CTFR 18/922,993 CTFR 87915 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Status of the Claims Claims 1-3, 6, 8-12, 15, 17-18, and 20-31 are currently pending. Claims 1-3, 6, 8, 10-12, 17, and 20 are amended, claims 4-5, 7, 13-14, 16 and 19 are cancelled and claims 21-31 are newly added. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 26-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claims are vaguely directed toward methods for sending a bitstream, however, they do not mention how the bitstreams are sent thereby making them indefinite. A claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. In this case, the claims could be interpreted in such a way that it is not clear how the bitstreams are sent. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 20-21, 24-25 and 31 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Chono et al. (US 20130101037 A1, hereinafter Chono) . A bit stream generated by a video encoding method, as presented in claims 20-21 , is essentially 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 claims is the storage mediums storing the bitstreams (with the structure implied by the method steps). The structure includes the generation of encoded bitstreams manipulated by the 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., an encoded bitstream), no functional relationship exists”. MPEP §2111.05(III). The storage mediums storing the claimed bitstreams in claims 20-21 merely services as a support for the storage of the bitstreams and provides no functional relationship between the stored bitstreams and storage mediums. Therefore, the bitstreams, 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 storage mediums storing data and is anticipated by Chono et al. which recites a storage medium storing a bitstream ( fig. 10: storage medium 1004; ¶0136 ). The computer-readable media, as presented in claims 24-25 and 31 , are directed to 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. See MPEP §2111.05(III). 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 programming performs some function with respect to the computer with which it is associated. 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 mediums storing the claimed bitstreams in claims 24-25 and 31 merely services as a support for the storage of the bitstreams and provides no functional relationship between the stored bitstreams and storage mediums. Therefore, the bitstreams are non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Thus, the scope of the claims is just storage mediums storing data and is anticipated by Chono et al. which recites a storage medium storing a bitstream ( fig. 10: storage medium 1004; ¶0136 ) . 07-15 AIA Claim s 26-29 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Knicker et al. (US 20100067574 A1, hereinafter Knicker) . Claims 26-27 and 28-29 are directed to methods of sending a bitstream, where the body of the claims recite “sending the bitstream”. The remaining claim language “comprising sub-picture information specifying attributes of a plurality of sub-pictures included in a target picture” and the two wherein clauses are descriptive information or the content of the bitstream that was apparently generated to be sent. The contents of the bitstream, defined by how the bitstream was generated or to be decoded, only describes the content of the information in the bitstream and as result are descriptive language. See MPEP §2111.05. The bitstream has no functional relationship with the claimed methods for sending the bitstream. The claim scope (in light of the specification) describes the generation of the bitstream in terms of how the video gets encoded within the bitstream and there is no functional relationship between the bitstream’s contents once generated or decoded and the process for sending the bitstream. As result, the contents of the bitstream are non-functional descriptive language and will be given not patentable weight. See MPEP §2111.05. Thus, the scope of the claims is just sending a bitstream and is anticipated by Knicker ( ¶0126: the video encoder transmits the encoded bitstream to the video decoder; ¶0195: the resulting bitstream is transmitted to a video decoder or stored on a recording medium as an output bitstream ) . Response to Arguments Applicant’s arguments, see pages 10-11 of the remarks, filed 02/26/2026, with respect to the objections to claims 7-8 and 20 have been fully considered and are persuasive. The objections have been withdrawn. Applicant’s arguments, see pages 10-14 of the remarks, filed 02/26/2026, with respect to the rejections of claims 1-6, 10-15 and 19-20 under §102(a)(1) by Wang et al., have been fully considered and are persuasive. The rejections have been withdrawn. Applicant’s arguments, see pages 10-14 of the remarks, filed 02/26/2026, with respect to the rejections of claims 7-9 and 16-18 under §103, have been fully considered and are persuasive. The rejections have been withdrawn. Applicant’s arguments, see pages 13-14 of the remarks, filed 02/26/2026, with respect to the rejection of claim 20 under §102(a)(1) by Chono et al., have been fully considered, but they are not persuasive. Applicant alleges “Regarding claim 20, Applicant notes that the amended claim 20 now recites "the bitstream comprising: a plurality of coding parameters indicating sizes of a plurality of sub-pictures included in a target picture". Chono does not disclose a bitstream comprising a plurality of coding parameters indicating sizes of a plurality of sub-pictures included in a target picture, as generated by the claimed encoding method. Accordingly, amended claim 20 is patentable over Chono and the other cited references.” This is not persuasive. Claim 20 is directed to a non-transitory computer-readable storage medium that stores bit stream generated by a video encoding method. Thus, the scope of the claim is still a storage medium storing the bitstream. The storage medium storing the claimed bitstream merely services as a support for the storage of the bitstreams and provides no functional relationship between the stored bitstream and storage medium. Therefore, the bitstream, which scope is implied by the method steps, is non-functional descriptive material and given no patentable weight. MPEP §2111.05(III). Applicant’s arguments, see page 14 of the remarks, filed 02/26/2026, with respect to the double patenting rejection have been reviewed. The terminal disclaimer filed by Applicant has been approved and the rejection withdrawn. Allowable Subject Matter 12-151-07 AIA 07-97 12-51-07 Claim s 1-3, 6, 8-12, 15, 17-18, 22-23 and 30 are allowed. 07-43-01 AIA Claim s 20, 24, 26, and 28 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action. 07-43-02 AIA Claim s 21, 25, 27, 29 and 31 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Conclusion 07-40 AIA 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 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: 18/922,993 Page 2 Art Unit: 2425 Application/Control Number: 18/922,993 Page 3 Art Unit: 2425 Application/Control Number: 18/922,993 Page 4 Art Unit: 2425 Application/Control Number: 18/922,993 Page 5 Art Unit: 2425 Application/Control Number: 18/922,993 Page 6 Art Unit: 2425 Application/Control Number: 18/922,993 Page 7 Art Unit: 2425 Application/Control Number: 18/922,993 Page 8 Art Unit: 2425 Application/Control Number: 18/922,993 Page 9 Art Unit: 2425
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