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 .
DETAILED ACTION
Summary
This office action for US Patent application 18/914404 is responsive to communications filed on Jan 23rd, 2026. Currently, claims 1-22 are pending are presented for examination while claims 18-20 were canceled.
Response to Arguments
On pages 9-10, applicant’s amendment with respect to claims 17 and 22 have been considered. While applicant’s amendment has been considered and understood, the examiner respectfully disagrees. Particularly, there are two different versions of “a bitstream” in the claim 17 which is very confusing and can be interpreted in different ways. Therefore, the bitstream rejection is still maintained in this office action until this issue is cleared.
Objections
The new claim 22 is about storing a bitstream. However, it does not specify where the bitstream is stored. Therefore, the bitstream can be interpreted as a signal and can be rejected under 35 USC § 101.
Claim Rejections - 35 USC § 101
Claim 22 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Patentable subject matter is limited to process, machine, manufacture and composition of matter. A transitory, propagating signal like the claim above is not within one of the four statutory categories hence it is non-statutory subject matter. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).(signal)
Claim 22 is/are rejected because the units can be implemented purely in software which is directed towards non-statutory subject matter. (Please see the MPEP 2106 Section IV. Determine Whether the Claimed Invention Complies with 35 U.S.C. 101). The examiner recommends adding a hardware recitation to the claim to overcome the rejection.
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.
Claims 17 is rejected under 35 U.S.C 102(a)(1) as being anticipated by Lee et al. (20200244956).
Claim 17 recitation of “computer-readable storage medium storing a bitstream…” is 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).
“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 storage medium storing the claimed bitstream in claim 17 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 Lee recites a storage medium storing a bitstream (Fig. 1-2, the bitstream from Fig. 1 is stored in Fig. 2, 210; paragraph. 0002, a method and apparatus for encoding/decoding an image and a recording medium storing a bitstream).
Allowable Subject Matter
Claims 1-16 allowable.
New Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications form the examiner should be directed to Nam Pham, whose can be contacted by phone at (571)270-7352. The examiner can normally be reached on Mon—Thurs.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, CZEKAJ DAVID, can be reached on (571)272-7327.
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/NAM D PHAM/ Primary Examiner, Art Unit 2487