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 .
Status of Claim
This action is in response to application filed on 7 of July 2026.
Claims 1, 10, and 11 have been amended.
Claims 1-11 are currently pending and are rejected as described below.
Response to Amendment/Argument
35 USC § 101
Applicant asserts that , the operation of printing paper is a function that cannot be performed within a human mind and requires a machine. The examiner respectfully disagrees. This application is about managing how strictly printed materials are inspected based on how much time is left before delivery. If there is enough time remaining, the system uses a normal or first inspection level. If the job is getting close to its deadline, the system automatically lowers the inspection level so inspection can be completed faster. A human is capable of performing these functions mentally or with the aid of pen and paper. Following instructions fall within the abstract idea category of managing human behavior under Certain Methods of Organizing Human Activity. Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer"). Lastly, receiving data and outputting a result are deemed insignificant extra solution activity (mere data gathering), see MPEP 2106.05(g). Mere automation of a manual process or claiming the improved speed or efficiency inherent with applying the abstract idea on a computer where these purported improvements come solely from the capabilities of a general-purpose computer are not sufficient to transform an abstract idea into a patent-eligible invention. See MPEP 2106.04(a); MPEP 2106.05(a); MPEP 2106.05(f); FairWarning IP, LLC v. Iatric Sys., 120 USPQ2d 1293, 1296 (Fed. Cir. 2016); Credit Acceptance Corp. v. Westlake Services, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017); Intellectual Ventures I LLC v. Capital One Bank (USA), 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
Applicant asserts that the claimed subject can no longer be broadly interpreted as a general-purpose computer and is a particular machine, and a particular machine is one of the ways described in the MPEP that ties the claimed invention to a practical application, the rejection under 35 U.S.C. 101 is no longer applicable for claim 1. The examiner respectfully disagrees. It is noted that while the application of a judicial exception by or with a particular machine is an important clue, it is not a stand-alone test for eligibility. Id. All claims must be evaluated for eligibility using the two-part test from Alice/Mayo. If a claim passes the Alice/Mayo test (i.e., is not directed to an exception at Step 2A, or amounts to significantly more than any recited exception in Step 2B), then the claim is eligible even if it fails the machine-or-transformation test ("M-or-T test"). Bilski v. Kappos, 561 U.S. 593, 604, 95 USPQ2d 1001, 1007 (2010) (explaining that a claim may be eligible even if it does not satisfy the M-or-T test); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016) ("[T]here is nothing that requires a method ‘be tied to a machine or transform an article’ to be patentable"). And if a claim fails the Alice/Mayo test (i.e., is directed to an exception at Step 2A and does not amount to significantly more than the exception in Step 2B), then the claim is ineligible even if it passes the M-or-T test. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256, 113 USPQ2d 1097, 1104 (Fed. Cir. 2014) ("[I]n Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an 'inventive concept.'").
Claim Rejections - 35 USC § 101
Claims 1-11 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.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machines, article of manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception.
The claims are then analyzed to determine whether the claims are directed to a judicial exception. MPEP §2106.04(a). In determining, whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong One of Step 2A), and whether the claims recite additional elements that integrate the judicial exception into a practical application (Prong Two of Step 2A). See 2019 Revised Patent Subject Matter Eligibility Guidance (“PEG” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019)).
With respect to 2A Prong 1, claim 1 recites “a printing device configured to print a printed matter based on an instruction for printing work for which an order is received; and a processor configured to: transmit the instruction for the printing work to the printing device; in a case where the number of remaining days until a delivery date of the printed matter printed by the printing device is equal to or larger than a predetermined reference number of workdays, set an inspection level for the printed matter to a predetermined first inspection level; in a case where the number of remaining days is smaller than the reference number of work days, set the inspection level for the printed matter by reducing the inspection level from the first inspection level to a second inspection level in which a work period is shorter than a work period of the first inspection level; and output the set second inspection level to instruct an inspection device to inspect the printed matter based on the set second inspection level”. Claims 10 and 11 disclose similar limitations as Claim 1, and therefore recite an abstract idea.
More specifically, claims 1, 10, and 11 are directed to “Mental Processes” in particular “concepts performed in the human mind (including an observation, evaluation, judgment, opinion)” and “Certain Methods of Organizing Human Activity” in particular “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)” and “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”, as discussed in MPEP §2106.04(a)(2), and in the 2019-01-08 Revised Patent Subject Matter Eligibility Guidance. Accordingly, the claims recite an abstract idea.
Dependent claims 2-9 further recite abstract idea(s) contained within the independent claims, and do not contribute to significant more or enable practical application. Thus, the dependent claims are rejected under 101 based on the same rationale as the independent claims.
Under Prong Two of Step 2A of the Alice/Mayo test, the examiner acknowledges that Claims 1, 10, and 11 recite additional elements yet the additional elements do not integrate the abstract idea into a practical application. In order for the judicial exception to be “integrated into a practical application”, an additional element or a combination of additional elements in the claim “will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” PEG, 84 Fed. Reg. 54 (Jan. 7, 2019). The courts have identified examples in which a judicial exception has not been integrated into a practical application when “an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.” PEG, 84 Fed. Reg. 55 (Jan. 7, 2019); MPEP § 2106.05(h). The claims are directed to an abstract idea.
In particular, claims 1, 10, and 11 recite additional elements boldened and underlined above. These are generic computer components recited as performing generic computer functions that are mere instructions to apply an exception, because it does no more than merely invoke computers or machinery as a tool to perform an existing process. Further, the remaining additional element(s) italicized above reflect insignificant extra solution activities to the judicial exception, see MPEP 2106.05(g). Accordingly, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
With respect to step 2B, claims 1, 10, and 11 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The claim recites the additional elements described above. These are generic computer components recited as performing generic computer functions that are mere instructions to apply an exception, because it does no more than merely invoke computers or machinery as a tool to perform an existing process, as evidenced by at least in ¶34-35 “As shown in Fig. 2, the inspection level management device 10 that is an example of the inspection level management device includes a central processing unit (CPU; processor) 11, a read only memory (ROM) 12, a random access memory (RAM) 13, a storage 14, a user interface 15, and a communication interface 16. The configurations are communicably connected to each other via a bus 17. The CPU 11 is a central arithmetic processing unit, and executes various programs or controls each of the units. That is, the CPU 11 reads out a program from the ROM 12 or the storage 14 to execute the program using the RAM 13 as a work area. The CPU 11 controls each of the configurations described above and performs various types of arithmetic processing according to the program recorded in the ROM 12 or the storage 14. The CPU 11 is a processor of the present disclosure. The inspection level management device includes at least one processor”.
Claims 2-9 do not disclose additional elements, further narrowing the abstract ideas of the independent claims and thus not practically integrated under prong 2A as part of a practical application or under 2B not significantly more for the same reasons and rationale as above.
After considering all claim elements, both individually and in combination, Examiner has determined that the claims are directed to the above abstract ideas and do not amount to significantly more. See Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13–298.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHEUS R STIVALETTI whose telephone number is (571)272-5758. The examiner can normally be reached on M-F 8:30-5:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rutao (Rob) Wu can be reached on (571)272-7761. The fax phone number for the organization where this application or proceeding is assigned is 571-273-1822.
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/MATHEUS RIBEIRO STIVALETTI/Examiner, Art Unit 3623 8/19/2026
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