Detailed Action
Status of Claims
Claims 1, 6 – 12, & 17 – 26 were previously pending and subject to a non-final office action mailed 02/11/2026. Claims 1, 12, & 23 – 26 were amended in a reply filed 05/01/2026.
Claims 1, 6 – 12, & 17 – 26 are currently pending and subject to the final office action below.
Response to Arguments
Applicant’s arguments regarding the previous rejection of the claims under 35 USC 101 have been considered but are not persuasive.
Applicant initially argues, on pg. 11, that “The claims as amended are directed to a specific technical improvement in device management logic” because “the amended claim removes the focus on a "request notification" for a "plan change". The amended claim now focuses on detecting a change in a technical value, the "upper limit number of print pages". Thus, claim 1 as amended is directed to image forming rather than a business transaction between a user and a service provided.”
Examiner respectfully disagrees, and notes that the instant specification, at para. 6, clarifies that, rather than being directed to “image forming,” the instant invention is directed to “a mechanism by which a consumable product can be shipped at an appropriate timing.” This is performed, as per para. 19 of the instant specification, in the context of a “subscription service” which “provides a plurality of plans that are different in the upper limit number of print pages. This subscription service allows printing on pages within the upper limit number of print pages corresponding to a plan contracted by a user at a fixed price during a contract period.” Thus, it is clear that the claims are directed to managing a subscription for a customer in which products are shipped at an appropriate time. The claims recite limitations which are processes that, under the broadest reasonable interpretation, cover performance of the limitations in a business relation or commercial interaction. That is, the functions in the context of claims 1, 12, & 23 – 26 encompass shipping printing product replenishments to customers based on a subscription. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in a commercial interaction, or while managing personal behavior or relationships or interactions between people, then it falls within the "Certain Methods of Organizing Human Activity" grouping of abstract ideas e.g., “commercial or legal interactions (including marketing or sales activities or behaviors; business relations, and following rules or instructions).” Accordingly, the claims recite an abstract idea.
Applicant next argues, on pp. 11 – 12, that because the “amended claims recite decreasing the threshold (predetermined value) when the print limit increases, and vice versa,” that “is a specific technical process to alleviate user burden” and integrates the recited abstract idea into a practical application.
Examiner respectfully disagrees, and notes that the court in Enfish stated that “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. As noted infra, in Bilski and Alice and virtually all of the computer-related § 101 cases we have issued in light of those Supreme Court decisions, it was clear that the claims were of the latter type—requiring that the analysis proceed to the second step of the Alice inquiry, which asks if nevertheless there is some inventive concept in the application of the abstract idea.” See Alice, 134 S. Ct. at 2355, 2357–59. In this case, however, the plain focus of the claims is not to an improvement to computer functionality itself, but “on economic or other tasks (i.e., alleviating user burden) for which a computer is used in its ordinary capacity.” Examiner reiterates that, as per the instant specification, at para. 6, the instant invention is directed to the following business-related benefit: “a mechanism by which a consumable product can be shipped at an appropriate timing.” This represents an improvement to the recited commercial interaction itself, rather than to an improvement in the functionality of a computing device or other technology. Thus, the claims are directed to a judicial exception without additional elements that would provide integration into a practical application or significantly more.
Applicant next argues, on pg. 12, that “By requiring the apparatus to calculate a consumption rate per page and then dynamically adjust the trigger point based on a change in the print capacity (the upper limit), the claims describe a non-conventional way to handle supply chains for an information processing apparatus” and thus “the claims provide "significantly more" than what is routine or conventional” because the claims prevent “premature or late shipments more effectively than standard methods.”
