DETAILED ACTION
Status
This communication is in response to Applicant’s “AMENDMENT AND RESPONSE” (hereinafter “Amendment”) filed on January 21, 2026; as well as Applicant’s subsequently-filed “SUPPLEMENTAL AMENDMENT” filed on January 22, 2026 (hereinafter “Supplemental Amendment”). In the Amendment, Applicant amended Claims 1, 4-8, 10-13 and 17-18; cancelled no claim(s); and added no claim(s). In the Supplemental Amendment, Applicant amended each of Claims 17 and 18 to include “a space” between words in each of Claims 17 and 18; cancelled no claim(s); and added no claim(s). Claims 2-3 and 14-16 were previously cancelled. Therefore, Claims 1, 4-13 and 17-18 remain currently pending and presented for examination. Of the pending claims, Claims 1 and 13 are the independent claims.
The present application (U.S. App. No. 18/187,780), which claims foreign priority to a Japanese patent application filed in 2022, is being examined under the first inventor to file (FITF) provisions of the America Invents Act (AIA ) since both applications were filed after March 16, 2013.
Original Claims 1-16 were originally presented by Applicant and, therefore, have been constructively elected by original presentation for prosecution on the merits per MPEP § 819 and MPEP § 821.03.
Examiner notes that this U.S. patent application has published as U.S. Patent Application Publication No. 2023/0316323 of Yutaka TAKIJIRI (hereinafter “Takijiri”).
Priority/Benefit Claim
This U.S. patent application (filed March 22, 2023) claims foreign priority to Japanese Patent Application No. 2022-055858, which was filed on March 30, 2022. On 5/08/2023, the USPTO electronically received a certification document for Japanese Patent Application No. 2022-055858. See MPEP § 215 for “a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed”. No English translation has been received.
No domestic benefit has been asserted in this application (U.S. App. No. 18/187,780).
Response to Amendments
A Summary of the Response to Applicant’s Amendment:
Applicant’s Amendment introduces new objections to each of the independent claims; therefore, the Examiner asserts new objections to each of independent Claims 1 and 13, as provided below.
Applicant’s Amendment introduces new rejections to Claims 1, 4-13 and 17-18 under 35 U.S.C. § 112(b); therefore, the Examiner asserts § 112(b) rejections to Claims 1, 4-13 and 17-18, as provided below.
Applicant’s Amendment does not overcome rejections to Claims 1, 4-13 and 17-18 under 35 U.S.C. § 101; therefore, the Examiner asserts/maintains § 101 rejections to Claims 1, 4-13 and 17-18, as provided below.
Applicant’s Amendment does not overcome prior art rejections to Claims 1, 4-13 and 17-18 under respective 35 U.S.C. §§ 102 and 103 of the AIA ; therefore, the Examiner asserts/maintains prior art rejections to Claims 1, 4-13 and 17-18, as provided below under 35 U.S.C. §§ 102 and 103, respectively.
Applicant’s arguments are found to be not persuasive; please see Examiner’s “Response to Arguments” provided below.
CPC Classification Notes
Examiner notes CPC classifications G06Q 30/0231 and G06Q 30/0233:
G06Q 30/02 • Marketing; Price estimation or determination
G06Q 30/0207 •• Discounts or incentives, e.g. coupons or rebates
G06Q 30/0226 ••• Incentive systems for frequent usage, e.g. …point systems
G06Q 30/0231 •••• Awarding of a frequent usage incentive independent of the
monetary value of a good or service purchased…
G06Q 30/0232 •••• Frequent usage rewards other than merchandise, cash or travel
G06Q 30/0233 •••• Method of redeeming a frequent usage reward.
Claim Objections
Claim 1 is objected to because of the following informalities: grammatical/antecedent error(s). More specifically, insufficient antecedent basis exists for “the printing device” in the phrase “a printing process to instruct the printing device” (bolding emphasis added by Examiner) because a print device was never previously introduced in Claim 1. For purposes of this Office action, Examiner understands “the printing device”, as recited in the phrase “a printing process to instruct the printing device” (bolding emphasis added by Examiner), to be “a printing device”. Appropriate correction(s) to Claim 1 is required.
Independent Claim 13 is objected to because of the following informalities: grammatical/antecedent error. More specifically, insufficient antecedent basis exists for “the storage” in the phrase “a printing process to instruct a printing device to execute printing on a set number of printing media using the communication interface while withdrawing an amount of print resources corresponding to the set number of printing media from a print resource balance stored in the storage,” (bolding emphasis added by Examiner) because, unlike Claim 1, a storage was never previously introduced in independent Claim 13. For purposes of this Office action, Examiner understands the first recited “the storage”, as recited in the above-mentioned phrase of independent Claim 13, to be “a storage”. Appropriate correction(s) is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b) of the America Invents Act (AIA ):
(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.
Claims 1, 4-13 and 17-18 are rejected under 35 U.S.C. 112(b) of the AIA as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. “A claim is indefinite when it contains words or phrases whose meaning is unclear” (MPEP § 2173.05(e)).
Each of independent Claims 1 and 13 at least twice introduces the phrase “printing device” and then subsequently introduce recitations of “the printing device”; therefore, it is unclear as to what later-recited phrases of the “printing device” refers to in each corresponding independent claim — insufficient antecedent basis exists for multiple recitations of “the printing device” in each of Applicant’s independent claims. For example, regarding Claim 1, it is unclear as to whether the phrase “the printing device” in the phrase “automatically and periodically obtaining past-usage information for a user of the printing device from the printing device via…” (underlining emphases added to Claim 1 by Examiner) references the first-recited “the printing device” of Claim 1, the later-introduced “a printing device”, or both recitations to “printing device” recited in Claim 1’s phrase:
“a printing process to instruct the printing device to execute printing on a set number of printing media using the communication interface while withdrawing an amount of print resources corresponding to the set number of printing media from a print resource balance stored in the storage, the print resource balance indicating an accumulated amount of print resources available in a printing device” (bolding emphases added by Examiner).
In addition, it is unclear as to whether first-recited “a printing device” in Claim 1 is to be understood to be the same as “the printing device” first recited in Claim 1 (objected to), or whether they are to be different printing devices. Therefore, Claim 1 is amenable to multiple plausible constructions and, therefore, a person having ordinary skill in the art would be unable to determine what the Applicant does and does not regard as the invention. Hence, Claim 1 is rejected under AIA 35 U.S.C. 112(b) as being indefinite.
