DETAILED ACTION
This action is in response to the Applicant Remarks received on July 30, 2026. Claims 1-7 are pending with claims 8-9 canceled and claims 1-4 currently amended.
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 .
Information Disclosure Statement
The information disclosure statement filed February 12, 2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. All references have been considered, except where lined through. Specifically, the foreign patent documents were documented on the information disclosure statement; however, the foreign patent documents were not provided alongside the information disclosure statement – only a screenshot of the listing of the foreign patent document on Google Patents which did not include a copy of the cited foreign patent document. See the table below for the list of foreign patent documents submitted with an improper copy.
Document Number
Publication Date(YYYY-MM-DD)
Name of Patentee or Applicant of Cited Document
RO 202200002 U1
2023-02-28
Hriba
TW 201351363 A
2014-10-21
Guo et al.
EP 0262616 A2
1988-04-06
Landa
FR 1125262 A
1956-10-29
Geis
FR 1186402 A
1959-08-24
Hoshino
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis [US20220375359A1], Garavito [US8903303B1], and Kirwan [US20030022143A1].
Regarding claim 1 (Currently Amended), Lewis discloses:
A method of presenting a storyline containing story positions, comprising:
providing a book structure (Lewis, [0005], “Disclosed herein, in some embodiments is an interactive paper-based book”) having
book pages (Lewis, [0005], “a plurality of paper pages”),
touch sensors (Lewis, [0005], “a plurality of touch sensors”),
a speaker (Lewis, [0006], “the audio module is configured to play the one or more sounds using a speaker”), and
a microphone (Lewis, [0076], “the system module comprises a microphone.”), and
wherein one of said touch sensors is provided for each of said sequential story positions and said storyline is broadcast through said speaker by sequentially pressing the touch sensors and wherein said touch sensors are disposed on at least some of said book pages (Lewis, [0007], “a plurality of touch sensors, where each paper page comprises a subset of the plurality of touch sensors disposed thereon”),
a memory in said book structure that contains memory circuitry for holding preset audio files and another memory circuitry that has an open memory capacity, wherein said preset audio files contain an original version of said story line when broadcast sequentially (Lewis, [0064], “The book may comprise a memory module for storing audio recordings”).
Lewis discloses an interactive book with individualized touch sensors as cited above, but Lewis does not disclose a control switch alongside three settings to modify the behavior of the interactive book.
Garavito, however, discloses:
providing at least one control switch that is accessible on said book structure,
wherein said at least one control switch has selectable settings that include a first setting, and a second setting, and a third setting (Garavito, col 5, lines 32-33, “In some embodiments, there are three activation switches (350).”);
selectively assigning each of said touch sensors to either some of said memory circuitry or some of said another memory circuitry by engaging each of said touch sensors with said at least one control switch in one of said selectable settings wherein at least some of said touch sensors are assigned to said preset audio files on said memory circuitry when said at least one control switch is in said first setting (Garavito, col 5, lines 42-45, “In some embodiments, upon operation of the activation switch (350), a prerecorded narrative stored via the data storage component (340) can be played back via the speaker (320).”),
whereby one of said preset audio files is played over said speaker each time one of said touch sensors assigned to said one of said preset audio files is activated (Garavito, col 5, lines 42-45, “In some embodiments, upon operation of the activation switch (350), a prerecorded narrative stored via the data storage component (340) can be played back via the speaker (320).”);
wherein when said at least one control switch is in said second setting,
audio received by said microphone is recorded in said another memory circuitry to create self-recorded audio files, whereby at least some of said touch sensors are assigned to said self-recorded audio files each time one of said touch sensors assigned to said one of said self-recorded audio files is activated (Garavito, col 5, lines 34-37, “In some embodiments, upon operation of the activation switch (350), a sound can be recorded via the microphone (330) and stored via the data storage component (340).”).
It would have been obvious to one of ordinary still in the art before the effective filing date of the claimed invention to include in the interactive book system of Lewis the ability to control playback and recording features via a control switch as taught by Garavito since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Although Lewis/Garavito do not specifically recite utilizing RAM and ROM for storing the audio files, the usage of RAM and ROM are common and well-known in the art. As disclosed by Kirwan, RAM devices for storing audio recordings is well known (Kirwan, [0026], “storing the audio information in the information storing means 75 as is well known in solid state voice recorders using RAM devices.”); furthermore, Kirwan discusses the reference, DeSmet, as containing a ROM module for storing such recordings (Kirwan, [0006], “DeSmet, U.S. Pat. No. 4,884,974 describes an interactive talking book and audio player assembly, the back cover of the book having an ROM module attached to its end margin in which is stored digitally recorded spoken texts corresponding to texts printed on pages of the book.”).
It would have been obvious to one of ordinary still in the art before the effective filing date of the claimed invention to include in the story books of Lewis/Garavito the ability to store audio recordings in RAM and ROM as taught by Kirwan since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 2 (Currently Amended), Lewis/Garavito/Kirwan discloses:
The method according to claim 1,
wherein said self-recorded audio files that are created are specifically assigned to which of said touch sensors was activated during the recording of said self-recorded audio files (Lewis, [0084], “As described herein, each touch sensor 118 may be configured to activate a sound file. As described herein, in some embodiments, the sound file corresponds to an image on a page of the book.”).
Regarding claim 3 (Currently Amended), Lewis/Garavito/Kirwan discloses:
The method according to claim 2, wherein when said at least one control switch is in said third setting, each of said preset audio files and each of said self-recorded audio files assigned to touch sensors are played over said speaker when said touch sensors are activated (As cited above, Lewis discloses individual touch sensors communicatively coupled to audio files and Garavito discloses a control switch to enable the user to record audio files.).
Regarding claim 4 (Currently Amended), Lewis/Garavito/Kirwan discloses:
The method according to claim 1, wherein one or more of said self-recorded audio files in said RAM circuitry are in size by said open memory capacity (Garavito, col 5, lines 37-39, “In some embodiments, upon operation of the activation switch (350), a sound stored via the data storage component (340) can be played back via the speaker (320).”).
Regarding claim 5 (Original), Lewis/Garavito/Kirwan discloses:
The method according to claim 1, wherein said touch sensors are capacitive pressure sensors (Lewis, [0111], “In some embodiments, the touch sensors may comprise capacitive touch elements.”).
Regarding claim 6 (Original), Lewis/Garavito/Kirwan discloses:
The method according to claim 1, further including a volume control accessible on said book structure to control a volume of said speaker (Lewis, [0095], “Additional buttons may be provided, such as buttons for turning up or down the volume of the played audio recordings, and a mute button for muting the audio recordings.”).
Regarding claim 7 (Original), Lewis/Garavito/Kirwan discloses:
The assembly according to claim 1, wherein at least one of said touch sensors is provided on each of said book pages (Lewis, [0084], “The plurality of touch sensors may be located directly beneath the grid of locators on every page.”).
Regarding claims 8-9, the claims have been canceled by the Applicant following the Non-Final Office Action, mailed on May 6, 2026.
Response to Arguments
Applicant’s arguments, see page 1 of the Remarks, filed July 30, 2026, with respect to the rejection of claim 3 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claim 3 under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In the Remarks filed July 30, 2026, the Applicant did not address or resolve the issues identified with the Information Disclosure Statement previously filed; therefore, the issues remain as detailed in the corresponding section above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Z.J.P./Examiner, Art Unit 3715
/XUAN M THAI/Supervisory Patent Examiner, Art Unit 3715
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