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 .
Application Status
Present office action is in response to preliminary amendment filed 05/20/2024. Claims are 12-15 and 17 are amended. Claims 1-20 are currently pending in the application.
Claim Objections
Claims 1-15 are objected to because of the following informalities: Claim 1 recites “a first page is arranged at the beginning of a sequence, and a last page is arranged at the end of a sequence” (emphasis added). It appears the claim was intended to recite “a first page is arranged at the beginning of a sequence, and a last page is arranged at the end of the sequence”. The claim is read as shown for purpose of examination. This removes ambiguity in the subsequent recitation of “the sequence can be read out loud by an electronic device” in claim 13.
Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Step 1: Statutory Category?
Independent claims 1 and 16 respectively recites “an interactive book or game” (i.e. a manufacture). (i.e. a machine), and “a method” (i.e. a process). As such, independent claims 1 and 16 are each directed to a statutory category of invention within § 101, i.e., machine, process and manufacture. (Step 1: YES).
Step 2A – Prong 1: Judicial Exception Recited?
Independent claim 16, analyzed as representative of the claimed subject matter, is reproduced below.
A method of rearranging pages of an interactive book or game assembly wherein:
placing a first page depicting a subject at the beginning of a sequence starts a story;
selecting a series of story pages depicting a noun, which may include an indefinite article are arranged or shuffled in any desired order following the first page;
following the story pages is a last page depicting a direct object, which follows the selected story pages concluding the story; and
shuffling, rearranging, or reorganizing the story pages to create a variety of new stories each time the story pages are moved.
It is well established that humans have long used pen and paper for composing text such as written assignments, articles, stories, books or any other desired type of writings. The published Specification discloses “manually or digitally operated educational appliances, books, games, and puzzles for children” (¶ 2) and that “an interactive book or game that maintains a reader or user's interest without becoming familiar, and makes reading enjoyable for a child, adult, or other reader” (¶ 7). Thus, other than implying a “digital” or “physical” book, under the broadest reasonable interpretation, at least the italicized claim limitations may be performed using pen and paper, in the human mind, including observations, evaluations, and judgments and may also be characterized as a certain method of organizing human activity, i.e., managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Accordingly, the claim recites an abstract idea under Step 2A: Prong 1. (Step 2A – Prong 1: YES).
Step 2A – Prong 2: Integrated into a Practical Application?
The implied computer or storybook assembly, namely the implied “digital” or “physical” book, is recited at a high level of generality (see published Specification (at least ¶ 10: … the storybook or gamebook of the disclosed invention is digital or experienced through a computer or similar device. In such embodiments, the pages, illustrations, text, or other symbolic representations of the storybook or gamebooks are read and experienced digitally. The reader or user can shuffle or rearrange the pages by a click of a button or by independently arranging them as they desire. In some embodiments, the computer may read the stories out loud to the user. In further embodiments, an animation can be created and displayed to act out the storyline that the user creates…; ¶ 30: The storybook assembly 100 may comprise a first page 102, any number of story pages 106, and a last page, 104 as seen in FIGS. 1-3. The storybook assembly 100 may also comprise a receptacle 108. The receptacle 108 is a storage device for the pages when they are not in use. The receptacle 108 may be a box or sleeve, and may be paper, plastic, or another suitable material for its use. The receptacle may have text 110 or illustrations 112, as depicted in FIG. 4. The text 100 and illustration 112 may match the theme or general storyline depicted in the story pages 106 within the storybook assembly 100 …; ¶ 30: The storybook assembly 100 may comprise a first page 102, any number of story pages 106, and a last page, 104 as seen in FIGS. 1-3. The storybook assembly 100 may also comprise a receptacle 108. The receptacle 108 is a storage device for the pages when they are not in use. The receptacle 108 may be a box or sleeve, and may be paper, plastic, or another suitable material for its use. The receptacle may have text 110 or illustrations 112, as depicted in FIG. 4. The text 100 and illustration 112 may match the theme or general storyline depicted in the story pages 106 within the storybook assembly 100…; ¶ 34: the storybook assembly 100 may have any number of story pages 106 with text 110 and illustrations 112. The story pages 106 may be arranged in any order selected by a user, and can be stacked, laid on a surface, or held in the user's hand. The user may begin the creation of their story by first selecting the first page 102, and then a sequence of story pages 106, concluding with the last page 104. Leaving the first page 102, and the last page 104 in their respective positions, the user may then continue to rearrange or shuffle the story pages 106 to read as a new story each time …. The lack of details about the implied “digital” or “physical” book indicates that the implied additional element is generic, or part of generic elements performing or being used in performing the generic functions claimed. The claim limitations do not purport to improve the functioning of implied “digital” or “physical” book, do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic components. Further, the claim fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an ordered combination” the functions implemented on implied “digital” or “physical” book at each step of the method are purely conventional. Each step performed in the claim does no more than require a generic computer/storybook assembly to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the Manual of Patent Examining Procedure (“MPEP”) §§ 2106.04(d) and 2106.05(a)–(c) and (e)–(h). Because the abstract idea is not integrated into a practical application, the claim is directed to the judicial exception. (Step 2A, Prong Two: NO).
