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 November 6, 2025 cancelled claims 8 and 21. Claims 1, 4, 10-11, 14, 20, and 24-27 were amended and no new claims were added. Thus, the currently pending claims addressed below are claims 1, 4, 10-11, 14, 18, 20 and 22-27.
Claim Interpretation
The following terms and/or phrases have been interpreted in light of the applicant’s specification:
“configured to cause any of two or more registered printers registered in a memory of the terminal device to execute a printing function”: configure to transmit a printing request to any of two or more registered printers registered in a memory of the terminal device, thereby causing the any of two or more registered printers to execute a printing function.
“address information”: a uniform resource locator (URL).
As per MPEP 2111.04(II), the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. Claims 11, 14, 26, and 27 are methods claims that either recited contingent limitations themselves or further limit contingent limitation found in claims from which they depend and, as such, do not limit the scope of the claims.
Claim 11 is a method claim that contain contingent limitations and, as such requires claim interpretation to determine the broadest reasonable interpretation of their scope. Independent claim 11, recite: “A method for controlling a system including a terminal device, a first server, a second server, and two or more printers which are to be registered, so as to constitute two or more registered printers, in a memory of the terminal device, the method comprising:”. Thus, the method of claim 11 does positively require the system being controlled by the method to included two or more printers within the scope of the method, and that data regarding the registration of both printers be in the memory of the terminal device of said system. According to claim 11, the method comprises:
receiving notification information from the first server; and
accepting, by the terminal device, a user operation on a notification object.
This is the entire scope of the claim 11, as currently amended, because every other limitation recited in the claim is part of a contingent limitation which is not required to occur. As such, every other limitation found in claim 11, does not limit the scope of the claim.
As currently claimed, the displaying step is only performed when:
notification information is received by an Operating System (OS) program from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge;
a banner image indicating the message included in the notification information is displayed on the display unit, by the OS program;
the banner image is operated by a user; and
the specific model identifier included in the notification information matches a model identifier of any of the two or more printers;
Thus, in order for the displaying to occurs every one of these steps would need to occur. If any one of said steps does not occur, the displaying of the predetermined screen does not occur.
First, the required method step of “receiving notification information from the first server” does not require that the terminal device, the second server, or any of the two or more printers receive the notification. The only thing required is that notification information from the first server be received. Thus, the limitation is broad enough that a person could receive the claimed notification by reading it from a display of the first server. As such, the receiving of the notification does not inherently need to be performed by an OS program of a computing device. Therefore, even if the step of “notification information is received by an Operating System (OS) program from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge”, had proper antecedent basis to the previously recited “receiving notification information from the first server”, which it does not, the OS system would not inherently need to receive the notification. Additionally, given the lack of proper antecedent basis the previously recited receiving step and the previously recite “a first server”, this newly claimed “notification information” received from this newly claim “a first server” by an OS program need not be associate with any of the previously claimed notification information received by the first server which is part of the system being controlled by the method. Given, that the claimed “the notification information including…” is recited immediate after the second claimed “notification information”, which may be different from the “notification information” in the required receiving step, it is most likely a limitation associated with the second claimed “notification information” found in the optional “when” step vs the “notification information” recited in the require “receiving step”. As such, it is clear that the step of “when: notification information is received by an Operating System (OS) program from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge;” is not required to occur and, as such, the step of “displaying a predetermined screen, which includes a predetermined object, the predetermined object being for selecting a specific color among a plurality of colors corresponding to a plurality of color material cartridges on a display unit of the terminal device in response to the user operation” is not required to occur.
Second, even if the examiner made the following assumptions regarding the claim: initial receiving step must be performed by the terminal device; the terminal device comprises an OS program for controlling basic operations of the terminal device; any data received by the terminal device must inherently be received by the OS program of the terminal device: the “notification information” and “a first server” of the “when:” limitation had proper antecedent basis to the previously recited “notification information” in the required “receiving step” and the previously recite “a server”, the scope of claim 11 would be limited to:
receiving, by an OS system of the terminal device, notification information from the first server, wherein the notification information includes a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge; and
accepting, by the terminal device, a user operation on a notification object
This is because, the claim, even when such assumptions are made, neither requires the terminal device to generate a banner image that includes the message included in the notification information, nor the terminal device to display such a generated banner image on the display unit. Without such a step being required by the claim, the invention is not required to “displaying a predetermined screen, which includes a predetermined object, the predetermined object being for selecting a specific color among a plurality of colors corresponding to a plurality of color material cartridges on a display unit of the terminal device in response to the user operation” because this displaying only occurs “when:…a banner image indicating the message included in the notification information is displayed on the display unit, by the OS program”
Third, without requiring that a banner image be generated and displayed, there is no “banner image” capable of being operated by “the user”, assuming the claimed “a user” is intended to have antecedent basis to the previously claimed a user. As such, the claimed “displaying a predetermined screen, which includes a predetermined object, the predetermined object being for selecting a specific color among a plurality of colors corresponding to a plurality of color material cartridges on a display unit of the terminal device in response to the user operation” because this displaying only occurs “when:…the banner image is operated by a user”.
Fourth, even if the examiner somehow assumed that the claim required the steps of: the notification information is received by an Operating System (OS) program of the terminal device and from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge; generating and displaying, by the OS program of the terminal, a banner image indicating the message included in the notification information on the display unit; and receiving, by the OS program of the terminal device, a second user operation on the banner image, the claimed “displaying a predetermined screen, which includes a predetermined object, the predetermined object being for selecting a specific color among a plurality of colors corresponding to a plurality of color material cartridges on a display unit of the terminal device in response to the user operation” would not occur because it can only occur “when…the specific model identifier included in the notification information matches a model identifier of any of the two or more printers. However, the claim never requires that the specific model identifier included in the notification information match a model identifier of any of the two or more printers.
As such, it is clear that claim 11, as currently written does not require that the “displaying step occur” and as such the “displaying step does not limit the scope of the claim.
Likewise, claim 11 only obtains the coupon code included in the notification step if the banner image is operated by the user. As indicated above, claim 11 neither requires generating a banner image, displaying a banner image, to the banner image to be operated by the user. As such, the scope of claim 11 is not limiting by the obtaining step.
Likewise, without requiring the displaying of the predetermined screen no selection of an object in the predetermined screen occurs which means that the predetermined object is not displayed and the user operation on the object cannot be accepted, no predetermined object is displayed and as such no user operation on the predetermined object can be accepted, without accepting the user operation, the address information corresponding to selected specific color cannot be generated, if the address information is not generated, the sending of the address information cannot occur, without sending the address information the second server cannot use the address information, and without the ability to use the address information to generate a purchase page, the second server cannot send the generated page.
As such, it is clear, that claim 11, as currently amended, only requires that steps of: receiving notification information from the first server; and accepting, by the terminal device, a user operation on a notification object to occur. Every other limitation of the claim is contingent on whether or not each an every criterion required for displaying to be performed is met.
Claim 14 is a method claim that depends from claim 11. Claim 14 further limits the contingent limitation of claim 11 in regards to the coupon code that might be part of the resource information, as well as, recited an additional contingent limitation that occurs only when there are a plurality of coupon codes. In both either case, the limitation is not required to occur and, as such, does not limit the scope of the claimed invention.
Claim 26 is a method claim that depends from claim 11. The interpretation of Claim 26 depends on whether “the notification information” is given antecedent basis to the “notification information” in the required receiving step of claim 11, or antecedent basis to the “notification information” in the contingent “when:” step of claim 11. If antecedent basis is given to the “notification information” in the required receiving step, then claim 26 recites a contingent limitation that only occurs “in a case where” the “notification information indicates…”. However, the claim does not require this case to occur. As such, it would not limit the scope of the claim. If given antecedent basis to the notification information in contingent “when:” step of claim 11, then it further limits a previous contingent limitation, as well as, introduces an additional contingent limitation, and, as such, does not limit the scope of the claims.