In addition regarding independent Claim 13, which twice introduces the phrase “a printing device”, it is unclear as to whether the phrases “the printing device” recited in Claim 13 references the first-recited “a printing device”, the second-introduced “a printing device”, or both recitations to “a printing device” recited in Claim 13’s phrase:
“a printing process to instruct a printing device to execute printing on a set number of printing media using the communication interface while withdrawing an amount of print resources corresponding to the set number of printing media from a print resource balance stored in the storage, the print resource balance indicating an accumulated amount of print resources available in a printing device;” (bolding emphases added by Examiner).
Furthermore, it is unclear as to whether first-recited “a printing device” in Claim 13 is to be understood to be the same as the subsequently recited “a printing device” recited in Claim 13, or whether they are to be understood to be different printing devices in Claim 13. Therefore, Claim 13 is amenable to multiple plausible constructions and, therefore, a person having ordinary skill in the art would be unable to determine what the Applicant does and does not regard as the invention. In summary, Applicant’s independent claims have insufficient antecedent basis for multiple recitations of “the printing device” recited in Applicant’s independent claims; and therefore, Claims 1 and 13 is rejected under AIA 35 U.S.C. 112(b) as being indefinite. Appropriate corrections are required.
Claims 4-12 and 17-18 depend from independent Claim 1, but do not resolve the above issues and inherit the deficiencies of the parent claim(s); therefore, Claims 4-12 and 17-18 are rejected under 35 U.S.C. 112(b) of the AIA . Appropriate corrections are required.
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, 4-13 and 17-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification” (MPEP § 2111). In view of this standard and based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1, 4-13 and 17-18 are rejected as ineligible subject matter under 35 U.S.C. 101.
Step 1: Claims 1, 4-13 and 17-18 satisfy Step 1 enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Step 2A: Claims 1, 4-13 and 17-18 are rejected under § 101 because Applicant’s claimed subject matter is directed to an abstract idea without significantly more. The rationale for this finding is that Applicant’s claims recite providing a benefit {e.g., award points or recited “adding a first number of points” to “the total point balance of the user”, a reward, loyalty points, etc. that can be redeemed in exchange for print resources (prepaid printing sheets), or points “usable for purchasing one or more print resources” (prepaid printing sheets)} to a user based on past-usage information {e.g., print resources (ink, sheet paper) used/consumed, such as recited “an amount of consumable used in the printing device”, “a consumption amount of print resources consumed” in Claim 18, etc.} corresponding the user’s behavior (e.g., during “printing on a set number of printing media”, “the printing device has been used”, etc.) — encouraging or incentivizing certain behavior of a user (Spec. ¶ [0003]: “points to encourage users to print in the most favorable manner”), as more particularly recited in the pending claims save for recited (non-abstract claim elements):
a printing device;
a user of the printing device;
a communication interface (and using the communication interface);
(only independent Claim 1) a server comprising: the communication interface configured to communicate with the printing device; a storage configured to store information; and a computer configured to perform;
(only Claim 12) a terminal and transmitting a display instruction to instruct the terminal device to display through the communication interface; and
each of Applicant’s recited processes/operations of obtaining, receiving, storing, setting, communicating, updating, instructing, adding/withdrawing, providing, and transmitting.
However, providing a benefit (e.g., recited “a first number of points to a total point balance” or award points) to a user based on past-usage information concerning the user’s behavior, as currently recited in Applicant’s pending claims and further explained below, is within a certain method of organizing human activity — (i) fundamental economic principle or practice; (ii) commercial interaction (including advertising, marketing or sales activities or behaviors; business relations); and/or (iii) managing personal behavior or relationships/interactions between people {e.g., Spec. ¶ [0003] mentions “points to encourage users to print in the most favorable manner” as well as page 10 of Applicant’s 2024 Amendment acknowledges “…when a user is purchasing… that user becomes cost-conscious and is therefore aware of… cost… and benefits based on user behavior”}. MPEP 2106.04(a)(2)(II)(A) provides examples of “fundamental economic principles or practices” and MPEP 2106.04(a)(2)(II)(B) provides additional discussion and examples of commercial or legal interactions. This judicial exception (i.e., abstract idea exception) is not integrated into a practical application because each claim as a whole, having the combination of additional elements beyond the judicial exception(s), does not integrate the exception into a practical application of the exception and, therefore, the pending claims are “directed to” a judicial exception under USPTO Step 2A. More specifically, each claim as a whole does not appear to reflect the combination of additional elements as: (1) improving the functioning of a computer itself or improving another technology or technical field, (2) applying the judicial exception with, or by use of, a particular machine/manufacture that is integral to the claim, (3) effecting a transformation or reduction of a particular article to a different state or thing, or (4) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Instead, any improvement is to the underlying abstract idea of using past-usage information about a user’s behavior to provide a benefit to the user (e.g., see page 10 of Applicant’s 2024 Amendment acknowledging “…when a user is purchasing… that user becomes cost-conscious and is therefore aware of… cost… and benefits based on user behavior”). SAP Am., Inc. v. InvestPic, LLC, No. 2017-2081, 2018 U.S. App. LEXIS 12590, Slip. Op. 13 (Fed. Cir. May 15, 2018) (“What is needed is an inventive concept in the non-abstract realm.”). Although Applicant’s pending claims require
mathematical addition (+) of amounts {e.g., see independent claims reciting “adding the purchased specific amount to the print resource balance” and reciting “adding a first number of points to ap total point balance”}; mathematical products (×) of rates and prices {e.g., see independent claims reciting “first number of points being based on a product of the first variable rate and the specific price”}; and of points and rates (e.g., see Claim 4, for instance), these techniques are mathematical concepts in the form of formulas, equations, and calculations which also have been determined to constitute abstract ideas. See Memorandum, "Grouping of Abstract Ideas" and cases cited in footnote 12, such as enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance (84 Fed. Reg. 50). As noted on page 4 of the “October 2019 Update: Subject Matter Eligibility” issued by the USPTO, Examiner notes that a claim does not have to recite the word “calculating” in order to be considered a mathematical calculation. For example, a step of “determining” a variable or number using mathematical methods or “performing” a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation (BRI) of the claim, in light of the specification, encompasses one or more mathematical calculations. Applicant’s additional elements, taken individually and in combination, do not appear to be integrated into a practical application since they embody mere instructions to implement the abstract idea on a computer or mere use of a computer as a tool to perform the abstract idea, do no more than generally linking the use of the abstract idea to a particular technological environment or field of use {e.g., a computer network with a server (e.g., management server) in communication with a printing device (i.e., printer) and a terminal device (e.g., mobile phone 300)}, and amount to no more than combining the abstract idea with insignificant extra-solution activity including each of Applicant’s recited operations/processes of obtaining, receiving, storing, updating, setting, communicating, instructing, adding/withdrawing, providing, and transmitting, as further explained below. For the reasons discussed above, Applicant’s pending claims are directed to an abstract idea that is not integrated into a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis of 35 U.S.C. 101.
