DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114 1.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/10/2026 has been entered.
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on 06/10/2026. The submission are in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 20 is directed to a storage medium for storing a bitstream. In other words, storage medium merely stores the bitstream as an output of an encoding method.
The bitstream itself has no functional relationship with the storage medium and no processor is recited. Significantly, the bitstream being stored has no disclosed or claim-defined structure that differentiates the claimed data stream from any other data stream such as a digital music file stored on a memory stick.
Applicant is advised to change it, for example “… storing instruction to perform the video encoding method …”.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 102(a) (2) as being anticipated by Winger et al. (US 20050036551, hereinafter Winger)
Claim 20’s recitation of “a bit stream generated by a method, the method comprising…” is a product by process claim limitation where the product is the bit stream 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).
To be given patentable weight, computer readable 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 computer readable medium to which it is associated. See MPEP §2111.05(I)(A). When a claimed “computer-readable medium merely serves as a support for the information data (i.e. 2-dimensional image projected from an image with a 3-dimensional projection structure and including at least one face etc.) , no functional relationship exists”. MPEP §2111.05(III). The storage medium storing the claimed bitstream in claim 7 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 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 Winger which recites a storage medium storing a bitstream ([0033], FIG. 4)
Allowable Subject Matter
Claims 1-20 would be allowed if re-written to overcome the 102 and 112b rejection and the non-statutory double- patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samuel D Fereja whose telephone number is (469)295-9243. The examiner can normally be reached 8AM-5PM.
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://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID CZEKAJ can be reached at (571) 272-7327. 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 Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMUEL D FEREJA/Primary Examiner, Art Unit 2487
Prosecution Insights