Examiner respectfully disagrees, and notes that “preventing premature or late shipments more effectively than standard methods” is likewise a business-related improvement, rather than an improvement in computer functionality or any other technology. Furthermore, dynamically changing when a product ships based on changing customer product consumption is a part of the recited commercial interaction itself. Indeed, customers often consume various types of products at changing rates over time, and need replenishment accordingly. Managing a subscription service which determines proper replenishment timing is a commercial interaction – as opposed to a technological improvement. As per Enfish, “preventing premature or late shipments more effectively than standard methods”) is an economic or other task for which a computer is used in its ordinary capacity. Therefore, the claims are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 6 – 12, & 17 – 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1, 6 – 12, & 17 – 22 are directed to a system (i.e., a machine). Claims 23 & 25 are directed to a process (i.e., a method). Claims 24 & 26 are directed to a product. Therefore, claims 1, 6 – 12, & 17 – 26 all fall within the one of the four statutory categories of invention.
Step 2A, Prong One
Independent claims 1 recites: “receiving… a consumption degree of a consumable product; obtaining a number of printed pages in a use period of the consumable product; calculating a consumption rate indicating the consumption degree of the consumable product per one print page based on the consumption degree and the number of printed pages; detecting that a value of an upper limit number of print pages associated with the image forming apparatus has been changed; setting a predetermined value based on the detected change in the upper limit number of print pages, wherein the predetermined value is decreased in a case where the detected change indicates an increase in the upper limit number of print pages, and wherein the predetermined value is increased in a case where the detected change indicates a decrease in the upper limit number of print pages; calculating a predicted consumption degree of the consumable product based on an upper limit number of print pages and the consumption rate, the updated upper limit number being different from a previously stored upper limit number of print pages; determining whether the predicted consumption degree reaches the predetermined value; and… initiate a shipment request… to ship the consumable product to the user in a case where it is determined that the predicted consumption degree reaches the predetermined value.”
Independent claim 12 recites: “receiving… a consumption degree of a consumable product; obtaining a number of printed pages in a use period of the consumable product; calculating a consumption rate indicating the consumption degree of the consumable product per one print page based on the consumption degree and the number of printed pages; detecting that a value of an upper limit number of print pages associated with the image forming apparatus has been changed; setting a predetermined value based on the detected change in the upper limit number of print pages, wherein the predetermined value is decreased in a case where the detected change indicates an increase in the upper limit number of print pages, and wherein the predetermined value is increased in a case where the detected change indicates a decrease in the upper limit number of print pages; calculating a predicted consumption degree of the consumable product based on an upper limit number of print pages and the consumption rate, the updated upper limit number being different from a previously stored upper limit number of print pages; determining whether the predicted consumption degree reaches the predetermined value; and… initiate a shipment request… to ship the consumable product to the user in a case where it is determined that the predicted consumption degree reaches the predetermined value.”
Independent claim 23 recites: “receiving… a consumption degree of a consumable product; obtaining a number of printed pages in a use period of the consumable product; calculating a consumption rate indicating the consumption degree of the consumable product per one print page based on the consumption degree and the number of printed pages; detecting that a value of an upper limit number of print pages associated with the image forming apparatus has been changed; setting a predetermined value based on the detected change in the upper limit number of print pages, wherein the predetermined value is decreased in a case where the detected change indicates an increase in the upper limit number of print pages, and wherein the predetermined value is increased in a case where the detected change indicates a decrease in the upper limit number of print pages; calculating a predicted consumption degree of the consumable product based on an upper limit number of print pages and the consumption rate, the updated upper limit number being different from a previously stored upper limit number of print pages; determining whether the predicted consumption degree reaches the predetermined value; and… initiate a shipment request… to ship the consumable product to the user in a case where it is determined that the predicted consumption degree reaches the predetermined value.”