Step 2B: Under Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), Applicant’s instant claims do not recite limitations, taken individually and in combination, that are sufficient to amount to “significantly more” than the abstract idea because Applicant’s claims do not recite, as further explained in detail below, an improvement to another technology or technical field, an improvement to the functioning of a computer itself, an application with or by a particular machine, a transformation or reduction of a particular article to a different state or thing, unconventional steps confining the claim to a particular useful application, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Examiner notes that Claim 13 is drawn to a method; however, the method steps do not recite, require, or indicate implementation by any particular machine since none of limitations recited in Applicant’s method claims are performed by any computer or processing device. Even if a computer/machine was implied (e.g., such as Applicant’s recited “server” in Claim 13), Applicant’s claim limitations taken individually and in combination would be merely instructions to implement the abstract idea on a computer server and would require no more than generally linking the use of an abstract idea to a particular technological environment or field of use {e.g., a computer network with a server (e.g., management server) in communication with a printing device (i.e., printer) and a terminal device (e.g., mobile phone 300)}, and having the abstract idea combined with insignificant extra-solution activity including each of Applicant’s recited operations/processes of obtaining, receiving, storing, updating, setting, communicating, instructing, adding/withdrawing, providing, and transmitting, as further explained below. Also, Examiner notes that albeit limitations recited in the Claim 1 are performed by the generically-recited “a computer configured to perform”, these claim limitations of Claim 1, taken individually and in combination, are merely instructions to implement Applicant’s abstract idea on a computer and require no more than a generic computer to generally link the abstract idea to a particular technological environment or field of use {e.g., a computer network with a server (e.g., management server) in communication with a printing device (i.e., printer) and a terminal device (e.g., mobile phone 300)}, and no more than a combination of the abstract idea with insignificant extra-solution activity including each of Applicant’s recited operations/processes of obtaining, receiving, storing, updating, setting, communicating, instructing, adding/withdrawing, providing, and transmitting, as further explained below. As mentioned above, the claim elements in addition to the abstract idea arguably include:
a printing device;
a user of the printing device;
a communication interface (and using the communication interface);
(only Claim 1) a server comprising: the communication interface configured to communicate with the printing device; a storage configured to store information; and a computer configured to perform;
(only Claim 12) a terminal and transmitting a display instruction to instruct the terminal device to display through the communication interface; and
each of Applicant’s recited processes/operations of obtaining, receiving, storing, setting, communicating, updating, instructing, adding/withdrawing, providing, and transmitting.
However, each of these components is recited at a high level of generality that taken individually and in combination perform corresponding generic computer functions of obtaining, receiving, storing, updating, setting, communicating, instructing, adding/withdrawing, providing, and transmitting — there is no indication that the combination of elements improves the functioning of a computer or improves any other technology since the additional elements taken individually and collectively merely provide generic computer implementations known to the industry. Furthermore, Examiner notes that none of the processes/steps recited in the pending claims taken individually and in combination impose a meaningful limit on the claim’s scope since none of recited processes/steps taken individually and in combination involve activity that amounts to more than generic computer functions/activity. The steps/processes of obtaining, receiving, storing, updating, setting, communicating, instructing, adding/withdrawing, providing, and transmitting, as currently recited individually and in combination in Applicant’s claims, are considered to be generic computer functions since they involve having the abstract idea combined with insignificant extra-solution activity, and generally linking the use of an abstract idea to a particular technological environment or field of use previously known to the industry — each of Applicant’s recited steps of obtaining and receiving encompasses a data input/receiving or retrieving function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014); and see Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S.Ct. 1289, 101 USPQ2d 1961 (2012)}; each of the steps of storing, updating, adding and setting encompasses a data saving or depositing function performed by virtually all general purpose computers {see Alice Corp., 134 S. Ct. at 2360; Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014), hereinafter “Cyberfone”; and Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 113 U.S.P.Q.2d 1354 (Fed. Cir. 2014), hereinafter “Content Extraction”, for data storage}; each of the steps of “adding”, “withdrawing” and calculating on a basis of recited “a product” encompasses a simple mathematical/financial function performed by virtually all general purpose computers {see Alice Corp., Bilski, Freddie Mac, and In re Abele}; and each of the steps of communicating, instructing, providing and transmitting encompasses a data output/transmittal function performed by virtually all general purpose computers {see Ultramercial, 772 F.3d at 716‐17; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); and see Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014)}. Also see the “July 2015 Update: Subject Matter Eligibility” document, at page 7, second and sixth bullet points (July 30, 2015) regarding various well‐understood, routine, and conventional functions of a computer. Employing well-known computer functions individually and in combination to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the computer-implemented abstract idea in Flook (Parker v. Flook, 437 U.S. 584, 19 U.S.P.Q. 193 (1978)) to petrochemical and oil-refining industries was insufficient. For the reasons discussed above, Applicant’s pending claims do not satisfy Step 2B enunciated in Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
Consequently, based upon consideration of all of the relevant factors with respect to each claim as a whole, Claims 1, 4-13 and 17-18 rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. For information regarding 35 U.S.C. 101, please see Subject Matter Eligibility (SME) guidance and instructional materials at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility, which includes guidance, memoranda, and updates regarding SME under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraph(s) of AIA 35 U.S.C. 102 that form(s) the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-6, 8-13 and 18 are rejected under America Invents Act (AIA ) 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2013/0250315 of Matthew H. DeRoller (hereinafter “DeRoller”).
