DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed on October 22, 2025 cancelled claim 2. Claims 1, 4, and 17-18 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1 and 3-18.
Claim Interpretation
The following claim terms have been interpreted based on the applicant’s specification:
Acquirer, first calculator, first determiner, second calculator, second determiner, determiner, output section, and reference setting section: software executed by a computer (based on paragraph 29 of the applicant’s specification)
Claim Objections
Claims 1 and 3-18 are objected to because of the following informalities: Independent claims 1, 17 and 18 recite “the service provided by the product user” and “the web page identified by the URL”. However, the claims have never previously recited “a service provided by the product user” or “a web page identified by the URL”. As such, “the service provided by the product user” and “the web page identified by the URL” lack proper antecedent basis. The examiner is going to interpret the phrases as if they recited “a service provided by the product user” and “a web page identified by the URL”.
Dependent claims 3-16 inherit the deficiencies of the claims from which they depend and, as such, are objected to by virtue of dependency.
Appropriate correction is required.
Claims 1 and 3-18 are objected to because of the following informalities: Independent claims 1, 17 and 18 recite “wherein a URL is printed on the product”; “printing a URL on the product”; and “printing a URL on the product”, respectively. When an abbreviation is first introduced in a claim, the abbreviation must be defined. Based on paragraph 23 of the applicant’s specification, the term URL is an abbreviation for “uniform resource locator”. Since, claims 1, 17, and 18 are independent claims, each of the respective phrases identified above are the first time the abbreviation URL has been introduced in the claim. As such, the phrases should recite “wherein a uniform resource locator (URL) is printed on the product”; “printing a uniform resource locator (URL) on the product”; and “printing a uniform resource locator (URL) on the product”, respectively.
Dependent claims 3-16 inherit the deficiencies of the claims from which they depend and, as such, are objected to by virtue of dependency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The amendment filed on October 22, 2025 has overcome the 35 U.S.C. 112(b) rejection of claim 4 raised in the Office Action dated July 22, 2025. Thus, the rejection is hereby withdrawn.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, and 3-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 has been amended to recite “a first calculator for determining a first value of a product to a product user that request a first provider to create the product; a first determiner that determines, based on the first information and the first value, first compensation information relating to compensation to be paid by the product user to the first provider that creates the product by the image forming apparatus; a second calculator for determining a second value to the first provider of one or more consumables to be used by the first provider to create the product; a second determiner that determines, based on the first information and the second value, second compensation information relating to compensation to be paid by the first provider to the second provider that provides the one or more consumables to be used in the image forming apparatus”. Independent claims 17 and 18 have been amended to recite limitations that are commensurate in scope with the identified limitation of claim 1 above.
First, the examiner is unable to find support for “a calculator” in the applicant’s disclosure. Additionally, there is no support in the applicant’s disclosure for determining a first value of a product user that requests a first provider to create a product. The closest support is found in paragraphs 18-22 and 36, as well as, figure 3, where a product user contracts with a first provider to print a product, wherein the contract includes compensation information which may be a flat rate according to the number of printed sheets of one contracted lot or a click price associated an advertising effect. Then, an administrator set numerical values of a setting table in accordance with the contracted compensation information. However, these paragraphs support the claimed processor and memory merely receiving a first value of a product to a product user that request a first provider to create the product. The processor and memory made no determination with regard to the administrator set numerical values, called an index value, in the setting table. The first time the applicant’s disclosure supports the processor determining and/or calculating a value payable by the product user to the information processing system is found in paragraphs 23-25. However, in order to perform this calculation, a contracted lot of sheets (i.e., contracted lot of products) must have already been printed by the information processing system. Furthermore, each product in the lot of contracted products must have been printed with a URL of a web page of the product user, the web page must count the number of times that it was accessed, and the web page must provide this count to the information processing system as a index value (first information) relating to the advertising effect. According to paragraphs 23-25, only once these previous steps have occurred can the information processing system determine or calculate the compensation amount that is payable to the first provider for having printed the contracted lot of products by multiplying the count by the click price. However, paragraphs 23-25 cannot be said to support “determining a first value of a product to a product user that request a first provider to create the product” because the first value that is determined or calculated in paragraphs 23-25 is a value determined after each product in the contracted lot of products have been printed with the URL and the count of accesses has been received. As such, it is clear that the applicant’s disclosure does not support Thus, the applicant’s disclosure neither supports “a first calculator” nor “determining a first value of a product to a product user that request a first provider to create the product”. Thus, claims 1, 17, and 18 have been amended to include subject matter which fails to comply with the written description requirement.
