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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 26, 2026 has been entered.
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 20-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At step 1, claim 20 is directed to a system and claim 25 is directed to a method. Thus, claims 20 and 25 are directed to statutory categories of patentable subject matter.
At step 2A, prong 1, claim 20 (representative) recites, " A computer-implemented system for illustrated story creation over a communication network, comprising: receive, via the communication network, an electronic work uploaded by a first user, wherein the electronic work includes integrated text and illustrations; automatically segregate the text from the illustrations in the electronic work using optical character recognition, wherein entirety of the text is identified, extracted, and removed while preserving the illustrations as image data, or an entirety of the illustrations is identified, extracted, and removed while preserving the text, thereby generating an initial specimen comprising either: 1) a first initial specimen comprising only the illustrations with the text removed, or 2) a second initial specimen comprising only the text with the illustrations removed, wherein the automatic segregation enables preparation of preexisting works for subsequent modification without manual content separation; store the initial specimen in the database; provide, via the communication network, access to the initial specimen in the database to a plurality of users through a user interface of the system; and receive, via the communication network, modifications to the initial specimen from at least a second user of the plurality of users and integrating the modifications into the initial specimen, wherein such modifications to the initial specimen create a modified specimen that is created while the initial specimen remains stored in the database, wherein the modified specimen is generated by integrating newly created user-inputted electronic text into the first initial specimen to accompany the illustrations or integrating newly created user-inputted electronic illustrations into the second initial specimen to accompany the text; and store the modified specimen in the database.
These limitations, under their broadest reasonable interpretations, recite certain methods of organizing human activity. The claimed invention receives the work by a first user, segregates the text from the illustrations, stores the initial specimen, provides access to the initial specimen and receives modifications to the initial specimen from at least a second user and integrating the modifications into the initial specimen, which are all personal behaviors and interaction between people, and social activities (collaboratively creating stories). The Examiner notes that although the claim limitations are summarized, the analysis regarding subject matter eligibility considers the entirety of the claim and all of the claim elements individually, as a whole, and in ordered combination.
At step 2A, prong 2, the judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of "a processor", "a memory", "a communication network", "optical character recognition", "a database", "a user interface of the system", that the work, text, and illustrations are "electronic," “receive” data, and “store” items in a database. These additional elements are generic computing elements performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using a computer (see MPEP 2106.05(f)). Accordingly, these additional elements when considered individually or as a whole do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The independent claims are directed to an abstract idea.
At step 2B, the claims 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 elements of "a processor", "a memory", "a communication network", "optical character recognition", "a database", "a user interface of the system", that the work, text, and illustrations are "electronic," “receive” data, and “store” items in a database. These additional elements are generic computing elements as supported by the specification. These additional elements are generic computing elements performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using a computer. Therefore, the independent claims are not patent eligible.
Dependent claims 21-24 and 26-33, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to the same abstract idea of independent claims 20 and 25 without significantly more.
The additional recited limitations of claims 21-24 and 26-33 are either further limiting the abstract idea of claims 20 or 25 or are additional elements that are generically recited.
As such, when claims 20-33 are considered individually, as a whole, or in combinations, the claims are not patent eligible.
Claim 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 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 20-23, 25-28, and 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Kosaka (US 2020/0388076) in view of Howell (US 2023/0038412).
With reference to claims 20 and 25, Kosaka teaches a computer-implemented system for illustrated story creation over a communication network, comprising:
a processor; a memory operatively coupled to the processor, the memory storing a database and instructions that, when executed by the processor, cause the system to (Fig. 9):
receive, via the communication network, an electronic work uploaded by a first user ([0028] "First, in step 102, a source document may be detected, containing at least one text object and/or image object. A camera or scanner may be used to detect at least one page of printed matter, such as a poster or brochure, and create a digital version that becomes the source document. In alternate embodiments, the source document may be created by downloading, uploading, or otherwise accessing at least one screen of digitally displayed content, saved from a digital source, containing at least one text object and/or image object."),
wherein the electronic work includes integrated text and illustrations ([0049] "In this example, the source document on device 504 can be seen to comprise a source text object 506 and a source image object [illustrations] 508." [0078] A source document 1002 may be processed into the AR session engine 1000. The source document 1002 may first be analyzed by the object detection logic 1004 and the layout analysis engine 1006. The object detection logic 1004 may determine what objects are comprised by the source document 1002, and whether those objects are text objects or image objects. The layout analysis engine 1006 may analyze the source document 1002 to determine source document boundaries and source object boundaries.");
automatically segregate the text from the illustrations in the electronic work using optical character recognition, wherein an entirety of the text is identified, extracted and removed while preserving the illustrations as image data, or an entirety of the illustrations is identified, extracted and removed while preserving the text, thereby generating an initial specimen comprising either: 1) a first initial specimen comprising only the illustrations with the text removed, or 2) a second initial specimen comprising only the text with the illustrations removed ([0079] "The text analysis engine 1008 may further perform optical character recognition (OCR) on the text objects detected by object detection logic 1004, using an OCR engine 1012. The OCR engine 1012 may analyze the pixels in the source document 1002 associated with text and recognize them as alphanumeric characters that compose words and sentences. The OCR engine 1012 may return the recognized words and sentences as digital text." [0080] "The image analysis engine 1010 may further perform image recognition algorithms within an image recognition engine 1014. These algorithms may use edge detection and object detection logic to identify key parameters that characterize the subject or subjects pictured in the image." [0038] Document creation (step 204) may begin with removing the source objects to be replaced by drawing over the areas they comprise with white (step 206).) Examiner notes that the claim only requires either the step of identifying, extracting, and removing text while leaving illustrations, or identifying, extracting, and removing images while leaving text, but not both at the same time.)
