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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to PCT Patent Application No. JP2022-039662, filed on 03/14/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Applicant’s communications filed on 11/21/2025 have been considered.
Claims 1, 7, 17 and 18 have been amended.
Claim 19 is newly added.
Claims 1-19 are currently pending and have been examined.
Drawings
The drawings were received on 11/21/2025. These drawings are acceptable.
Response to Arguments
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues “the current claims may relate to, but are not directed to, commercial interactions of reordering consumables… while some operations of the controller do recite an ordering process, that ordering process is selectively performed differently by the image forming apparatus based on the assessed state of the consumables” (Remarks Page 12). This argument has been considered but is not persuasive. Among the enumerated groupings is the Certain Methods of Organizing Human Activity grouping, which includes activity that falls within the enumerated sub-grouping of commercial or legal interactions, including subject matter relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. MPEP 2106.04. With respect to the instant claims, an image recording apparatus comprising: a print engine configured; a communication interface connectable to an external server via a network; a controller; transmitting to the external server via the communication interface; an image recording apparatus comprising: a display; an order screen of the display; and a non-transitory computer-readable storage medium storing a consumable order processing program including a set of program instructions for an external apparatus connected to an image recording apparatus have been analyzed as additional elements and accordingly are not analyzed under Step A1, Prong 1. The claims further recite limitations including at least two consumables including a first consumable and a second consumable; determining which of a first state, a second state, and a third state a consumption level of the first consumable corresponds to, determining which of a fourth state, a fifth state, and a sixth state a consumption level of the second consumable corresponds to, in a case where the first consumable becomes the third state before the second consumable becomes the sixth state, selectively performing an order process or a non-order process for the first consumable and the second consumable based on determination results of the consumption level of the first consumable and the consumption level of the second consumable, the selectively performing the order process or the non-order process including: in a case where the first consumable is in the third state and the second consumable is in the fourth state, performing the order process for the first consumable and performing the non-order process for the second consumable; and in a case where the first consumable is in the third state and the second consumable is in the fifth state, performing the order process for the first consumable and performing the order process for the second consumable; and sending an ordering command in accordance with the order process for the first consumable and the order process or the non-order process for the second consumable. These amendments represent certain methods of organizing human activity. Paragraphs [0003-0004][0043-0049] of the specification illustrate that determining states for consumables includes comparing consumption rates of the consumables to a set of thresholds, said comparisons corresponding to whether or not an order should be placed. Accordingly, the recited limitations claim collection and analysis of data regarding consumables for the purpose of determining whether an order should be placed for a replacement consumable. These limitations fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, in that they recite commercial or legal interactions (including marketing or sales activities/behaviors). These are sales activities because they amount to analysis of consumption levels in order to determine whether or not an order request should be transmitted to a store server (see at least [0003]). Accordingly, these claims recite an abstract idea, and the rejection has been maintained.
Applicant further argues “[the claims] recite technical features that represent improvements to computer technology that render the claims eligible… the claims are directed to specific improvements in computer technology, not abstract ideas. See SRI Int’l, Inc. v. Cisco Systems, Inc” (Remarks Page 13). This argument has been considered but is not persuasive. The specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. MPEP 2106.04(d)(1). The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art, and conversely, if the specification explicitly sets forth an improvement but in a conclusory manner the examiner should not determine the claim improves technology. In the instant case, Applicant’s specification provides no explanation of an improvement to the functioning of a computer or other technology. This is reflected in paragraphs [0003-0009], which discuss improvements such as “reduc[ing] a user’s burden by enabling simultaneous order of a plurality of consumables”. The statements made in this portion of the specification amount to conclusory statements of improvement, as they do not provide any detail regarding how the claimed invention is providing any improvement to the functioning of the computer or other technology. Rather, “reducing burden on a user” by enabling simultaneous ordering of consumables amounts to a business improvement. The instant claims use the claimed additional elements as a tool to implement the abstract idea, rather than reciting an improvement to the claimed technology. Accordingly, the claims do not represent a technological improvement, and the rejection has been maintained.
With regards to SRI Int’l, the technical improvement was found in the claims reciting methods for detecting suspicious activity by using network monitors and analyzing network packets. The instant claims do not provide an analogous improvement. As discussed above, the claims amount to merely applying the abstract idea in a particular technological environment, without effectuating a change or improvement to the claimed technology. Accordingly, the claims do not represent a technical improvement, and the rejection has been maintained.