Second, the examiner can find no support in the applicant’s disclosure of “a first determiner that determines, based on the first information and the first value, first compensation information relating to compensation to be paid by the product user to the first provider that creates the product by the image forming apparatus”. According to the applicant’s disclosure, in at least paragraphs 16, 19, 22, 24, and 43-49 the contracted amounts are based on an order lot which comprises for example 100,000 printed sheets (i.e., products). Thus, the applicant’s disclosure does not support determining compensation information for an individual printed product (e.g., individual printed sheet) based on the first information and the first value. The applicant’s disclosure does support in paragraphs 23-35, as indicated above, determining first compensation information based on the received click rate and the count of web page accesses generated by the contracted lot of printed sheets (i.e., contracted lot of printed products). However, this disclosure can in no way be said to support “a first determiner that determines, based on the first information and the first value, first compensation information relating to compensation to be paid by the product user to the first provider that creates the product by the image forming apparatus”. The next closest support for the limitation is found in paragraphs 37-40, as well as, figure 5, where after a click price is contracted for a lot of printed sheets and set in the system by the administrator, the contracted lot of products are printed with a URL to a web page of the product user; the web page counts the number of accesses that occur and provides this count to the information processing system as an index value (i.e., first information) relating to the advertising effect of the contracted lot of printed sheets, the click price can be increased or decreased based on the actual count of accesses significantly exceeds or falls short of the contracted number of accesses associated with the click price. However, any such potential adjustments to the click price based on accesses appears to be required to be part of the original contracted amount. Nonetheless, since the contracted lot of products must have been previously printed with the URL and accesses counted to make such a determination, paragraphs 37-40 cannot be said to support “a first determiner that determines, based on the first information and the first value, first compensation information relating to compensation to be paid by the product user to the first provider that creates the product by the image forming apparatus”. Thus, claims 1, 17, and 18 have been amended to include subject matter which fails to comply with the written description requirement.
Third, the examiner can find no support in the applicant’s disclosure for “a second calculator for determining a second value to the first provider of one or more consumables to be used by the first provider to create the product;”. The closest support is found in paragraphs 18-22 and 36, where a first provider contracts with a consumable provider to pay the consumable provider based on a click price based on a number of access that a contracted lot of printed sheets (i.e., contracted lot of printed products) generates on a web page of a product user. Thus, as indicated above with regard to the “first calculator”, the applicant’s specification neither supports “a second calculator” nor the information providing system determining “a second value to the first provider of one or more consumables to be used by the first provider to create the product”. Instead, the applicant’s disclosure support receiving, as input from an administrator, the second value. Thus, claims 1, 17, and 18 have been amended to include subject matter which fails to comply with the written description requirement.
Finally, the examiner has been unable to find support in the applicant’s specification for a second determiner that determines, “based on the first information and the second value, second compensation information relating to compensation to be paid by the first provider to the second provider that provides the one or more consumables to be used in the image forming apparatus”. As indicated above with regards to the first determiner, according for the information processing system to make such a determination the contracted lot of printed sheets (i.e., contracted lot of printed products) must have already been printed and each printed product of the contracted lot of printed products must have the URL, the web page must have counted the number of accesses that occurred, and the web page must have provided this count to the information processing system. Since, the applicant’s specification requires that in order for such a determination to be made, the products must already have been printed and the consumables must have already been consumed, it cannot be said to support making such a determination based on “the one or more consumables to be used in the image forming apparatus”. Thus, claims 1, 17, and 18 have been amended to include subject matter which fails to comply with the written description requirement.
Dependent claims 3-16 fail to correct the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency.
