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 .
Response to Arguments
Applicant’s response to Office action was received on April 1, 2026.
In response to Applicant’s amendment of the claims, all of the prior art claim rejections, from the previous Office action, are hereby withdrawn.
Please note the new claim objections, below in this Office action.
In response to Applicant’s amendment of the claims, none of the claim elements/limitations are currently being interpreted under 35 U.S.C. 112(f)/sixth paragraph.
In response to Applicant’s amendment of the claims, please note the new indefiniteness claim rejection, below in this Office action.
In response to Applicant’s amendment of the claims, the corresponding 101 claim rejections, from the previous Office action, have been correspondingly amended, below in this Office action.
Regarding the 101 rejections, Applicant first argues that the claims are eligible based on the presence of the various computing system components. However, note that merely performing an abstract idea on generic computing components, without more, does not render eligibility to an abstract-idea claim, under USPTO 101 guidance. See MPEP 2106.05(f) (Mere Instructions to Apply An Exception).
Applicant also argues that the claims are eligible based on the limitation of “generate and transmit an instruction of delivery identifying the time point of shipping the consumable and the installation place”. Examiner disagrees. Examiner addresses this feature in two parts: “generate and output an instruction of delivery identifying the time point of shipping the consumable and the installation place” is part of the abstract idea, as it may be part of a commercial interaction of ordering a replacement consumable, as well as potentially informing a human when it is time to replace the consumable, thereby managing human behavior. The remaining portion of the feature is “outputting via transmitting”, which Examiner addresses as mere generic computing system component. As part of abstract idea performed on generic computing components, without more, this feature thus does not render eligibility under USPTO 101 guidance.
Therefore, Examiner does not find Applicant’s arguments to be persuasive.
Novel/Non-Obvious Subject Matter
Examiner has determined that all of Applicant’s claims have overcome having prior art rejections. The reason for this is that Examiner does not believe that, at the time of Applicant’s priority date, it would have been obvious for a person of ordinary skill in the art to combine prior art disclosures to result in the particular combinations of elements/limitations in the claims, including the particular configurations of the elements/limitations with respect to each other in the particular combinations, without the use of impermissible hindsight.
Claim Objections
Claims 1, 7, and 19 are objected to because of the following informalities:
a. In the third and fourth lines of claim 1, the claim states: “a non-transitory memory storing programs and instructions, executed by the programs, that cause the processor to”. This appears to have a typographical error. Typically, when incorporating a memory storing programs, like in this situation, the programs would be executed by the processor or computer that is caused to perform the functions, not by “programs”. Examiner believes that Applicant intended the word “programs” in the fourth line of claim 1 to instead be the text of --processor--.
b. In the first line of claim 7, please replace the word “he” with --The-- to correct an apparent typographical error.
c. In the third line of claim 19, please replace the text of “a computer” with --the processor--. Typically, in a computer-readable medium claim, it is the computer or processor that is executing the software that is the computer or processor that performs the functions of the software.
Appropriate correction is required.
Claim Interpretation
In response to Applicant’s amendment of the claims, none of the claim elements/limitations are currently being interpreted under 35 U.S.C. 112(f)/sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Specifically, the first paragraph of claim 20 contains the language “in a case where the replacement history of the consumable is not present in the printer, acquire information about a delivery period and a delivery time period…”. Note that this is the introduction of the terms “delivery period” and “delivery time period” in claim 20. Note also that claim 20 is a method claim, and that the “in a case” phrase introduces a contingent limitation. Contingent limitations need not actually occur in method claims, and therefore are not necessarily given weight. See MPEP 2111.04(II). However, both “the delivery period” and “the delivery time period” appear later in claim 20, for example, in the “acquiring information…” step. Note that the “acquiring information…” step is positively recited as happening and is not a contingent limitation. This seems to indicate that the “in a case” limitation must happen, because the “acquiring information…” step must occur, the “acquiring information…” step references both the delivery period and the delivery time period, and the “in a case” limitation is where the delivery period and the delivery time period were introduced into the claim. However, if that is the case, then why is the “in a case” limitation presented as a contingent limitation? Because of this confusion, the scope of the claim is unclear, as to what weight to be given limitations such as the “in a case” limitation, and claim 20 is indefinite.
