Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Summary
This action is in reply to Applicant’s Amendments and Remarks filed on 12/16/2025.
Claims 1, 8, 13-14, 21, 23, 25 and 27-38 are pending.
Response to Arguments
Applicant's arguments with respect to amended claims and originally presented claims have been fully considered. Claims 1, 8, 21, 23, 27-30, and 33-36 are allowed. Claims 25, 31-32 and 37-38 are objected.
During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." Phillips v. AWH Corp., 415 F.3d 1303, at 1316 (Fed. Cir. 2005). See also In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
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 correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Kondo et al (US 20040086047 A1).
Regarding claim 13-14, claim 13-14 claim a product by process claim limitation where the product is the bitstream and the process is the method steps 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 storage medium storing the bitstream (with the structure implied by the method steps). The structure includes the information and samples manipulated by the steps.
“To be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated”. MPEP §2111.05(I)(A). When a claimed “computer-readable medium merely serves as a support for information or data, no functional relationship exists. MPEP §2111.05(III).
The memory storing the claimed bitstream in claim 13 merely services as a support for the storage of the bitstream and provides no fictional relationship between the stored bitstream and storage medium. Therefor 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 and is anticipated by Kondo which recites a storage medium storing a bitstream [See Kondo; FIG. 19-20; [0225 and 0229]].
Allowable Subject Matter
Claim 1, 8, 21, 23, 27-30, and 33-36 are allowed.
Claim 25, 31-32 and 37-38 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
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/ZHUBING REN/Primary Examiner, Art Unit 2483