Step 2B: Claim provides an Inventive Concept?
As discussed with respect to Step 2A Prong Two, the implied “digital” or “physical” book in the claim amounts to no more than mere instructions to apply the exception using generic components. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the published Specification, as noted above (for example, (¶¶ 10. 30, 34)) describes implied “digital” or “physical” book in general terms, without describing the particulars, the claim limitations may be broadly but reasonably construed as reciting conventional components and techniques, particularly in light of the published Specification sufficiently well-known that the specification does not need to describe the particulars of such additional element(s) to satisfy 35 U.S.C. § 112(a). See MPEP 2106.05(d), as modified by the USPTO Berkheimer Memorandum. Furthermore, the Berkheimer Memorandum, Section III (A)(1) explains that a specification that describes additional element(s) “in a manner that indicates that the additional element(s) is/are sufficiently well-known that the specification does not need to describe the particulars of such additional element(s) to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional). The generic description of the implied “digital” or “physical” book indicates the claim steps are well-known enough that no further description is required for a skilled artisan to understand the process and that the implied component is used in a manner that is well-understood, routine, and conventional in the field because there can be no dispute that computers and books, generally, are well-known, routine, and conventional. Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve the user-specific resources.” See also In re Rice where the claim at issue recited a "paper sheet". Hence, the implied additional element(s) is/are generic, well-known, and conventional element(s). The use of the additional element(s) either alone or in combination amounts to no more than mere instructions to apply the judicial exception using generic component(s). Mere instructions to apply an exception using generic components cannot provide an inventive concept, and thus the claims are patent ineligible. (Step 2B: NO).
In regard to independent Claim 1:
Independent claim 1 recites an interactive book or game assembly comprising steps comparable to those of representative claim 16. Accordingly, independent claim 1 is rejected for reasons similar to those previously explained when addressing representative claim 16.
In regard to the dependent claims:
Dependents claims 2-15 and 17-20 include all the limitations of corresponding independent claims 1 and 16 from which they depend and, as such, recite the same abstract idea(s) noted above for corresponding independent claims 1 and 16. The dependent claims do not appear to remedy the issues noted above. As per MPEP §§ 2106.05(a)–(c), (e)–(h), none of the limitations of claims 2-15 and 17-20 integrates the judicial exception into a practical application. Additionally, while dependent claims 2-15 and 17-20 may have a narrower scope than corresponding independent claims 1 and 18, no claim contains an “inventive concept” that transforms the corresponding claim into a patent-eligible application of the otherwise ineligible abstract idea(s). Therefore, dependent claims 2-15 and 17-20 are not drawn to patent eligible subject matter as they are directed to (an) abstract idea(s) without significantly more.
Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-14 and 16-20 are rejected under 35 U.S.C. 103 as obvious over Taylor (US 20170124888 A1).
