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 .
Response to Arguments
Applicant’s arguments, see page 14, filed July 28, 2026, with respect to the nonstautory double patenting rejection of claims 21, 31, 36, and 41-53 have been fully considered and are persuasive. The nonstatutory double patenting rejections of claims 21, 31, 36, and 41-53 has been withdrawn.
Applicant's arguments filed July 28, 2026 regarding the 35 USC 102(a)(2) rejection of claims 36 and 49-53 have been fully considered but they are not persuasive. The claims, as amended, remain drawn to a bitstream stored on a computer readable medium. That the bitstream can be decoded by a decoder does not itself establish a functional descriptive relationship as required. As stated previously, a functional relationship can be found where the descriptive material performs some function with respect to the recording medium to which it is associated, MPEP §2111.05(I)(A). In both independent claims, the decoding apparatus that performs the decoding operating on the bitstream is independent of the computer readable medium and not included in the scope of the claimed invention.
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)(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.
Claims 36, 49-52 and 54-56 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Furht et la. (2021/0168409, of record) [Fuhrt].
Claims 36 and 50-53 are directed to a non-transitory computer readable medium storing a bitstream without instructions to make the claim functional. The bitstream itself is not a form of programming that causes functions to be performed by an intended computer but is instead directed solely towards the input. This shows that the computer-readable medium merely serves as support for the bitstream and provides no functional relationship between the steps/elements that describe the decoding process and intended computer system. Therefore, those claim elements are not given patentable weight.
Claims 49 and 54-56 recite "a bit stream encoded by a method of claim 31 the method comprising...", which 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 recording medium storing the bitstream (with the structure implied by the method steps). The structure includes the block prediction block, target block and other information manipulated by the steps.
To be given patentable weight, recording 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 recording medium to which it is associated. See 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 storage medium storing the claimed bitstream in claims 36 and 49-53 merely serves as a support for the storage of a 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 claimed scope of claims 36, 49-52, and 54-56 is limited to a storage medium storing data and is anticipated by Furht who recites a storage medium storing a bitstream (see fig. 6).
Allowable Subject Matter
Claims 21, 31, 41-43, 45-47, and 57-60 are allowed. The prior art does not appear to teach or reasonably suggest at the time of effective filing applicant's claimed invention of blending the results of both intra predicted values and inter predicted values as claimed to predict the value of pixels within a prediction block.
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 DOMINIC D SALTARELLI whose telephone number is (571)272-7302. The examiner can normally be reached 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Flynn can be reached at (571) 272-1915. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC D SALTARELLI/ Primary Examiner, Art Unit 2421
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