Claim 27 is a method claim that depends from claims 11 and 26. The interpretation of Claim 27 depends on whether “the notification information” is given antecedent basis to the “notification information in the required receiving step of claim 11, or antecedent basis to the “notification information” in the contingent “when:” steps. If antecedent basis is given to the “notification information” in the required receiving step, then claim 27 recites a contingent limitation that only occurs “in a case where” the “notification information indicates…”. However, the claim does not require this case to occur. As such, it would not limit the scope of the claim. If given antecedent basis to the notification information in contingent “when:” step of claim 11, then is further limits a previous contingent limitation as well as introduces an additional contingent limitation, and, as such, does not limit the scope of the claims.
As such, based on the MPEP 2111.04(II) analysis, entire scope of claims 11, 14, and 26-27 is currently as follows:
A method for controlling a system including a terminal device, a first server, a second server, and two or more printers which are to be registered, so as to constitute two one or more registered printers, in a memory of the terminal device, the method comprising:
receiving notification information from the first server; and
accepting, by the terminal device, a user operation on a notification object.
(Examiner note: the claim requires no connection between the claimed “a notification object” for which a user operation is accepted by the terminal device and the received “notification information”. The claim merely requires the receipt of the claimed notification information and some type of accepting of a user operation on some type of notification object by a terminal device.)
Next, MPEP 2111.02, requires a determination as to whether the preamble limits the scope of a claim. If the preamble limits the structure of the claimed invention is must be treated as a claim limitation. The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim” as drafted without importing “‘extraneous’ limitations from the specification.”
Given that, as indicated in MPEP 2111.04(II), the entire scope of claims 11, 14, and 26-27 is currently: A method for controlling a system including a terminal device, a first server, a second server, and two or more printers which are to be registered, so as to constitute two or more registered printers, in a memory of the terminal device, the method comprising:
receiving notification information from the first server; and
accepting, by the terminal device, a user operation on a notification object.
The examiner next proceeded to review the preamble of claim 11, in the manner required by MPEP 2111.02.
The preamble of claim 11 includes the limitation “for controlling a system including a terminal device, a first server, a second server, and two or more printers which are to be registered, so as to constitute two or more registered printers”. This is an intended use limitation by as made clear by the “for controlling” language”. Additionally, the two or more printers “are to be registered, so as to constitute two or more registered printers”. Thus, the examiner turned to the actual steps of the method which must be performed. Neither the receiving step nor the accepting step requires the actual registration of the two or more printers in a memory. Likewise, the applicant’s disclosure indicates that both the registering step and the accepting step could be performed by the terminal device. As such, the only structural limitations imposed on the method from the preamble is the “terminal device” which must also have “a memory”. In fact, the body of the claim requires that the accepting step be performed by “the terminal device”. Therefore, the only restriction placed on the structure of the claim, by the preamble, considering both the applicant’s disclosure and the required steps that the method must perform is that the method is performed by a terminal device with a memory. The intended purpose of the method perform by the terminal device with a memory is “for controlling a system comprising, the terminal device, a first server, a second server, and two or more printers which are to be registered, so as to constitute two or more registered printers” which does not no limit the structure of the claimed method given the steps that the method is required to perform. As such, for the purpose of prosecuting the claims the final scope of claims 11 (as well as 14, and 26-27, given the results of the MPEP 2111.04(II) analysis above) is determined to be:
Claims 11, 14, and 26-27: A method performed by a terminal device comprising a memory, the method comprising:
receiving, by the terminal device, notification information from the first server; and
accepting, by the terminal device, a user operation on a notification object
Claim Rejections - 35 USC § 112
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 10 is 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 10 recites: “A system including a terminal device, a first server, a second server, and two or more printers which are to be registered, so as to constitute two one or more registered printers, in a memory of the terminal device, the system being configured to:”. As such, the scope of the claim encompasses a “system” comprising “a terminal device, a first server, a second server, and two or more printers”. According to the claim “the system is configured to:” perform the remaining steps of the claim. However, the remaining steps of the claim do not indicate which of the claimed “a terminal device, a first server, a second server, and two or more printers” is required to perform which step. As such, the broadest reasonable interpretation of each of the various steps of the claim is that each claimed step could be performed on any one of the claimed “a terminal device, a first server, a second server, and two or more printers” which comprise the claimed system. However, the applicant’s disclosure does not have support for such an interpretation of each limitation. As such, Claim 10, as currently amended fails to comply with the written description requirement.
For example, the first step of the claimed system would arguably need to be:
receiving, by an Operating system (OS) program and from a first server, notification information, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge.
This is because the claimed system would need to perform this receiving step prior to displaying a predetermined screen.
However, the claim limitation requires that the step be performed by an OS program, but does not limit which of the claimed “a terminal device, a first server, a second server, and two or more printers” this OS program is executing on. Arguably, the claimed OS program is not an OS program of the first server because the OS program receives the information from the first server. Assuming this is the case, the broadest reasonable interpretation of the claim limitation is that the “notification information” could be received by and OS program of any one of the terminal device, the second server, or any one of the two of more printers. However, the applicant’s disclosure does not support such a broad interpretation. Based on the applicant’s disclosure, in at least paragraphs 35-36 and figures 3, 6, and 7, the only “notification information” which has an OS program that receives notification information is OS program 36 which executes on the terminal device. As such, the broadest reasonable interpret of this limitation of claim 10, is that the limitation recites subject matter that fails to comply with the written description requirement
Likewise, the “notification information” in this limitation is broad enough to encompass any type of notification information. However, the applicant’s disclosure only supports the OS program of the terminal device being able to receive “push notification information”. Based on the applicant’s disclosure, in at least paragraphs 35-39 and figures 3, 6, and 7, the OS program of the terminal device receives push notification information and App40 executing on the terminal device send a request for pull information and App40 receives the pull notification information. There is no disclosure in the applicant’s specification of the OS program of the terminal device receiving pull notification information or any other type of notification information. As such, the applicant’s disclosure does not provide support for the claimed “notification information” and, as such, claim 10 fails to comply with the written description requirement.
The next step, the claimed system would need to perform, would be:
displaying, by the OS program, a banner image indicating the message included in the notification information on a display unit of the terminal.
As indicated above, the claim still does not require the OS program to be an OS program of the terminal device, although such an interpretation is more likely, but not inherent, given the OS program displays the banner image on a display unit of the terminal device. However, the limitation requires the “OS program” display the “banner image” and the banner image to indicate “the message included in the notification information”. Based on the applicant’s disclosure, in at least paragraphs 35-39 and figures 3, 6, and 7, the OS program of the terminal device can only display a banner advertisement when the ”notification information” is “push notification information”. When the “notification information” is “pull notification information”, App40 (not the OS program) displays the banner image indicating the message included in the pull notification information. Thus, even if one were to somehow conclude that the claim requires the “OS program” to be of the “terminal device”, and that the applicant’s disclosure somehow support the “OS program” receiving both push notification information and pull notification information, there is absolutely no support for OS program displaying a banner image indicating the message included in pull notification information on the display unit of the terminal device. As such, claim 10 fails to comply with the written description requirement.
Next, “the banner image is operated by a user; and the specific model identifier included in the notification matches a model identifier of any of the two or more registered printers”. There is no support in the applicant’s disclosure for a system to further comprise “a user”. However, this appears to be what is being claimed. The user performs an operation on the banner image. As such, claim 10 fails to comply with the written description requirement. The limitation “the specific model identifier included in the notification matches a model identifier of any of the two or more registered printers” recites an intended result, but does not require any of the claimed “a terminal device, a first server, a second server, and two or more printers” perform an action that results in the claimed intended result. Thus, the intended result is broad enough that it might be obtained by any one of the “a terminal device, a first server, a second server, and two or more printers”. However, the applicant’s disclosure only supports App40 executing on the terminal device performing any type of matching with regards to a model identifier in notification information matching a model identifier of a printer registered in the memory of the terminal device (see at least paragraph 60 of the applicant’s specification). There is no disclosure of any other device of the claimed system being able to perform such matching. As such, claim 10 fails to comply with the written description requirement.
