DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/13/2026 has been entered.
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
Regarding claim 13, applicant argues that the “non-transitory computer-readable recording medium” is generated to store a bitstream containing specific information produced by a processor performing the encoding method, and therefore overcomes the rejection.
However, reading the claims in the broadest reasonable sense, the examiner respectfully disagrees. The examiner agrees in that the claims merely describe that the non-transitory computer-readable recording medium are generated to store a bitstream, and thus the CRM only stores the bitstreams but does not include instructions, that when executed by a processor, perform the functions.
Therefore the rejection of claim(s) 13 and 14 is/are maintained. Regarding arguments pertaining to claim(s) 14 and 43, for reasons similar to those discussed above for claim 13, the examiner respectfully disagrees. Therefore the rejection of claim(s) 14 and 43 is/are maintained. Regarding claim(s) 25, 31, 38, 44 and 45 the claim(s) is/are dependent upon claim(s) 13, 14 and/or 43 and are still rejected under the same basis as claim(s) 13, 14 and 43 and the arguments presented above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 13, 14, 25, 31, 38 and 43-45 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Kondo et al. (“Kondo”) (U.S. PG Publication No. 2004/0086047).
In regard to claim 13, claim 13 is directed to a non-transitory computer-readable medium having recorded thereon a bitstream generated by a processor. Significantly, the claimed non-transitory computer readable medium is NOT implementing any actual method; no instructions/steps are being executed. Instead, the claimed storage medium merely stores the data output from and/or generated by a series of acts. In other words, these claims are directed to a mere machine-readable medium storing data content (a bitstream generated by a method).
Applicant therefore seeks to patent the storage of a bitstream in the abstract. In other words, the claim seeks to patent the content of the information (bitstream comprising video information) and not the process itself. Moreover, this stored bitstream does not impose any definitive physical organization on the data as there is no functional relationship between the bitstream and the storage medium. In conclusion, claim 13 and any claims depending therefrom are directed to mere data content (bitstream generated by a series of acts) stored as a bitstream on a computer-readable storage medium. Under MPEP 2111.05(III), such claims are merely machine-readable media. Furthermore, the Examiner found and continues to find that there is no disclosed or claimed functional relationship between the stored data and medium. Instead, the medium is merely a support or carrier for the data being stored. Therefore, the data stored and the way such data is generated should not be given patentable weight. See MPEP 2111.05 applying In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). As such, this claim is subject to a prior art rejection based on any non-transitory computer readable medium known before the earliest effective filing date of the present application.
The examiner recommends amending the claim language to include instructions, that when executed by a processor, execute the steps claimed.
Therefore, claim 13 is anticipated by Kondo, as Kondo discloses a computer readable medium storing a coded bitstream. Kondo discloses, a non-transitory computer readable storage medium having stored therein a bitstream comprising video information generated by acts (See ¶0225 and 0229 in view of FIG. 19-20).
Allowable Subject Matter
Claims 1, 8, 21, 23, 27, 29, 34, 36 and 38-42 contain allowable subject matter.
Claims 13, 14, 25, 31, 38 and 43-45 would be allowable pending the 102 rejections seen above being overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDEMIO NAVAS JR whose telephone number is (571)270-1067. The examiner can normally be reached M-F, ~ 9 AM -6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached at 5712727383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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EDEMIO NAVAS JR
Primary Examiner
Art Unit 2483
/EDEMIO NAVAS JR/Primary Examiner, Art Unit 2483
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