DETAILED ACTION
The present application (Application No. 18/326,608), filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office action is in reply to communications by Applicants responding to first office action on the merits, received 22 July, 2025.
Priority
Acknowledgment is made of applicant's claim for foreign priority from Japanese Patent Application No. 2022-089287 filed on May 31, 2022. It is noted, however, that applicant has not filed a certified copy of this Japanese Patent Application No. 2022-089287 application as required by 37 CFR 1.55.
Status of Claims
Claims 1-5, 7-9, 11-15, are amended. Claims 6, 10, are now canceled. Therefore, claims 1-5, 7-9, 11-15, are currently pending and addressed below
Compact prosecution
The pending office rejection dated 04/22/2025 provided the applicant with ways to overcome the 35 U.S.C. 102/103 rejections. However, it is noted, the applicants rejected these recommendations.
The English language of this Application is not clear and appears to be the result of some type of machine translation program. Words are used and linked together in expressions and sentences that lack a clear syntactic English meaning, forcing the Examiner to only guess the meaning of words and sentences. The claim language reflects the language deficiencies of the written specification.
Without the graphical teachings of Figures 5A-7B, the invention disclosed in the pseudo-English language of the written specification could not be properly understood. However, adding to insult, the terminology used in the drawings is different from the terminology used in the written description of the specification, so that it is quite difficult to even try to understand the terminology used in the written description in view of the drawings. For example, the claims and the written disclosure recite/disclose “collection operator” but the drawings disclose “recycle server”. The claims and the written disclosure recite/disclose “offer application” but these drawings use “register” and “registration” instead of mirroring the “offer application” terminology used in the written description.
The confusing English language of this application and lack of terminology correspondence between the figures, and the written language elsewhere, places a huge burden on examining this invention. Appropriate correction is required.
The absence of a set of method claims further contribute to the overall language lack of clarity in this application.
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 1-5, 7-9, 11-15, are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: In the instant case, claims 1-5, 7-9, 11-14, are directed to an apparatus, and claim 15, is directed to a system, therefore the claims are directed to statutory categories of invention.
Step 2A- Prong 1: Independent claim 1 is directed to an information management apparatus configured to execute a method comprising steps of: receiving consumable information related to a particular consumable; receiving a request from a terminal device to register the particular consumable; receiving an offer application (to a collection operator of the consumables) from a terminal device; registering the particular consumable; generating first privilege information regarding the printing by the printer; obtaining collection information; and generating second privilege information
Claim 15, recites substantially similar subject matter and the same subsequent analysis should be applied thereto.
The independent claims are directed to a method for providing incentives to users of a printer system; and in particular, to a method for generating and providing a first and a second compounded privileges in exchange for printing using the printer and for having printer-expendable/consumable components collected when they get depleted. Accordingly, the claimed steps represent a method of organizing commercial interactions comprising advertising, marketing and sales activities, which falls within the “Certain Methods of Organizing Human Activity” abstract idea grouping, wherein all the claim steps can be seen as being part of the abstract idea of providing incentives in the form of privileges.
These above claimed steps are steps of collecting/tracking data (transmitting, receiving, storing, gathering), analyzing data, making determinations/correlations/comparisons, and displaying/presenting data. All these steps, but for the use of generic computer components that execute them, are generic functions performed by general-purpose computers, which relate to concepts that can be performed in the human mind, including observations, evaluations, judgements or opinions. This concept falls under the “Mental Processes” abstract idea grouping.
Step 2A- Prong 2: Additional elements in claim 1 include: an information management apparatus, comprising: a communication interface configured to communicate, via a network, with a printer configured to execute printing by using consumables; and a controller.
Further additional elements recited in claim 1 include a terminal device, however this terminal device is not part of the information management apparatus.
Additional elements in claim 15 include: an offer application receiving section; a first generating section; a collection information obtaining section; and a second generating section.
These additional elements are recited at a high level of generality and the steps that they execute represent generic functions which can be performed by a general-purpose computer without any novel programming or improvement in the operation of the computer itself. These additional elements are merely invoked as tools to perform an abstract idea (mere instructions to apply the exception) as discussed in MPEP 2106.05(f). The mere nominal recitation of generic computer components does not take the claim limitations out of the mental processes grouping (see 2106.04(a)(2)(III)(C)). The networked printer features of the invention only represent a particular technological environment, merely a particular technical field of use to which the judicial exception is linked to, and this technological environment is used to merely transmit, receive, store, gather, analyze, make determinations/correlations with, and display data.