Finally, the claim does not require that the claimed “display a predetermine screen” on the “display unit of the terminal” be performed by any specific device of the devices that comprise system. The “display a predetermined screen” limitation might be said to be obvious to be performed by the terminal device because it is displayed on the “display unit of the terminal device”. However, the step is not inherently required to be performed by the terminal device because another device could be coupled to the display unit of the terminal device and, as such, perform the displaying on the display unit. However, the applicant’s disclosure does not support any device other than app40 of the terminal device displaying predetermined screen SC3 on the display unit of the terminal device. As such, claim 10 fails to comply with the written description requirement.
For the purpose of prosecuting the claim, the examiner is going to interpret every limitation that has not be assigned to a specific device of the claimed “a terminal device, a first server, a second server, and two or more printers” as if was required to be performed by the processor of the terminal device. This means that whether the claim indicates the step as merely being performed or being performed by the “OS system”, it is merely interpreted as by the processors of the terminal.
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, 4, 20, and 22-25 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: “A non-transitory computer-readable recording medium storing computer-readable instructions for a terminal device, the computer-readable instructions being configured to cause any of two or more registered printers registered in a memory of the terminal device to execute a printing function, wherein the computer-readable instructions, when executed by a processor of the terminal device, cause the terminal device to:”. As such, the scope of the claim encompasses a “non-transitory computer-readable recording medium” and the “computer-readable instructions” stored therein, which when executed by “a processor” of the “terminal device” cause the terminal device to perform the claimed functions. Given the manner in which the claim is written and the support found in the applicant’s specification, it is impossible for one of ordinary skill in the art to determine the intended scope of the “computer-readable instructions” and which functions performed by the terminal device are within the scope of the applicant’s invention.
According to preamble of the claim, when “the processor” executes “the computer-readable instructions” it cause the “terminal device” to:
“display a predetermined screen, which includes a predetermined object, the predetermined object being for selecting a specific color among a plurality of colors corresponding to a plurality of color material cartridges on a display unit of the terminal device”.
Thus, the “computer-readable instructions” include instructions for displaying the predetermined screen. Based on the applicant’s specification in paragraph 45 and figure 4, the predetermined screen is the purchase screen SC3 because it includes a predetermined object for selecting a specific color. According to paragraph 45, app 40 displays purchase screen SC3. As such, it is clear that the claimed “computer-readable instructions” include “app 40”.
However, an issue of indefiniteness arises, with regards to the scope of the claimed “computer-readable instructions”, given the remainder of the display limitation:
“in a case where notification information is received by an Operating System (OS) program from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge; a banner image indicating the message included in the notification information is displayed on the display unit, by the OS program; the banner image is operated by a user; and the specific model identifier included in the notification information matches a model identifier of any of the two or more registered printers;”.
This part of the limitation is describing the operation of an “OS program”, presumably operating on the terminal device which when executed by the processor performs various functions. According to the applicant’s specification, in paragraph 20, “The OS program 36 is a program for controlling basic operation of the terminal device 10.” and “The OS 36 and the browser 38 are usually installed on the terminal device 10 before the terminal device 10 is shipped.”. According to the applicant’s specification, in paragraph 28, “The app 40 accesses the CPU 32, the display unit 14, the memory 34, the network interface 20, and other hardware via the OS 36 to execute various processes. Hereafter, however, the explanation is made by suitably omitting the app 40 executing processes via the OS 36”. Given the disclosures in paragraphs 20 and 28 of the applicant’s specification, one of ordinary skill in the art would realize three things:
First, the “OS program” and “browser” are both “computer-readable instructions” stored on a non-transitory computer-readable recording medium of the terminal device which are executable by the processor of the terminal device to perform functions.
Second, the “OS program” and “browser” are both usually installed on the terminal device 10 before the terminal device 10 is shipped.
Third, app 40 accesses the CPU 32, the display unit 14, the memory 34, the network interface 20, and other hardware via the OS 36 to execute various processes.
First, the claim limitation specifically identifies that in order for app40 to display the predetermined screen, an OS program (i.e., computer-readable instructions) stored on a non-transitory computer-readable recording medium, which is usually preloaded on the terminal device before it is shipped, must first be executed by the processor of the terminal device to cause the terminal device to perform at least the tasks of:
receiving, from a first server, notification information, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge;
generating a banner image indicating the message included in the notification information (inherently required in order for the OS program to perform the following displaying step); and
displaying, on the display unit, a banner image indicating the message included in the notification information.
As such the claim makes a distinction between which steps are performed by the processor when executing an OS program (i.e., first computer-readable instructions) stored on a non-transitory computer-readable recording medium of the terminal device before it is shipped, and which steps are performed by the processor when executing App40 (i.e., second computer-readable instruction) stored on the claimed non-transitory computer-readable recording medium. This raises many questions regarding the intended scope of the claimed non-transitory computer-readable recording medium and the claimed computer-readable instructions:
Does the applicant intend that the scope of the claimed “non-transitory computer-readable recording medium” to be only a non-transitory computer-readable recording medium, such as a hard drive, that is already a part of the claimed terminal device when it is shipped?
If so, then the OS program, browser, and App40 would all be within the scope of the claimed “non-transitory computer-readable recording medium” and the claimed “computer-readable instructions”.
Does the applicant intend that the scope of the claimed “non-transitory computer-readable recording medium” to be interpreted more broadly such that it encompasses a program stored on any non-transitory computer-readable recording medium and thereby encompasses non-transitory computer-readable recording mediums such as floppy discs, CD-ROMs, DVDs, magnetic tapes, and flash memory such as USB drive or SD cards?
If so, then the operations attributed to the OS program, which is usually preloaded on a non-transitory computer-readable recording medium of the terminal device before it is shipped, would be outside the scope of the claimed the scope of the claimed “non-transitory computer-readable recording medium” and the claimed “computer-readable instructions”?
Why is the applicant attempting to make a distinction between steps performed by the OS program and steps performed by App40? According to paragraph 28 of the applicant’s specification, App40 cannot display the predetermined screen without going through the OS program to access both the processor and display unit. As such, the actual act of displaying the predetermined screen would be performed by OS program, after the OS program receives a request to display the predetermined screen from App40, because the OS program is the program for controlling basic operation of the terminal device according to paragraph 20 of the applicant’s disclosure, and displaying is a basic function of the OS program.
Based on the applicant’s disclosure, if you are going to define the claim in regards to the OS program, then wouldn’t every step reference the OS program?
Likewise, based on the applicant’s disclosure, if you are going to define the claim in regards to step performed when executed by the processor, they why would you refer to some of the steps as being performed by the OS program and some of the steps being performed by App40?
The only reason, the examiner can think of, for making such a distinction is if the applicant is attempting to make a distinction between the claimed “non-transitory computer-readable recording medium” storing “computer-readable instructions” and “different computer-readable instructions” stored on a “non-transitory computer-readable, wherein the different computer-readable instructions are outside the scope of the claim. Given, that the effective filing date of the invention is November 18, 2022, it would be true that by this date most modern operating systems included the built-in capability to receive, manage, and display push notifications. This is often referred to as “Operating System Push Notification Service (OSPNS), and acts as an intermediary between app servers and the terminal device to deliver messages in real-time, even when the application is not actively in use. However, while most modern operating systems included the ability to display pull request notifications, they do not do so “natively” out of the box without a connected application acting as an intermediary. The OS provides the notification center (like Windows Action Center or macOS Notification center, while an application pushed the specific pull request data to it. As such, it is impossible for one of ordinary skill in the art to determine the intended metes and bounds of the claimed non-transitory computer-readable recording medium and the metes and bounds of the claimed computer-readable instructions. Given the manner in which the claim is written:
Does the applicant intend the “OS program” and its functions to be within the scope of the claimed “computer-readable instructions”?
Does the applicant intend the “OS program” and its functions to be outside the scope of the claimed “computer-readable instructions”?