With regards to Applicant’s argument that the claimed invention “reduc[es] and consolidate[es] user notifications associated with the consumables (Remarks Page 13), this argument has been considered but is not persuasive. It is noted that reducing and consolidating notifications does not necessarily amount to a technical improvement, particularly when the claims amount to nothing more than mere implementation of the abstract idea in a technological environment, as discussed above. Rather, reducing and consolidating notifications amounts to an improvement in the abstract idea of ordering products according to consumption levels. It is further noted that merely implementing the claimed additional elements in a generic manner does not amount to an improvement in any of the claimed technology, but rather improving the abstract idea via implementation of said abstract idea in a particular computing environment. Accordingly, the rejection has been maintained.
With regards to Applicant’s argument that the claims have been considered at an improperly high level of generality, as in Ex Parte Desjardins (Remarks Page 13), this argument has been considered but is not persuasive. The fact patterns of the instant claims are different from those set forth in Ex Parte Desjardins, since in Desjardins, the claimed invention was a method of training a machine learning model on a series of tasks, and an improvement to machine learning technology was identified in the specification. While the claims recited a mathematical concept, and therefore an abstract idea, the technical improvement addressed by the claims “addressing “catastrophic forgetting” in machine learning” was described in the specification, such that one of ordinary skill in the art would have recognized such an improvement. On the other hand, the instant claims amount to an implementation of the claimed abstract idea using generic computing components, as discussed below, and therefore are still directed towards said abstract idea without integration into a practical application or providing significantly more. Accordingly, the rejection has been maintained.
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 102 have been fully considered and are persuasive.
Applicant’s amendments to independent claim 1, as well as Applicant’s Remarks (see Remarks Pages 14-16), have been considered and are persuasive. Independent claims 1, 7, 17 and 18 have been indicated as subject matter free of the cited prior art, and would be allowable if amended to overcome the 101 rejection set forth in this Office Action, above. Accordingly, the previously filed rejection of claims 1-2, 4-8, 10-11 and 14-18 under 35 USC 102 have been withdrawn. The previously filed rejection of claims 3, 9, 12 and 13 under 35 USC 103 has similarly been withdrawn.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Subject Matter Eligibility Test for Products and Processes, the claims must be directed to one of the four statutory categories. See MPEP 2106.03. Claims 1-16 and 19 are directed towards a machine. Claims 17-18 are directed towards a manufacture. Therefore, claims 1-19 are directed to one of the four statutory categories (Step 1: YES, regarding claims 1-19).
Under Step 2A of the MPEP, it is determined whether the claims are directed to a judicially recognized exception. See MPEP 2106.04. Step 2A is a two-prong inquiry.
Under Prong 1, it is determined whether the claim recites a judicial exception. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception.
Taking Claim 1 as representative, claim 1 recites limitations that fall within the certain methods of organizing human activity groupings of abstract ideas, including:
record[ing] an image on a recording medium;
at least two consumables including a first consumable and a second consumable; and
perform[ing]: determining which of a first state, a second state, and a third state a consumption level of the first consumable corresponds to, a consumption level of the second state being higher than the consumption level of the first state, a consumption level of the third state being higher than the consumption level of the second state;
determining which of a fourth state, a fifth state, and a sixth state a consumption level of the second consumable corresponds to, a consumption level of the fifth state being higher than the consumption level of the fourth state, a consumption level of the sixth state being higher than the consumption level of the fifth state;
in a case where the first consumable becomes the third state before the second consumable becomes the sixth state, selectively performing an order process or a non-order process for the first consumable and the second consumable based on determination results of the consumption level of the first consumable and the consumption level of the second consumable,
the selectively performing the order process or the non-order process including: in a case where the first consumable is in the third state and the second consumable is in the fourth state, performing the order process for the first consumable and performing the non-order process for the second consumable; and
in a case where the first consumable is in the third state and the second consumable is in the fifth state, performing the order process for the first consumable and performing the order process for the second consumable; and
sending an ordering command in accordance with the order process for the first consumable and the order process or the non-order process for the second consumable.
Claim 7 recites the same limitations believed to be abstract as recited in claim 1, and additionally recites performing a display process or a non-display process for the first consumable and the second consumable; performing the display process for the first consumable and performing the non-display process for the second consumable by presenting a message on the display identifying the first consumable and not the second consumable; performing the display process for the first consumable and performing the display process for the second consumable by presenting a message on the display identifying the first consumable and the second consumable; and sending an ordering command identifying one or both of the first consumable and the second consumable in accordance with the message.
Claim 17 recites the same limitations believed to be abstract as recited in claim 1, and additionally recites acquiring first information and acquiring second information.
Claim 18 recites the same limitations believed to be abstract as recited in claims 1, 7 and 17.
Claim 1, as exemplary, recites the abstract idea of ordering products according to consumption. These recited limitations fall within the "Certain Methods of Organizing Human Activities" Grouping of abstract ideas as it relates to commercial interactions of sales activities or behaviors. Accordingly, the claim recites an abstract idea. See MPEP 2106.04.
Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1, 7 and 17-18 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong 2, it is determined whether the claim recites additional elements that integrate the exception into a practical application of the exception.
Claim 1 recites additional elements beyond the judicial exception(s), including an image recording apparatus comprising: a print engine configured; a communication interface connectable to an external server via a network; a controller; and transmitting to the external server via the communication interface. Claim 7 recites the same additional elements as recited in claim 1, and additionally recites an image recording apparatus comprising: a display; and an order screen of the display. Claims 17 and 18 recite the same additional elements as recited in claim 1, and additionally recites a non-transitory computer-readable storage medium storing a consumable order processing program including a set of program instructions for an external apparatus connected to an image recording apparatus.
These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Claims 1, 7 and 17-18 specifying that the abstract idea of ordering products according to consumption is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the Alice/Mayo test, when considered both individually and as a whole, the limitations of claims 1, 7 and 17-18 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1, 7 and 17-18 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1, 7 and 17-18 are “directed to” an abstract idea (Step 2A: YES). Accordingly, the judicial exception is not integrated into a practical application.
Next, under Step 2B, the instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, the additional elements of an image recording apparatus comprising: a print engine configured; a communication interface connectable to an external server via a network; a controller; transmitting to the external server via the communication interface; an image recording apparatus comprising: a display; an order screen of the display; and a non-transitory computer-readable storage medium storing a consumable order processing program including a set of program instructions for an external apparatus connected to an image recording apparatus amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. Therefore when considering the additional elements alone, and in combination, there is no inventive concept in the claim, and thus the claim is not patent eligible (Step 2B: NO).
Dependent claims 2-6, 8-16 and 19, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. As for dependent claims 2-6 and 8-16, these claims recite limitations that further define the same abstract idea noted in independent claims 1, 7 and 17-18, and do not recite any additional elements other than what is disclosed in independent claims 1, 7 and 17-18. Therefore, claims 2-6 and 8-16 are considered patent ineligible for the reasons given above.
As for dependent claim 19, the claim recites limitations that further define the abstract idea noted in independent claims 1, 7 and 17-18. Additionally, the claim recites the following additional limitations:
a sensor included within the print engine, the sensor being positioned and configured, and determining… based on the sensor.
The additional element of a sensor is recited at a high level of generality such that they amount to no more than instructions to apply the judicial exception in a generic technological environment. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Accordingly, under the Alice/Mayo test, claims 1-19 are ineligible.
Indication of Subject Matter Overcoming Prior Art
Claim 1, 7, 17 and 18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office Action. Claims 2-6, 8-16 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Upon review of the evidence at hand, it is concluded that the totality of the evidence in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of the Applicant’s invention as a whole, as the noted features amount to more than a predictable use of elements in the prior art. The allowable features are as follows:
An image recording apparatus;
determining which of a first state, a second state, and a third state a consumption level of the first consumable corresponds to, a consumption level of the second state being higher than the consumption level of the first state, a consumption level of the third state being higher than the consumption level of the second state;
determining which of a fourth state, a fifth state, and a sixth state a consumption level of the second consumable corresponds to, a consumption level of the fifth state being higher than the consumption level of the fourth state, a consumption level of the sixth state being higher than the consumption level of the fifth state;
the selectively performing the order process or the non-order process including: in a case where the first consumable is in the third state and the second consumable is in the fourth state, performing the order process for the first consumable and performing the non-order process for the second consumable; and
in a case where the first consumable is in the third state and the second consumable is in the fifth state, performing the order process for the first consumable and performing the order process for the second consumable.
in a case where the first consumable is in the third state and the second consumable is in the fourth state, performing the display process for the first consumable and performing the non-display process for the second consumable by presenting a message on the display identifying the first consumable and not the second consumable; and
in a case where the first consumable is in the third state and the second consumable is in the fifth state, performing the display process for the first consumable and performing the display process for the second consumable by presenting a message on the display identifying the first consumable and the second consumable.
The most relevant prior art made of record includes newly cited Cooke et al. (US 20200378049 A1), hereinafter Cooke, newly cited Essenmacher et al. (US 20190138976 A1), hereinafter Essenmacher, newly cited Matsumoto et al. (US 20200211091 A1), hereinafter Matsumoto, newly cited Wachter (US 20040120725 A1), hereinafter Wachter, and newly cited NPL Reference U (“Automation in Home Appliances”, Springer Handbook of Automation, pp. 1469-1483, 2009, Springer Handbooks, https://doi.org/10.1007/978-3-540-78831-7_83).
