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
This action is in response to the remark entered on April 10, 2026.
Claim 1-3 & 5-21 pending in the instant application.
Claims 1, 12 & 20 are amended.
Claim 4 is cancelled.
Claims 21 is newly added.
Response to Arguments
Applicant's remarks filed 12/22/2025, page 9, regarding the rejection of claim 20 under 35 USC 102(a)(1) have been fully considered, but they are not persuasive. Claim 20 is directed to a non-transitory computer readable medium (CRM) that stores a bitstream. After the storing, the CRM is no longer involved with the functions performed by the processors. Patentable weight is given to data stored on a computer-readable medium when there exists a functional relationship between the data and its associated substrate. MPEP 2111.05 III. For example, if a claim is drawn to a computer-readable medium containing programming, a functional relationship exists if the programming “performs some function with respect to the computer with which it is associated.” Id. However, if the claim recites that the computer-readable medium merely serves as a support for information or data, no functional relationship exists and the information or data is not given patentable weight. Id. Claim 19 is directed to a non-transitory medium readable medium storing a bitstream comprising information about a geometric merge mode in addition to other elements that appear to describe how the bitstream is generated. These elements or steps are not performed by an intended computer, and the bitstream is not a form of programming that causes functions to be performed by an intended computer. This shows that the computer-readable medium merely serves as support for the bitstream and provides no functional relationship between the steps/elements that describe the generation of the bitstream and intended computer system. Therefore, those claim elements are not given patentable weight. Thus the claim scope is just a storage medium storing data and is anticipated by Zhang which recites in Paragraphs [0869]-[0871], wherein the memory (memories) 3004 may be used for storing data, and the output of the coding component 3104 may be either stored, or transmitted via a communication connected, as represented by the component 3106. The stored or communicated bitstream (or coded) representation of the video received at the input 3102.
Therefore the rejection of claim 20 under 35 USC 102(a)(1) is maintained.
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 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.
Claim(s) 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (US 2021/0400260 A1) (hereinafter Zhang).
Regarding claim 20, “a non-transitory computer-readable storage medium for video decoding storing a bitstream to be decoded by operations comprising […],” is a product by process claim limitation where the product is the bitstream/image data 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 non-transitory computer-readable recording medium storing the bitstream. 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, “non-transitory computer-readable recording medium,” merely serves as a support for information or data, no functional relationship exists. MPEP §2111.05(III). The non-transitory computer-readable recording/storage medium storing the claimed bitstream/image data in claims 18-19 merely services as a support for the storage of the bitstream/image data and provides no functional relationship between the stored bitstream/image data and recording/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 Zhang which recites in Paragraphs [0869]-[0871], wherein the memory (memories) 3004 may be used for storing data, and the output of the coding component 3104 may be either stored, or transmitted via a communication connected, as represented by the component 3106. The stored or communicated bitstream (or coded) representation of the video received at the input 3102.
Allowable Subject Matter
Claim 20 would be allowable if rewritten to overcome the rejection under 35 USC 102(a)(1) as outlined above.
Claims 1-3, 5-19 & 21 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The various claimed limitations mentioned in the claims are not taught or suggested by the prior art taken either singly or in combination, with emphasize that it is each claim, taken as a whole, including the interrelationships and interconnections between various claimed elements make them allowable over the prior art of record.
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 DANIEL CHANG whose telephone number is (571)272-5707. The examiner can normally be reached M-Sa, 12PM - 10 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Czekaj can be reached at 571-272-7327. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL CHANG/Primary Examiner, Art Unit 2487
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