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 .
Election/Restrictions
Claims 1-12 and 15 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention group I-IV and VI, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/15/2026.
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 13-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to judicial exception(s) without significantly more.
[STEP 1] The claim recites at least one step. Thus, the claim is to a process, which is one of the statutory categories of invention (Step 1: YES).
[STEP2A PRONG I] The claim(s) 13 recite(s):
A method for improving a student's reading skills, the method comprising the steps of:
selecting at least one digital book stored in a library of books;
converting a first portion of text from the at least one book into a first audio output;
displaying the first portion of text and the first audio output on a first audiovisual output;
displaying a second portion of text from the at least one book on the first audiovisual output, the second portion of text being different from the first portion of text;
participating in a co-reading process by which the student produces a verbal reading of the second portion of text, the verbal reading then converted to a third portion of text and stored;
and comparing the second portion of text to the third portion of text.
The non-highlighted aforementioned limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation between people but for the recitation of generic computer components. That is, other than reciting “audio visual output”, “digital book” nothing in the claim element precludes the step from practically being performed between people. For example, but for the recited language, the step in the context of this claim encompasses a teacher provides a student with reading materials, instructing the student to read said reading material, and analyzing the student’s reading performance.
If a claim limitation, under its broadest reasonable interpretation, covers managing interactions between people, then it falls within the “Organization of Human Activity” or “Mental Process” grouping of abstract ideas.
Accordingly, the claim recites a judicial exception, and the analysis must therefore proceed to Step 2A Prong Two.
[STEP2A PRONG II] This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional element(s) – “audio visual output”, “digital book”.
The “audio visual output”, “digital book” in the aforementioned steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component.
Accordingly, the additional element(s) do(es) not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and the claim is therefore directed to the judicial exception. (Step 2A: YES).
[STEP2B] The claim does 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 processor to perform the aforementioned steps amounts to no more than mere instructions to apply the exception using a generic computer component, which cannot provide an inventive concept (for example, see paragraph 24) or the additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use.
As noted previously, the claim as a whole merely describes how to generally “apply” the aforementioned concept in a computer environment. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
The claim is not patent eligible. (Step 2B: NO).
Claim(s) 14 is dependent on supra claim(s) and includes all the limitations of the claim(s). Therefore, the dependent claim(s) recite(s) the same abstract idea. For example, claim 14 is directed to the abstract idea of editing of digital book as a result analysis. Thus, the claim recites no additional limitation. Accordingly, the additional element(s) do(es) not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea and the claim is therefore directed to the judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Thus, even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea.
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 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen US 9,478,143 and in view of Ingrassia US 2014/0349259
Claim 13: The Bowen reference provides a teaching of a method for improving a student's reading skills (see col. 2:5-20), the method comprising the steps of:
selecting at least one digital book stored in a library of books (see col. 4:5-15);
converting a first portion of text from the at least one book into a first audio output (see col. 11:1-7);
displaying the first portion of text and the first audio output on a first audiovisual output (see col. 11:10-20 and col. 11:20-35);
displaying a second portion of text from the at least one book on the first audiovisual output, the second portion of text being different from the first portion of text (see col. 16:15-26).
The Bowen reference is silent on the teaching of participating in a co-reading process by which the student produces a verbal reading of the second portion of text, the verbal reading then converted to a third portion of text and stored; and comparing the second portion of text to the third portion of text.
However, the Ingrassia reference provides a teaching of participating in a co-reading process by which the student produces a verbal reading of the second portion of text (see paragraph 106), the verbal reading then converted to a third portion of text and stored (see paragraph 139); and comparing the second portion of text to the third portion of text (see paragraph 108).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Bowen reference with the feature of participating in a co-reading process by which the student produces a verbal reading of the second portion of text, the verbal reading then converted to a third portion of text and stored; and comparing the second portion of text to the third portion of text, as taught by the Ingrassia et al, in order to encourage the reading process (see paragraph 4).
Claim 14: The Bowen reference is silent on the teaching of editing the at least one digital book as a function of the comparison of the second portion of the text and third portion of the text.
The Ingrassia reference provides a teaching of editing the at least one digital book as a function of the comparison of the second portion of the text and third portion of the text (see paragraph 85).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Bowen reference with the feature of editing the at least one digital book as a function of the comparison of the second portion of the text and third portion of the text, as taught by the Ingrassia et al, in order to allow the user some control over the reading material (see paragraph 166).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J UTAMA whose telephone number is (571)272-1676. The examiner can normally be reached 9:00 - 17:30 Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J UTAMA/Primary Examiner, Art Unit 3715
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