DETAILED ACTION
This Office action for U.S. Patent Application No. 18/372,134 is responsive to the Request for Continued Examination filed 15 January 2026, in reply to the Final Rejection of 19 August 2025, the Letter of 17 September 2025, and the Advisory Action of 16 December 2025.
Claims 1–4, 6–16, 18, 19, and 21–23 are pending.
In the Final Rejection, claim 21 was objected to under 37 C.F.R. § 1.75(i) for formatting errors. Claims 1–4, 8, 15–18, and 22 were rejected under 35 U.S.C. § 102(a)(1) as anticipated by U.S. Patent Application Publication No. 2020/0404265 A1 (“Yamazaki”). Claims 6, 9–13, and 19 were rejected under 35 U.S.C. § 103 as obvious over Yamazaki in view of U.S. Patent Application Publication No. 2009/0087111 A1 (“Noda”). Claim 21 was rejected under 35 U.S.C. § 103 as obvious over Yamazaki in view of Noda and in view of U.S. Patent Application Publication No. 2017/0019668 A1 (“Morigami”). Claim 7 was rejected under 35 U.S.C. § 103 as obvious over Yamazaki in view of International Publication No. WO 2021/045658 A2 (“Filippov”). Claim 14 was rejected under 35 U.S.C. § 103 as obvious over Yamazaki in view of Noda and Filippov.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see pp. 9–16, filed 15 January 2026, with respect to the prior art rejections over Yamazaki have been fully considered and are persuasive. The prior art rejections of all claims have been withdrawn, for reasons that will be given more fully in the “Allowable Subject Matter” section below.
Applicant's arguments filed with respect to the rejection of claim 23 under 35 U.S.C. § 112(b) have been fully considered but they are not persuasive. In United States law, any claim that refers back to a previous claim is considered dependent on that previous claim. 35 U.S.C. § 112(d). This statute of interpretation is not universal; Canada for example allows for a “referencing claim” to refer back to a claim of a different category of invention, without being considered a dependent claim. Canadian Intellectual Property Office, “Basic Training Manual: SG-PAT-4 Qualification Course” (12th Ed.) (Oct. 2017) § 4.3.4. The Canadian example given is a claim set comprising:
1. A product comprising composition A
2. A process for the production of the composition defined in claim 1 comprising mixing B with C.
Under American law, claim 2 is dependent on claim 1, and under Canadian law, claim 2 references claim 1 but is not dependent on claim 1. The People’s Republic of China also in November 2025 has released examination guidelines specifically for claims to bitstreams, which are completely irrelevant to and having no effect on American practice. See U.S. Const. Art. 6, § 2; Art. 1, § 8, cl. 8 (exclusive Federal power to set forth requirements for patents in the United States); see also Westminster Confession of Faith ¶ 23.2 (civil magistrates are to execute their office “according to the wholesome laws of each commonwealth”). Here, Applicant has filed claim 23 to a storage medium that refers to method claim 1. By referring to claim 1, the American presumption is that claim 23 is dependent on claim 1. The mere fact that claim 23 is in a different statutory class than claim 1 does not render it improper (M.P.E.P. § 608.01(n)(III)); compliant examples given are a claim to making a product dependent on a claim to the product itself, and a claim for a product claimed as made by a specific process dependent on a claim to the process itself. Claim 23 in the present application recites both a medium and the complete process given in parent claim 1, by virtue of it being dependent on claim 1. Applicant states claim 23 defines the bitstream stored in the medium, but the bitstream is created by executing the claim 1 method. The relation between these elements is unclear. Does the medium store both the bitstream and the program at the server end, for example a video recording app bundled with a sample video, downloaded together at an app store, or does infringing the medium require the end user to have used the app to create a new video?
Claim Rejections - 35 U.S.C. § 112
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 distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 23 is rejected under 35 U.S.C. § 112(b)as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The scope of claim 23, dependent on claim 1 and fully incorporating its method, recites a medium storing a bitstream and a program that “enables a processor” to perform the claim 1 method “to generate the bitstream”. The relation between these elements is unclear. Does the medium store both the bitstream and the program when it is produced, sold, or offered for sale, for example, video encoding software packaged with a sample video, or does infringement only occur when an end-user uses the program to not only enable but actually cause a processor to encode a new bitstream?