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.
Claim(s) 1-2 and 4-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per Claim(s) 1 and 19-20, Claim(s) 1 and 19-20 recite(s):
- periodically acquire remaining amount information, which is related to a remaining amount to be used until replacement of a consumable, and a replacement history of the consumable;
- in a case where the replacement history of the consumable is not present in one source, acquire information about a delivery period and a delivery time period corresponding to the replacement history of a consumable of a comparable source, from delivery data of the consumable;
- acquire information about the delivery period, which is from shipment of the consumable to arrival of the consumable at the installation place of the printer, and the delivery time period corresponding to the replacement history, wherein the information varies according to the delivery time period;
- (calculate and) predict a replacement time period of the consumable provided in the printer by using the remaining amount information;
- determine a time point that is before the delivery period, which is obtained in accordance with the delivery time period, from the predicted replacement time period, as a time point for shipping the consumable to the installation place;
- generate and output an instruction of delivery identifying the time point of shipping the consumable and the installation place;
- consumable management.
Each of the above limitations falls within the abstract-idea category of “Certain methods of organizing human activity.” Specifically, those limitations relate to the following subject matter that is grouped into the category of “Certain methods of organizing human activity”:
- commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations): relates to when to request or order replacement consumable; ordering is commercial activity;
- managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions): directs a user, who could be human, when to request or order more consumable.
To the extent that any of these limitations are recited alongside recitations of generic computer components, as described below in this rejection: If a claim limitation, under its broadest reasonable interpretation, covers subject matter recognized as certain methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain method of organizing human activity” grouping of abstract ideas. Accordingly, the claim(s) recite an abstract idea.
This judicial exception is not integrated into a practical application because the additional elements when considered both individually and as an ordered combination do not integrate the abstract idea into a practical application. The claim(s) recite the following additional elements/limitations, each of which are addressed in the list below with the reason(s) why they do not integrate the abstract idea into a practical application:
- a consumable management apparatus; a processor; a non-transitory memory storing programs and instructions, executed by the programs, that cause the processor; a printer provided with the consumable; wherein the processor is configured; a consumable of another printer installed in an area identical to an installation place; outputting via transmitting; a non-transitory computer readable medium storing computer programs and instructions, executed by a processor of an apparatus, causing a computer to execute processing: These element(s)/limitation(s) amount to mere instructions to apply an exception. See MPEP 2106.05(f). In making this determination, examiners may consider whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Mere instructions to apply an exception is a consideration with respect to both integration of an abstract idea into a practical application and significantly more. MPEP 2106.05(f)(2) states: “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).” This is the case with these particular claim element(s)/limitation(s). Those elements/limitations do not meaningfully limit the claim because implementing an abstract idea on a generic computer does not integrate the abstract idea into a practical application, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Therefore, these particular claim element(s)/limitation(s) do not integrate the abstract idea into a practical application for at least this reason.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. 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.
Accordingly, the 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. The claim(s) are directed to an abstract idea.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception, either individually or as an ordered combination. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of computer-related components amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The claim(s) are not patent eligible.
As per dependent claim(s) 2 and 4-18, these claim(s) incorporate the above abstract idea via their dependencies on the respective independent claim(s). The additional element(s)/limitation(s) of the respective independent claim(s) do not integrate the abstract idea into a practical application, nor do they add significantly more, with respect to those dependent claim(s), under the same reasoning as above with respect to the respective independent claim(s).
The added elements/limitations of those dependent claim(s) do not integrate the abstract idea into a practical application nor add significantly more because they all merely add further functional step(s) and/or detail to the abstract idea; as part of the abstract idea, they cannot integrate into a practical application or be significantly more than the abstract idea of which they are a part. For example, claim 2 merely adds where to obtain certain data for the abstract idea.
Claim(s) 1-2 and 4-20 are therefore not drawn to eligible subject matter as they are directed to an abstract idea that is not integrated into a practical application and is without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Yaqub, US 20080275643 A1 (optimum route planning for service vehicles).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN ERB whose telephone number is (571)272-7606. The examiner can normally be reached M - F, 11:30 AM - 8 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY ZIMMERMAN can be reached at (571) 272-4602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN ERB/Primary Examiner, Art Unit 3628
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