Independent claim 24 recites: “receiving… a consumption degree of a consumable product; obtaining a number of printed pages in a use period of the consumable product; calculating a consumption rate indicating the consumption degree of the consumable product per one print page based on the consumption degree and the number of printed pages; detecting that a value of an upper limit number of print pages associated with the image forming apparatus has been changed; setting a predetermined value based on the detected change in the upper limit number of print pages, wherein the predetermined value is decreased in a case where the detected change indicates an increase in the upper limit number of print pages, and wherein the predetermined value is increased in a case where the detected change indicates a decrease in the upper limit number of print pages; calculating a predicted consumption degree of the consumable product based on an upper limit number of print pages and the consumption rate, the updated upper limit number being different from a previously stored upper limit number of print pages; determining whether the predicted consumption degree reaches the predetermined value; and… initiate a shipment request… to ship the consumable product to the user in a case where it is determined that the predicted consumption degree reaches the predetermined value.”
Independent claim 25 recites: “receiving… a remaining amount of a consumable product; obtaining a number of printed pages in a use period of the consumable product; calculating a consumption rate indicating the remaining amount of the consumable product per one print page based on the remaining amount and the number of printed pages; detecting that a value of an upper limit number of print pages associated with the image forming apparatus has been changed; setting a predetermined value based on the detected changes in the upper limit number of print pages, wherein the predetermined value is increased in a case where the detected change indicates an increase in the upper limit number of print pages, and wherein the predetermined value is decreased in a case where the detected change indicates a decrease in the upper limit number of print pages; calculating a predicted remaining amount of the consumable product based on an upper limit number of print pages and the consumption rate, the updated upper limit number being different from a previously stored upper limit number of print pages; determining whether the predicted remaining amount is not more than the predetermined value; and… initiate a shipment request… to ship the consumable product to the user in a case where it is determined that the predicted remaining amount is not more than the predetermined value.”
Independent claim 26 recites: “receiving… a remaining amount of a consumable product; obtaining a number of printed pages in a use period of the consumable product; calculating a consumption rate indicating the remaining amount of the consumable product per one print page based on the remaining amount and the number of printed pages; detecting that a value of an upper limit number of print pages associated with the image forming apparatus has been changed; setting a predetermined value based on the detected change in the upper limit number of print pages, wherein the predetermined value is increased in a case where the detected change indicates an increase in the upper limit number of print pages, and wherein the predetermined value is decreased in a case where the detected change indicates a decrease in the upper limit number of print pages; calculating a predicted remaining amount of the consumable product based on an upper limit number of print pages and the consumption rate, the updated upper limit number being different from a previously stored upper limit number of print pages; determining whether the predicted remaining amount is not more than the predetermined value; and… initiate a shipment request… to ship the consumable product to the user in a case where it is determined that the predicted remaining amount is not more than the predetermined value.”
The limitations stated above are processes that, under the broadest reasonable interpretation, covers performance of the limitation in a business relation or commercial interaction. That is, the functions in the context of claims 1, 12, & 23 – 26 encompass shipping printing product replenishments to customers based on a subscription. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in a commercial interaction, or while managing personal behavior or relationships or interactions between people, then it falls within the "Certain Methods of Organizing Human Activity" grouping of abstract ideas e.g., “commercial or legal interactions (including marketing or sales activities or behaviors; business relations, and following rules or instructions).” Accordingly, the claims recite an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. Independent claims 1, 12, & 23 – 26, as a whole, amount to: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), (ii) adding insignificant extra-solution activity to the judicial exception, as well as (iii) generally linking the recited judicial exception to a particular field or technological environment. Claim 1 recites the additional computer-related elements of “information processing apparatus,” “one or more memories that store instructions,” “one or more processors that execute a method by executing the instructions stored in the one or more memories,” and “order server.” Claim 12 recites the additional computer-related elements of “information processing apparatus,” “one or more memories that store instructions,” “one or more processors that execute a method by executing the instructions stored in the one or more memories,” and “order server.” Claim 23 recites the additional computer-related elements of “information processing apparatus” and “order server.” Claim 24 recites the additional computer-related elements of “non-transitory computer-readable storage medium storing a control program causing a computer to execute a control method,” “information processing apparatus,” and “order server.” Claim 25 recites the additional computer-related elements of “information processing apparatus” and “order server.” Claim 26 recites the additional computer-related elements of “non-transitory computer-readable storage medium storing a control program causing a computer to execute a method,” “information processing apparatus,” and “order server.” Claims 1, 12, & 23 – 26 recite the additional elements of: “image forming apparatus,” “from an image forming apparatus via a communication interface,” and “generate a control signal to an order server” / “generate a control signal to an order server.”