wherein the automatic segregation enables preparation of preexisting works for subsequent modification without manual content separation; store the initial specimen in the database ([0038] "Document creation (step 204) may begin with removing the source objects to be replaced by drawing over the areas they comprise with white (step 206). The selected AR objects may then be drawn onto the appropriate white area (step 208). The AR session may then display the new document (step 210). In some embodiments, the new document may be further modified, saved [store the initial specimen], or printed."); and
store the modified specimen in the database ([0047] "The interactive AR system 400 may include local or cloud-based memory 412. The new document [modified specimen] 410 generated by the AR controller 408 based on a user input signal from the user interface 406 may be saved in digital file form to this memory [database] 412.").
Kosaka discusses receiving modifications to the initial specimen from a user at a user interface in [0044] but not specifically
provide, via the communication network, access to the initial specimen in the database to a plurality of users through a user interface of the system; and receive, via the communication network, modifications to the initial specimen from at least a second user of the plurality of users and integrating the modifications into the initial specimen to create a modified specimen, wherein the modified specimen is generated by integrating newly created user-inputted electronic text into the first initial specimen to accompany the illustrations or integrating newly created user-inputted electronic illustrations into the second initial specimen to accompany the text.
However, Howell teaches:
receive, via the communication network, an electronic work uploaded by a first user (see Fig. 13, step 1301 – User digitizes content);
store the initial specimen in the database (see Fig. 13, step 1302 – Content stored);
provide, via the communication network, access to the initial specimen in the database to a plurality of users through a user interface of the system (see Fig. 13, steps 1303, 1304, 1305 – User makes content available for collaboration); and
receive, via the communication network, modifications to the initial specimen from at least a second user of the plurality of users and integrating the modifications into the initial specimen, wherein such modifications to the initial specimen create a modified specimen that is created while the initial specimen remains stored in the database (see Fig. 13, steps 1306, 1307 – Collaborators contribute to content, Collaborator content is stored, steps 1312, 1313 – User selects collaborator content for inclusion, User saves content with collaborator contributions, step 1319 – New editions are saved. See also, [0147-0148] “Collaborators may also create versions of the digital story and make additional versions of that digital story. The digital story application tracks the collaboration of content, including the content that was originally added before the collaborator created a new version.” “Another step of example method 1300 is saving new editions of the collaborative content (operation 1319).” The new version/edition implies that the old version/edition is still in existence),
wherein the modified specimen is generated by integrating newly created user-inputted electronic text into the first initial specimen to accompany the illustrations or integrating newly created user-inputted electronic illustrations into the second initial specimen to accompany the text ([0128] “Another step of example method 1300 is contributing to the content (operation 1306). Once the content is made available for collaboration, the collaborators may contribute to the content. Examples include: An illustrator can provide illustrations to a text story that an author user uploaded to the digital story application.");
store the modified specimen in the database (see Fig. 13, step 1319).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the interactive content of Kosaka with the digital story creation of Howell by adding the process of collaborative content editing, as taught by Howell, since both Kosaka and Howell modify content, and so that users can modify content in a collaborative format (Howell, [0028]).
With reference to claim 21, Kosaka and Howell teach the system of claim 20, and Kosaka discusses receiving modifications to the initial specimen from a user at a user interface in [0044] but not specifically wherein the instructions, when executed by the processor, further enable subsequent modification of the modified specimen by providing at least a third user with access to the modified specimen for further integration of additional user-created text or illustrations, thereby transforming the electronic work into a collaboratively created electronic story that integrates contributions from a plurality of users.