If the OS program and its functions are intended to be outside the scope of the claimed “computer-readable instructions”, then the OS program and its functions do not limit the scope of the claim as they are merely non-functional descriptive material describing actions that are merely intended to occur before the applicant’s invention performs the claimed steps. If the OS program and its functions are intended to be inside the scope of the claimed “computer-readable instructions”, then the OS program and its functions are limiting to the scope of the claimed invention Since, one of ordinary skill in the art, is unable to determine the answer to this question, the claim, as currently written in indefinite.
Likewise, one of ordinary skill in the art would not be able determine the intended scope of the claimed “notification information”. Since, the notification information is received by the OS program and displayed by the OS program it would appear that the applicant intends the “notification information” to be interpreted as “push notification information”. However, the broadest reasonable interpretation of the term “notification information” would be any type of notification information.
Does the applicant intend the claimed “notification information” to encompass any type of received notification?
Does the applicant intend the claimed “notification information” to encompass a push notification and/or a pull notification?
Does the applicant intend the claimed “notification information” to only encompass a push notification;
One of ordinary skill in the art would need to be able to determine the answer to these questions irrespective of whether the applicant intends the OS program to be included within the scope of the claimed “computer-readable instructions or not. According to the applicant’s specification in paragraphs 34-39, the OS program receives a push notification and displays a banner image, but in order for a pull notification to be displayed, App40 must be actively executing, App40 sends a pull notification request, App40 receives the notification information, and App40 displays the banner image. As such, the only support for the OS program receiving notification information and displaying a banner image with a message included in the notification information is if the “notification information” is limited to being “push notification information”. There is no disclosure in the applicant’s specification of the OS program receiving pull notification information or any other type of notification information and the OS program displaying a banner image indicating the message included in the notification information. As such, if the applicant intends the scope of the “notification information” to be anything other than “push notification information”, the claim would need to be rejected under 35 USC 112a for lack of written description. As such, the claimed “notification information” is 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.
Next, it is clear that the OS program receives the notification information and displays the banner image. However, what part of the invention as currently claimed is performing the steps associated with “the banner image is operated by a user; and the specific model identifier included in the notification information matches a model identifier of any of the two or more registered printers”. The banner image being operated by a user cannot be within the scope of the claimed invention because it is a user operation and not an operation capable of being performed by “computer-readable code”. However, “computer-readable code” can receive an indication that the banner image has been operated by a user. Assuming, that the applicant intended to recite receive an indication that the banner image has been operated by a user, what part of the applicant’s invention receives this indication?
Does the applicant intend that the “OS program” receive this indication?
Does the applicant intend that App40 receive this indication?
Does the applicant intend the limitation to be broad enough to encompass any type of “computer-readable code” receives this indication?
If the applicant intends the interpretation to be any type of “computer-readable code”, must it be “the computer-readable code” included within the scope of the invention or can it be performed by a different “computer-readable code” such as the “OS program”, assuming that the applicant intends the “OS program” to be outside the scope of “the computer-readable code” claimed?
The same questions arise with respect to “the specific model identifier included in the notification information matches a model identifier of any of the two or more registered printers”. This is an intended result which does not limit the scope of the claimed “computer-readable code” stored on the “non-transitory computer-readable recording medium”. Does the applicant intend this limitation to be interpreted as a specific function such as “determining that the specific model identifier included in the notification information matches a model identifier of any of the two or more registered printers”? If so, is such a step intended to be interpreted as being performed by the “OS program”, App40, or some other computer-readable code? Is this some other computer-readable code intended to be within the scope of the claimed “computer-readable code”, or is it intended to be some other computer-readable code which is outside the scope of the applicant’s invention?
Without being able to determine the answer to each and every one of the above questions, it is impossible for one of ordinary skill in the art to determine the intended metes and bounds of these limitations which renders the claims indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Additionally, without being able to determine whether the OS program, App40, or some other software somehow becomes aware that the banner image has been operated, it is impossible, for one of ordinary skill in the art, to determine whether the applicant intends the OS program, App40 or some other software to “obtain the coupon code include in the notification” and/or whether the applicant intends the obtaining step to be with the scope of the claimed “computer-readable code” stored on the claimed “non-transitory computer-readable recording medium”. This renders the claims indefinite for failing to particularly point out and distinctly claim the applicant’s invention.
Finally, the limitation “supply the generated address information to a browser, so as to cause the browser to send the address information to a second server, wherein the address information including the model identifier of the specific color material cartridge and the coupon code is used by the second server for generating a purchase page in which the specific color material cartridge corresponding to the model identifier has already been specified and the coupon code has already been applied to the specific specified color material cartridge, and the purchase page is sent to the terminal device that displays the purchase page on the display unit of the terminal device” is indefinite. According to the applicant’s disclosure in paragraphs 20-21 and 28, the “browser” program, as well as the “OS program”, are usually installed on the terminal device before the terminal device is shipped, but App40 is usually installed on the terminal device after the terminal device is shipped. According to at least figures 4-6 and paragraphs 45-47, 73, and 80-81 of the applicant’s disclosure, App40 generates the address information and supplies the generated address information. As such, it is clear that these functions when performed by App40 are within the scope of the claimed “computer-readable code” stored on the claimed “non-transitory computer-readable recording medium” when executed by the claimed terminal using the claimed processor.
However, does the applicant intend the claimed “a browser” and its functions to be within the scope of the claimed “computer-readable code” stored on the claimed “non-transitory computer-readable recording medium” when executed by the claimed terminal using the claimed processor? If not, the underlined limitations above do not limit the scope of the claim. The examiner notes that the only support, in the applicant’s disclosure for displaying “the purchase page on the display unit of the terminal device” is when it is displayed by Browser 38 (see at least figures 4-7 and paragraph 48). While, there is no doubt that the “second server” and its functions are outside the scope of the claim, one of ordinary skill in the art would not be able to determine whether the applicant intends the “browser” and its functions to be outside the scope of the claims. As such, the claims are indefinite for failing to particularly point out and distinctly claim the applicant’s invention.
Dependent claims 1, 4, 20 and 22-25 fail to correct the deficiencies of the claim 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 as if the “OS program” and its functions, as well as, the “browser” and its functions are outside the scope of the claimed “a non-transitory computer-readable recording medium storing computer-readable instructions” and that the “notification information” is to be interpreted as “push notification information. As such, the OS program and its functions, as well as, the browser and its functions do not limit the scope of the claimed invention, and the notification information is push notification information. The rationale for this determination is three-fold. First, every active step of claim performed, when the claimed “computer-readable instructions” are executed, are steps performed by App40 according to the applicant’s disclosure. According to the applicant’s disclosure App40 displays the predetermined screen, generates the address information when a specific color is selected by the user in the predetermined screen, and supplies the generated address information to the browser. Second, based on paragraphs 20-21 of the applicant’s disclosure, the OS program and browser are usually installed on the terminal device prior to the terminal device being shipped, whereas, App40 is usually installed after the terminal device has been shipped. Thus, it would appear that any modern OS program and browser would inherently have the recited functions attributed to said OS program and browser, and including the OS program and browser within the claimed “a non-transitory computer-readable recording medium storing computer-readable instructions” could create an issue of divided infringement which the applicant may not desire. Third, the applicant’s disclosure does not support an OS program being able to receive notification information and display a banner image based on any notification other than push notification information.
If the applicant intends for the claimed ”non-transitory computer-readable recording medium storing computer-readable instructions for a terminal device,…, wherein the computer-readable instructions, when executed by a processor of the terminal device, cause the terminal device to:” to encompass both the OS program and its functions, as well as, the browser and its functions, the examiner suggests amending the claims to recite, in the order in which each are performed, the active steps performed by the OS program, followed by the active steps performed by the App40, and followed by the active steps perform by the browser.
