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 Arguments
Applicant's arguments filed 07/17/2026, with regards to claim 19, have been fully considered but they are not persuasive.
Particularly, with regards to the claim language not implementing any actual method as no instructions were being executed by a processing system, and merely data output from or generated by a series of acts is being stored, such language was not amended or properly attended to. As such, the rejection of claim 19 is being maintained.
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)(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) 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tsubusaki (“Tsu”) (U.S. PG Publication No. 2021/0195113).
In regard to claim 19, the claim is directed to a non-transitory computer-readable medium having stored therein a computer program generated by acts. Significantly, the claimed non-transitory computer readable medium is NOT implementing any actual method; no instructions/steps are being executed. Instead, the claimed storage medium merely stores the data output from and/or generated by a series of acts, which may or may not at some point be executed following the series of acts. In other words, these claims are directed to a mere machine-readable medium storing data content (a bitstream generated by a method).
Applicant therefore seeks to patent the storage of a bitstream in the abstract. In other words, the claim seeks to patent the content of the information (bitstream comprising video information) and not the process itself. Moreover, this stored bitstream does not impose any definitive physical organization on the data as there is no functional relationship between the bitstream and the storage medium. In conclusion, claim 19 and any claims depending therefrom are directed to mere data content (bitstream generated by a series of acts) stored as a bitstream 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. 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, this claim 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.
The examiner recommends amending the claim language to include instructions, that when executed by a processor, execute the steps claimed.
Therefore, claim 19 is anticipated by Tsu, as Tsu discloses a non-transitory computer readable storage medium having stored therein a bitstream comprising video information generated by acts (See ¶0009).
Allowable Subject Matter
Claims 11 and 13-18 are considered to indicate allowable subject matter, pending the rejection seen above.
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 EDEMIO NAVAS JR whose telephone number is (571)270-1067. The examiner can normally be reached M-F, ~ 9 AM -6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Ustaris can be reached at 5712727383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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EDEMIO NAVAS JR
Primary Examiner
Art Unit 2483
/EDEMIO NAVAS JR/Primary Examiner, Art Unit 2483
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