Prosecution Insights
Last updated: July 17, 2026
Application No. 18/502,566

INFORMATION PROCESSING SYSTEM, NON-TRANSITORY COMPUTER READABLE MEDIUM, AND INFORMATION PROCESSING METHOD

Non-Final OA §101§102§103
Filed
Nov 06, 2023
Priority
May 24, 2023 — JP 2023-085783
Examiner
SABAH, HARIS
Art Unit
2682
Tech Center
2600 — Communications
Assignee
Fujifilm Holdings Corporation
OA Round
1 (Non-Final)
77%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
93%
With Interview

Examiner Intelligence

Grants 77% — above average
77%
Career Allowance Rate
521 granted / 679 resolved
+14.7% vs TC avg
Strong +16% interview lift
Without
With
+16.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
27 currently pending
Career history
703
Total Applications
across all art units

Statute-Specific Performance

§101
4.7%
-35.3% vs TC avg
§103
80.3%
+40.3% vs TC avg
§102
7.1%
-32.9% vs TC avg
§112
4.8%
-35.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 679 resolved cases

Office Action

§101 §102 §103
DETAILED ACTION Notice of Pre-AIA or AIA Status 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 2. Claims 1-11 are pending in this application. Priority 3. Acknowledgement is made of applicant’s claim for foreign priority based on application JP 2023-085783 filed on 05/24/2023 under 35 U.S.C 119(a)-(d). Drawings 4. The drawing has been filed on 11/06/2023 are acceptable for examination purpose. Information Disclosure Statement 5. The information disclosure statement filed on 11/06/2023 is in compliance with the provision of the 37 CFR 1.97 and therefore has been considered. Claim Rejections - 35 USC § 101 6. 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. 7. 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. Claims 1-11 are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1, 10-11 are rejected under 35 U.S.C. 101, because the claimed invention directed to abstract idea without significantly more. The claim recites “an information processing system comprising: a processor configured to: receive printing information and a condition, the printing information including data serving as a printing target, the condition being for managing a state of the data; and in response to nonsatisfaction of the condition in outputting the received printing information, give a report suggesting a measure for satisfying the condition”. The claim limitation of “receive printing information and a condition, the printing information including data serving as a printing target, the condition being for managing a state of the data; and in response to nonsatisfaction of the condition in outputting the received printing information, give a report suggesting a measure for satisfying the condition”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer component. That is, other than reciting “by a processor” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” and “receiving” language, in the context of this claim encompasses the user manually receiving the printing data and, the condition being for managing a state of the printing data. Similarly, the limitations of suggesting to satisfy the received condition as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer component. For example, but for the “by a processor” language, “receiving” in the context of this claim encompasses the user thinking that the information processing system should be receiving the printing data and, the condition being for managing a state of the printing data and suggesting the received conditions to be satisfied. If a claim limitations, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application. In particular, the claim doesn’t recite additional element – using a processor to perform both the receiving and suggesting steps. The processor in last step is recited at a high-level of generality (i.e., as a generic control unit performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, the last claimed step does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the claimed steps of using a processor to perform both the receiving and suggesting steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. The other dependent claims 2-9 are obviously claimed the same subject matter as found in the claim 1 and therefore would be rejected based on same rationale applied on claim 1. Claim Rejections - 35 USC § 102 8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form 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. 9. Claims 1, 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tao, US Pub 2023/0092279. As to claim 1 [independent], Tao teaches an information processing system comprising [fig. 1, element 1; 0027]: a processor configured to [fig. 1, element 10; 0027]: receive printing information and a condition, the printing information including data serving as a printing target, the condition being for managing a state of the data [fig. 8; 0111-0117 Tao teaches that the server 10 receives data correspond to print data and a condition correspond to the print settings being for managing a state of the data]; and in response to nonsatisfaction of the condition in outputting the received printing information, give a report suggesting a measure for satisfying the condition [figs. 8, 11; 0100-0102, 0111-0117, 0126-0128, 0132-0134 Tao teaches that the server 10 receives data correspond to print data and a condition correspond to the print settings being for managing a state of the data. The server 10 determines the condition correspond to the print settings is unsatisfactory and provides a report suggesting to user to change condition/settings of the printing data which satisfies the condition according to printer’s compatibility]. As to claims 10-11 [dependent from 10], However, the independent claims 10-11 essentially claimed same subject matter as claimed in the independent claim 1 for/and/with other claim limitations, and are therefore the independent claims 10-11 would be rejected based on same rationale as applied to the independent claim 1. Claim Rejections - 35 USC § 103 10. 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, 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. 11. Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tao, US Pub 2023/0092279 in view of Miida et al. [hereafter Miida], US Pub 2002/0049839. As to claim 6 [dependent from claim 1], Tao doesn’t teach wherein the processor is configured to: in response to unsafety of an image forming apparatus for printing the printing information, the unsafety serving as the nonsatisfaction of the condition, give a report suggesting change of the image forming apparatus. Miida teaches wherein the processor is configured to: in response to unsafety of an image forming apparatus for printing the printing information, the unsafety serving as the nonsatisfaction of the condition, give a report suggesting change of the image forming apparatus [figs. 10, 16-17; 0168, 0212-0218 Miida teaches that the server suggests the changing or adding of different or new printer that would be installed in company 200 (e.g., para., 0168), when the conditions/settings is not met the printing process’s requirement]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Miida teaching to unsafely printing the printing data to modify Tao’s teaching in case error occurred and receive from the center of a company manufacturing and/or vending the product collects information representing the status