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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a voice mode manager module operable to receive…one or more modules operable to convert the user input…an AI language model prompt manager operable to provide the at least one outcome to an AI language model…an AI image generator operable to receive the response…an AI video generator operable to receive the response…” in claims 1 - 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 an abstract without significantly more.
When considering subject matter eligibility under 35 USC 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Specifically, claims 1 - 20 are directed to a method/system. They hereby fall under one of the four statutory classes of invention.
If the claim does not fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
Claims 1 - 20 recite steps of observation, evaluation, and judgement that can be practically performed by a human, either mentally or with the use of pen and paper.
The limitation of "based at least in part on the user input and at least in part on output comprising the at least one user intent from a natural language processing (NLP) module, a user command preprocessing switch module determines at least one outcome for using the user input as an internal program command or as text in the story, wherein the at least one outcome comprises a language complexity level based at least in part on the at least one user intent." in claims 1 - 20, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of generic computer components. That is, other than reciting "an interactive narrative engine comprising: a voice mode manager module", nothing in the claim element precludes the steps from practically being performed in a human mind.
The mere nominal recitation of a generic interactive narrative engine comprising: a voice mode manager module do not take the claim limitations out of the mental processes grouping.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgement, and opinion). Accordingly, the claims 1 - 20 recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements "receive a user input comprising at least one user intent; convert the user input for processing to discern the at least one user intent; providing a response to the at least one user intent and facilitate narrating or telling the story or narrative; ".
The limitation " receive a user input comprising at least one user intent to interact; convert the user input for processing to discern the at least one user intent", amount to data-gathering steps which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)).
The limitation "providing a response to the at least one user intent and facilitate narrating or telling the story or narrative", represents an extra-solution activity because it is a mere nominal or tangential addition to the claim, a mere generic transmission and presentation of collected and analyzed data. (See MPEP 2106.05 (g)).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea, thus fail to integrate the abstract idea into a practical application. See MPEP 2106.05(g).
The insignificant extra-solution activities identified above, which include the data- gathering (receiving, providing and converting) steps, are recognized by the courts as well- understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d)(II) (i) Receiving or transmitting data over a network, e.g., using the Internet to gather data, buySAPE, Inc. V. Google, Inc., 765 F.3d 1350, 1355, 112 USPO2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information
over a network); (v) Presenting (displaying) offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPO2d at 1092- 93). The claim is not patent eligible.
Claims 1 - 20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a an interactive narrative engine comprising: a voice mode manager module to perform the receiving and providing a response steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Even when considered in combination, these additional elements (an interactive narrative engine comprising: a voice mode manager module) represent mere instruction to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept.
Claims 1- 20 as a whole, do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Claims 16 - 20 are directed to a computer readable medium storing processor executable instructions that is not limited to a non-transitory, and thus, statutory medium. The scope of "computer-readable medium" as defined in the specification may include signal-based mediums such as "signals used to propagate instructions", "carrier waves/pulses", since recites "Such a computer-readable medium may include any tangible non-transitory medium for storing information in a form readable by one or more computers, such as but not limited to read only memory (ROM); random access memory (RAM); magnetic disk storage media; optical storage media; a flash memory, etc." (see Specification, Paragraph 105). A signal does not fall within one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of
matter) because it is an ephemeral, transient signal and thus is non-statutory. Since the scope of "computer-readable medium" may include these non-statutory instances, claims 16 - 20 are directed to non-statutory subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 18 of copending Application No. 18/210,749 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 - 20 of the instant application are similar in scope and content of claims 1 - 18 of the copending application.
It would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1 – 18 of the copending application as a general teaching for facilitating narrating or telling a story, to perform method/system as claimed in the present invention. The instant claims obviously encompass the claimed invention of the '749' copending and differ only in the method steps. The extent that the instant claims are broaden and therefore generic to claimed invention of '749' copending [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a copending application. And since the structure is as recited, the method step is obtained and therefore, obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Here is a comparison between claim 1 of the instant application and claim 1 of the copending application.