Cooke teaches a plurality of monitoring devices located at the site of a washing machine that collect usage data and monitor consumption of each specific component in a washing machine (Cooke: [0032]). Monitoring devices are connected to reservoirs within the washing machine in order to sense the amount of component in each reservoir (see at least [0030]). Cooke further teaches that component usage rates are used to determine a time-to-exhaustion for each reservoir in the washing machine, and this data is used as a threshold for requesting or ordering particular components (see at least [0038]). Cooke further teaches that a second consumable can be replenished at the same time as a first consumable based on thresholds, for convenience of ordering and shipping (see at least [0035]). Historical usage data and replenishment rates can further be used to predict when a particular component is likely to be used more and need replenishing faster (see at least [0040]). The user may interact with the laundry system through a user interface (see at least [0053-0058]). Yet Cooke does not explicitly disclose an image recording apparatus comprising a print engine, in a case where the first consumable is in the third state and the second consumable is in the fifth state, performing the order process for the first consumable and performing the order process for the second consumable, and in a case where the first consumable is in the third state and the second consumable is in the fifth state, performing the display process for the first consumable and performing the display process for the second consumable.
Essenmacher teaches automated item replenishment for a plurality of items (Essenmacher: [abstract]). Essenmacher further teaches that retail items is tracked at three consumption levels to better assess when an item should be replenished (see at least [0027]). A rolling inventory of items is maintained along with an exhaustion date that the location is projected to run out of each item (See at least [0032]). Replenishment of multiple items can be performed by aligning the exhaustion time and shipment time of the items (see at least [0073]). Yet Essenmacher does not explicitly disclose an image recording apparatus and performing an order process for the first consumable and the second consumable when the first consumable is in the third state and the second consumable is in the fifth state, and performing a display process for the first consumable and the second consumable when the first consumable is in the third state and the second consumable is in the fifth state.
Matsumoto teaches an ordering system including an image forming apparatus, wherein order requests for consumable products, such as toner, are sent based on remaining amounts (Matsumoto: [0109-0114]). The apparatus determines whether or not to order a consumable product based on whether or not the remaining amount is at the ordering threshold or less based on received consumable product information (see at least [0141]). Matsumoto further teaches that orders for toner are sent in a descending order from a toner whose coverage is highest (see at least [0207]). Yet Matsumoto does not explicitly disclose determining multiple consumption states of a consumable, performing an order process for a second consumable according to consumption levels, and performing a display process for a second consumable according to consumption levels.
Wachter teaches a printing system capable of detecting when print material in a cartridge is at a different one of a plurality of pre-determined levels (Wachter: [abstract][0050-0054). Wachter further discloses that the system detects when an estimated remaining cartridge life is below a “reorder” threshold, where a new cartridge is ordered once the threshold is reached (see at least [0055]). Wachter further discloses that the reorder threshold may also be based upon the depletion rate of the cartridge – for example, if the depletion rate is above a first threshold, the “reorder threshold” is set to a relatively high value, and if the depletion rate is below a second threshold, the “reorder threshold” is set to a relatively low value (see at least [0057]). Yet Wachter does not explicitly disclose the limitations regarding performing an order process for the first consumable and the second consumable when the first consumable is in the third state and the second consumable is in the fifth state, and performing a display process for the first consumable and the second consumable when the first consumable is in the third state and the second consumable is in the fifth state.
NPL Reference U (“Automation in Home Appliances”, Springer Handbook of Automation, pp. 1469-1483, 2009, Springer Handbooks, https://doi.org/10.1007/978-3-540-78831-7_83) explores applications of advanced home appliance automation (see at least [Title][p. 1469, Paragraphs 1-2]). As an example, U discusses a smart fridge concept capable of performing automatic ordering according to detailed knowledge of the fridge contents (see at least [p. 1474, Paragraph 3]). U further teaches that home appliances utilizing consumable items which must be replaced periodically, such as detergent cartridges, can be automatically reordered based on the remaining life of consumables (see at least [p. 1477, Paragraph 4 - p.1478, Paragraph 1]). Yet NPL Reference U does not explicitly disclose an image recording apparatus, determining consumptions states of consumables, performing an order process and a non-order process based on consumption levels of the consumables, and performing a display process and a non-display based on consumption levels of the consumables.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant’s disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). Accordingly, claims 1, 7, 17 and 18, taken as a whole, is indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims free from prior art. Claims 2-6, 8-16 and 19 depend from claims 1, 7, 17 and 18, respectively, and are therefore indicated as containing subject matter free from prior art.
Additionally, the Examiner further emphasizes the claims as a whole and herby asserts the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed. That is, the Examiner emphasized the claims as a whole and hereby asserts that the totality of evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
It is hereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims have subject matter free of prior art as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY R DONAHUE whose telephone number is (571)272-5850. The examiner can normally be reached M-F 8a-5p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY RYAN DONAHUE/Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689
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