For the purpose of prosecuting the claims the examiner is going to interpret the claims 1 and 17-18 as if they recited: an information processing system, a compensation determination method, and a non-transitory computer readable medium comprising:
receiving, by a processor and via input from an administrator, a first contracted click price to be paid by a product user to a first provider for printing, using an image forming device, a contracted lot of products;
receiving, by the processor and via input from the administrator, a second contracted click price to be paid to a second provider by the first provider for one or more consumables used by the image forming device when printing the contracted lot of products;
storing, in a memory, the first contracted click price and the second contracted click price;
transmitting, by the processor, a print request to the image forming apparatus of the first provider, wherein the image forming apparatus prints the contracted lot of products by printing a uniform resource locator (URL) of a web page on each product of the contracted lot of products, or printing a two-dimensional code on each of product of the contracted lot of products, wherein the two-dimensional code encodes the URL of the web page;
receiving, by the processor and from a web server that provides the web page associated with the URL, advertising effect information that includes a count of accesses to the web page identified by the URL, wherein the web server is associated with the product user;
determining, by the processor and based on multiplying the first contracted click price by the count of accesses to the webpage, a first compensation information relating to compensation payable by the product user to the first provider that created the contracted lot of products using the image forming apparatus;
determining, by the processor and based on multiplying the second contracted click price by the count of accesses to the webpage, a second compensation information relating to compensation payable by the first provider to the second provider that provided the one or more consumables used by the image forming apparatus when printing the contracted lot of products.
Claims 17-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 18 is a claim to a non-transitory computer readable recording medium storing a control program being executing by a processor to perform the process of causing a computer to execute a process comprising the steps of the claim. Thus, every step of the claim must be able to be executed by the computer. However, claim 18 has been amended to recite “printing a URL on the product, or printing a two-dimensional code obtained by encoding the URL on the product; and calculating the first information relating to the advertising effect by use of the service provided by the product user through the web page identified by the URL”. Independent claim 17, as currently amended and interpreted in the 35 USC 112(b) rejection below recites a compensation determination method wherein every step of the method is being performed by a processor.
First, the examiner has been unable to find support, in the applicant’s disclosure, for a single computer executing code that performs the claimed acquiring and determining steps of the claim, as well as, performs the step of “printing a URL on the product, or printing a two-dimensional code obtained by encoding the URL on the product”. Based on the applicant’s specification in at least paragraphs 28-30 and 54-64, the information processing system is a computer that performs all of the acquiring and determining steps. However, there is no disclosure in these paragraphs that the computer itself is able to print anything on a product, much less, printing a URL or two-dimensional code on a product. Based on the applicant’s disclosure in at least paragraphs 16-20 and 34, the image forming apparatus that actually prints the URL or two-dimensional code on a product is an analog printing machine or a digital printing machine. While it is possible for an analog printing machine or a digital printing machine to be a computer, there is no disclosure in the applicant’s specification of the image forming apparatus performing any of the acquiring or determining steps. Instead, the image forming apparatus only performs the step of “printing a URL on the product, or printing a two-dimensional code on the product, wherein the two-dimensional code encodes the URL”. As such, there is no support in the applicant’s specification for a single computer executing a single control program stored on a single non-transitory computer-readable recording medium that performs the claimed steps of acquiring…; determining…; determining…; determining…; determining…; and printing…. Instead, the applicant’s disclosure supports the information processing system performs the acquiring steps and the image forming device performs the printing step. Thus, it is clear that claims 17-18, as currently amended, fail to comply with the written description requirement.
Second, the examiner has been unable to find support, in the applicant’s disclosure, for a single computer executing code that performs the claimed acquiring and determining steps of the claim, as well as, performs the step of “calculating the first information relating to the advertising effect by use of the service provided by the product user through the web page identified by the URL”. Based on the applicant’s specification in at least paragraphs 28-30 and 54-64, the information processing system is a computer that performs all of the acquiring and determining steps. However, there is no disclosure in these paragraphs that this computer is able to calculate the first information relating to the advertising effect by use of the service provided by the product user through the web page identified by the URL. Based on the applicant’s disclosure in at least paragraph 25, the web server associated with the product user performs the step of “calculating the first information relating to the advertising effect by use of the service provided by the product user through the web page identified by the URL” by counts the number times the URL is accesses, and providing first information comprising this count to the information processing system. No where in the applicant’s disclosure is there support for the information processing system computer calculating the first information. Instead, the applicant’s disclosure merely supports the information processing system computer receiving, from the web server, the first information comprising the count of accesses to the web page associated with the URL. Thus, it is clear that claims 17-18, as currently amended, fail to comply with the written description requirement.
