DETAILED ACTION
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 .
Response to Amendment
Applicant previously filed claims 1-3. Claim 3 has been amended. Accordingly, claims 1-3 are pending in the current application.
Terminal Disclaimer
The terminal disclaimer filed on 04/06/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 3/30/38 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
The Terminal disclaimer, filed 04/06/2026, with respect to claims 1-3 has been entered. Therefore, the double patenting rejection of claims 1-3 has been withdrawn.
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive.
Regarding Claim 3, Applicant argues that the amendments to this claim are sufficient to overcome the product-by-process considerations as previously issued. However, examiner respectfully disagrees. Applicant recites “A non-transitory computer readable medium storing a bitstream and a computer program having instructions for transmission thereof, the bitstream including quantized coefficients of a current block to which a decoder performs an inverse quantization process, wherein in the inverse quantization process.” This language does nothing to address that the storage of the bitstream, even if the bitstream has data which may be used in a decoder to perform an inverse quantization process, do nothing to change the status of the bitstream merely being a product. Even with the recitation of a computer program product having instructions for transmission, no change has been made to the scope of the patentability of the claims and their underlying rejection. Applicant is reminded that 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). 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 memory storing the claimed bitstream and computer program having instructions for transmission thereof in claim 3 merely services as a support for the storage of the bitstream and computer program 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). Thus, the claim scope is just a storage medium storing data and is anticipated by Wang which recites a storage medium storing a bitstream.
In light of the above remarks, the rejection of claim 3 is maintained as before.
Allowable Subject Matter
Claims 1-2 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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.
Claim 3 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang; Ye-Kui (US 20140086333 A1).
Regarding claim 3, claim 3 claims 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 and a computer program having instructions for transmission thereof (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 memory storing the claimed bitstream and computer program in claim 3 merely services as a support for the storage of the bitstream and computer program and provides no functional relationship between the stored bitstream and compute program 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). Thus, the claim scope is just a storage medium storing data and is anticipated by Wang which recites a storage medium storing a bitstream.
Wang discloses a non-transitory computer readable medium storing a bitstream and a computer program having instructions for transmission thereof (¶60 and 44-45, “Video encoder 20” implemented as a variety of suitable circuitry such as one or more microprocessors; Paragraphs 501-502).
Conclusion
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 FARHAN MAHMUD whose telephone number is (571)272-7712. The examiner can normally be reached 10-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached on 5712727383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FARHAN MAHMUD/Primary Examiner, Art Unit 2483
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