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 .
Nonfunctional Descriptive Material
For reference, claim 1 recites “A computer-readable medium storing a bitstream generated by the image encoding/decoding method [steps of encoding method].
This claim is directed to mere data storage that results from an upstream/downstream process (encoding/decoding method) that has no definitive relationship with and is wholly separate from the storage medium (non-transitory computer-readable medium) being claimed.
Significantly, the claimed storage medium is NOT implementing the encoding method in claim 1; no instructions/steps are being executed by a processor to perform the encoding/decoding method. Instead, the claimed storage medium merely stores the data stream output from the encoding method. In other words, claim 1 is directed to a mere computer-readable medium storing data content (a data stream generated by an encoding method).
To be clear, Applicant has not used the standard CRM (computer readable media) claim formats of a) “a non-transitory computer-readable medium storing executable instructions that, when implemented by a processor, perform an encoding method [steps of encoding method]” or a b) non-transitory computer readable medium storing instructions that, when executed by a computer, cause it to perform a specified method that was held to recite patent-eligible product under 35 USC 101 by In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) and endorsed by the USPTO in 77 Fed. Reg. 74618 (Dec. 16, 2014), 2014 Interim Guidance on Patent Subject Matter Eligibility, Examples: Abstract Ideas at 1-3, 8-10.
Such standard CRM claim formats that recite execution/implementation of a method are also not subject to a nonfunctional descriptive material claim interpretation because such a claimed media does not merely store output data but instead stores functional, method steps that have a functional relationship with the media.
Applicant has deviated substantially from such standard-format CRM claims by positively reciting only the storing of a data stream while the generation thereof by an “encoding method” is ancillary, occurs before the claimed storing by the medium, and does not require anything functional to occur in or to the medium besides mere storing.
Under MPEP 2111.05(III), claim 1’s storage medium storing a data stream is merely machine-readable media. Furthermore, the Examiner finds that there is no disclosed or claimed functional relationship between a) the stored data (data stream) and medium or b) the stored data (data stream) and the encoding method. Instead, the medium is merely a support or carrier for the data being stored. Therefore, the data stored and the way such data is generated 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 1 is subject to a prior art rejection based on any non-transitory computer readable medium known before the earliest effective filing date of the present application such as, for example, a compact disc storing Abbey Road by the Beatles. For the sake of compact prosecution, however, claim 1 has been rejected based on prior art that actually discloses the method of generating the stored data (data stream).
Further in regards to In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994) note that the presently claimed invention differs significantly from Lowry’s claims. Lowry’s claim 1 recites “A memory for storing data for access by an application program being executed on a data processing system, comprising [data structures including ADO (attribute data objects)].
In Lowry, the Federal Circuit stated:
Nor are the data structures analogous to printed matter. Lowry's ADOs do not represent merely underlying data in a database. ADOs contain both information used by application programs and information regarding their physical interrelationships within a memory. Lowry's claims dictate how application programs manage information. Thus, Lowry's claims define functional characteristics of the memory.
Lowry’s ADOs (Attribute Data Objects) contain information regarding their physical interrelationships with the carrier (a memory) and Lowry’s claims dictate how the application programs manage information. According to Lowry “ADOs have both hierarchical and non-hierarchical interrelationships” with rules that govern these relationships which are recited in the claims and which form functional relationships with the medium.
But unlike Lowry, the claimed invention has no functional relationship between the product (computer readable medium) and the printed matter (the stored data stream) and no functional relationship could exist possibly between the product and a processor because no processor is recited in the claim. Instead, a data stream is merely stored; the data stream itself is not defined within the claim and the computer readable medium solely acts as a carrier or substrate for storing the data stream.
As further evidence that the medium is a mere carrier of information note that that the data stream being stored is an end product or output of the encoding/decoding method such that the only functional role played by the medium solely consists of storing information.
In further contrast to Lowry, instant claim 1 merely stores a raw data stream having no claimed organization or relationship to the carrier (readable medium). In other words, claim 1 merely recites storage of the information content (bitstream).
In Lowry, the Federal Circuit goes on to point out that:
Indeed, Lowry does not seek to patent the Attributive data model in the abstract. Nor does he seek to patent the content of information resident in a database. Rather, Lowry's data structures impose a physical organization on the data.
In sharp contrast to Lowry, Applicant seeks to patent the storage of a data stream in the abstract. In other words, the claims seek to patent the content of the information (data stream with encoded video content). Moreover, this stored data stream does not impose any definitive physical organization on the data as there is no functional relationship between the data stream and the storage medium.
Furthermore, instant claim 1 is analogous to the memory stick storing tables of batting averages in which the computer readable medium is merely a support for the information (data stream) consistent with the example in MPEP 2111.05(III) which states.
However, where the claim as a whole is directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists. For example, a claim to a memory stick containing tables of batting averages, or tracks of recorded music, utilizes the intended computer system merely as a support for the information. Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the computer” MPEP 2111.05(III) Machine-readable media
In conclusion, claim 1 is directed to mere data content (data stream generated by the recited encoding method) stored as a data stream on a computer-readable storage medium. Under MPEP 2111.05(III), such claims are merely machine-readable media. Furthermore, the Examiner found and continues to find that there is no disclosed or claimed functional relationship between the stored data and medium. Instead, the medium is merely a support or carrier for the data being stored. Therefore, the data stored and the way such data is generated should not be given patentable weight.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1 - 4 rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) video data containing an intra coded block. This judicial exception is not integrated into a practical application because the additional elements are generic components that would does not provide meaningful limitation to the abstract idea.
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) 1 - 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song et al (US 2011/0038414, hereafter Song).
As per claim 1, Song discloses a non-transitory computer readable storage media having video data encoded thereupon, comprising an intra-coded block (¶ 173).
Regarding claim 2, arguments analogous to those presented for claim 1 are applicable for claim 2.
Regarding claim 3, arguments analogous to those presented for claim 1 are applicable for claim 3.
Regarding claim 4, arguments analogous to those presented for claim 1 are applicable for claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHIKAODILI E ANYIKIRE whose telephone number is (571)270-1445. The examiner can normally be reached 8 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHIKAODILI E ANYIKIRE/Primary Examiner, Art Unit 2487
Prosecution Insights