Re claims 1 and 16:
[Claim 1] Taylor teaches or at least suggests an interactive book or game assembly comprising: a first page and a last page, wherein a first page is arranged at the beginning of a sequence, and a last page is arranged at the end of the sequence; and at least one story page following the first page, and before the last page (at least abstract: An interactive personalized activity book for illustrating and describing activities; ¶ 3: a set of three books or illustrating and describing activities to a user of the book; ¶ 7: A book for illustrating and describing activities for users of the book … the book provides the content, i.e., text and photographs; ¶ 18: The child, parent and/or caregiver can interleave the completed pages of the “student book template” into the “author's pages” to create a new book … ; ¶ 22: completing literacy- and other skills-building exercises; ¶ 24: A brief text description at the top of the page of the environment or activity depicted in the photograph or illustration on the page, e.g., “Our Artwork;”; ¶ 30: A space designated for the child user to draw or affix a photo of the environment, activity, or person he/she referred to in the brief text description; ¶¶ 55, 59: a mechanism to create a structure, i.e, an interactive and customizable activity book, to combine information …; ¶ 79: FIG. 20 … the user may change the order of the pages to represent the child's experiences and/or routines, and/or to interleave pages from the “author's book template” and/or interleave pages from the “teacher book template” into pages of the “student book template” to form a separate and distinct activity book; ¶ 108: FIG. 19 … the binding may be replaced by a loose leaf binding arrangement 18A, so that the order of pages may be changed. The loose leaf binding arrangement 18A also allows the user to show certain pages and not others in case only certain pages resemble the child's school activities or other experiences. It also allows the user to easily interleave pages in any combination among the set of three books. The result is the assembly and formation of a separate and distinct activity book containing indicia in the form of text and/or photos and illustrations from any combination of the following sources: the teacher, the child, the parent, and the author; ¶¶ 116, 118, 119: … the user(s) must deconstruct the arrangement of the three separate books containing pages 201, 202, 203, and 204 respectively by separating these pages from their respective books. Then the user must construct a new, distinct and customized book using these pages 201,202,203,204 in any configuration the user chooses).
Taylor appears to be silent on wherein the at least one story page ends with a preposition or verb or adverb to allow the story pages to be organized and rearranged. However, as shown above, Taylor discloses “completing literacy- and other skills-building exercises” (see at least ¶ 22). By definition literacy is “the ability to read and write”. Writing is the practice of combining words, with consideration for grammar, punctuation, and structure, to effectively communicate a message. Ending at least one story page with a preposition or verb or adverb is no more than an example of “combining words, with consideration for grammar, punctuation, and structure”. Hence, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Taylor as claimed, because a person of ordinary skill has good reason to pursue the known options within his or her grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
[Claim 16] Taylor teaches or at least suggests a method of rearranging pages of an interactive book or game assembly wherein: placing a first page depicting a subject at the beginning of a sequence starts a story; selecting a series of story pages depicting a noun, which may include an indefinite article are arranged or shuffled in any desired order following the first page; following the story pages is a last page depicting a direct object, which follows the selected story pages concluding the story; and shuffling, rearranging, or reorganizing the story pages to create a variety of new stories each time the story pages are moved (at least abstract: An interactive personalized activity book for illustrating and describing activities; ¶ 3: a set of three books or illustrating and describing activities to a user of the book; ¶ 7: A book for illustrating and describing activities for users of the book … the book provides the content, i.e., text and photographs; ¶ 11: A photograph or illustration of the activity, situation or person described by the activity title; ¶ 18: The child, parent and/or caregiver can interleave the completed pages of the “student book template” into the “author's pages” to create a new book …; ¶ 22: completing literacy- and other skills-building exercises; ¶ 24: A brief text description at the top of the page of the environment or activity depicted in the photograph or illustration on the page, e.g., “Our Artwork;”; ¶ 30: A space designated for the child user to draw or affix a photo of the environment, activity, or person he/she referred to in the brief text description; ¶¶ 55, 59: a mechanism to create a structure, i.e, an interactive and customizable activity book, to combine information …; ¶ 79: FIG. 20 … the user may change the order of the pages to represent the child's experiences and/or routines, and/or to interleave pages from the “author's book template” and/or interleave pages from the “teacher book template” into pages of the “student book template” to form a separate and distinct activity book; ¶ 108: FIG. 19 … the binding may be replaced by a loose leaf binding arrangement 18A, so that the order of pages may be changed. The loose leaf binding arrangement 18A also allows the user to show certain pages and not others in case only certain pages resemble the child's school activities or other experiences. It also allows the user to easily interleave pages in any combination among the set of three books. The result is the assembly and formation of a separate and distinct activity book containing indicia in the form of text and/or photos and illustrations from any combination of the following sources: the teacher, the child, the parent, and the author; ¶¶ 116, 118, 119: … the user(s) must deconstruct the arrangement of the three separate books containing pages 201, 202, 203, and 204 respectively by separating these pages from their respective books. Then the user must construct a new, distinct and customized book using these pages 201,202,203,204 in any configuration the user chooses).