The examiner cannot interpret the limitation to recite “A non-transitory computer-readable recording medium a control program executable by a processor of an information processing system computer and executable by a processor of an image forming device to execute a process, the process comprising: …” because there is no support in the applicant’s disclosure for a single non-transitory computer-readable medium storing a control program that is executable by two different computers. Additionally, there is no support in the applicant’s specification for the image forming apparatus having a processor that executes a control program.
As such, for the purpose of prosecuting the claims the examiner is going to interpret the limitations as if they recited: “transmitting, by the processor, a print request to the image forming apparatus of a first provider, wherein the image forming apparatus prints the contracted lot of products by printing a URL on each of product of the contracted lot of products, or by printing a two-dimensional code on each of product of the contracted lot of products, wherein the two-dimensional code encodes the URL” and “receiving, by the processor and from a web server that provides the web page associated with the URL, advertising effect information that includes a count of accesses to the web page identified by the URL, wherein the web server is associated with the product user;”.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 recites “an acquirer that acquires first information relating to an advertising effect of a product created by an image forming apparatus;” and “a first calculator for determining a first value of a product to a product user that requests a first provider to create the product; a first determiner that determines, based on the first information and the first value, first compensation information relating to compensation to be paid by the product user to the first provider that creates the product by the image forming apparatus; a second calculator for determining a second value to the first provider of one or more consumables to be used by the first provider to create the product; a second determiner that determines, based on the first information and the second value, second compensation information relating to compensation to be paid by the first provider to the second provider that provides the one or more consumables to be used in the image forming apparatus; and wherein a URL is printed on the product, or a two-dimensional code obtained by encoding the URL is printed on the product, and the first information relating to the advertising effect is calculated by use of the service provided by the product user through the web page identified by the URL.”. Independent claims 17 and 18 recite limitations commensurate in scope with the above limitations identified with regards to claim 1.
First, the second claimed “a product” does not have antecedent basis to the first claimed “a product”. As such, one of ordinary skill in the art would not be able to determine whether the scope of the claim is intended to be two different products, one product in which an advertising effect is acquired and another product that a product user requests to be created, or whether the applicant intends the scope of the claim to include a single product wherein the invention acquires information related to an advertising effect of the product and then determines a first value of the product to a product user that requests creation of the product. As such, claims 1, 17 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Second, would be impossible for one of ordinary skill in the art to determine whether the first claimed “the product” is intended to have antecedent basis to the first claimed “a product” or the second claimed “a product”. As such, claims 1, 17 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Third, it is impossible for one of ordinary skill in the art to determine whether the second claimed “the product” is intended to have antecedent basis to the first claimed “a product” or the second claimed “a product”. Since, the limitation includes the phrase “to be paid by the product user to the first provider that creates the product”, one might assume that it is intended to have antecedent basis to the second claimed “a product” because it appears to be a product that has yet to be created by the first provider. However, the claim has given no indication that the first provider creates product using “the image forming apparatus”. Since the only product claimed that is required by be created by “the image forming apparatus”, one of ordinary skill in the art may believe that the claims “the product” is intended to have antecedent basis to the first claimed “a product”. As such, claims 1, 17 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Forth, given that as currently claimed there are two different products, one of ordinary skill in the art would not know how the applicant’s