Allowable Subject Matter
Claims 1–4, 6–16, 18, 19, 21, and 22 are allowed.
Claim 23 would be allowable if rewritten to overcome the rejection under 35 U.S.C. § 112(b) or set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the examiner has reconsidered representative claim 1 and closest prior art Yamazaki. Claim 1 recites "a bit depth of offset values for weighted prediction". This means any reference that teaches this limitation must include:
a) offset values that
b) have determined bit depths, and
c) are used for weighted prediction.
Closest prior art Yamazaki plainly recites offset bit depths, for example at paragraph 0168 referring to an SAO_DEPTH, so elements a) and b) are satisfied.
Yamazaki also recites "a prediction value of each offset" that "is determined by calculating a weighted average of a decoded offset and a prediction value of the decoded offset" (¶¶ 0402–0403), which is sufficient to be a "weighted prediction" as claimed. Yamazaki elsewhere refers to weighted prediction as synonymous with bidirectional prediction (¶¶ 0154–55, 0294–95). Then to anticipate the claimed "bit depth of offset values for weighted prediction", it must be shown that the Yamazaki offset that has a bit depth, for example an SAO_DEPTH, is used to generate a prediction value that is set by the weighted average, or is used for the "weighted prediction" or bidirectional prediction.
Yamazaki is poorly organized, presenting multiple embodiments and appendices, and it is not clear what embodiments can be assumed to use elements and limitations that are shared with previous embodiments. Specifically, it is unclear which embodiments use offsets with defined bit depths, what embodiments perform a weighted prediction from offsets, and whether any embodiment uses both these elements. In the third embodiment in paragraphs 0424–0580, the SAO offset parameter includes an SAO current depth (¶¶ 0425–428), but the only mention of prediction is a prediction image (0571), not SAO prediction. In the seventh embodiment in paragraphs 0640–0694, an offset "is subject to predictive encoding" (¶ 0640), and an SAO offset has an sao_curr_depth syntax element (0653), but the predictive encoding of an offset is not described as using the weighted average in paragraphs 0402-403. Paragraphs 0343–44 state that a first embodiment uses an SAO offset that has the sao_curr_depth, but this is distinct from a second embodiment that performs predictive coding on an offset, and paragraph 0346 states that in the second embodiment, an SAO offset residual, not the SAO offset itself, has the SAO current depth syntax element. Paragraphs 0402-403 as discussed above are within this second embodiment. Based on this, there is insufficient evidence to make a prima facie case that Yamazaki teaches a single embodiment with both offset/SAO depth AND offset/SAO weighted prediction, as claimed. Applicant is cautioned that an accused infringer of any patent granted on this application may throw more time, money, and AI tokens at Yamazaki than allotted during USPTO prosecution to demonstrate otherwise.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2025/0047850 A1
US 2023/0336715 A1 (shares inventors and assignment with present application; claims weighting factor and offset value of weighted prediction based on a bit depth of the input video)
US 2022/0264122 A1
US 2022/0232224 A1
US 2022/0014738 A1
US 2021/0289221 A1
US 2021/0099700 A1
US 2019/0104309 A1
US 2016/0337665 A1
US 2016/0182883 A1
US 2015/0131721 A1
US 2014/0321546 A1 (representative of applications having inventor Yoshitomo Takahashi and assignee Sony Corp. that teach depth weighting prediction using depth weighting coefficient and depth offset)
US 2014/0269939 A1
US 2014/0153645 A1
US 2009/0003457 A1
US 2009/0003718 A1
The following prior art was found using an Artificial Intelligence assisted search using an internal AI tool that uses the classification of the application under the Cooperative Patent Classification (CPC) system, as well as from the specification, including the claims and abstract, of the application as contextual information. The documents are ranked from most to least relevant. Where possible, English-language equivalents are given, and redundant results within the same patent families are eliminated. See “New Artificial Intelligence Functionality in PE2E Search”, 1504 OG 359 (15 November 2022), “Automated Search Pilot Program”, 90 F.R. 48,161 (8 October 2025).
US 2015/0098503 A1
US 2013/0259130 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David N Werner whose telephone number is (571)272-9662. The examiner can normally be reached M--F 7:30--4:00 Central.
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/David N Werner/Primary Examiner, Art Unit 2487
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