Regarding Claim 1, DeRoller discloses a server comprising: a communication interface (e.g., Figure 1 of DeRoller; and DeRoller at ¶¶ [0016]–[0018]); a storage (e.g., “point or scoring system may be established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; Figure 2 of DeRoller; printing credits are issued to user for future use allowing the user to print more (in the future) —DeRoller at ¶ [0031] and Claim 9 of DeRoller; as well as DeRoller at ¶¶ [0020], [0023], [0031] and [0043]–[0046]); and a computer configured to perform:
a printing process to instruct the printing device to execute printing on a set number of printing media using the communication interface while withdrawing an amount of print resources corresponding to the set number of printing media from a print resource balance stored in the storage, the balance indicating an accumulated amount of print resources available in a printing device (e.g., Figures 1-2 of DeRoller; “any device capable of printing, such as for example, a printer, a copying machine… and the like” —DeRoller at ¶ [0018]; “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” —DeRoller at ¶ [0029]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; and DeRoller at ¶¶ [0016], [0023], [0026]–[0029], [0044] and [0046]; “a number of pages” and “based upon the number of pages… the amount of resources… calculated” —DeRoller at ¶¶ [0026] and [0044]; “print authorizations” and “track print jobs, collect information about the print jobs and control the authorization of each user…. track print quotas of each user, when a user is authorized to send a print job, which multi-function devices 116, 118 and 120 a user is authorized to use, whether the user is authorized to print in color, track how many pages are printed by each user….” —DeRoller at ¶¶ [0023] and [0020]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]);
automatically and periodically obtaining past-usage information for a user of the printing device from the printing device via the communication interface, the past-usage information indicating a condition under which the printing device has been used (e.g., Figure 2 of DeRoller; “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “recommended changes to reduce the cost of printing” —DeRoller at ¶ [0029]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; DeRoller at ¶¶ [0026], [0029]–[0030], [0050]–[0051] and [0057]–[0061]; and “print authorizations” and “track print jobs, collect information about the print jobs and control the authorization of each user…. track print quotas of each user, when a user is authorized to send a print job, which multi-function devices 116, 118 and 120 a user is authorized to use, whether the user is authorized to print in color, track how many pages are printed by each user….” —DeRoller at ¶¶ [0023] and [0020]);
updating, each time the obtaining is performed, a first variable rate based on the past- usage information (e.g., “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “recommended changes to reduce the cost of printing” —DeRoller at ¶ [0029]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; DeRoller at ¶¶ [0026], [0029]–[0030], [0050]–[0051] and [0057]–[0061]; and “print authorizations” and “track print jobs, collect information about the print jobs and control the authorization of each user…. track print quotas of each user, when a user is authorized to send a print job, which multi-function devices 116, 118 and 120 a user is authorized to use, whether the user is authorized to print in color, track how many pages are printed by each user….” —DeRoller at ¶¶ [0023] and [0020]);
constantly monitoring, using the communication interface, whether an instruction to purchase a specific amount of print resources for a specific price has been received from a terminal device (e.g., “the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; “print authorizations” and “track print jobs, collect information about the print jobs and control the authorization of each user…. track print quotas of each user, when a user is authorized to send a print job, which multi-function devices 116, 118 and 120 a user is authorized to use, whether the user is authorized to print in color, track how many pages are printed by each user….” —DeRoller at ¶¶ [0023] and [0020]; and DeRoller at ¶¶ [0014], [0026], [0029]–[0030], [0050]–[0051] and [0057]–[0061]);
in response to receiving the instruction, adding the purchased specific amount to the print resource balance (e.g., “track print jobs, collect information about the print jobs and control the authorization of each user…. track print quotas of each user, when a user is authorized to send a print job, which multi-function devices 116, 118 and 120 a user is authorized to use, whether the user is authorized to print in color, track how many pages are printed by each user….” —DeRoller at ¶ [0020]; database storage of information —DeRoller at ¶ [0023]; printing credits are issued to user for future use allowing the user to print more —DeRoller at ¶ [0031] and Claim 9 of DeRoller; and Figures 1-2 of DeRoller); and
in response to the adding, automatically adding a first number of points to a total point balance of the user, the total point balance being stored in the storage, each point in the total point balance being usable for purchasing one or more print resources, the first number of points being based on a product of the first variable rate and the specific price (e.g., Figure 2 of DeRoller; “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “recommended changes to reduce the cost of printing” —DeRoller at ¶ [0029]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; “point or scoring system may be established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; printing credits are issued to user for future use allowing the user to print more —DeRoller at ¶ [0031] and Claim 9 of DeRoller; DeRoller at ¶¶ [0016], [0023], [0026], [0029]–[0030], [0044], [0046], [0050]–[0051] and [0057]–[0061]; and “print authorizations” and “track print jobs, collect information about the print jobs and control the authorization of each user…. track print quotas of each user, when a user is authorized to send a print job, which multi-function devices 116, 118 and 120 a user is authorized to use, whether the user is authorized to print in color, track how many pages are printed by each user….” —DeRoller at ¶¶ [0023] and [0020]).
Regarding Claim 4, DeRoller discloses the server according to claim 1, wherein the computer is configured to further perform: updating, each time the obtaining is performed, a second variable rate based on the past-usage information (e.g., “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” and “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶¶ [0029] and [0044]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; and DeRoller at ¶¶ [0019], [0023], [0029], [0033], [0050]–[0051] and [0056]–[0057]); setting a second number of points to be withdrawn from the total point balance, calculating an amount of print resources by using a product of the second number of points and the second variable rate, and adding the calculated amount of print resources to the print resource balance and withdrawing the second number of points from the total point balance (e.g., “point or scoring system may be established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; DeRoller at ¶¶ [0023], [0026], [0029], [0031], [0043]–[0045], [0050]–[0051] and [0061]; “track print jobs, collect information about the print jobs and control the authorization of each user…. track print quotas of each user, when a user is authorized to send a print job, which multi-function devices 116, 118 and 120 a user is authorized to use, whether the user is authorized to print in color, track how many pages are printed by each user….” —DeRoller at ¶ [0020]; database storage of information —DeRoller at ¶ [0023]; and Figure 2 of DeRoller).
Regarding Claim 5, DeRoller discloses the server according to claim 1, wherein the past-usage information includes consumption information indicating an amount of consumable used in the printing device (e.g., “reduces wasteful printing, encourages smarter use of printing resources… modifying print jobs such that they are more economical” —DeRoller at ¶ [0014]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; and DeRoller at ¶¶ [0026], [0029]–[0030], [0044], [0050]–[0051] and [0057]–[0061]).
Regarding Claim 6, DeRoller discloses the server according to claim 5, wherein in the updating
the first variable rate is updated so that the first variable rate decreases as the amount of consumable increases (e.g., “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” and “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶¶ [0029] and [0044]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; and DeRoller at ¶¶ [0019], [0023], [0026]–[0027], [0029], [0033], [0050]–[0051], [0053] and [0056]–[0057]).