invention determines the claimed first compensation. The two products do not appear to be related in any fashion. Thus, how does the applicant’s invention use first information of an advertising effect of a first product and first value information of a different product to a product user to determine first compensation information relating to compensation to be paid by the product user? Without some type of information regarding some type of association between the first product and the different product, the first information relating to an advertising effect of a first product would not be expected to be able to be used when determining a compensation to be paid by the product user for creating a second product. As such, claims 1, 17 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Fifth, “the product” is used at least four additional times in the claims. It would be impossible for one of ordinary skill in the art to determine whether the claimed “the product” is intended to have antecedent basis to the first claimed “a product” or the second claimed “a product”. As such, claims 1, 17 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Sixth, the limitation “wherein a URL is printed on the product, or a two-dimensional code obtained by encoding the URL is printed on the product, and the first information relating to the advertising effect is calculated by use of the service provided by the product user through the web page identified by the URL” makes the antecedent basis issue even more confusing. The phrase “wherein a URL is printed on the product, or a two-dimensional code obtained by encoding the URL is printed on the product” could be interpreted, by one of ordinary skill in the art as a URL that was printed on the first claimed “a product”, or alternatively interpreted as a URL that is being printed or will be printed on the second claimed “a product” that the product user wants to have created. However, the phrase “and the first information relating to the advertising effect is calculated by use of the service provided by the product user through the web page identified by the URL” renders either of those interpretations as incorrect. The claimed “the first information” related to an advertising effect of the first claimed “a product”. However, the first claimed “a product” is not associated in any way with the claimed “a product user”. Only the second claims “a product” was associated in any way with the “a product user”. Thus, the limitation cannot be interpreted as having antecedent basis to the first claimed “a product”. Likewise, “the first information” is never obtained for the second claimed “a product”. Thus, it would not appear to be possible for “the first information” relating to the advertising effect is calculated by use of the service provided by “the product user” through the web page identified by the URL. As such, claims 1, 17 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Finally, taking the limitations in order, the claim requires “an acquirer that acquires first information relating to an advertising effect of a product created by an image forming apparatus” to occur before, the determining “a first value”; determining “first compensation information”; determining “a second value”; and determining “second compensation”. However, it does not appear that the claimed “first information relating to the advertising effect” could be acquired before performing these steps because the “URL” or “two-dimensional code obtained by encoding the URL” that is printed on the product” that is used to acquire the first information relating to the advertising effect is from a service provided by the product user that is requesting the creation of the second claimed “a product” since the first claimed “a product” does not appear to be associated in any way with “the product user” or any service that “the product user” provides. If one instead interprets there to be merely one claimed “a product”, and all other references in the claim are to recite “the product”, then the claim requires obtaining “first information relating to an advertising effect of a product created by an image forming apparatus” before “the product” is created and/or before a first value, first compensation, second value, and second compensation are determined. In effect the “first information” obtained from people visiting the URL associated with the product must be acquired before the product is created upon which URL is printed. As such, claims 1, 17 and 18 are indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Dependent claims 3-16 inherit the deficiencies of the claims from which they depend and, as such, are rejected by virtue of dependency. Additionally, dependent claims 4, 7-8, 12-14 and 16 include recitations of “the product” which one or ordinary skill in the art would not be able to determine whether the applicant intends to have antecedent basis to the first claimed “a product” or the second claimed “a product”.
