bit counts
`
`and including point cloud bit count information in the bitstream.
`
`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
`
`Allowable Subject Matter
`
`Claims 1-9 would be allowableif the double patenting rejection is overcome with
`
`a terminal disclaimer or persuasive arguments why the double patenting rejection is in
`
`error. The following is a statement of reasons for the indication of allowable subject
`
`matter: Examiner was unable to find a teaching or suggestion in the prior art regarding
`
`geometric point cloud compression (e.g. G-PCC) and the signaling of bit count
`
`information for residual point cloud data in a bitstream including bit count information
`
`

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`Application/Control Number: 18/083,819
`Art Unit: 2481
`
`Page 5
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`indicating a bit count of bit count information as essentially claimed. Close prior art is
`
`listed below.
`
`The closest prior art appears to be either (1) patent documents belonging to
`
`Applicant; or (2) standardization meeting submissions belonging to Applicant similar to
`
`the following: Liang etal., “[G-PCC] CE13.39 report on Bit count coding for predictive
`
`coding,” ISO/IEC JTC1/SC29/WG11 MPEG2020/m54628, June 2020.
`
`The prior art madeof record and not relied upon is considered pertinent to
`
`applicant’s disclosure.
`
`Lee (US 2021/0295567 A1) teaches geometry-based point cloud compression
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`(G-PCC) ({ 0090), coding a generated residual signal ({ 0299), and a syntax element
`
`for indicating a bit countfor the x, y, z fields in a header, but appearssilent regarding
`
`indicating in a bitstream a bit count of the bit count information as claimed.
`
`Tusbakihara (US 2012/0054370 A1) teaches video packetization and including a
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`bit count in the header section of the mdat atom, but appears silent regarding indicating
`
`in a bitstream a bit countof the bit count information as claimed ({ 0032).
`
`Other cited references are Applicant’s own work and wasevaluated for double
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`patenting.
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Michael J Hess whose telephone number is (571)270-
`
`7933. The examiner can normally be reached Mon - Fri 9:00am-5:30pm.
`
`

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`Application/Control Number: 18/083,819
`Art Unit: 2481
`
`Page 6
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`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, William Vaughn can be reached on (571)272-3922. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
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`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`MICHAEL J. HESS
`Primary Examiner
`Art Unit 2481
`
`/MICHAEL J HESS/
`Primary Examiner, Art Unit 2481
`
`