In the claimed invention, conventional, generic computers are programmed with one or more matching algorithms, however there is no indication that the technology of these computers, is improved in any way with this algorithm. The computers are still used to do what they always do, execute programming instructions and provide an output. A mere programmed computer to perform generic computer functions does not automatically overcome an eligibility.
As now amended, the claims further recite a request to register the particular consumable prior to the first privilege.
More specifically, the additional elements fail to include (1) improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a)), (2) applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see vanda memo), (3) applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)), (4) effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)), or (5) 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, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).
Accordingly, the additional elements when the claim elements are viewed individually and as a whole do not integrate the abstract idea into a practical application.
Step 2B: Based on the reasoning provided under Step 2A- Prong 2, the claims under Step 2B do not recite “significantly more” than the abstract idea. At this point, either under the “Certain Methods of Organizing Human Activity” grouping scenario where all the claim steps can be seen as being part of the abstract ideas, or if viewed under the “Mental Processes” grouping scenario, the analysis is terminated because the same analysis with respect to Step 2A Prong Two applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
The dependent claims have been considered.
Dependent claim 2, recites steps of activation the privileges, thereby adding limits to the steps of obtaining information (transmitting, receiving, storing, and/or gathering of information), and to the steps of: analyzing data, making determinations/correlations/comparisons; yet merely narrowing the abstract idea of “generating and providing first and second privileges”.
Dependent claim 3, further recites a matching step, thereby adding limits to the steps of obtaining information (transmitting, receiving, storing, and/or gathering of information), and to the steps of: analyzing data, making determinations/correlations/comparisons; yet merely narrowing the abstract idea of “generating and providing first and second privileges”.
Dependent claim 4, recites the additional element of “a memory of the consumables”, thus, mere instructions to apply the exception.
Dependent claims 5, 6, merely add limits to the transmitting, receiving, storing, and/or gathering of information.
Dependent claims 7, 8, 13, recite steps and further compounding steps of sending a notification to the terminal device, which merely add limits to the steps transmitting, receiving, storing, and/or gathering of information, thereby merely narrowing the abstract idea.
Dependent claims 9, 10, 11, 12, recite further compounding matching and checking steps, thereby adding limits to the steps of obtaining information (checking information) (transmitting, receiving, storing, and/or gathering of information), and to the steps of: analyzing data, making determinations/correlations/comparisons; yet merely narrowing the abstract idea of “generating and providing first and second privileges”.
Dependent claim 14, further recites a step of obtaining status information, which merely add limits to the steps transmitting, receiving, storing, and/or gathering of information, thereby merely narrowing the abstract idea.
When considered as a whole, the same analysis with respect to Step 2A Prong Two and step 2B, apply to these additional elements. They cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 14-15, are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US 2003/0097310) (hereinafter “Ono7310”) in view of Athale et al. (US 20130262658) (hereinafter “Athale2658”).
Regarding claims 1, 15, Ono7310 discloses:
Incentive system and method, directed to incentivizing users of printer-related expendables (i.e., cartridge, toner, etc) to have these expendables collected after they have been depleted/expended, for the purpose of being properly disposed of/recycled by a collection entity.
A requester accesses a collection center system (4) and requests collection of expendables (S302). The collection center system (4) confirms actually collected expendables (S312) and gives a point to the user as the requester. For lump-sum collection using a predetermined container, a bonus point is also given. The point is also given for purchase. For the next purchase, the requester can receive an incentive in accordance with the point and enjoy a special service such as a discount. (see at least Ono7310, abstract).
(an information management apparatus). (see at least Ono7310, fig. 1, “4”).
