Detailed Office Action
1. This communication is being filed in response to the submission having a mailing date of 08/13/2026 in which a (3) month Shortened Statutory Period for Response has been set.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgements
3. Upon new entry, claims (1 -6 and 22 -28) remain pending for examination, of which (1, 4, 6, 22, 25, 27) are the (6) parallel running independent claims on record, being amended and/or newly added.
3.1. Examiner thanks’ Applicant representatives (Atty. M. Wallerson; R.N. 59,043, for the new amendments provided, and detailed remarks, and timely filed Terminal Disclaimer (TD), and for the cooperation expediting the case.
3.2. The previously presented Double Patent (DP) rejection is withdrawn in view of the new amendments, persuasive arguments, and the timely filed (TD) received on date 08/13/2026.
Terminal Disclaimer
4. The newly received TD is disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the parent Appls 15/067764 (US 9,900,618 B2) and 15/070155 (US 10,003,820 B2), being reviewed and approved by the Office on date 08/13/2026.
Claim Interpretation
5. For the purpose of examination, and under the broadest reasonable interpretation (BRI), consistent with the instant specification and the common knowledge of one of ordinary skill in the art, the below list of terms/limitations will be considered to read as:
5.1. Claim 22 recites a CRM statutory category, executing the feature/steps of method claim 4. The claim should be re-written in proper independent form, if intended. For purpose of examination, claim 22 will be treated as independent.
Claim rejection section
35 U.S.C 102(a)(1)
6. 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.
6.1. Claims (22 -28) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alshina; et al. (US 8,311,110 B2; hereafter “Alshina”).
Claims (22 -28) is/are directed to a non-transitory computer readable storage medium (CRM) storing a bitstream generated by an encoding/decoding method(s). The claim doesn’t recite that the CRM contains executable instruction(s), that by execution, would implement the claimed encoding method.
To be given patentable weight, the CRM 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 CRM 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”. See MPEP §2111.05(III).
The CRM storing the claimed bitstream in claim (9) merely services as support for the CRM of the bitstream and provides no functional relationship between the stored bitstream and the CRM. 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 Alshina; et al; which similarly recites a CRM storage medium of the same, in at least [24: 60]); in a similar codec ecosystem (i.e. encoder (Fig. 4) and decoder (Fig. 5); also employing an analogous intra prediction technique, as shown in (Figs. 13 and 14A), applied to vertical mode (mode 0), a horizontal mode (mode 1), a direct-current (DC) mode (mode 2), a diagonal down-left mode (mode 3), a diagonal down-right mode (mode4), a vertical-right mode (mode 5), a horizontal-down mode (mode 6), a vertical-left mode (mode 7), or a horizontal-up mode (mode 8) may be similarly performed.
Claim objection section
7. The instant application 18/945,720, claims (1 -6) is a child of patent Application(s) family, associated with Patent Appls;15/067764 (US 9,900,618 B2) and 15/070155 (US 10,003,820 B2), being rejected under the Double Patent provision (see rejection section above), but it may be considered for allowance if properly rewritten, and by resolution of the cited above pending rejection(s) in section (6).
Prior Art Citations
8. The following List of PA, made of record and not relied upon, is/are considered pertinent to Applicant’s disclosure:
8.1. Patent documentation
US 8,311,110 B2 Alshina; et al. H04N19/13; H04N19/33; H04N19/176;
US 9,584,827 B2 Oh; et al. H04N19/119; H04N19/129; H04N19/182.
US 9,445,127 B2 Kim; et al. H04N19/159; H04N19/82; H04N19/117.
US 9,008,175 B2 Auwera; et al. H04N19/46; H04N19/147; H04N19/157.
US 9,900,618 B2 Lee; et al. H04N19/593; H04N19/105; H04N19/11.
US 10,003,820 B2 Lee; et al. H04N19/593; H04N19/105; H04N19/11.
US 10,560,722 B2 Lee; et al. H04N19/82; H04N19/105; H04N19/136.
8.2. Non-Patent documentation:
_ Constrained Infra Source Code Implementation; Sjoberg - Jan – 2011.
_ New intra prediction using the correlation between pixels; Lai – 2010.
Conclusions
9. In view of the above Examiner’s considerations, THIS ACTION IS MADE FINAL.
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.
10. Any inquiry concerning this communication or earlier communications from Examiner should be directed to LUIS PEREZ-FUENTES (luis.perez-fuentes@uspto.gov) whose phone number is (571) 270 -1168. The examiner can normally be reached on Monday-Friday 8am-
5pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, WILLIAM VAUGHN can be reached on (571) 272-1168. The fax phone number for the organization where this application or proceeding is assigned 571- 272- 3922. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LUIS PEREZ-FUENTES/
Primary Examiner, Art Unit 2481.
Prosecution Insights