The additional computer-related elements of “information processing apparatus,” “one or more memories that store instructions,” “one or more processors that execute a method by executing the instructions stored in the one or more memories,” “order server,” “non-transitory computer-readable storage medium storing a control program causing a computer to execute a control method,” and “non-transitory computer-readable storage medium storing a control program causing a computer to execute a method” are recited at a high-level of generality, such that, when viewed as whole/ordered combination, they amount to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
The additional element of “image forming apparatus” merely generally links the recited judicial exception to a particular technological environment (see MPEP § 2106.05(h)).
Furthermore, the additional elements of “from an image forming apparatus via a communication interface” and “generate a control signal to an order server” / “generate a control signal to an order server,” when viewed as whole/ordered combination, amounts to insignificant extra-solution activity (See MPEP 2106.05(g)) as well as merely generally linking the recited judicial exception to a particular technological environment (see MPEP § 2106.05(h)).
Accordingly, these additional elements, when viewed as a whole/ordered combination (See Figs. 1 & 2, showing the additional elements in combination), do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements amount to no more than: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), (ii) adding insignificant extra-solution activity to the judicial exception, as well as (iii) generally linking the recited judicial exception to a particular field or technological environment, and do not provide integration of the recited abstract ideas into a practical application. The same analysis applies here in Step 2B, i.e., (i) merely invoking the generic components as a tool to perform the abstract idea or “apply it” (See MPEP 2106.05(f)); and (ii) adding insignificant extra-solution activity (e.g., pre-solution activity, such as mere data gathering) to the judicial exception (See MPEP2106.05(g)), as well as (iii) generally linking the recited judicial exception to a particular technological environment or field of use (See MPEP 2106.05(I)(A) & MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
The extrasolution activity “from an image forming apparatus via a communication interface” and “generate a control signal to an order server” / “generate a control signal to an order server” is similar to functionality found by the courts to be well-understood, routine, and conventional activities (See MPEP § 2106.05(d)(II), noting “Receiving or transmitting data over a network, e.g., using the Internet to gather data”), and thus does not amount to significantly more.
Therefore, the additional elements of “information processing apparatus,” “one or more memories that store instructions,” “one or more processors that execute a method by executing the instructions stored in the one or more memories,” “order server,” “non-transitory computer-readable storage medium storing a control program causing a computer to execute a control method,” and “non-transitory computer-readable storage medium storing a control program causing a computer to execute a method,” “image forming apparatus,” “from an image forming apparatus via a communication interface,” and “generate a control signal to an order server” / “generate a control signal to an order server” fail to integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. There is no indication that the combination of elements, taken both individually and as an ordered combination, improves the functioning of a computer or improves any other technology. Thus, the claims are not patent eligible.
Furthermore, dependent claims 6 – 12 & 17 – 22 are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. Furthermore, the additional elements of “print sheet,” “toner cartridge,” and “ink cartridge” in claims 9 – 11 & 20 – 22, when viewed as whole/ordered combination, amounts to no more than merely generally linking the recited judicial exception to a particular technological environment or field of use (see MPEP § 2106.05(h)). The limitations of the claims, when considered both individually and as an ordered combination, do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with generic computer components that conduct generic computer functions within a certain field of use, and thus are ineligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 BRYAN J KIRK whose telephone number is (571)272-6447. The examiner can normally be reached Monday -Friday 9:00-5:00.
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/BRYAN J KIRK/Examiner, Art Unit 3628
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