A collection system for collecting expendables used in an office equipment, including: cartridges used in devices such as printers, copying machines, or facsimile apparatuses of electrophotographic scheme will be exemplified as expendables. However, the present invention can also be applied to any other expendables. For example, toner containers, photosensitive drums and other service parts, and paper sheets or OHP sheets for copying machines, or ink containers, cartridges, and printheads for inkjet printers can be exemplified as expendables. (see at least Ono7310, ¶96)
(a communication interface configured to communicate, via a network, with a printer configured to execute printing by using consumables). Printer (see at least Ono7310, fig. 1, “19”).
(a controller configured to execute). AP collection server (see at least Ono7310, fig. 1, “15”).
(an offer application receiving section; a first generating section; a collection information obtaining section; a second generating section). System comprising computing devices, processors, servers, memory, computer readable media, interfaces, modules and software instructions stored in memory that enable the system to execute the steps of the method over network communications and to enable interaction between participants and the system (see at least Ono7310, fig. 1, 3, ¶98, 114-115).
(receive consumable information related to a particular consumable indicating an amount of remaining consumable for the particular consumable being not more than a threshold value). Remaining toner amount (see at least Ono7310, fig. 44, ¶314, 317, 320).
Compact prosecution: In the instant specification “registration” refers to “an offer” to have the expended ink cartridge 50 collected (see fig. 4a, ¶52, “an offer of the ink cartridge 50 to the collection operator”). In other words, this “registration” limitation merely refers amounts to a request or an instruction at the time that the ink cartridge gets expended, to have this expended ink cartridge collected. It is not about registering the cartridge when the cartridge is installed in the printer or early on in the process before it is consumed and needs to be disposed of. Accordingly, a teaching of collecting the expended cartridge meets this “register” limitation.
(receive a request from a terminal device to register the particular consumable as a consumable to be recycled by a recycling service, the terminal device configured to communicate with the communication interface).
(register the particular consumable). A request to collect (see at least Ono7310, fig. 9, ¶169).
(obtain collection information from the recycling service of the particular consumable);
(generate second privilege information regarding the printing by the printer in response to the collection information being obtained for the particular consumable).
Ono7310 teaches both, a request to collect (see at least Ono7310, fig. 3, “S306”), and also teaches confirmation that the collected expendable has indeed been received (see at least Ono7310, fig. 3, “S312”).
After the collected expendable has indeed been received (see at least Ono7310, fig. 27, ¶214, “waste expendables have arrived at the collection center, the collection code recorded on each collection slip is read (S81”) (obtained) (obtaining process), incentives are awarded (generating second privilege information) (see at least Ono7310, fig. 27, “S89”, “S90”, ¶221).
Reward points (incentives) are awarded in response to collection (see at least Ono7310, fig. 27, 3, 9, ¶169).
In particular, Ono7310 teaches: Tiered reward system comprising at least two reward modes: sell or collect (see at least Ono7310, ¶152, “sell or collect”), such that a user can earn reward points when a used cartridge is collected for disposal/recycling, and can also earn reward points when a cartridge is purchased.
At least two possible modes (two types of privilege information) for earning incentives/points: (i) every time a user requests to purchase articles and/or (ii) every time a user requests collection of articles (see at least Ono7310, fig. 3, 7-9, ¶20, 151-154, 157). Two possible modes: sell or collect (see at least Ono7310, ¶152, “sell or collect”).
Ono7310, does not teach: (register the particular consumable and generate, after receiving the consumable information, first privilege information regarding the printing by the printer in response to the request received in a case a predetermined condition is satisfied).
Athale2658 discloses: Tiered reward system comprising different possible types of rewardable events for which a user can earn privileges (see at least Athale2658, fig. 4, “benefits 406”, ¶54), including "Earn 1500 bonus reward points on immediate enrollment", representative of a registration request.
Per above, Ono7310 and Athale2658, they both teach tiered rewards, and first and second rewardable events and corresponding first and second privileges. When the rewardable event comprising a registration request of Athale2658 is used to modify Ono7310, then this expanded system of Ono7310 in view of Athale2658 would now teach a first privilege for registering a request and a second privilege for confirming collection, as claimed. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify Ono7310 with Athale2658, since this modification would be a simple substitution of one known type of rewardable events element (i.e., first privilege, or reward points on immediate enrollment", representative of a registration request taught by Athale2658) for another known element (i.e., purchasing a cartridge taught by Ono7310), to obtain the predictable result of further enhancing the incentivizing methodology of Ono7310 by broadening the choices of rewardable events, and the substitution produces no new and unexpected result.