Claims 11, 14, and 26-27 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 is replete with antecedent basis issues, while it might have been possible to raise an antecedent basis issue as an objection if there were only a couple such antecedent basis issues, the shear number of them means that each antecedent basis issue builds upon a previous one and in some instances the applicant may have intended to be claiming new instance of a claimed term, whereas in other instances the applicant may have intended to be referring to a previously recited claim term. This result in there being a number of possible different permutation of claim scope. As such, the claim 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 example, claim 11 first recites “receiving notification information from the first server”. However, the limitation starting with “displaying a predetermined screen” includes the limitation “such displaying performed when: notification information is received by an Operating System (OS) program from a first server”.
The initial limitation recites “the first server” which has antecedent basis to the “a first server” in the preamble of the claim. However, the claimed “a first server in the second limitations does not have antecedent based to the “a first server” in the preamble.
Likewise, the “notification information” in the second limitation does not have antecedent basis to the “notification information” in the first limitation.
Are these two different instances of “notification information” or is the second recitation of “notification information” supposed to have antecedent based to the first claimed “notification information”?
If the second instance of “notification information” is intended to have antecedent basis to the first “notification information”, why is the first instance of “notification information” merely received from the first server, whereas the second instance must be received by an OS program?
Neither limitation indicates which device of the recited “a terminal device, a first server, a second server, and two or more printers” of the system being controlled by the method is performing the initial step of receiving “notification information” or the second step of “notification information” being received by the OS program, so:
Are these two different steps being performed by different devices?
Are these two different steps being performed by a single device, that first receives “notification information” and, then at a later time receives different “notification information”, but this time it is received by an OS program of the device?
If these are supposed to be a single step why does the claim not require that the initially received “notification information” be received by the “OS program”, but the second instance of “notification information” is required to be received by the “OS program”?
The limitation starting with “displaying a predetermined screen” further recites the limitation “such displaying performed when: …, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge”.
Is this recitation of “the notification information” intended to have antecedent basis to the first claimed “notification information” or the second claimed “notification information”?
The limitation starting with “displaying a predetermined screen” further recites the limitation “such displaying performed when: …; a banner image indicating the message included in the notification information is displayed on the display unit, by the OS program”.
Is this recitation of “the notification information” intended to have antecedent basis to the first claimed “notification information” or the second claimed “notification information”?
The limitation starting with “displaying a predetermined screen” further recites the limitation “such displaying performed when: …; and the specific model identifier included in the notification information matches a model identifier of any of the two or more printers”.
Is this recitation of “the notification information” intended to have antecedent basis to the first claimed “notification information” or the second claimed “notification information”?
The accepting step of the claim recite “accepting, by the terminal device a user operation on the notification object. However, the claim never previously recite “a notification object”
The limitation “displaying a predetermined screen, which includes a predetermined object, the predetermined object being for selecting a specific color among a plurality of colors corresponding to a plurality of color material cartridges on a display unit of the terminal device in response to the user operation, such displaying performed when: …;” recites an instance of “the user operation”. As such, it has antecedent basis to the previously claimed “a user operation” in the accepting step.
However, the “a user operation” of the accepting step is performed on the “notification object”. There is no indication in the claim that the “predetermined object” included in the “predetermined screen” is associated in any way with the “notification object” in the accepting step. Neither the claimed “a predetermined screen” nor the claimed “a predeteremined object” has antecedent based to the previously claimed “notification object”.
Additionally, based on the claim, the “user operation” in the accepting step has already occurred prior to the displaying of the “predetermined screen” which includes the “predetermined object”. As such, how could the claimed “the user operation” in the displaying step possibly have antecedent basis to the previously claimed “a user operation”?
Likewise, the displaying step indicates that “the predetermined object being for selecting a specific color”. This “selecting a color” does not antecedent based to the “a user operation” in the accepting step, but could be a possible indication of there being a second user operation. Is the claimed “the user operation” in the displaying step intended to have antecedent basis to some unclaimed “user operation” which occurs when a user selects a specific color on the predetermined object included in the predetermined screen?
Perhaps, the claimed “the user operation” is intended to somehow have antecedent basis to some type of user operation that occurs later in the claim? The displaying step does include a limitation of “the banner image is operated by a user”, after “a banner image indicating the message” is displayed, by the OS program, on the terminal device. The applicant has not called this a user operation, but it might be considered a type of user operation. Does the applicant intend that the claimed “the user operation” in the displaying step somehow have antecedent basis to “the banner image operated by a user”?
Perhaps the applicant intends the claimed “the user operation” in the first displaying step have antecedent basis to the actual selecting of the specific color by the user claimed in the second displaying step?
This brings up another issue. According to the claim there are two different display steps that are associated with a predetermined screen and a predetermined object. The first displaying step “displays a predetermined screen, which includes a predetermined object, the predetermined object being for selecting a color…”. The second displaying step recites “displaying, when the specific color is selected by the user in the predetermined screen, the predetermined object included in the predetermined screen”. The claimed “the predetermined object” in the second displaying step has antecedent basis to the claims “a predetermined object” in the first displaying step. This means that it is the same predetermined object. However, the first displaying step has already displayed the “predetermined screen” that included the “predetermined object”. Thus, the “predetermined object” has already been displayed in the first displaying step. Yet, the second displaying step appears to indicate that the “predetermined object” is only displayed when the specific color is selected by the user in the predetermined screen. How can these predetermined objects have antecedent basis to one another. The initial predetermined object including in the predetermined screen was for “selecting a specific color”. The predetermined object included in the predetermined screen in the second displaying step is displayed only after a selection of the specific color. As such, it would not appear that the predetermined object or the predetermined screen in the second displaying step could have antecedent basis to the predetermined object or the predetermined screen in the first displaying step.
There are a number of other antecedent basis issues in the claim such as “a user” is recited twice in the claims and “the user” is mentioned four times, three of which occur after the second recitation of “a user”. Is this suppose to be all a single user? Is there more than one user intended to be involved in the method? If more than a single user, which of the two users is each of the claimed “the user” intended to have antecedent basis?
As such, it is clear that there are so many antecedent basis issues in the claim that it would be impossible for the examiner to determine the intended metes and bounds of the claim. The issues are so pervasive that the examiner is unable to determine whether it would be proper to raise 112a rejections such as those raised for system claim 10 and/or raise additional 112b rejections similar to those raised for the computer program product claim 1.
Therefore, it is clear that claim 11 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.
Dependent claims 14, and 26-27 fail to cure 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 the interpret claim 20 in the manner indicated in the Claim Interpretation section above.
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.
Section 33(a) of the America Invents Act reads as follows
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1, 4, 20 and 22-25 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 1 is to a non-transitory computer-readable recording medium storing computer-readable instructions for a terminal device, the computer-readable instructions being configured to cause any of two or more registered printers registered in a memory of the terminal device to execute a printing function, wherein the computer-readable instructions, when executed by a processor of the terminal device, cause the terminal device to: and includes the limitation “the banner image is operated by a user”. This limitation is not describing what the “computer-readable code” does when a user performs an operation on the banner image, instead is requires that the non-transitory computer-readable recording medium storing computer-readable instructions actually include a human performing an operation. Since, a non-transitory computer-readable storage medium storing computer-readable instructions may not comprise an actual human being, the claims attempt to include a human organism in such a medium is improper. This means that claim 1 must be rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. Dependent claims 4, 20 and 22-25 fail to correct the deficiencies of the claims and, as such, are rejected by virtue of dependency.