Regarding Claim 8, DeRoller discloses the server according to claim 1, wherein the past-usage information includes settings information indicating print settings in the printing device (e.g., “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; “encourages smarter use of printing resources… modifying print jobs such that they are more economical” —DeRoller at ¶ [0014]; Figure 2 of DeRoller; “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; and DeRoller at ¶¶ [0026], [0029]–[0030], [0050]–[0051] and [0057]–[0061]).
Regarding Claim 9, DeRoller discloses the server according to claim 8, wherein the print settings includes settings of image quality (e.g., DeRoller at ¶¶ [0026]–[0027] and [0053]; and “modifying print jobs such that they are more economical” —DeRoller at ¶ [0014]).
Regarding Claim 10, DeRoller discloses the server according to claim 9, wherein in the updating the first variable rate is updated so that the first variable rate decreases as the image quality in the print settings increases (e.g., “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” and “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶¶ [0029] and [0044]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; and DeRoller at ¶¶ [0019], [0023], [0026]–[0027], [0029], [0033], [0050]–[0051], [0053] and [0056]–[0057]).
Regarding Claim 11, DeRoller discloses the server according to claim 1, wherein the past-usage information is a past-usage information of the printing device for a specific period of time, wherein in the updating the first variable rate is updated so that the first variable rate varies based on the past-usage information (e.g., “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” and “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶¶ [0029] and [0044]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; and DeRoller at ¶¶ [0019], [0023], [0029], [0033], [0041], [0043], [0050]–[0051], [0056]–[0057] and [0062]).
Regarding Claim 12, DeRoller discloses the server according to claim 1, wherein the computer is configured to further perform: transmitting a display instruction to instruct the terminal device through the communication interface to display the first variable rate (e.g., “message…include …recommended changes to reduce the cost of printing …for each one of the recommended changes” —DeRoller at ¶ [0029]; Figures 1-2 of DeRoller; DeRoller at ¶¶ [0017], [0027], [0029] and [0050]–[0051]).
Regarding Claim 13, DeRoller discloses a method for a server including a communication interface, the method comprising (e.g., Figures 1-2 of DeRoller; and DeRoller at ¶¶ [0016]–[0018]) respective processes/steps as recited in Claim 1, and, therefore, independent Claim 13 is rejected on the same basis(es) as applied above with respect to Claim 1.
Regarding Claim 18, DeRoller discloses the server according to claim 1, wherein the past-usage information indicates a consumption amount of print resources consumed by the printing device (e.g., Figure 2 of DeRoller; “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; and DeRoller at ¶¶ [0026], [0029]–[0030], [0050]–[0051] and [0057]–[0061]), wherein in the updating the first variable rate is updated so that the first number of points to be added to the total point balance when the past-usage information indicates a first amount as the consumption amount is greater than the first number of points to be added to the total point balance when the past-usage information indicates a second amount as the consumption amount, the second amount being greater than the first amount (e.g., “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” and “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶¶ [0029] and [0044]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; and DeRoller at ¶¶ [0019], [0023], [0029], [0033], [0050]–[0051] and [0056]–[0057]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 (AIA ) 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 of this title, 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.
Claim 7 is rejected under 35 U.S.C. 103 of the AIA as being unpatentable over U.S. Patent Application Publication No. 2013/0250315 (“DeRoller”) in view of U.S. Patent Application Publication No. 2012/0033250 of Grasso et al. (hereinafter “Grasso”).
Regarding Claim 7, DeRoller discloses the server according to claim 1, wherein the past-usage usage information includes printing information indicating an amount of printing (e.g., “modifying print jobs such that they are more economical” —DeRoller at ¶ [0014]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; and DeRoller at ¶¶ [0026], [0029]–[0030], [0044], [0050]–[0051] and [0057]–[0061]), wherein in the updating the first variable rate is updated so that the first variable rate decreases as the amount of printing increases (e.g., “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” and “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶¶ [0029] and [0044]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; and DeRoller at ¶¶ [0019], [0023], [0026]–[0027], [0029], [0033], [0050]–[0051], [0053] and [0056]–[0057]), but DeRoller fails to explicitly disclose the printing information indicating an amount of printing as including coverage information indicating a coverage ratio of a printed area to a total printable area. However, Grasso teaches rewarding users of printers/copiers for their environmental behavior regarding printer/copier resources (e.g., “a green currency is established which is used to reward users of resources for their environmental behavior. The exemplary green currency is a virtual currency…. The account can be added to and/or subtracted from…. the green currency can be in tangible form” —Grasso at ¶ [0028]; “ "points" which are awarded to and/subtracted from users' accounts in amounts based on their behavior. For example, a user may be awarded a certain number of green points in a given time period, which are used up as the user makes choices about printing” —Grasso at ¶ [0034]; “Green points may have… correspondence to the environmental costs of print actions” —Grasso at ¶ [0036]; and Grasso at ¶ [0030]) as well as printing information indicating an amount of printing including coverage information indicating a coverage ratio of a printed area to a total printable area (e.g., “coverage: how much of each page is printed” —Grasso at ¶ [0080]; “printed pages with particular characteristics (nearly empty/nearly fully covered pages).” —Grasso at ¶ [0091]; Grasso at ¶ [0098]; and “coverage <1%” and “coverage >90%” shown in Table 1 of Grasso between ¶¶ [0096] and [0097]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the printing information indicating an amount of printing as including coverage information indicating a coverage ratio of a printed area to a total printable area, as taught by Grasso, into the method/system disclosed by DeRoller, which is directed toward tracking printing resources used to print on a printer and making recommendations to reduce the cost of printing as well as to create more efficient and economical use of printing resources (e.g., “Various factors can influence the costs associated with printing” with “cost of printing using the currently requested parameters” and giving “recommended changes to reduce the cost of printing” —DeRoller at ¶¶ [0002], [0028] and [0029]; and DeRoller at ¶¶ [0014] and [0046]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Claim 17 is rejected under 35 U.S.C. 103 of the AIA as being unpatentable over U.S. Patent Application Publication No. 2013/0250315 (“DeRoller”) in view of U.S. Patent Application Publication No. 2022/0137903 of Morales et al. (hereinafter “Morales”).