Ono7310 (and/or the Ono7310/Athale2658 combination) does not teach: (in response to the request received in a case a predetermined condition is satisfied).
However, Whale6171 discloses:
Systems and methods for providing purchase incentives to printing device replaceable component customers, the purchase incentives being based on a printing device usage rate for the customer. A replaceable component vendor maintains a page count over a time period for each replaceable component customer. A printing device usage rate is calculated from these values. When a new replaceable component is ordered, a vendor system calculates the printing device usage for the customer and refers to a pricing table to determine the price. When a replaceable component with component memory is returned to the vendor, a page count is read from the component memory and is added to the page count for the customer for use in determining a price discount. (see at least Whale6171, abstract).
Low toner detector 120 that detects when the toner supply 112 of the toner cartridge 110 has reached a depletion level indicating that a replacement toner cartridge (not shown) should be ordered to replace the toner cartridge 110 (in response to the request received in a case a predetermined condition is satisfied) (see at least Whale6171, fig. 1, ¶36).
The laser printer 100 also includes an orderer 124 that is configured to receive a notice from the detector 120 that the toner supply 112 in the toner cartridge 110 is low, wherein upon receipt of the notice, the orderer 124 automatically contacts the vendor system 104 either directly using the modem 106 or by way of the Internet (not shown) using a browser 128 stored in the memory 118 (see at least Whale6171, fig. 1, ¶37).
Per above, Ono7310 (and/or the Ono7310/Athale2658 combination) and Whale6171, they both teach rewards for collecting/recycling expended printer consumables.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the Ono7310/Athale2658 combination with Whale6171, since this low toner alerting feature would prevent disruption of the printing activity of the printer thereby ensuring smooth seamless printing operation.
Regarding claim 14, Ono7310 in view of Athale2658 discloses: All the limitations of claim 1 as per the above rejection statement.
Ono7310 further discloses: (wherein in the collection information obtaining process, the controller is configured to further obtain a status information of the consumables indicating a state of the consumables from the collection operator),
Status information, remaining toner amount (see at least Ono7310, fig. 44, ¶320). Type ID, serial number (see at least Ono7310, fig. 44, ¶322)
Information available and obtained at the collection system (see at least Ono7310, fig. 3, ¶98-112).
Claim 2, is rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US 2003/0097310) (hereinafter “Ono7310”) in view of Athale et al. (US 2013/0262658) (hereinafter “Athale2658”), and further in view of Carrion et al. (US 2012/0143666) (hereinafter “Carrion3666”).
Regarding claims 2, Ono7310 in view of Athale2658 discloses: All the limitations of claim 1 as per the above rejection statement.
The Ono7310/Athale2658 combination formulated in the rejection of claim 1 does not disclose: (wherein the controller is configured to further execute an activation process for activating the first privilege information and the second privilege information in a manner usable for a user, at a predetermined timing after generating the second privilege information in the second generating process); but Carrion3666 teaches this limitation.
Carrion3666 discloses: Method for offering incentives via an electronic network, including receiving, over the electronic network, confirmation from a user indicating the user's acceptance of an incentive transmitted to the user over the electronic network, the incentive including a discount associated with one or more products or services offered by a retailer (see at least Carrion3666, ¶6).
The method further comprises activation and redemption of online coupons
method for activation and redemption of online coupons, including: receiving an indication that an online coupon transmitted to a user over a network has been viewed by the user; activating, with a processor, the online coupon in response to receiving an activation request over the network, the online coupon being activated in association with an electronic address of the user; and, receiving, over the network, a request for purchase of one or more items selected by the user, and, in response to the request, providing an option, but not a requirement, to the user to redeem the activated online coupon towards the purchase of one or more eligible items in the one or more items selected for purchase by the user. (see at least Carrion3666, ¶7).
