DETAILED ACTION
This Office Action is a response to an Amendment filed on 06/05/2026, in which claims 1, 3-11, 13-15, and 17-18 are pending and ready for examination.
Notice of Pre-AIA or AIA Status
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 5-7, filed 0n 06/05/2026, with respect to claims 1, 3-11, and 13-14 have been fully considered and are persuasive. The rejection of claims 1, 3-11, and 13-14 has been withdrawn.
Claims 15 and 17-18, as further explained bellow, are a product by process claim, and are subject to 35 USC § 102 rejection. However, upon overcoming the product by process issue claims 15 and 17-18 would be allowed.
Allowable Subject Matter
Claims 1, 3-11, and 13-14 are allowed.
Claim interpretation
Claims 15’s recitation of a “A non-transitory computer-readable storage medium, comprising a bitstream to be decoded…” is a product by process claim limitation where the product is the bitstream and the decoding process is the operations to generate the bitstream. MPEP §2113 recites “Product-by-Process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. Thus, the scope of the claim is the computer readable storage medium storing the bitstream (with the structure implied by the encoding steps). The structure includes the decoder, coded data, and other information manipulated by the operation.
To be given patentable weight, the computer-readable storage medium (a storage medium) and the bitstream (i.e. descriptive material) must be in a functional relationship. A functional relationship can be found where the descriptive material performs some function with respect to the storage medium to which it is associated. See MPEP §2111.05(I)(A). When a claimed “computer-readable storage medium” merely serves as a support for information or data, no functional relationship exists”. MPEP §2111.05(III). The storage medium storing the claimed bitstream in claims 15 merely services as a support for the storage of the bitstream and provides no functional relationship between the stored bitstream and storage medium. Therefor the structure of the bitstream, which scope is implied by the method steps, is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Thus, the claim scope is just a storage medium storing data.
Claim Rejections - 35 USC § 102
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, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 15 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US 2018/0359483 A1).
Regarding claim 15, Chen discloses: A non-transitory computer readable storage medium, comprising a bitstream to be decoded by a method of video decoding (see Chen, paragraph 257-258).
Regarding claims 17-18, claims 17-18 are dependent upon a rejected base claim, but would be allowable upon overcoming the rejection of claim 15 mentioned above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARYAM A NASRI whose telephone number is (571)270-7158. The examiner can normally be reached on 10:00-8:00 M-T.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached on 5712727383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM A NASRI/Primary Examiner, Art Unit 2483
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