However, Howell teaches wherein the instructions, when executed by the processor, further enable subsequent modification of the modified specimen by providing at least a third user with access to the modified specimen for further integration of additional user-created text or illustrations, thereby transforming the electronic work into a collaboratively created electronic story that integrates contributions from a plurality of users ([0049] "Sharing module 216 enables digital story content generated and/or edited by the user to be shared with viewer V via network 110. In some instances, sharing module 216 enables collaboration across network 110, such that users in different locations can collaborate on the digital content.").
Combined under the same rationale as above.
With reference to claims 22 and 27, Kosaka and Howell teach the system of claim 20 and the method of claim 25, and Kosaka further teaches wherein the processor and memory are accessible via a platform with which the user interface is connected (Fig. 4).
Kosaka does not specifically teach wherein the platform enables purchase of the modified specimen.
However, Howell teaches wherein the platform enables purchase of the modified specimen ([0209] "The digital story application can have a publisher review module. This will enable users to upload a digital story, enable collaboration of the digital story, create a final version of a digital story, and then upload the digital story to a user interface that can be accessed by publishers and editors. Publishers and editors can access the publisher and editor function with a subscription to locate new talent. A publisher can offer to purchase or license the content from the user via that publisher review module. A notification system can be implemented to inform a user when a publisher or editor has reviewed the digital story." See also [0189].).
Combined under the same rationale as above.
With reference to claims 23 and 28, Kosaka and Howell teach the system of claim 20 and the method of claim 25, and Kosaka further teaches wherein the processor and memory are accessible via a platform with which the user interface is connected (Fig. 4).
Kosaka does not specifically teach wherein the platform includes an evaluation and ranking function that enables a plurality of users to evaluate and rank the modified specimen.
However, Howell teaches wherein the platform includes an evaluation and ranking function that enables a plurality of users to evaluate and rank the modified specimen ([0133] "For example, if 500 users ranked collaborative content for a digital story and individuals from New York preferred collaborator number 115 and individuals from California preferred collaborator number IO for character 1, the user may opt to have two variations of the digital story and make one version available for East Coast viewers and make another version available for West Coast viewers.").
Combined under the same rationale as above.
With reference to claim 26, Kosaka and Howell teach the method of claim 25, and Howell further teaches wherein the networked computing platform further enables collaboration among the plurality of users by allowing multiple users to sequentially access and further modify the modified specimen stored in the database, thereby transforming the electronic work into a collaboratively created electronic story that integrates contributions from a plurality of users ([0049] "Sharing module 216 enables digital story content generated and/or edited by the user to be shared with viewer V via network 110. In some instances, sharing module 216 enables collaboration across network 110, such that users in different locations can collaborate on the digital content.").
Combined under the same rationale as above.
With reference to claims 30 and 32, Kosaka and Howell teach the system of claim 20 and method of claim 25, and Howell further teaches wherein the initial specimen and modified specimen are accessible by multiple users for sequential modification ([0162] “Using the digital story editing system described herein, collaborators can access files on the file share system and mix the files to create a new digital story based on the uploaded content and collaborators' created content on the system.”)
Combined under the same rationale as above.
With reference to claims 31 and 33, Kosaka and Howell teach the system of claim 20 and the method of claim 25, and Howell further teaches wherein the system stores multiple modified specimens, wherein each modified specimen is created by a different user ([0162] “Collaborators can add additional digital files to the digital story.”)
Combined under the same rationale as above.
Claims 24 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Kosaka (US 2020/0388076), in view of Howell (US 2023/0038412), in further view of Kumar (US 2023/0085466).
With reference to claims 24 and 29, Kosaka and Howell teach the system of claim 20 and the method of claim 25, and Kosaka modifies specimens as discusses above and Howell uses machine learning to make revisions or modifications to the specimen in [0170].
However, Kosaka and Howell do not specifically teach to employs an artificial intelligence function that analyzes the modified specimen to ascertain the second user’s writing level.
However, Kumar teaches to employs an artificial intelligence function that analyzes the modified specimen to ascertain the second user’s writing level ([0049] “By processing the content in the content preview window 202, the user interface 200 updates each of the suggested content items 204, color affinities 206, reading level scale 208, linguistic affinity score 212, emotional sentiment scales 214, and overall affinity 222 with affinity indicators, such as affinity indicators 216A/B/C. The affinity indicators 216A/B/C indicate how well aligned the content in the content preview window 202 aligns with the target's affinity profile.” The reading level scale of the content is equivalent to the writing level of the user creating the content.).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the systems of Kosaka and Howell by adding employs an artificial intelligence function that analyzes the modified specimen to ascertain the second user’s writing level, as taught by Kumar, since Kosaka, Howell, and Kumar are analogous art, and so that the content aligns with the target's affinity profile (Kumar, [0049]).