For the purpose of prosecuting the claims the examiner is going to interpret the claims 1 and 17-18 as if they recited: an information processing system, a compensation determination method, and a non-transitory computer readable medium comprising:
receiving, by a processor and via input from an administrator, a first contracted click price to be paid by a product user to a first provider for printing, using an image forming device, a contracted lot of products;
receiving, by the processor and via input from the administrator, a second contracted click price to be paid to a second provider by the first provider for one or more consumables used by the image forming device when printing the contracted lot of products;
storing, in a memory, the first contracted click price and the second contracted click price;
transmitting, by the processor, a print request to the image forming apparatus of the first provider, wherein the image forming apparatus prints the contracted lot of products by printing a uniform resource locator (URL) of a web page on each product of the contracted lot of products, or printing a two-dimensional code on each of product of the contracted lot of products, wherein the two-dimensional code encodes the URL of the web page;
receiving, by the processor and from a web server that provides the web page associated with the URL, advertising effect information that includes a count of accesses to the web page identified by the URL, wherein the web server is associated with the product user;
determining, by the processor and based on multiplying the first contracted click price by the count of accesses to the webpage, a first compensation information relating to compensation payable by the product user to the first provider that created the contracted lot of products using the image forming apparatus;
determining, by the processor and based on multiplying the second contracted click price by the count of accesses to the webpage, a second compensation information relating to compensation payable by the first provider to the second provider that provided the one or more consumables used by the image forming apparatus when printing the contracted lot of products.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 17 is a compensation determination method and has been amended to recite “and printing a URL on the product, or printing a two-dimensional code obtained by encoding the URL on the product, and calculating the first information relating to the advertising effect by use of the service provided by the product user through the web page identified by the URL”
However, the applicant has not indicated what device is intended to be used to perform the claimed printing and calculating steps. According to the claims, the acquiring step and all of the determining steps are being performed by a processor. Thus, one of ordinary skill in the art would expect that the claimed printing step and the claimed calculating step would also be performed by the claimed processor. However, as indicated in the 35 USC 112 rejections above, the applicant’s disclosure does not support of processor performing the claims acquiring step, the claimed determining steps, the claimed printing step, and the claimed calculating step. According to the applicant’s disclosure it would appear that the claimed printed step would need to be performed by an image forming apparatus that is different from the claimed processor and the claimed calculating step would need to be performed by a web server that is different from the claimed processor. However, based on claim 18, which has been amended in substantially the same manner as claim 17, it appears that the applicant does intend the invention of claim 17, as currently amended, to require the processor to perform the claimed printing and calculating steps. Thus, it is impossible for one of ordinary skill in the art to determine the intended metes and bounds the applicant is trying to impose on the invention by amending claim 17 to recite “and printing a URL on the product, or printing a two-dimensional code obtained by encoding the URL on the product, and calculating the first information relating to the advertising effect by use of the service provided by the product user through the web page identified by the URL”. As such, claim 17 is indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
For the purpose of prosecuting the claims, the examiner is going to interpret the limitation as if it recited “and printing, by the processor, a URL on the product, or printing a two-dimensional code obtained by encoding the URL on the product, and calculating, by the processor, the first information relating to the advertising effect by use of the service provided by the product user through the web page identified by the URL” because this is how the substantially similar amendment to claim 18 requires the steps to be performed.
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 and 3-18 are directed to a system, a method, and a computer program product which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes).
However, claims 1 and 3-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claims 1 and 17-18, as currently amended and interpreted for prosecution (see the Claim Objections, the 35 USC 112(a) rejections, and the 35 USC 112(b) rejections above), recite(s) the following abstract idea: (Examiner note: the administrator, image forming apparatus, product user, first provider, second provider, and web server have been included as part of the abstract idea because they outside the scope of the applicant’s invention and, as such, cannot be considered “additional elements” of the claimed invention)
receiving, via input from an administrator, a first contracted click price to be paid by a product user to a first provider for printing, using an image forming device, a contracted lot of products;
receiving, via input from the administrator, a second contracted click price to be paid to a second provider by the first provider for one or more consumables used by the image forming device when printing the contracted lot of products;
storing the first contracted click price and the second contracted click price;
transmitting a print request to the image forming apparatus of the first provider, wherein the image forming apparatus prints the contracted lot of products by printing a uniform resource locator (URL) of a web page on each product of the contracted lot of products, or printing a two-dimensional code on each of product of the contracted lot of products, wherein the two-dimensional code encodes the URL of the web page;
receiving, from a web server that provides the web page associated with the URL, advertising effect information that includes a count of accesses to the web page identified by the URL, wherein the web server is associated with the product user;
determining, based on multiplying the first contracted click price by the count of accesses to the webpage, a first compensation information relating to compensation payable by the product user to the first provider that created the contracted lot of products using the image forming apparatus; and
determining based on multiplying the second contracted click price by the count of accesses to the webpage, a second compensation information relating to compensation payable by the first provider to the second provider that provided the one or more consumables used by the image forming apparatus when printing the contracted lot of products.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely advertising, marketing and sales activities or behaviors. Accordingly, the claim recites an abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes).
