CTFR 18/911,329 CTFR 87915 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-fti AIA The present application is being examined under the pre-AIA first to invent provisions. Status of the Claims Claims 1-16 and 18-21 are currently pending. Claim 17 has been cancelled. Claim Rejections - 35 USC § 102 07-07-fti 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 – 07-09-fti 07-09 (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. 07-15-fti Claim s 19-20 are rejected under pre-AIA 35 U.S.C. 102 (b) as being anticipated by Ridge et al. (US 20080048894 A1) . The recitation of “A non-transitory computer-readable medium having a bit stream stored thereon, wherein the bit stream comprises:…”, in claims 19-20, is not given patentable weight because the computer-readable medium and the bitstream (i.e., descriptive material) are not 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., an encoded bitstream), no functional relationship exists”. MPEP §2111.05(III). The storage medium storing the claimed bitstream in claims 19-20 merely services as a support for the storage of the bitstream and provides no functional relationship between the stored bitstream and storage medium. Therefore, 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 scope of the claims is just a storage medium storing data and is anticipated by Ridge et al. which recites a storage medium storing a bitstream ( ¶0021; ¶0024 ) . Allowable Subject Matter 12-151-07 AIA 07-97 12-51-07 Claim s 1-16, 18 and 21 are allowed. Response to Arguments Applicant’s arguments, see the last three paragraphs on page 9 of the remarks, filed 02/24/2026, with respect to rejection of claims 19-20 under 35 U.S.C. §102 have been fully considered and are persuasive. The claims are no longer interpreted as a product by process. Applicant’s arguments, see page 10 of the remarks, filed 02/24/2026, with respect to rejection of claims 19-20 under 35 U.S.C. §102 have been considered, but they are not persuasive. The Applicant argues that “In addition, the Office improperly cited to MPEP § 2111.05, which discusses printed matter claims. But claim 19 does not recite any printed matter. None of the printed matter claims discussed in MPEP § 2111.05 is analogous to claim 19. The examples of printed matter discussed in MPEP § 2111.05 include: " "indicia on a measuring cup ... indicating volume within that measuring cup"; " "a hatband [with] a string of numbers in a certain physical relationship to each other"; " "a deck of playing cards having images on each card"; " "a set of dice by means of which a game may be played"; " "a claimed measuring tape having electrical wiring information thereon"; " "[a] substrate having a picture of a golf ball thereupon"; and " "a kit containing a set of chemicals and a printed set of instructions for using the chemicals." Claim 19 is distinguishable from all of the examples discussed in MPEP § 2111.05 because claim 19 does not recite any printed matter. MPEP § 2111.05 does not support the Office's assertion that values stored on a non-transitory computer-readable medium are printed matter. Applicant respectfully requests that the Office point to a claim or case mentioned in MPEP § 2111.05 that supports the Office's characterization of claim 19 as a printed matter claim.” This is not persuasive. MPEP 2111.05 is not exclusively concerned with printed matter claims. It explicitly addresses both functional and nonfunctional descriptive material. In the previous rejection, the examiner cited both MPEP 2111.05(I)(A) and MPEP 2111.05(III) as evidence supporting a functional relationship. MPEP 2111.05(III) specifically pertains to machine-readable media. It establishes that a functional relationship exists when the programming performs a specific function in relation to the computer it is associated with. For instance, a claim to computer-readable media programmed with attribute data objects that facilitate the retrieval and removal of information within the intended computer system establishes a functional relationship, thereby conferring patentable weight upon the claimed attribute data objects. This is not the case with the claimed invention. Claim 19 is directed to “a non-transitory computer-readable medium having a bit stream stored thereon, wherein the bit stream comprises…”, indicating that the claim as a whole is directed at conveying a message or meaning to a human reader independent of the intended computer system and/or the computer-readable media merely serves as a support for information or data. In either scenario, there is no functional relationship. The claimed invention is analogous to the example of a memory stick containing tracks of recorded music, which utilizes the intended computer system solely as a support for the information. Such claims are directed at conveying meaning to the human reader rather than establishing a functional relationship between recorded data and the computer. See MPEP 2111.05(III). The Applicant further alleges “The Office used the characterization of claim 19 as a product-by-process and as printed matter to avoid finding the elements recited in claim 19 in the Ridge reference. That is because Ridge fails to disclose or suggest a bit stream comprising first and second significant coefficient flags and four syntax elements relating to two transform coefficients, as required by claim 19. In addition, Ridge fails to disclose or suggest the ordering of flags and syntax elements in the bit stream of claim 19.” This is not persuasive. The process of encoding the first and second significant coefficient flags and four syntax elements relating to two transform coefficients, recited in independent claims 1, 8 and 15 have been given patentable weight and deemed allowable over the prior art. However, claims 19-20 are directed at a computer-readable medium having a bit stream stored thereon, where the claims as a whole are merely conveying a message or meaning to the human reader rather than establishing a functional relationship between recorded data and the intended computer as mentioned above in this office action. Therefore, the structure bit stream is non-functional descriptive material and given no patentable weight. Thus, the scope of the claims is just a storage medium (i.e., the claimed non-transitory computer-readable medium ) storing data (i.e., the bit stream comprising the first and second significant coefficient flags and four syntax elements relating to two transform coefficients ) and is anticipated by any prior art that recites a storage medium storing a bitstream. Conclusion 07-39 AIA 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 JAMES M ANDERSON II whose telephone number is (571)270-1444. The examiner can normally be reached Monday - Friday 10AM-6PM. 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, BRIAN PENDLETON can be reached at 571-272-7527. 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. /James M Anderson II/Primary Examiner, Art Unit 2425 Application/Control Number: 18/911,329 Page 2 Art Unit: 2425 Application/Control Number: 18/911,329 Page 3 Art Unit: 2425 Application/Control Number: 18/911,329 Page 4 Art Unit: 2425 Application/Control Number: 18/911,329 Page 5 Art Unit: 2425 Application/Control Number: 18/911,329 Page 6 Art Unit: 2425 Application/Control Number: 18/911,329 Page 7 Art Unit: 2425
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