Taylor appears to be silent on depicting a direct object, which follows the selected story pages concluding the story. However, as shown above, Taylor discloses “illustrating and describing activities to a user of the book”; “A brief text description at the top of the page of the environment or activity depicted in the photograph or illustration on the page, e.g., “Our Artwork;”, “A photograph or illustration of the activity, situation or person described by the activity title” and “A space designated for the child user to draw or affix a photo of the environment, activity, or person he/she referred to in the brief text description” (see at least ¶¶ 3, 7, 11, 24, 30). Hence, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Taylor as claimed, because a person of ordinary skill has good reason to pursue the known options within his or her grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Re claims 2-5:
[Claim 2] Taylor appears to be silent on wherein the first page depicts a noun or subject. However, as shown above, Taylor discloses “completing literacy- and other skills-building exercises” (see at least ¶ 22). By definition literacy is “the ability to read and write”. Writing is the practice of combining words, with consideration for grammar, punctuation, and structure, to effectively communicate a message. Ending the first page depicting a noun or subject is no more than an example of “combining words, with consideration for grammar, punctuation, and structure”. The particular page claimed would have been an obvious matter of choice. Hence, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Taylor as claimed, because a person of ordinary skill has good reason to pursue the known options within his or her grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
[Claim 3] Taylor appears to be silent on wherein the first page depicts a noun or subject. Claim 3 is rejected for reasons similar to those previously explained when addressing claim 2.
[Claim 4] Taylor appears to be silent on wherein the story page begins with a noun or indefinite article. Claim 4 is rejected for reasons similar to those previously explained when addressing claim 2.
[Claim 5] Taylor appears to be silent on wherein the first page ends with a preposition or verb. Claim 5 is rejected for reasons similar to those previously explained when addressing claim 2.
Re claims 6-9:
[Claim 6] Taylor teaches or at least suggests wherein the pages feature text (at least ¶ 19: a book comprising information, i.e. text, photos and or illustrations, from at least three users: the child, the parent or caregiver, and the “teacher,” resulting in a comprehensive book, the content of which can change to meet the evolving needs of the young child user and his/her parent or caregiver).
[Claim 7] Taylor teaches or at least suggests wherein the pages feature illustrations (at least ¶ 19: a book comprising information, i.e. text, photos and or illustrations, from at least three users: the child, the parent or caregiver, and the “teacher,” resulting in a comprehensive book, the content of which can change to meet the evolving needs of the young child user and his/her parent or caregiver).
[Claim 8] Taylor teaches or at least suggests wherein the pages are unbound or temporarily bound (at least ¶ 91: the binding 18 may be replaced by a loose leaf binding arrangement 18A, as illustrated by fragmentary view FIG. 4; ¶ 106: each activity page 107 of the “student book template” also has holes 110 along the left side of the page to accommodate placement in a ringed binder, so that each page may be removed by the user and placed in any order the user wishes within a ringed binder and/or interleaved within a ringed binder among the pages of the “author's book” and “teacher book template,” both of which will also have holes to accommodate placement in a ringed binder).
[Claim 9] Taylor teaches or at least suggests wherein the pages have apertures or a magnetic edge (at least FIGs. 1, 2, 5-11, 13-18 and ¶ 106: each activity page 107 of the “student book template” also has holes 110 along the left side of the page to accommodate placement in a ringed binder, so that each page may be removed by the user and placed in any order the user wishes within a ringed binder and/or interleaved within a ringed binder among the pages of the “author's book” and “teacher book template,” both of which will also have holes to accommodate placement in a ringed binder).
Re claims 10-11 and 17:
[Claims 10 and 17] Taylor teaches or at least suggests wherein the pages are made of silk, cloth, felt, cotton, paper, paperboard, cardboard, plastic, or another suitable material for printing text and illustrations on (at least ¶ 111: … the “teacher book template” can be customized electronically using word processing software such as Microsoft Word™, as well as in paper form).