Regarding Claim 17, DeRoller discloses the server according to claim 1, wherein the past-usage information indicates an execution number of operations that has been performed in the printing device (e.g., Figure 2 of DeRoller; “the currently requested parameters” and “possible recommended changes may be sent to the user” —DeRoller at ¶ [0028]; “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶ [0044]; “… to modify the behavior of users…. point or scoring system…established… encourages smarter use of printing resources and rewards users for modifying print jobs such… they are more economical…. result in a more efficient and economical use of printing resources” —DeRoller at ¶ [0014]; “user may be allowed to select one or more of the recommended changes” —DeRoller at ¶ [0058]; and DeRoller at ¶¶ [0026], [0029]–[0030], [0050]–[0051] and [0057]–[0061]), wherein in the updating the first variable rate is updated so that the first number of points to be added to the total point balance when the past-usage information indicates a first execution number and the execution number is greater than the first number of points to be added when the past-usage information indicates a second execution number as the execution number, the second execution number being greater than the first execution number (e.g., “Various factors can influence the costs associated with printing” —DeRoller at ¶ [0002]; “cost of printing using the currently requested parameters” —DeRoller at ¶ [0028]; “recommended changes to reduce the cost of printing” and “based upon the number of pages that are printed, the amount of resources that are saved may be calculated” —DeRoller at ¶¶ [0029] and [0044]; “encourage users to request more cost effective print jobs and reconsider whether certain parameters are necessary for certain print jobs” —DeRoller at ¶ [0046]; Figure 2 of DeRoller; and DeRoller at ¶¶ [0019], [0023], [0029], [0033], [0050]–[0051] and [0056]–[0057]), but DeRoller fails to explicitly disclose the operations performed in the printing device including cleaning operations performed in the printing device. However, Morales teaches printing equipment including one or more printers that carry out a print job (e.g., Figure 1 of Morales; and Abstract of Morales), calculating an estimated total amount of ink required for printing the print job (e.g., Abstract of Morales; and Morales at ¶¶ [0001] and [0003]), as well as operations performed in a printer device including cleaning operations performed in the printing device (e.g., Morales at ¶ [0028]). Therefore, it would have been obvious to one skilled in the art, before the effective filing date of the claimed invention, to incorporate the operations performed in the printing device including cleaning operations performed in the printing device, as taught by Morales, into the method/system disclosed by DeRoller, which is directed toward tracking printing resources used to print on a printer and making recommendations to reduce the cost of printing as well as to create more efficient and economical use of printing resources (e.g., “Various factors can influence the costs associated with printing” with “cost of printing using the currently requested parameters” and giving “recommended changes to reduce the cost of printing” —DeRoller at ¶¶ [0002], [0028] and [0029]; and DeRoller at ¶¶ [0014] and [0046]), because such incorporation would be applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (see MPEP § 2143).
Response to Arguments
Applicant’s arguments in the Amendment filed on January 21, 2026, have been fully considered and are not persuasive. Examiner notes additional citations above to U.S. Patent Application Publication No. 2013/0250315 (“DeRoller”) in an effort to assist Applicant given Applicant’s amendments and arguments.
Applicant's Arguments in the Amendment
(Pages 8-11) Applicant asserts that the independent claims, as currently amended, are drawn to eligible subject matter under 35 U.S.C. § 101.
(Pages 11-12) Applicant asserts that the independent claims, as currently amended, are not anticipated by U.S. Patent Application Publication No. 2013/0250315 (“DeRoller”).
(Page 13) Applicant asserts that Claims 7 and 17, in view of current amendments to the independent claims, are patentable over a combination of U.S. Patent Application Publication Nos. 2013/0250315 (“DeRoller”), 2012/0033250 (“Grasso”) and 2022/0137903 (“Morales”).
Examiner’s Response to Applicant's Arguments
Please see updated/modified § 101 rejections above regarding the pending claims being drawn to ineligible subject matter in view of considering all relevant factors with respect to each claim as a whole including amended portions of the independent claims.
It may be worth being mindful that on page 9 of Applicant’s 2024 Amendment, Applicant argued that “each of these [independent] claims recites a server…”; however, Examiner noted that independent Claim 13 fails to recite any server. Consequently, Applicant's argument regarding a server being configured to instruct and execute constituted no more than a general allegation that Applicant’s independent claims satisfied the requirements of 35 U.S.C. 101. On page 10 of Applicant’s 2024 Amendment, Applicant argued that Applicant’s “award process…occurring at the time the user purchases…”; however, Examiner noted that awarding a benefit (e.g., award points, a reward, etc.) to a user when the user is purchasing was part of Applicant’s underlying abstract idea. Applicant's mere recitation to "an awarding process to award… when… print resources is purchased…" was not sufficient to amount to a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis.
In addition, on page 9 of Applicant’s 2025 amendment, Applicant argued that “claims 1 and 13… recite specific, technical elements… illustrating an improvement in operation of the printing systems claims”; however, Examiner noted that independent Claims 1 and 13 fail to recite any technical improvement in either operation of a server or “operation of…both the server system and the related printing device” (see page 11 of Applicant’s 2025 amendment). Examiner notes that Applicant’s claimed subject matter appeared to focus on incentivizing certain behavior of a human user — improving operation of neither Applicant’s server, Applicant’s printing device, nor Applicant’s terminal device. This is consistent with Applicant’s statement on page 12 of Applicant’s 2025 Amendment, “…when the user is particularly cost conscious, and therefore encourages more environmentally conscious behavior” (bolding emphases added).
However, Examiner noted that Applicant’s server, Applicant’s printing device, and Applicant’s terminal device were merely used to implement Applicant’s abstract idea and requires no more than a generic computer server, a generic printing device, and a generic terminal device, which generally linked Applicant’s abstract idea to a particular technological environment or field of use {e.g., a computer network with a server (e.g., management server) in communication with a printing device (i.e., printer) and a terminal device (e.g., mobile phone 300)}. Applicant’s server, printing device, and terminal device were merely used to implement Applicant’s abstract idea and, therefore, not sufficient to amount to a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis.
Please see updated/modified § 101 rejections above regarding the pending claims being drawn to ineligible subject matter in view of considering all relevant factors with respect to each claim as a whole including amended portions of the independent claims. “[w]hat is needed is an inventive concept in the non-abstract realm” to support an invention under 35 U.S.C. 101. Examiner notes that Applicant’s server in Claim 1 is recited as being used merely to implement Applicant’s abstract idea and requires no more than a generic computer server, a generic printing device, and a generic terminal device, which generally linked Applicant’s abstract idea to a particular technological environment or field of use {e.g., a computer network with a server (e.g., management server) in communication with a printing device (i.e., printer) and a terminal device (e.g., mobile phone 300)}. Applicant’s server, printing device, and terminal device were merely used to implement Applicant’s abstract idea and, therefore, not sufficient to amount to a practical application under Step 2A, Prong 2 of the Subject Matter Eligibility (SME) analysis. In summary, Applicant's arguments constitute no more than a general allegation that Applicant’s independent claims satisfy the requirements of 35 U.S.C. 101.