of the product used by the customer, and sends information representing recommendation matters based on the status to a user terminal such as a personal computer, used by the customer and for securely informing users about an adequate time for replacing a currently-used expendable with a new expendable based on collected status information. The suggestion/motivation for doing so would have been benefitted to the user to enable conveniently collecting status of printer(s) and providing information, and for effectively providing customers with recommendation information with easily provide users with adequate expendables, thus printing of print data can be continued without wasting time. As to claim 7 [dependent from claim 6], Tao teaches wherein the processor is configured to: in response to the unsafety of the image forming apparatus, display the printing information as not selectable printing information [figs. 8, 11; 0100-0102, 0111-0117, 0126-0128, 0132-0134 Tao teaches that the server 10 receives data correspond to print data and a condition correspond to the print settings being for managing a state of the data. The server 10 determines the condition correspond to the print settings is unsatisfactory and provides a report suggesting to user to change condition/settings of the printing data which satisfies the condition according to printer’s compatibility]. . As to claim 8 [dependent from claim 6], Miida teaches wherein the processor is configured to: in response to the unsafety of the image forming apparatus, give a report indicating a place where a safe image forming apparatus is installed [figs. 10, 16-17; 0168, 0212-0218 Miida teaches that the server suggests the changing or adding of different or new printer that would be installed in company 200 (e.g., para., 0168), when the conditions/settings is not met the printing process’s requirement]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Miida teaching to unsafely printing the printing data to modify Tao’s teaching in case error occurred and receive from the center of a company manufacturing and/or vending the product collects information representing the status of the product used by the customer, and sends information representing recommendation matters based on the status to a user terminal such as a personal computer, used by the customer and for securely informing users about an adequate time for replacing a currently-used expendable with a new expendable based on collected status information. The suggestion/motivation for doing so would have been benefitted to the user to enable conveniently collecting status of printer(s) and providing information, and for effectively providing customers with recommendation information with easily provide users with adequate expendables, thus printing of print data can be continued without wasting time. As to claim 9 [dependent from claim 7], Miida teaches wherein the processor is configured to: in response to the unsafety of the image forming apparatus, give a report indicating a place where a safe image forming apparatus is installed [figs. 10, 16-17; 0168, 0212-0218 Miida teaches that the server suggests the changing or adding of different or new printer that would be installed in company 200 (e.g., para., 0168), when the conditions/settings is not met the printing process’s requirement]. Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Miida teaching to unsafely printing the printing data to modify Tao’s teaching in case error occurred and receive from the center of a company manufacturing and/or vending the product collects information representing the status of the product used by the customer, and sends information representing recommendation matters based on the status to a user terminal such as a personal computer, used by the customer and for securely informing users about an adequate time for replacing a currently-used expendable with a new expendable based on collected status information. The suggestion/motivation for doing so would have been benefitted to the user to enable conveniently collecting status of printer(s) and providing information, and for effectively providing customers with recommendation information with easily provide users with adequate expendables, thus printing of print data can be continued without wasting time. Allowable Subject Matter 12. Claims 2-5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101(abstract idea), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. 13. The following is an examiner’s statement of reasons for allowance: The dependent claims 2-3 are allowable over the prior arts of record (or cited or listed above) since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “wherein the processor is configured to: in response to unsafety of a first communication path to be used for first communication in outputting the printing information through the first communication, the unsafety serving as the nonsatisfaction of the condition, give a report suggesting switching from the first communication path to an acquired safe first communication path., wherein the processor is configured to: in response to inclusion of the data including specific information in the printing information, the inclusion serving as the nonsatisfaction of the condition, give a report in outputting the received printing information, the report suggesting execution of a process for generating data in which the specific information is removed or hidden; and in response to the execution of the process, output the printing information including the data in which the specific information is removed or hidden”, in combination with all other limitations as claimed. The dependent claims 4-5 is allowable over the prior arts of record (or cited or listed above) since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “wherein the processor is configured to: in response to unsafety of a second communication path to be used for second communication in outputting the printing information through the second communication, the unsafety serving as the nonsatisfaction of the condition, give a report suggesting switching from the second communication path to an acquired safe second communication path., wherein the processor is configured to: in response to the unsafety of the second communication path, display the printing information as not selectable printing information”, in combination with all other limitations as claimed. Conclusion 14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARIS SABAH whose telephone number is (571)270-3917. The examiner can normally be reached on Monday/Friday from 9:00AM to 5:30PM EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Benny Tieu, can be reached on (571)272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. The Examiner’s personal fax number is (571)270-4917. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). /HARIS SABAH/Examiner, Art Unit 2682
Read full office action

Prosecution Timeline

Nov 06, 2023
Application Filed
Dec 21, 2023
Response after Non-Final Action
Jun 22, 2026
Non-Final Rejection mailed — §101, §102, §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
77%
Grant Probability
93%
With Interview (+16.0%)
2y 8m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 679 resolved cases by this examiner. Grant probability derived from career allowance rate.

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