Assuming that claim 1 is amended to remove the human organism from the scope of the claimed non-transitory computer-readable recording medium, claims 1, 4, 20 and 22-25 would be directed to 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, 4, 20 and 22-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 1 recite(s) the following abstract idea: (Examiner Note: As indicated in the 35 USC 112b rejection above, the two or more registered printers, the first server, the color material cartridge, the first registered printer, the second server, the OS program, and the browser, as well as, their respective functions have been included as part of the abstract idea because they are outside the scope of the applicant’s invention and, as such, cannot be considered an additional element of the claimed invention.)
displaying a predetermined screen, which includes a predetermined object, the predetermined object being for displaying a plurality of colors corresponding to a plurality of color material cartridges in a case where: notification information is received by an Operating System (OS) program from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge; a banner image indicating the message included in the notification information is displayed, by the OS program; the banner image is operated by a user; and the specific model identifier included in the notification information matches a model identifier of any of the two or more registered printers; when the banner image is operated by the user, obtain the coupon code included in the notification information;
receiving an indication that a user has selected a specific color of the plurality of colors displayed;
generating address information to access a second server, the generated address information including a model identifier of a specific color material cartridge corresponding to the selected specific color and the coupon code; and
supplying the generated address information to a browser, so as to cause the browser to send the address information to the second server, wherein the address information including the model identifier of the specific color material cartridge and the coupon code is used by the second server for generating a purchase page in which the specific color material cartridge has already been specified and the coupon code has already been applied to the specific color material cartridge, and the purchase page is sent to the browser; wherein the browser displays the purchase page.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing, or sales related 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 (i.e., terminal device) with a memory and a display unit executing software (e.g., a general-purpose computer with generic computer components); and
a generic interactive user interface (e.g., a generic computer element as per the Intellectual Ventures I v. Capital One decision).
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)):
displaying, on a display unit of a terminal device, a predetermined screen, which includes a predetermined object, the predetermined object being for displaying a plurality of colors corresponding to a plurality of color material cartridges in a case where: notification information is received by an Operating System (OS) program from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge; a banner image indicating the message included in the notification information is displayed, by the OS program; the banner image is operated by a user; and the specific model identifier included in the notification information matches a model identifier of any of the two or more registered printers; when the banner image is operated by the user, obtain the coupon code included in the notification information; (displaying data)
receiving, by the terminal device, an indication that a user has selected a specific color of the plurality of colors displayed (receiving data); and
supplying the generated address information to a browser, so as to cause the browser to send the address information to the second server, wherein the address information including the model identifier of the specific color material cartridge and the coupon code is used by the second server for generating a purchase page in which the specific color material cartridge has already been specified and the coupon code has already been applied to the specific color material cartridge, and the purchase page is sent to the browser; wherein the browser displays the purchase page (transmitting data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more 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 a computer, or merely uses a computer 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 (i.e., terminal device) with a memory and display unit executing software, and a generic interactive interface (e.g., a general-purpose computer with generic computer components and a generic computer element) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“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 a computer, 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 computers and/or one or more generic computer components (as evidenced from Figure 1 and paragraph 15-19, and 21 of the applicant’s specification, as well as, the Intellectual Ventures I v. Capital One decision which discloses that an interactive interface that merely displays data and receiving input from a user is a generic computer element); 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)):
displaying, on a display unit of a terminal device, a predetermined screen, which includes a predetermined object, the predetermined object being for displaying a plurality of colors corresponding to a plurality of color material cartridges in a case where: notification information is received by an Operating System (OS) program from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge; a banner image indicating the message included in the notification information is displayed, by the OS program; the banner image is operated by a user; and the specific model identifier included in the notification information matches a model identifier of any of the two or more registered printers; when the banner image is operated by the user, obtain the coupon code included in the notification information; (displaying data)
receiving, by the terminal device, an indication that a user has selected a specific color of the plurality of colors displayed (receiving data); and
supplying the generated address information to a browser, so as to cause the browser to send the address information to the second server, wherein the address information including the model identifier of the specific color material cartridge and the coupon code is used by the second server for generating a purchase page in which the specific color material cartridge has already been specified and the coupon code has already been applied to the specific color material cartridge, and the purchase page is sent to the browser; wherein the browser displays the purchase page (transmitting data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
The dependent claims 4, 20 and 22-25 appear to merely further limit the abstract idea by further limiting the obtained coupon code which is considered part of the abstract idea (Claim 4); and further limiting the banner image, the notification information, the one or more registered printers registered, and the coupon code which are all considered part of the abstract idea (Claims 20, and 22-25), and therefore only further limit the abstract idea (i.e. “PEG” Revised Step 2A Prong One=Yes), does/do not include any new additional elements that are sufficient to amount to significantly more than the judicial exception, and as such are “directed to” said abstract idea (i.e. “PEG” Step 2A Prong Two=Yes); and do not add significantly more than the idea (i.e. “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claims 1, 4, 20 and 22-25 are not patent eligible.
Claim 10 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 10 is to a system, the system comprising: “the banner image is operated by a user”. This limitation is not describing what the system does when a user performs an operation on the banner image, instead is requires that the system to actually comprise a user performing an action. This mean the system comprises a human organism. As such, claim 10 must be rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism.
Assuming that claim 10 is amended to remove the human organism from the scope of the claimed system, claims 10 would be directed to a system 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 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim(s) 10 recite(s) the following abstract idea:
receiving push notification information from a notification provider, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge;
displaying a banner image indicating the message included in the notification information;
receiving an indication that the banner image has been operated on by a user;
matching the specific model identifier included in the notification information with a stored model identifier a data representing any of two or more registered printers;
obtaining the coupon code included in the notification information;
displaying a predetermined screen, which includes a predetermined object, the predetermined object including a display of a plurality of colors corresponding to a plurality of color material cartridges;
receiving an indication of a specific color of the plurality of colors displayed which the user desires to select;
generating address information for accessing a color cartridge provider, the generated address information including a model identifier of the specific color material cartridge corresponding to the selected specific color and the coupon code;
sending the generated address information to the color cartridge provider;
using the address information, by the color cartridge provider, to generate a purchase page in which the specific color material cartridge has already been specified and the coupon code has already been applied to the specific color material cartridge;
sending, by the color cartridge provider, the generated purchase page for display; and
displaying the purchase page.
The limitations as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely commercial or legal interactions because they recite advertising, marketing, or sales related 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 terminal device with a processor, a memory and a display unit executing software (e.g., a first general-purpose computer with generic computer components);
a graphical user interface that merely displays data and accepts user input (a generic computer element as per the Intellectual Ventures I v. Capital One decision);
a first server (e.g., a second general-purpose computer);
a second server (e.g., a third general-purpose computer);
two or more printers (e.g., two or more generic computer components)
When considered individually, each of these additional elements are merely a general-purpose computer, a generic computer component, or a generic computer element which are each tools used to apply the abstract idea. When considered in combination the first server merely performs the insignificant steps of transmitting and or receiving data and the one or more printers perform no function at all in the claim. The second server receives a URL (address information) and generates a web page which is a normal function of a web server and transmits the web page for display. The terminal device with a memory and display unit (general-purpose computer with generic computer components) with the aid of the generic interactive graphical user interfaces performs every other step of the abstract idea using . As such, the arrangement of devices does not result in an improvement capable of transforming an abstract idea into a practical application because the only element other than the terminal device which performs a significant step is the web server which performs a normal function of web server. As such, any improvement obtained by practicing the abstract idea is rooted solely in the portion of the abstract idea that is being applied using the terminal device with a memory and not rooted in the arrangement of devices. Improvements of this nature are improvements to an abstract idea which is an improvement in ineligible subject matter (see MPEP 2106 - "the judicial exception alone cannot provide the improvement."; and SAP v. Investpic: Page 2, line 22 through Page 3, line 13 - Even assuming that the algorithms claimed are groundbreaking, innovative or even brilliant, the claims are ineligible because their innovation is an innovation in ineligible subject matter because they are nothing but a series of mathematical algorithms based on selected information and the presentation of the results of those algorithms. Thus, the advance lies entirely in the realm of abstract ideas, with no plausible alleged innovation in the non-abstract application realm. An advance of this nature is ineligible for patenting; and Page 10, lines 18-24 - Even if a process of collecting and analyzing information is limited to particular content, or a particular source, that limitations does not make the collection and analysis other than abstract.).