Response to Arguments
Applicant's arguments filed March 26, 2026 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the 112 rejections are moot, as those rejections have been withdrawn.
Applicant argues that the claims do not recite an abstract idea because they recite a technical solution to a technical problem. Examiner respectfully disagrees. While the claims recite technology, including an electronic work, optical character recognition, and creating and storing specimens in a database, the claims are merely using generic computing technology to carry out what previously could have been done by a human to a document. This amounts to generally linking the abstract idea to a technical field and using generic computing components applied to the abstract idea. Applicant contends that existing systems are unable to process composite electronic works; however, the prior art does show that such processes and results are not novel or uncommon. Applicant also argues that the specific technical implementation results in transforming the structure and format of electronic data. However, that is not reflected in the claims, and therefore this argument is not persuasive. Applicant’s contention that the claims are similar to Enfish based on this position is similarly unpersuasive because the claim does not discuss transforming data structures or formats.
Applicant further argues that the claims are integrated into a practical application because the arrangement of the technical components is not generic. However, each of the components (OCR, networked computers, databases) is only recited in a generic way such that when considered individually, they do not amount to more than generic computing components carrying out generic computing functions. When considered in combination, they still perform the generic computing functions of digitizing data and making the digitized data available to multiple users across the network. There is no technical improvement to a technical problem identified or solved, and the computers are merely being used as computers to automate what was previously a non-automated process. While this may be an improvement over the non-automated version of the abstract idea due to increased speed, accessibility, etc., these are only generic improvements that any generic computer would offer. Applicant’s argument that the claims are analogous to McRO are not persuasive. Applicant argues that the technical step of identifying pixel-level text data inherently requires computers and improves upon computing technology, but the claims do not recite any pixel-level data, so these arguments are not persuasive.
Applicant further argues that the claims significantly more than the abstract idea, because the specific, ordered combination produces a technological result. However, because the result is the mere implementation of data on a generic computing network, there is no technological result identified beyond implementing the abstract idea on a computer. Applicant’s mere allegation that the claims recite significantly more is not persuasive.
Therefore, the 101 rejection is maintained.
Applicant further argues that the combination of Kosaka and Howell fails to teach the claimed invention. Examiner respectfully disagrees. Applicant first argues that Kosaka does not teach generating an initial specimen because Kosaka teaches document augmentation/replacement. However, it is not required that the prior art carry out the same steps for the same intended use. If the prior art teaches the claimed steps, that is sufficient to show that those steps were known in the prior art. While Kosaka may teach using the initial specimens for replacement with AR objects, Kosaka still teaches processing initial electronic works by segregating the text and image components, which is what is required by the claims. The claims do not specify any particular data formats or processes other than the generically stated “identified, extracted and removed.” This does not diverge from the teachings of Kosaka. If Applicant intends the claims to be more technical in nature, further amendments would be necessary to overcome the teachings of Kosaka.
Applicant further argues that Howell does not teach using OCR to perform segmentation. However, Applicant cannot prove non-obviousness by attacking references individually when the combination is what teaches the claimed invention. Howell is not cited as teaching OCR, and Kosaka is not cited as teaching collaborative work on a single document. However, when combined, the two references result in the claimed invention, and the combination would have been obvious as demonstrated above. Therefore, these arguments are not persuasive.
Applicant argues that neither reference teaches preserving the initial specimen. However, as cited above, Howell teaches this feature.
Applicant further argues that there is no motivation to combine the references. However, because both references discuss taking an initial digital content item and making it available for modification, they are in the same field of endeavor. Howell further teaches making the digital content available for collaboration, which permits wider access in the modification process, which is a motivation to combine with other features of the data modification. This is a rational underpinning, and therefore the examiner has established a prima facie case of obviousness.
Applicant argues that the claimed automatic OCR segregation is not taught by the combination. Examiner points to the updated rejection above, and contends that all limitations are met by the combination. Again, Applicant appears to be arguing each reference individually when the combination is at issue, and this argument is not persuasive.
Therefore, the 103 rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ILANA L SPAR whose telephone number is (571)270-7537. The examiner can normally be reached 8-4 M-F.
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/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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