Regarding § 102, please see additional citations to the prior art reference DeRoller in the § 102 rejections above regarding amended portions of Applicant’s claims. Examiner notes that during patent examination, the pending claims must be “given their broadest reasonable interpretation”. In view of this standard, Examiner asserts § 102 rejections to Applicant’s pending claims, as noted above under § 102. In addition, Examiner notes that patent documents are relevant as prior art for all they contain and that “[a] reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments” —MPEP § 2123.
Regarding § 103, please see citations to prior art references of DeRoller and Grasso in the § 103 rejections above regarding amended portions of Applicant’s claims. Also, please see U.S. Patent Application Publication No. 2022/0137903 (“Morales”) regarding cleaning operations performed in a printing device/printer. During patent examination, claims must be “given their broadest reasonable interpretation”. In view of this standard, Examiner asserts § 103 rejections to Applicant’s Claims 7 and 17, as noted above under § 103.
Conclusion
The following references are considered pertinent to Applicant's disclosure, and are being made of record albeit the references are not relied upon as a basis for rejection in this Office action:
U.S. Patent Application Publication No. 2023/0179718 of McCoog et al. (hereinafter “McCoog”) for
McCoog teaching imaging devices, such as printers or copiers, using print materials (e.g., ink, toner, etc.) to print on a medium, such as paper (e.g., McCoog at ¶¶ [0002], [0006] and [0007]), charging an amount of money for printing a number of pages in response to user print/copy settings (e.g., McCoog at ¶¶ [0026], [0027], [0029], [0033] and [0041]), and providing information on a print resource balance indicating an accumulated amount of print resources available in the printing device, wherein when the specific amount of print resources is purchased, the purchased specific amount is added to the print resource balance, and the printing on the number of printing media being while withdrawing an amount of print resources corresponding to the number of printing media from the print resource balance (e.g., McCoog at ¶¶ [0026], [0033]–[0034] and [0038]–[0039]).
U.S. Patent No. 9,216,591 issued to Rozier et al. (hereinafter “Rozier”) for “a number of tools have been developed that help people to assess the impact of their behavior. These tools…. collect input, either automatically or from the user, and provide a measure of how much certain behaviors affect the environment…. Such tools are becoming widespread and their overall aim is in providing awareness and ultimately changing the user's behavior to reduce the impact on the environment” —Background of Rozier; “the user can substitute simplex for duplex printing, color for black and white printing, lower quality stock for higher quality stock, and other choices that will limit resource usage, and therefore environmental impact, caused by their behavior. In addition to the graphic, the visualization component 170 can provide suggestions to the user to help them achieve usage within or below the predetermined benchmarks. Thus, the system 100 is a closed-loop behavior modification system that allows a user to cognizant of their resource usage. Usage behavior can be modified wherein results of their modified behavior is presented” —Specification of Rozier; and “displays positive/negative points 714 to be gained in the motivational platform, associated with each recommendation, thereby maximizing the feeling of empowerment of the user to make an informed decision” —Specification of Rozier.
U.S. Patent No. 8,751,406 issued to Kanae Amemiya (hereinafter “Amemiya”) for “usage numbers are converted into points by predetermined parameters (parameters provided for copying, printing, scanning, sending and receiving by facsimile, respectively) and maintained at the maintenance management side” —Specification paragraph of Amemiya; “a discount of a maintenance management charge or free maintenance management, an article of consumption, such as paper sheets and toner, or a like (free service or charged service: in a case of a charged service, a discount is given), a free or charged maintenance such as a repair, a replacement, and a like (in a case of a charged maintenance, a discount is given), and a free or charged maintenance service or machine check service (in a case of a charged maintenance service or check service, a discount is given) are provided” —Specification paragraph 27 of Amemiya; “when the discount service is selected by the user at the user side 200, the point bank system 110 sends the billing system the percentage for deducting from the charge for the maintenance management service that the user selects. When the billing system receives the percentage, the billing system deducts a discount amount from the charge for the maintenance management service, which is charged to the user, based on the percentage” —Specification paragraph 191 of Amemiya.
U.S. Patent Application Publication No. 2023/0221905 of Koichi HAYASHI (hereinafter “Hayashi”) for Figure 1 of Hayashi being similar to Figure 1 of U.S. Patent Application Publication No. 2023/0316323 (“Takijiri”), which corresponds to this patent application.
U.S. Patent Application Publication No. 2015/0278724 of MALIK et al. (hereinafter “Malik”) for “printing devices and printing systems, and more particularly to printing devices and systems that use a… message presentation user interface to encourage users to consume less printing resources” —Malik at ¶ [0001]; “Businesses are looking for ways to encourage their users to print less, in a way that is motivating and encouraging” —Malik at ¶ [0002]; “provide user print awareness and use a variable color widget and message presentation to encourage users to consume less printing resources. Print awareness aims to teach the user how to print more responsibly” —Malik at ¶ [0017]; “Incentives are provided to reinforce savings behavior” —Malik at ¶ [0037]; and “By providing concrete examples of how changing their printing activities would result in a better score (and how much their score would change) the user is highly motivated to change their printing practices. When the users change their printing practices, the results are easily understandable (shown graphically as in FIGS. 1-4) and easily conceptualized by the user (e.g., by changing the amount of printing currency they have, by changing their ranking among their peers, etc.).” —Malik at ¶ [0047].