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, by a processor executing on a terminal device, push notification information from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge (receiving data);
displaying, by the processor of the terminal device, a banner image indicating the message included in the notification information (displaying data);
receiving, by the processor of the terminal device, an indication that the banner image has been operated on by a user (receiving data);
obtaining, by the processor of the terminal device, the coupon code included in the notification information (receiving data and/or transmitting and receiving data);
displaying, by the processor of the terminal device, a predetermined screen, which includes a predetermined object, the predetermined object including a display of a plurality of colors corresponding to a plurality of color material cartridges (displaying data);
receiving, by the processor of the terminal device, an indication of a specific color of the plurality of colors displayed which the user desires to select (receiving data);
sending, by the processor of the terminal device, the generated address information to the second server (transmitting data);
sending, by the second server, the generated purchase page to the processor of the terminal device for display (transmitting data); and
displaying, by the processor of the terminal device, the purchase page (displaying data).
The additional technical elements above are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing, communicating (e.g., transmitting and receiving), and displaying) such that it amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more 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 a computer, or merely uses a computer 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 terminal device with a processor, a memory and a display unit executing software (e.g., a first general-purpose computer with generic computer components); a graphical user interface that merely displays data and accepts user input (a generic computer element as per the Intellectual Ventures I v. Capital One decision); a first server (e.g., a second general-purpose computer); a second server (e.g., a third general-purpose computer); and two or more printers (e.g., two or more generic computer components) to perform the claimed functions amounts to no more than mere instructions to apply the exception using one or more general-purpose computers and/or one or more generic computer components.
“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 a computer, 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 computers and/or one or more generic computer components (as evidenced from Figure 1 and paragraph 15-19, and 21 of the applicant’s specification, as well as, the Intellectual Ventures I v. Capital One decision; Garg et al. (PGPUB: 2008/0091685) which discloses in paragraphs 4-6 that creating web pages using dynamic URLs was well-known in 2008 and used by well-known ecommerce companies such as Amazon; Kristensen, The 7 Best WooCommerce Stores to Inspire Your Own, May 24, 2022, https://web.archive.org /web/20220628032926/https://www.drip.com/blog/best-woocommerce-stores, pages 1-30 which discloses on page 1 that WooCommerce was the most popular e-commerce platform in 2021; and woocommerce.com, URL Coupons – How to Apply Single or Multiple Coupons on Click of a Link, July 1, 2022, https://web.archive.org/web/ 20220701045641/https://woocommerce.com/document/smart-coupons/how-to-apply-single-or-multiple-coupons-on-click-of-a-link/, pages 1-16, which discloses on page 13 that WooCommerce used URLs with coupon code parameters that get automatically applied); 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, by a processor executing on a terminal device, push notification information from a first server, the notification information including a coupon code which is usable for purchasing a color material cartridge, a message related to the color material cartridge, and a specific model identifier of a specific printer capable of using the color material cartridge (receiving data);
displaying, by the processor of the terminal device, a banner image indicating the message included in the notification information (displaying data);
receiving, by the processor of the terminal device, an indication that the banner image has been operated on by a user (receiving data);
obtaining, by the processor of the terminal device, the coupon code included in the notification information (receiving data and/or transmitting and receiving data);
displaying, by the processor of the terminal device, a predetermined screen, which includes a predetermined object, the predetermined object including a display of a plurality of colors corresponding to a plurality of color material cartridges (displaying data);
receiving, by the processor of the terminal device, an indication of a specific color of the plurality of colors displayed which the user desires to select (receiving data);
sending, by the processor of the terminal device, the generated address information to the second server (transmitting data);
sending, by the second server, the generated purchase page to the processor of the terminal device for display (transmitting data); and
displaying, by the processor of the terminal device, the purchase page (displaying data).
Thus, taken individually and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea) (i.e., “PEG” Step 2B=No).
Thus, based on the detailed analysis above, claim 10 is not patent eligible.
The entire scope of Claims 11, 14, and 26-27 (as indicated in the Claim Interpretation above) is a method for controlling a system with a terminal device comprising: receiving notification information from a first server (e.g., receiving data); and accepting, by a terminal device comprising a memory, a user operation on a notification object (e.g., receiving data). Every other limitation recited in the claims does not limit the scope of said claims as explained in the Claim Interpretation section above. As such, despite the fact that the claims only recite the insignificant extra-solution activity of receiving data, the claims are so broad that they cannot be properly placed into one of the enumerated groupings of abstract idea. As such, claims 11, 14, and 26-27, as currently amended, overcome the previous 35 USC 101 rejection under Step 2a, Prong 1. The examiner notes that should the claims be amended move some of the limitations which do not currently limit the scope of the claims to be requires steps of the claimed method. A new analysis under 35 USC 101 will need to be performed.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 11, 14, and 26-27 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Ghike (PGPUB: 2020/0226183).
Claims 11, 14, and 26-27: A method performed by a terminal device comprising a memory, the method comprising:
receiving, by the terminal device comprising the memory, notification information from a first server (Paragraphs 12, 33-35, 38, and 51: receiving, by a client device a push notification, such as a toast notification, from a server); and
accepting, by the terminal device comprising the memory, a user operation on a notification object (Paragraphs 12, 33-35, 38, and 51: the client device accepting a user operation on a displayed push notification and/or the user device accepting a user selection on an in-app notification, the client device including a computer which inherently has a memory).
Possible Allowable Subject Matter
Claims 1, 4, 10, 20 and 22-25 contains subject matter that would be allowable if the applicant were to overcome the 35 USC 112(a) rejections, the 35 USC 112(b) rejections and 35 USC 101 rejections above.
The following is a statement of reasons for the indication of allowable subject matter: The examiner has found prior art (see Matsutani: 2017/0223127; Ghike: 2020/0236183; Toumayan et al. (PGPUB: 2016/0189193); and Ogawa: 2021/0191673) that discloses a non-transitory computer-readable recording medium storing computer-readable instructions in a memory of a terminal device, and a method and system comprising the terminal device, a first server, a second server, and one or more printers which are to be registered, so as to constitute one or more registered printers, performing the steps of:
storing, in the memory of the terminal device, registration information of the one or more registered printers;
transmitting, by the first server to the terminal device notification information;
receiving, by the terminal device, the notification information;
displaying, by the terminal device on the display unit, a notification object corresponding to the notification information, the notification object indicating a message related to a color material cartridge;
accepting, by the terminal device, a user operation on the notification object;
displaying, by the terminal device on the display unit, a predetermined screen including a predetermined object, in response to the user operation on the notification object;
obtaining, by the terminal device from the first server, a coupon code which is usable for purchasing a color material cartridge to be attached to a first registered printer among the one or more registered printers, in response to the user operation on the notification object;
accepting a user operation on the predetermined object;
generating, by the terminal device, address information to access the second server, the generated address information including a model identifier of the color material cartridge to be attached to the first registered printer and the coupon code to be applied to the color material cartridge to be attached to the first registered printer;
sending, by the terminal device and to the second server, the address information;
using, by the second server, the address information to generate a purchase page in which the color material cartridge corresponding to the model identifier has already been specified and the coupon code has already been applied to the specified color material cartridge; and
sending, by the second server, the generated purchase page to the terminal device to display the purchase page on the display unit of the terminal device.
Thus, the examiner has found prior art that teaches each and every limitation of the claims.
However, the examiner has determined that it would not have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to combine these four references to arrive at the applicant’s invention without the use of impermissible hindsight by using the applicant’s claims as a roadmap.
Therefore, claims 1, 4, 10, 20 and 22-25 contains subject matter that would be allowable if the applicant were to overcome the 35 USC 112(a) rejections, the 35 USC 112(b) rejections and 35 USC 101 rejections above.
Response to Arguments
Applicant's arguments filed March 10, 2026 have been fully considered but they are not persuasive.
