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 .
Claim Interpretation
1. Nonfunctional Descriptive Material
Claim 13 recites “A non-transitory computer-readable recording medium storing a bitstream, the bitstream comprising”. There are no recitations of a processor or other element-merely bitstream content. Under MPEP 2111.05(III), this claim is merely machine-readable media. The Examiner finds that there is no disclosed or claimed functional relationship between the stored bitstream and the medium. Instead, the medium is merely a support or carrier for the bitstream being stored. Therefore, the bitstream stored and the way such bitstream is decoded by a video decoding method should not be given patentable weight. See MPEP 2111.05 applying In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); and In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). As such, claim 13 is subject to a prior art rejection based on any non-transitory computer-readable storage medium known before the earliest effective filing date of the present application.
Claim Objections
The Examiner thanks applicant for amending the claims to overcome the claim objections detailed in the Office Action dated 5 December 2025
Claim Rejections - 35 USC § 112
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.
Claim(s) 9-11 and 12 is/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.
Regarding claim 9: A method of transmitting a bitstream wherein: the method comprises transmitting the bitstream generated by a video encoding method, wherein the video encoding method comprises … is directed to a method of transmitting a bitstream, followed by a recitation that the bitstream was generated by a video encoding method. In other words, the transmitting method is just transmitting the bitstream. The bitstream being transmitted has no disclosed or claim-defined structure that differentiates the claimed data stream from any other data stream/transmitting. Applicant is advised to change the claim limitations to methods described by active verbs that encode this bitstream rather than the verb transmitting.
According to MPEP 2173.02(II), claims 9 and 11-12 do not meet the threshold requirements of clarity and precision:
In reviewing a claim for compliance with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, by providing clear warning to others as to what constitutes infringement of the patent. See, e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). …
If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
The bitstream being transmitted in claims 9 and 11-12 fails the notice function required by 112(b) because it does not provide clear warning to others as to what constitutes infringement. For example, how would one of ordinary skill in the art determine whether a compact disc with a recorded bitstream infringes claim 9? The claimed (and disclosed) data stream has no particular structure, arrangement, indicia or anything else that would distinguish the stored data stream from any other bitstream. In other words, once the encoding method has completed operations and generates an (encoded) data stream there is nothing within the data stream itself that differs from another data stream other than the video data content. The metes and bounds of claims 9, and 11-12 are not defined by the encoding method but instead by transmission of the data stream which is a wholly unclear and indefinite entity in and of itself.
Claim 9 is recommended to be re-written to include the limiting steps of encoding the bitstream. Otherwise, transmission of any bitstream can be used to reject the claimed method of transmitting a bitstream.
Claims 11-12 are also rejected as being indefinite for failing to particularly point out and distinctly claim the subject matter and as detailed above for claim 9.
Claim Rejections - 35 USC § 102
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.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHOI et al., (US 2025/0267285).
Claim 13 has been interpreted above as nonfunctional descriptive material under MPEP 2111.05(III) and the case law cited therein because claim 13 recites “A non-transitory computer-readable recording medium storing a bitstream”. As such, claim 13 is subject to a prior art rejection based on any non-transitory computer readable storage medium known before the earliest effective filing date of the present application. In other words, the proper interpretation of claim 13 is merely a machine-readable media in which the media is merely a support or carrier for the bitstream being stored wherein the bitstream stored and the way such bitstream is decoded should not be given patentable weight.
CHOI, which is analogous art, discloses non-transitory computer readable storage medium having stored therein a bitstream comprising video information [¶0001 teaches: a recording medium for storing a bitstream]. As such, CHOI clearly anticipates a non-transitory computer-readable recording medium storing a bitstream.
Allowable Subject Matter
Claims 1, 3-5, 7-8, and 16-18 are allowed.
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 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.
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marnie Matt whose telephone number is (303)297-4255. The examiner can normally be reached Monday - Friday, 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jay Patel can be reached at 571-272-2988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARNIE A MATT/Primary Examiner, Art Unit 2485