The Ono7310/Athale2658 combination formulated in the rejection of claim 1 and Carrion3666, they both teach offering/reeving/generating incentives via an electronic network associated with one or more products or services offered by a retailer; and since in this Ono7310/Athale2658 combination a first privilege for printing and a second privilege for requesting a collection of printer-related expendables are separate privileges triggered by separate rewardable events, then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the privilege processes and the one or both above privileges in the Ono7310/Athale2658 combination, to further include steps of activation; since a step of activation provides information back to the retailer that the consumer has opened the email coupon (see Carrion3666, ¶30), and such collection and analysis may be advantageous in determining the effectiveness of the coupon program, to understand and determine consumer trends, advertising effectiveness, etc (see Carrion3666, ¶31).
Examiner’s note regarding 35 USC § 102/103
Claim 3, as currently recited, is not rejected under 35 U.S.C. 102/103. The examiner’s search strategy could not identify prior art that reasonably teaches the limitations of this claim, to reasonably show lack of novelty. Claims 4-5, 7-9, 13, depend from claim 3, and accordingly are not rejected under 35 U.S.C. 102/103.
Claims 11, 12, as currently recited, are not rejected under 35 U.S.C. 102/103. The examiner’s search strategy could not identify prior art that reasonably teaches the limitations of this claim, to reasonably show lack of novelty.
Response to Arguments
Applicant's arguments filed 07/22/2025 have been fully considered.
Typographic error acknowledgement:
The examiner acknowledges typographic errors in the 35 U.S.C. 103 rejection headers of all the dependent claims of pending office rejection sent out xx/xx/xxx. The examiner inadvertently posted a draft office action.
35 U.S.C. 101
Applicant's arguments regarding 35 U.S.C. 101 are not persuasive. The rejection is maintained.
Applicant argues:
¶0100 describes "[i]n S35, the ink empty information obtained in S5 and stored in the cartridge empty information storage area 126 is read, and checked by the first check section 615 to see if the predetermined conditions are met. The predetermined condition is set to be that the amount of ink remaining in the ink cartridge 50 is close to empty, not more than a predetermined value, 8 or the like. The reason is that if there is still ink remaining in the ink cartridge 50, it should be used up as much as possible, and it is undesirable to increase the number of collections and recycles even though the ink cartridge 50 can still be used, in order to reduce the environmental burden". Application at ¶0100.
In response:
The independent claims are directed to a method for providing incentives to users of a printer system; and in particular, to a method for generating and providing a first and a second compounded privileges in exchange for printing using the printer and for having printer-expendable/consumable components collected when they get depleted. Accordingly, the claimed steps represent a method of organizing commercial interactions comprising advertising, marketing and sales activities, which falls within the “Certain Methods of Organizing Human Activity” abstract idea grouping, wherein all the claim steps can be seen as being part of the abstract idea of providing incentives in the form of privileges.
The claimed ink empty features and information consists of making a determination that the ink level is below a threshold, executing ink level rule instructions for transmitting this information; and awarding a reward in response to receiving this information. These steps merely narrow the abstract idea of providing incentives to users of a printer system. These above claimed steps are steps of collecting/tracking data (transmitting, receiving, storing, gathering), analyzing data, making determinations/correlations/comparisons, and displaying/presenting data. All these steps, but for the use of generic computer components (a sensor, a rule instruction and a transmitting device that execute them), are generic functions performed by general-purpose computers, which relate to concepts that can be performed in the human mind, including observations, evaluations, judgements or opinions. This concept falls under the “Mental Processes” abstract idea grouping.
No matter how much of an advance in the field of providing incentives to users of a printer system (which is an abstract idea) upon receiving empty ink information, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting.
The claimed invention addresses a marketing problem of enticing users to participate in the recycling/printing invention. This triggering a collection request when ink empty information is received, is a business determination unrelated to technology.
35 U.S.C. 103
New grounds of rejection are presented. Applicant's arguments are considered moot in view of the new grounds of rejection above.
The pending office rejection dated 04/22/2025 provided the applicant with ways to overcome the 35 U.S.C. 102/103 rejections. However, the applicants rejected these recommendations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US20020022990 (Kurata); WO2013151535 (Prokop); US20120166264 (Shum); US20210237494 (Mikami).
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mario C. Iosif whose telephone number is (571)270-7785. The examiner can normally be reached on M-F 8:30-5:30 teleworking teleworking.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mario C. Iosif/ Primary Examiner, Art Unit 3621
Prosecution Insights