This judicial exception is not integrated into a practical application because the claim only recites the additional elements of a computer with processor and memory executing software (e.g., an acquirer, a first calculator, a first determiner, a second calculator, a second determiner, a reference setting section, a determiner, an output section, acquirer software, first determiner software, second determiner software, third determiner software, and/or fourth determiner software).
The following limitations, if removed from the abstract idea and considered additional elements, merely perform generic computer function of processing, storing, communicating (e.g., transmitting and receiving), and displaying data and, as such, are insignificant extra-solution activities (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receiving, via input from an administrator, a first contracted click price to be paid by a product user to a first provider for printing, using an image forming device, a contracted lot of products (receiving data);
receiving, via input from the administrator, a second contracted click price to be paid to a second provider by the first provider for one or more consumables used by the image forming device when printing the contracted lot of products (receiving data);
storing the first contracted click price and the second contracted click price (storing data);
transmitting a print request to the image forming apparatus of the first provider, wherein the image forming apparatus prints the contracted lot of products by printing a uniform resource locator (URL) of a web page on each product of the contracted lot of products, or printing a two-dimensional code on each of product of the contracted lot of products, wherein the two-dimensional code encodes the URL of the web page (transmitting data); and
receiving, from a web server that provides the web page associated with the URL, advertising effect information that includes a count of accesses to the web page identified by the URL, wherein the web server is associated with the product user (receiving data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor and generic computer components performing a generic computers function of processing, communicating and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and generic computer components. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional technical elements above do not integrate the abstract idea/judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea. 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).
Rather, the limitations merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on one or more computers, or merely uses computers as a tool to perform an abstract idea (see MPEP 2106.05(f)), or generally link the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).
Thus, the claim is “directed to” an abstract idea (i.e. “PEG” Revised Step 2A Prong Two=Yes)
When considering Step 2B of the Alice/Mayo test, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not amount to significantly more than the abstract idea.
More specifically, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a computer with processor and memory executing software (e.g., an acquirer, a first calculator, a first determiner, a second calculator, a second determiner, a reference setting section, a determiner, an output section, acquirer software, first determiner software, second determiner software, third determiner software, and/or fourth determiner software) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and one or more generic computer component.
“Generic computer implementation” is insufficient to transform a patent-ineligible abstract idea into a patent-eligible invention (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2352, 2357) and more generally, “simply appending conventional steps specified at a high level of generality” to an abstract idea does not make that idea patentable (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Mayo, 132 S. Ct. at 1300). Moreover, “the use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter (See FairWarning, 120 U.S.P.Q.2d. 1293, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). As such, the additional elements of the claim do not add a meaningful limitation to the abstract idea because they would be generic computer functions in any computer implementation. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
The Examiner notes simply implementing an abstract concept on one or more computers, without meaningful limitations to that concept, does not transform a patent-ineligible claim into a patent-eligible one (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bancorp, 687 F.3d at 1280), limiting the application of an abstract idea to one field of use does not necessarily guard against preempting all uses of the abstract idea (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Bilski, 130 S. Ct. at 3231), and further the prohibition against patenting an abstract principle “cannot be circumvented by attempting to limit the use of the [principle] to a particular technological environment” (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Flook, 437 U.S. at 584), and finally merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract (See Affinity Labs, _F.3d_, 120 U.S.P.Q.2d 1201 (Fed. Cir. 2016), citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294; Bilski v. Kappos, 561 U.S. 593, 612 (2010); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
Applicant herein only requires one or more general-purpose computer and generic computer components (as evidenced from paragraphs 28-29 and figure 4 of the applicant’s specification); therefore, there does not appear to be any alteration or modification to the generic activities indicated, and they are also therefore recognized as insignificant activity with respect to eligibility. Finally, the following limitations, if removed from the abstract idea and considered additional elements, would be considered insignificant extra solution activity as they are directed to merely receiving, displaying, storing, and/or transmitting data (see MPEP 2016.05(d)(II) and MPEP 2106.05(g)):
receiving, via input from an administrator, a first contracted click price to be paid by a product user to a first provider for printing,