[Claim 11] Taylor teaches or at least suggests wherein the book or game is digital or electronic (at least ¶ 111: … the “teacher book template” can be customized electronically using word processing software such as Microsoft Word™, as well as in paper form: “Also available as an electronic document for you to Customize!” Photos and/or illustrations 117(iii) of the environment, setting or situation”, e.g., school, appear on the cover as well).
Re claims 12-13:
[Claim 12] Taylor appears to be silent on wherein a sequence created is animated. The Examiner takes official notice that the concept and advantages of ebooks enhancing visual presentation with animation were old and well known to one of ordinary skill in the art before the effective filing date of the invention. Hence, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Taylor as claimed because this would amount to no more than applying a known technique to a known method (device, or product) ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
[Claim 13] Taylor appears to be silent on wherein the sequence can be read out loud by an electronic device. The Examiner takes official notice that the concept and advantages of ebooks providing text-to-speech (TTS) functionalities that can "speak" text of reading materials aloud to a user were old and well known to one of ordinary skill in the art before the effective filing date of the invention. Hence, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have modified Taylor as claimed because this would amount to no more than applying a known technique to a known method (device, or product) ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
Re claim 14:
[Claim 14] Taylor teaches or at least suggests wherein the pages may be made in the form of a card, a digital page, an animation, or character or sort (at least ¶ 19: information, i.e. text, photos and or illustrations; ¶ 28: affix a photo; ¶ 50: placing a photograph; ¶ 111: … the “teacher book template” can be customized electronically using word processing software such as Microsoft Word™, as well as in paper form: “Also available as an electronic document for you to Customize!” Photos and/or illustrations 117(iii) of the environment, setting or situation”, e.g., school, appear on the cover as well).
Re claim 18:
[Claim 18] Taylor teaches or at least suggests wherein the user selects one or more story pages to place in a sequence between the first page and the last page (at least ¶¶ 116, 118, 119: … the user(s) must deconstruct the arrangement of the three separate books containing pages 201, 202, 203, and 204 respectively by separating these pages from their respective books. Then the user must construct a new, distinct and customized book using these pages 201,202,203,204 in any configuration the user chooses).
Re claim 19:
[Claim 19] Taylor teaches or at least suggests wherein the first page, the last page, or the story pages contain one or more apertures on one end to selectively bind the pages if a user chooses to keep the pages in a sequence or arrangement (at least ¶ 111: … the “teacher book template” can be customized electronically using word processing software such as Microsoft Word™, as well as in paper form).
Re claim 20:
[Claim 20] Taylor appears to be silent on wherein the first page, the last page, and/or the story pages contain a magnetic edge on at least one side that corresponds to a magnetic section on a receptacle to selectively bind the pages if a user chooses. However, Taylor discloses spiral binding for securing and allowing pages to be displayed as desired (see ¶¶ 89, 90, 91, 116, 118, 119). At least in view of the above, modifying Taylor as claimed would have been an obvious matter of choice.
Claim 15 is rejected under 35 U.S.C. 103 as obvious over Taylor, as applied to claim 1, in view of Ozrovitz (US 5213507 A).
Re claim 15:
[Claim 15] Taylor appears to be silent on but Ozrovitz teaches or at least suggests wherein the pages are puzzle pieces, each of the puzzle pieces having male and female ends that are capable of being operatively connected with at least one other puzzle piece to create a story, and wherein the pages can be physically connected in a variety of different storylines by attaching the pages together (at least col 3, lines 45-57: Each puzzle piece 30 may have a male portion 32 and/or a female portion 34 for cooperating with corresponding portions on an adjacent puzzle piece 30. The male and female portions 32 and 34 matingly engage each other to interlock one puzzle piece 30 with an adjacent puzzle piece 30. Preferably, the puzzle pieces 30 interlock together to form a single puzzle 28). Hence, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the invention, to have used the old and well-known features of the male and female puzzle pieces of Ozrovitz and to have modified Taylor as claimed because this would amount to no more than applying a known technique to a known method (device, or product) ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO
Form 892 and is considered pertinent to applicant's disclosure.
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/EDDY SAINT-VIL/Primary Examiner, Art Unit 3715