Instant Application 18/734,431
Copending Application 18/210,749
Comparison
1.A system for providing AI-generated narration in a story, comprising: an interactive narrative engine comprising:
1.A system for providing Al-generated narration content in a story with dynamically-generated content in response to an input from for a user, the system comprising an interactive narrative engine comprising:
Similar
a voice mode manager module operable to receive a user input comprising at least one user intent;
a voice mode manager module operable to:
receive a user input wherein the user identifies as a predefined character to play in the story; and
receive a user input comprising at least one user intent to interact, speak, or move as the predefined character played by the user in the dynamically-generated content in the story;
Similar
one or more modules operable to convert the user input for processing to discern the at least one user intent, wherein based at least in part on the user input and at least in part on output comprising the at least one user intent from a natural language processing (NLP) module, a user command preprocessing switch module determines at least one outcome for using the user input as an internal program command or as text in the story, wherein the at least one outcome comprises a language complexity level based at least in part on the at least one user intent; and
one or more modules operable to convert the user input for processing to discern the at least one user intent, wherein based at least in part on the user input and at least in part on output comprising the at least one user intent from a natural language processing (NLP) module, a user command preprocessing switch module determines at least one outcome for using the user input as an internal program command or as text for the user playing the predefined character in the dynamically-generated content in the story;
Similar
an AI language model prompt manager operable to provide the at least one outcome to an AI language model, wherein based at least in part on the at least one outcome, the AI language model provides a response to the at least one user intent and facilitates narrating or telling the story.
an AI language model prompt manager operable to provide the at least one outcome to an AI language model, wherein based at least in part on the at least one outcome, the AI language model provides a response to the at least one user intent and facilitates narrating or telling the dynamically-generated content with the user playing the predefined character in the story; and wherein the dynamically-generated content with the user playing the predefined character in the story is output to the user via an output device.
Similar
Claim Rejections - 35 USC § 103
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 patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 – 3, 5 – 10, 12 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wittich et al. (US PAP 2015/0142434) in view of Knipp et al. (US PAP 2016/0225187).
As per claims 1, 9, and 16, Wittich et al. teach a system for providing AI-generated narration in a story, comprising: an interactive narrative engine comprising:
a voice mode manager module operable to receive a user input comprising at least one user intent ("voice recognition technology that recognize or synchronize the narrator of the story with the voice recognition function. The user then may begin to create a new story file by dictation"; paragraphs 76, 91 - 93);
an AI language model prompt manager operable to provide the at least one outcome to an AI language model, wherein based at least in part on the at least one outcome, the AI language model provides a response to the at least one user intent and facilitates narrating or telling the story (“generating an interactive story wherein an individual selects a general theme, characters and other story options and next begins to dictate a story or narrative.”; paragraphs 24, 126).
However, Wittich et al. do not specifically teach one or more modules operable to convert the user input for processing to discern the at least one user intent, wherein based at least in part on the user input and at least in part on output comprising the at least one user intent from a natural language processing (NLP) module, a user command preprocessing switch module determines at least one outcome for using the user input as an internal program command or as text in the story, wherein the at least one outcome comprises a language complexity level based at least in part on the at least one user intent.
Knipp et al. disclose that the story experience provided by embodiments of Narratarium are dynamic because the story elements included in a presented story may be modified based on user and/or contextual input, including information provided in real time. In particular, rather than a single, linear story line, some embodiments of Narratarium include sets of related story lines or threads, associated characters, settings, and other story elements, which may be assembled and modified as the story is unfolding. For example, based on information received from a child or parent, different characters, subplots, or scenes may be introduced to the story (paragraph 28) In one embodiment, user interface 155 interacts with a user via audio or spoken information, for example, by modifying a story based an exclamation (e.g., "wow!) or a question detected and received from a child-user. In one embodiment, user interface 155 includes gesture or motion recognition (provided by sensor(s) 145) for detecting user actions. For example, a user may indicate an interest in a particular projected story element or other image (e.g., a butterfly). The user gesture detected through user interface 155 may then be used to modify the story, based on the gesture. Similarly, a story may be modified based on a detected user action, such as pointing, dancing, exercising, or other motion (paragraphs 43 - 45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to generate the content in the story as taught by Knipp et al. in Wittich et al., because that would help determine other story elements consistent with the provided information, such as appropriate settings or characters (paragraph 4).
Claim 16 further recites that wherein the at least one outcome comprises at least one of the following: issuing a command within the story or narrative that causes the user's character in the story to interact with an object in the story or narrative, or to interact with another character in the story or narrative; speaking as the user's character in the story or narrative with another character; or moving as the user's character within the story or narrative ("user interface 155 interacts with a user via audio or spoken information, for example, by modifying a story based an exclamation (e.g., "wow!) or a question detected and received from a child-user. In one embodiment, user interface 155 includes gesture or motion recognition (provided by sensor(s) 145) for detecting user actions. For example, a user may indicate an interest in a particular projected story element or other image (e.g., a butterfly). The user gesture detected through user interface 155 may then be used to modify the story, based on the gesture. Similarly, a story may be modified based on a detected user action, such as pointing, dancing, exercising, or other motion"; Knipp et al., paragraphs 28, 43 - 45).
