Detailed Action
Status of Claims
Claims 1, 3 – 12, & 14 – 26 were previously pending and subject to a final office action mailed 10/01/2025. Claims 1, 6 – 8, 12, 17 – 19, & 23 – 26 were amended and claims 3 – 5 & 14 – 16 were cancelled in a reply filed 01/15/2026.
Claims 1, 6 – 12, & 17 – 26 are currently pending and subject to the non-final office action below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed after final rejection on 01/15/2026 has been entered.
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 that “Claim 1 is not merely directed to a business relation or commercial interaction or a method of organizing human activity per se. Instead, it is directed to a specific technical process for managing consumable supplies in an image forming apparatus using a programmed information processing apparatus to alleviate any requirement of the user to determine which consumable product must be re-ordered.”
Examiner respectfully disagrees, because 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.
Examiner further notes that “using a programmed information processing apparatus to alleviate any requirement of the user to determine which consumable product must be re-ordered” is a mere instruction for the practitioner of the instant invention to implement the steps using a generically-recited computing device, which is no more than a mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
Applicant next argues that “the claims as amended are integrated into a practical application.”
Examiner respectfully disagrees, as the instant claims do not recite a combination of additional elements that integrate the abstract idea into a practical application. In particular, 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, 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.
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 a consumption degree of the consumable product per one print page based on the consumption degree and the number of printed pages; receiving a request notification requesting a change from a contracted plan to another plan; setting a predetermined value based on the request notification, wherein the predetermined value is decreased in a case where the request notification is for a purpose of increasing a number of printable pages, and wherein the predetermined value is increased in a case where the request notification is for a purpose of decreasing the number of printable pages; calculating a predicted consumption degree of the consumable product based on an upper limit number of print pages and the consumption rate, the upper limit number corresponding to a contracted plan selected by a user from among plans for using the image forming apparatus the another plan; 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 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; receiving a request notification requesting a change from a contracted plan to another plan; setting a predetermined value based on the request notification, wherein the predetermined value is increased in a case where the request notification is for a purpose of increasing a number of printable pages, and wherein the predetermined value is decreased in a case where the request notification is for a purpose of decreasing the number of printable pages; calculating a predicted remaining amount of the consumable product based on an upper limit number of print pages and the consumption rate, the upper limit number corresponding to the another plan; 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 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; receiving a request notification requesting a change from a contracted plan to another plan; setting a predetermined value based on the request notification, wherein the predetermined value is decreased in a case where the request notification is for a purpose of increasing a number of printable pages, and wherein the predetermined value is increased in a case where the request notification is for a purpose of decreasing the number of printable pages; calculating a predicted consumption degree of the consumable product based on an upper limit number of print pages and the consumption rate, the upper limit number corresponding to the another plan; 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; receiving a request notification requesting a change from a contracted plan to another plan; setting a predetermined value based on the request notification, wherein the predetermined value is decreased in a case where the request notification is for a purpose of increasing a number of printable pages, and wherein the predetermined value is increased in a case where the request notification is for a purpose of decreasing the number of printable pages; calculating a predicted consumption degree of the consumable product based on an upper limit number of print pages and the consumption rate, the upper limit number corresponding to the another plan; 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 obtained and the number of printed pages; receiving a request notification requesting a change from a contracted plan to another plan; setting a predetermined value based on the request notification, wherein the predetermined value is increased in a case where the request notification is for a purpose of increasing a number of printable pages, and wherein the predetermined value is decreased in a case where the request notification is for a purpose of decreasing the number of printable pages; calculating a predicted remaining amount of the consumable product based on an upper limit number of print pages and the consumption rate, the upper limit number corresponding to the another plan; 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; receiving a request notification requesting a change from a contracted plan to another plan; setting a predetermined value based on the request notification, wherein the predetermined value is increased in a case where the request notification is for a purpose of increasing a number of printable pages, and wherein the predetermined value is decreased in a case where the request notification is for a purpose of decreasing the number of printable pages; calculating a predicted remaining amount of the consumable product based on an upper limit number of print pages and the consumption rate, the upper limit number corresponding to the another plan; 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
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/BRYAN J KIRK/Examiner, Art Unit 3628