U.S. Patent Application Publication No. 2012/0173332 of HAYAMI et al. (hereinafter “Hayami”) for “In the next step (Step S130), the exemplary software program of the present invention running on the platform server will retrieve print shop profiles from the database to see what print shops are suitable for the refined print job request, which may depends on a particular print shop's availability, capacity, location, etc. For the print shops that can handle the print job requests, a job-level "green score" is calculated for each print shop. The job-level scores are specific to the print job request. For example, if the customer has specified a particular thickness of paper to be used, it may affect power usage of the print job (e.g., more heat needs to be generated by the printer to affix toner on thicker paper, which consumes more power). If a print shop has an energy efficient printer that can handle this type of paper required by the particular print job, than the print shop may earn a higher job-level "green score". Once a job-level green score is calculated for each print shop that can handle the print job request, it is combined with the shop-level green score of the print shop to yield a "total green score". Finally, all participating print shops that can handle the print job request are ranked based on their total green scores. In addition to this, ranking of the print shops based on their job-level green scores may be calculated” — Hayami at ¶ [0028]; “In the next step (Step S140), the participating print shops that can handle the print job request are recommended to the customer with their rankings of the total green scores and/or the job-level green scores. The platform server 10 may send this recommendation to the customer's computer 20 via the Internet 8, or the customer may log-on the platform server 10 via the Internet 8 from the customer's computer 20 to obtain the recommendation. The customer can then make a selection of the print shop by which the customer wants to have the print job handled. In addition to the recommendation, a suggestion may be provided to change or modify some of the print job specifications to reduce the prices and/or carbon foot prints of the print job. For the purpose of providing this suggestion, in Step S120, the customer may specify the print job specifications with their degrees of desires. That is to say, a particular specification with lower desire degree may be higher candidate when providing the suggestion to change or modify the print job specifications” — Hayami at ¶ [0029]; and “The above described exemplary method and process according to the present invention has many advantages. It provides a convenient way for a customer to select a more environmental friendly print shop to handle a print job based on objective and measurable criteria and factors. It also provides an effective way to promote and reward a more environmental friendly print shop with increase amount of visibility and business. It further encourage print shop to be more environmental friendly.” — Hayami at ¶ [0031].
U.S. Patent Application Publication No. 2011/0317196 of Yasuda (hereinafter “Yasuda”) for “non-standard function of duplex or collective mode will result in the saving of the number of sheets, the amount of toner or the amount of electric power, which can ultimately reduce the amount of carbon dioxide (CO2) emission” —Yasuda at ¶ [0007]; “provides a print/copy control system which is capable of promoting selection of non-standard sets of print/copy conditions of an image forming device” —Yasuda at ¶ [0009]; “an opportunity to choose the non-standard set of print/copy conditions with few CO2 emissions can be increased and CO2 reduction activities can be promoted” — Yasuda at ¶ [0098]; and “Because the … offset credit or point according to the effective value of … offset is given… to the customer, the incentive to CO2 reduction activities can be given to the customer.” —Yasuda at ¶ [0100].
U.S. Patent Application Publication No. 2010/0211513 of Hajime Yoshida (hereinafter “Yoshida”) for “accumulation processing of eco-points” —Yoshida at ¶¶ [0025]–[0026]; “expendable supplies (for example, power consumption, a toner, paper, etc.) which are made of or from materials for reducing effects on environment, the apparatus attribute corresponding to the amount of reducing effects on environment….”—Yoshida at ¶¶ [0129].
U.S. Patent Application Publication No. 2009/0073475 of Brent R. Jones (hereinafter “Jones”) for “A reward or loyalty system is a type of marketing method which can be used to encourage certain types of behavior…. Rewards can be provided based on a customer's purchase history” —Jones at ¶ [0001]; “a particular consumable … used to establish a discount or a reward for a consumable a type of consumable, and/or other products…. the discount earned by some criteria, such as ink usage, may be applicable only for a particular consumable or towards an ownership cost. For example, the discount may only be applied to the purchase of…a new or replaceable consumable or product,” —Jones at ¶ [0040]; and “determining a first value comprising …a ratio of color ink coverage to black ink coverage” —Claims 2 and 18 of Jones.
U.S. Patent Application Publication No. 2008/0243606 of Snyder et al. (hereinafter “Snyder”) for “system for … network printing devices includes monitoring … printing device via a communication network and receiving a usage profile from the … printing device. The usage profile includes data that reflects usage of a consumable by the … printing device over a period of time. The method also includes comparing the usage profile to a service history profile to create a service-dependent usage profile. If the service-dependent usage profile satisfies a reward criterion, the method includes providing a user of the … printing device with a reward” —Snyder at ¶ [0006]; “The reward may include among other things, one or more of the following: the ability to trade up; a promotional offer; a coupon; or displaying a priority service center number on the at least one printing device.” —Snyder at ¶ [0007]; “the reward criterion may include various threshold values. Different awards may correspond with different threshold values…. as the amount of usage…increases, the reward may become more substantial…. the reward may be determined as a combination of amount and type of usage and the time the usage is sustained” —Snyder at ¶ [0038]; and “The usage profile may be determined by an algorithm using usage information which may include… a measurement of usage of at least one printer device consumable (e.g. number of pages printed…, black toner consumed, color toner consumed, toner coverage per page printed, a scaled value of ink coverage multiplied by the print volume over a selected time interval, or other usage information)….” —Snyder at ¶ [0023].
U.S. Patent Application Publication No. 2004/0138945 of Adkins et al. (hereinafter “Adkins”) for “Imaging apparatus 12 can be… an ink jet printer and/or copier, or an electrophotographic printer and/or copier” —Adkins at ¶ [0018]; “an imaging substance, such as ink or toner, is identified in supply item 32” —Adkins at ¶ [0037]; “imaging reward may be offered based on the type of imaging the customer is doing…. maintain a history of media usage…. the customer uses a considerable amount of photo paper….” —Adkins at ¶ [0035]; “determined whether the customer qualifies to receive an imaging reward…. the customer may be deemed to qualify for the imaging reward for which the customer is eligible…. if the imaging reward threshold value is less than the rate of consumption of the supply item” —Adkins at ¶ [0040]; “rate of consumption may be determined based on…usage criteria. For example,… based on an amount of use of the supply item, e.g., imaging substance volume depleted…; …, based on a quantity of the supply item, e.g., the number, acquired during a specified amount of time” —Adkins at ¶ [0038].
U.S. Patent Application Publication No. 2002/0113991 of Borg et al. (hereinafter “Borg”) for “any type of printing device that utilizes replaceable components. Such printing devices include[]… laser printer, ink jet printers, electro-thermographic printers, dry medium printers, ribbon printers, facsimile machines that utilizes any of the previously mentioned printing methods, copy machines that utilize such printing methods, and the like. Replaceable components for such printing devices include… toner cartridges, ink cartridges, imager drums, fusers, and the like” —Borg at ¶ [0005]; and “an incentive program may credit the customer with a certain number of points…. Accruing a certain number of points may allow the customer to receive… a discount off of a future purchase from the manufacturer” —Borg at ¶ [0006].
THIS ACTION IS MADE FINAL. 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 extension fee 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 Mathew Syrowik whose telephone number is 313-446-4862. The examiner can normally be reached on Monday through Friday 8:30 AM to 4:00 PM (Eastern Time). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf, can be reached at telephone number 517-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mathew Syrowik/ Primary Examiner, Art Unit 3621