As per claims 2, 10, and 17, Wittich et al. in view of Knipp et al. further disclose the user input comprises a voice input, a text input, a keyboard input, a mouse input, or a gesture input; and the user input further comprises a selected human-readable language (Wittich et al., paragraphs 60, 62,105).
As per claims 3, 12, Wittich et al. in view of Knipp et al. further disclose determining the at least one outcome comprises at least one of the following: issuing a command within a fiction or non-fiction story or narrative that causes the user's character in the story to interact with an object in the story or narrative, or to interact with another character in the story or narrative; speaking as the user's character in the story or narrative with another character; or moving as the user's character within the story or narrative ("user interface 155 interacts with a user via audio or spoken information, for example, by modifying a story based an exclamation (e.g., "wow!) or a question detected and received from a child-user. In one embodiment, user interface 155 includes gesture or motion recognition (provided by sensor(s) 145) for detecting user actions. For example, a user may indicate an interest in a particular projected story element or other image (e.g., a butterfly). The user gesture detected through user interface 155 may then be used to modify the story, based on the gesture. Similarly, a story may be modified based on a detected user action, such as pointing, dancing, exercising, or other motion"; Knipp et al., paragraphs 28, 43 - 45).
As per claim 5, and 20, Wittich et al. in view of Knipp et al. further disclose further based at least in part on the at least one outcome: the AI language model receives the user's responses to prompts in order to generate one or more character profiles for a new story or narrative; or the AI language model receives the user's responses to prompts in order to generate one or more character profiles, which are inserted into an existing story or narrative, which is modified so that one or more new characters interact with one or more characters already extant ("before the dictation begins the system can first match the user with the users profile to better recognize the audio signal. Next the story environment mode is selected at step 1209. The user then may begin to create a new story file by dictation, or may call up an existing story file and continue the narrative at step 1215. In this sequence the may also preselect characters, environments, objects and themes."; Wittich et al., paragraphs 76, 77).
As per claims 6, 13, and 18, Wittich et al. in view of Knipp et al. further disclose an AI image generator operable to receive the response to the user's intent from the AI language model; and based at least in part on the response, the AI image generator is operable to output one or more images (" generating narrative text for a user (such as a parent) to read to a child, while corresponding images and sounds are presented via presentation component(s) 130, providing other information relevant to a storytelling experience, such as story duration and current time, and/or receiving feedback or other information from a user"; Knipp et al., paragraphs 25, 44, 45; see also Wittich et al. paragraph 8).
As per claims 7, 14, and 19, Wittich et al. in view of Knipp et al. further disclose an AI video generator operable to receive the response to the user's intent from the AI language model; and based at least in part on the response, the AI video generator is operable to output one or more video segments (" placeholders may be used for story elements including not only characters, settings, sound effects, visual images, animations, videos, etc., but also story logic; prompts or guidance provided by story guide 150; story blocks or threads; story element positions and/or motion paths (which may be predetermined from among a number of positions or motion paths and wherein the beginning or ending of the path is the placeholder to be determined from near storytelling time or from an environmental model)"; Knipp et al., paragraphs 25, 44, 45, 60; see also Wittich et al. paragraph 8).
As per claims 8, 15, Wittich et al. in view of Knipp et al. further disclose the AI language model comprises gpt-4, gpt-3.5-turbo, text-davinci-003, or another large language model (Knipp et al., paragraphs 79, 82 - 89).
Claims 4, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wittich et al. (US PAP 2015/0142434) in view of Knipp et al. (US PAP 2016/0225187); and further in view of Nedivi (US PAP 2020/0160740).
As per claims 4, 11, Wittich et al. in view of Knipp et al. do not specifically teach based at least in part on the at least one user intent, calculating a route using a maze construction algorithm.
Nedivi discloses the system calculates the number of layers and choices for each scenario based on the user input at 545. At 555, the system generates a base structure according to the user input. At 565, the system displays the virtual maze map generated based on the user input (paragraph 149).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use a maze construction algorithm as taught by Nedivi in Wittich et al. in view of Knipp et al., because that would help provide a visual representation which maps the maze and scenarios or scenes (paragraph 108).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lewis et al. teach method for story assembly. Lamb et al. teach holographic story telling. Schawrz teaches interactive storybook method. Anderson et al. teach customizable system for storytelling. Birnbaum et al. teach Interactive And Conversational Data Exploration.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEONARD SAINT-CYR whose telephone number is (571)272-4247. The examiner can normally be reached Monday- Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richemond Dorvil can be reached at (571)272-7602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEONARD SAINT-CYR/ Primary Examiner, Art Unit 2658