DETAILED ACTION
This Office Action is in response to the Amendment filed on 01/08/2026 and is being filed as a Non-Final for the reasons given below.
In the filed response, independent Claims 1 and 10 have been amended.
Claims 1-18 are in condition for allowance. Please see below.
Accordingly, Claims 19 and 20 have been examined and are pending.
Terminal Disclaimer
1. The terminal disclaimer filed on 01/08/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,184,892 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
2. Applicant’s arguments, see pg. 8-9, filed 01/08/2026, with respect to the non-statutory double patenting rejections of claims 1-20 have been fully considered and are persuasive in light of the filed terminal disclaimer noted above. Therefore, the double patenting rejections have been withdrawn. However, upon further consideration of Claims 19-20 (please see below), a new ground of rejection is made in view of Li et al. US 9,756,337 B2 under 35 U.S.C. 102. For this reason, this office action is Non-Final. Please see below for details.
3. After further considering Claim 19 (i.e. “A non-transitory computer-readable storage medium storing a bitstream that, when decoded by a coding device, is used by the coding device to generate a video, the bitstream comprising…”), this is a product by process claim limitation where the product is a 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). The structure includes the information and samples manipulated by the 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 19 merely serves 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 claim scope is just a storage medium storing data and is anticipated by any prior art which recites a storage medium storing a bitstream. Please see details below.
4. Applicant’s response and amendments regarding the drawing objection to figure 4 are acknowledged. Thus, the objection is withdrawn.
5. Applicant’s response and amendments regarding objected claims 1 and 10 are acknowledged. Thus, the claim objections are withdrawn.
6. The Examiner is available to discuss the matters of this office action to help move the Instant Application forward. Please refer to the conclusion to this office action regarding scheduling interviews.
7. In light of the foregoing, Claims 19 and 20 have been examined and is pending.
Claim Rejections - 35 USC § 102
8. 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)(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.
Claims 19-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Li et al. US 9,756,337 B2, hereinafter referred to as Li, since this is a product by process claim limitation where the product is a bitstream and the process is the method steps to generate the bitstream (MPEP §2113). For the reasons discussed above, the storage medium storing the claimed bitstream in claim 19 merely serves as a support for the storage of the bitstream and provides no functional relationship between the stored bitstream and storage medium. Thus, the claim scope is just a storage medium storing data and is anticipated by Li below which recites a storage medium storing a bitstream.
Regarding claim 19, Li teaches and/or suggests “A non-transitory computer-readable storage medium storing a bitstream that, when decoded by a coding device, is used by the coding device to generate a video, the bitstream comprising [For the reasons given above, please see for e.g. col 41 lines 48-67 for storing an encoded video bitstream in a memory device] a plurality of reference picture list structures each containing a plurality of reference picture entries; a flag that specifies a sign value of an absolute value of a delta picture order count (POC) associated with a short-term reference picture entry from the plurality of reference picture entries; and the absolute value of the delta POC associated with the short-term reference picture entry, wherein the flag and the absolute value of the delta POC are separate from each other, and wherein the flag is before the absolute value of the delta POC and the flag.” [The aforementioned limitation is not given patentable weight. Please see MPEP §2111.05(III)]
Regarding claim 20, claim 20 depends on claim 19 and therefore includes all of its features. For this reason, claim 20 is also rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) for the reasons given above.
To help advance prosecution, it is recommended that “A non-transitory computer-readable storage medium storing a bitstream that, when decoded by a coding device, is used by the coding device to generate a video, the bitstream comprising …” be rewritten to also include storing instructions that can be executed by a processor to clearly show there is a functional relationship
between the stored data and the storage medium.
Allowable Subject Matter
Claims 1-18 are allowed.
The reasons for the indication of allowable subject matter are the same as those presented in the Notice of Allowance (NOA) for Parent Application No. 17/196,126, now U.S. Patent No. 12,184,892. Please refer to the NOA on 07/15/2024 for details.
Conclusion
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/RICHARD A HANSELL JR./Primary Examiner, Art Unit 2486