The applicant argues that claim 1, as currently amended, overcomes the 35 USC 101 rejection, because it recites a terminal device with a processor and a display unit, as well as, a predetermined screen with a predetermined object, wherein a user may perform a selection on the predetermined object, as well as a banner image than can be operated on by a user. This represents two interfaces which should be considered an improved graphical user interface and overcome the 101 rejections under Step 2a, Prong 2 and/or Step 2b. The examiner disagrees. First, as indicated in the 35 USC 112b rejection above, the scope of the claim as currently written does no include two different graphical user interfaces. The only graphical user interface currently within the scope of claim 1 is a generic interactive interface that display a plurality of selectable color choices and allows a user to input a selection. Interactive graphical user interfaces of this type are generic computer elements as per the Intellectual Ventures I v. Capital One decision. As such, the additional elements of the claim, as currently written, amount to a general-purpose computer (i.e., a terminal device with a processor and display unit executing software) using a generic computer element (i.e., an interactive graphical user interface) as a tool to merely apply the abstract idea and, as such, is insufficient to transform the abstract idea into a practical application under Step 2a, Prong2, and insufficient to be considered “significantly more” under Step 2b. Second, even if the examiner were to interpret claim 1 as having two different graphical user interfaces within the scope of the claim, the second user interface merely displays data and accepts a user input, so it too would be considered a generic computer element which would result in the additional elements of the claim would amount to a general-purpose computer (i.e., a terminal device with a processor and display unit executing software) using two generic computer elements (i.e., two interactive graphical user interfaces) as a tool to merely apply the abstract idea and, as such, is insufficient to transform the abstract idea into a practical application under Step 2a, Prong2, and insufficient to be considered “significantly more” under Step 2b. Third, if claim 1 was to be amended such that two different graphical user interfaces within the scope of the claim, there is no functionally operative relationship between the first interactive interface and the second interactive interface currently claimed. A user interacting with the banner image interactive graphical user interface does not cause App40 to execute and display the SC3 interactive graphical user interface. As such, it is clear that the claim, if amended to require both user interfaces with the scope of the claim, would still be a first generic user interface that merely displays data and accepts user input and a second generic user interface that merely displays data and accepts user input. Even if the claim were to be amended such that the push notification banner image interactive user interface cause an application to execute and display a second interactive user interface, this functionality between the two interfaces would likely not be enough to overcome the 35 USC 101 rejection because, given the effective filing date of the invention is November 18, 2022, most modern operating systems included the built-in capability to receive, manage, and display push notifications. This is often referred to as “Operating System Push Notification Service (OSPNS), and acts as an intermediary between app servers and the terminal device to deliver messages in real-time, even when the application is not actively in use. OSPNs (such as Apple Push Notification Service or Firebase Cloud Messaging) act as a mediator to route the message, and upon a user's action, the OS takes the user directly to the relevant screen within that application. While a formal amendment requiring such a functional interaction between the push notification banner image graphical user interface and the execution of App40 to display the SC3 graphical user interface would require the examiner to provide proof that this was well-understood, routine, and conventional functionality between such two graphical user interfaces, it is highly likely, given the effective filing date of the invention and the prevalence of OS programs with built in OSPNS functionality such as Apple Push Notification Service at that time, that such proof would be trivial to find. As such, even amending the claims to requires such basic functionality between the displayed push notification and execution of App40 to display SC3, would not be considered an improvement that overcomes the 101 rejections. Instead, the examiner would suggest amending the claims to focus on the applicant invented App40 and the functionality of the one or more graphical user interfaces within App40 and/or the functional interactions between the various graphical user interfaces within App40. For example, SC3 appears to not only display generic checkboxes and a generic button, but also displays the amount of ink remaining in each color cartridge of a specific printer. How does SC3 obtain this specific information for this specific printer? How did App40 or the SC3 interface determine which of the two or more printers color cartridge information to display in SC3? How did App40 or the SC3 interface determine how much ink was left in each color cartridge of the specific printer of the two or more printers? Based on applicant’s disclosure it would appear that the applicant could refer to App40 in the claims as an interactive graphical user interface printer application since the main function of App40 is to provide different interactive screens (e.g., SC2, SC3) to perform various functions. The examiner suggests using this to the applicant’s advantage. Positively claim an interactive graphical user interface printer application (e.g. App40) and the specific functionality of its interactive screen and/or the functional interactions between said screens rather than merely claiming what a screen displays or that it accepts user input. As such, it is clear that the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant argues that the claims are similar to abstract idea example 37 and, as such, should overcome the 35 USC 101 rejections. The examiner disagrees. Claim 1 of the instant invention bears no similarity to the claims of abstract idea example 37. The claims of abstract idea example 37, claimed an improved graphical user interface based on an applicant invented functionality of the graphical user interface that was different from the manner in which such traditional graphical user interface operated. For example, the Windows operating system has long had the ability to move and rearrange icons on its graphical user interface. One could rearrange icons by size, date, item type, and date modified by right clicking on the main interface and selecting sort by. Likewise, one could right click on the main interface and select auto arrange icons so that icons are always automatically rearrange. However, the claims in abstract idea example 37, had a user arrange the icons on the screen in the manner they desire; monitor the amount of user interaction with each icon; and then automatically rearrange the icons on the screen such that the most frequently used icons are closest to the start menu. It was this newly invented functionally that was considered an improvement resulting in an improved graphical user interface. In contrast, as explained in the response to rejection above, the instant claim merely display data and accept user input. There is no other functionality claimed with regards to any of the graphical user interfaces, and no functional interactions between the interfaces claims. As such, the claims bear no similarity with the claims of abstract idea example 37. Instead, the interactive interfaces of the instant claims merely display data and accept user input. Interfaces of this type are generic computer elements as per the Intellectual Ventures I v. Capital One decision. Therefore, the applicant’s arguments are not convincing and the rejections have been maintained.
The applicant puts forth no specific argument with regards to the 35 USC 112a and 35 USC 112b rejections raised in the office action dated December 10, 2025. Instead, the applicant merely asserts that the claims have been amended to overcome said rejections. The examiner disagrees. As indicated by the 35 USC 112a and 35 USC 112b rejections above, most of the claims, as amended, still fail to satisfy the requirements under 35 USC 112a or 35 USC 112b.
The examiner suggests amending each of the claims to positively recite each of the claimed steps rather than using the applicants currently style of claim. For example, in claim 1, rather than positively stating “display a predetermined screen…on a display unit of the terminal device in a case when:…”, the applicant should consider positively requiring each step to occur in the order that they occur. The limitations following “in a case when:” need to occur before the claimed displaying can occur. Therefore, positively claim each of these steps as occurring before positively claiming the displaying. This could be done by claiming something like: “receiving push notification information…; generating, a banner image…; displaying the banner information…; receiving a first indication that a user has interacted with the banner image…; matching the specific model identifier…; obtaining the coupon code…; displaying a predetermined screen…; etc.”. Crafting a claim in the manner makes it clear that each step is required to occur and is within the scope of the claim itself. If the claim is intended to have multiple devices within the scope of the claim and each device performs specific actions, the craft these claims as: (positively recited action), by (device), (remainder of limitation). Using this approach makes it easy to determine which devices are within the scope of a claim and what action the device is required to perform. The examiner notes that such a method of writing claims is not required. It would merely assist with compact prosecution of the case by making sure that the examiner can immediately identify those limitations and devices the applicant intends to be within the scope of the claimed invention, and which limitations are intended to be associated with, but outside the scope of, the applicant’s invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Whale (PGPUB: 2002/0188504) which discloses a print system (e.g., terminal device with one or more registered devices) communicates with a vendor system to order components. During data sessions in which orders are placed and received, the vendor system gathers usage parameters indicating levels of consumable product usage by print devices. The vendor system monitors the usage parameters over time and detects changes in usage levels by different print systems. If consumable product usage has changed by a predetermined amount, the vendor system initiates promotional activities directed to operators of the print systems.
Nagasaki (PGPUB: 2018/0157942) which discloses determining that consumable product of a registered device such as a printer is in need of replenishment, transmitting a push notification of a discount campaign for ink for the model number of the printer, wherein the notification includes a URL for obtaining the advertised discount and causing the notification to be output.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 JOHN W VAN BRAMER whose telephone number is (571)272-8198. The examiner can normally be reached Monday-Thursday 5:30 am - 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Spar Ilana can be reached on 571-270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John Van Bramer/Primary Examiner, Art Unit 3622
Prosecution Insights