DETAILED ACTION
Status of Claims
The following is a Final office action in response to the communications received on May 4, 2026.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 21, 32 and 35 have been amended.
Claims 1-20 have been canceled.
Claims 21-35 are currently pending and have been examined.
Response to Amendments
Applicant amendments to claims 21, 32 and 35 are acknowledged.
Response to Arguments
Applicant's arguments have been considered but not found persuasive. Applicant argues:
A human cannot mentally determine and display real-time, individualized stock levels for multiple container types based on the mechanical perforation and injection events of a beverage machine.
Examiner’s Response: As stated on page 13 of Patent Board Decision filed on February 20, 2024 for parent case 15778861, the claims encompass the mental process of keeping an inventory record of food or beverage containers for use with food or beverage preparation equipment. Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer"). See MPEP 2106.04(a)(2)(III). Not being able to perform something manually or in the human mind is not enough to confer eligibility or show an improvement to the computer or the technology. The computer components are recited at a high level of generality as a tool to implement the abstract idea. Merely using a general computer component to replace or automate human work is not enough to confer eligibility. It is important to keep in mind that an improvement in the abstract idea itself is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform a method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
The claims are integrated into a practical application of a specific beverage preparation machine environment.
Examiner’s Response: The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components performing generic computer functions. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. There is no new technology or any technological improvement involved. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process and method of organizing a human activity grouping
The identifier comparison is a technical solution to the specific problem of “erroneous repeat update”.
Examiner’s Response: Comparing identifiers recite a mental process (observation/evaluation). Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer"). See MPEP 2106.04(a)(2)(III). Not being able to perform something manually or in the human mind is not enough to confer eligibility or show an improvement to the computer or the technology. It is important to keep in mind that an improvement in the abstract idea itself is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform a method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
Yoakim and Silver both fail to suggest or disclose updating stock state information using stock order information associated with a first stock order identifier, where both the stock state and the consumption information are individualized by container type for a plurality of types of containers.
Examiner’s Response: Yoakim in at least paragraphs 0045-0047 discloses consumption monitoring. The capsule consumption is counted in machines and communicated to server. The supplier server generates instructions when a particular type of capsule reaches a level of shortage (Yoakim paragraph 0033). As stated on pages 4-5 of Patent Board Decision filed on February 20, 2024 for parent case 15778861, the specification defines “stock order identifier” as a numerical, alphanumeric or other suitable representation. Silver, identifies orders based on representations such as delivery address or items ordered; these identified orders are then compared to see if they are the same or different orders. Silver Fig. 3 (depicting an order management routine for analyzing both potential orders and completed orders in order to store correct orders). Claim language is too broad and reads into the prior art cited.
Neither Yoakim or Silver provide any reason that would have motivated a skilled artisan to modify Yoakim with Silver to arrive at the present claims.
Examiner’s Response: In response to Applicant's argument that there is no suggestion to combine the references, the Examiner recognizes that obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
To this end, the Examiner recognizes that references cannot be arbitrarily altered or modified and that there must be some reason why one skilled in the art would be motivated to make the proposed modifications. Although the motivation or suggestion to make modifications must be articulated, it is respectfully submitted that there is no requirement that the motivation to make modifications must be expressly articulated within the references themselves. References are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures, In re Bozek, 163 USPQ 545 (CCPA 1969).
The Examiner is concerned that the Applicant apparently ignores the mandate of the numerous court decisions supporting the position given above. The issue of obviousness is not determined by what the references expressly state but by what they would reasonably suggest to one of ordinary skill in the art, as supported by decisions in In re Delisle 406 Fed 1326, 160 USPQ 806; In re Kell, Terry and Davies 208 USPQ 871; and In re Fine, 837 F.2d 1071, 1074, 5 USPQ 2d 1596, 1598 (Fed. Cir. 1988) (citing In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1988)). Further, it was determined in In re Lamberti et al 192 USPQ 278 (CCPA) that:
(i) obvious does not require absolute predictability;
(ii) non-preferred embodiments of prior art must also be considered; and
(iii) the question is not express teaching of references but what they would suggest.
According to In re Jacoby, 135 USPQ 317 (CCPA 1962), the skilled artisan is presumed to know something more about the art than only what is disclosed in the applied references. Within In re Bode, 193 USPQ 12 (CCPA 1977), every reference relies to some extent on knowledge of persons skilled in the art to complement that which is disclosed therein. In In re Conrad 169 USPQ 170 (CCPA), obviousness is not based on express suggestion, but what references taken collectively would suggest.
In the instant case, the Examiner respectfully notes that each and every motivation to combine the applied references is accompanied by select portions of the respective references which specifically support that particular motivation. As such, it is NOT seen that the Examiner's combination of references is unsupported by the applied prior art of record. Rather, it is respectfully submitted that explanation based on the logic and scientific reasoning of one ordinarily skilled in the art at the time of the invention that support a holding of obviousness has been adequately provided by the motivations and reasons indicated by the Examiner, Ex pane Levengood 28 USPQ 2d 1300 (Bd. Pat. App. & Inter., 4/22/93).
The cited references do not disclose the limitation "implementing display via a user interface said amount of stock state information, which is individualized by container type for a plurality of types of containers”.
Examiner’s Response: Yoakim in at least paragraphs 0045-0047 discloses consumption monitoring. The capsule consumption is counted in machines and communicated to server. The supplier server generates instructions when a particular type of capsule reaches a level of shortage (Yoakim paragraph 0033). The supplier server may be arranged to invite the customer via email, phone, fax or paper to make an order (paragraph 0039). Yoakim also discloses a GUI in at least paragraph 0006).
If Yoakim were modified to include Silver's logic, including delaying or rejecting orders suspected of being duplicates, the so-modified system would fail in its primary goal of ensuring an uninterrupted supply of capsules. In this regard, if a proposed modification or combination of prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.
Examiner’s Response: As stated on page 7 of Patent Board Decision filed on February 20, 2024 for parent case 15778861, Yoakim could confirm new orders while identifying erroneous/duplicate orders. There is no reason why avoiding duplicate orders (as taught by Silver) would result in shortage as opposed to merely having the correct amount of sufficient inventory.
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 21-35 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without “significantly more.”
Regarding Claims 21, 32 and 35, the claims describe a consumption monitoring system which recite limitations that fall within mental process (observation/evaluation) and method of organizing a human activity (commercial interaction). The limitations on monitoring consumption, updating stock state information, obtaining stock order information, comparing first and second stock order identifiers and displaying information could be all performed in the human mind and/or with the help of paper and pencil. For example, a barista at a coffee shop keeping track of the number of containers used at a coffee shop by remembering or writing down the stock amount and updating the amount when coffee is served. Other than reciting a generic beverage machine, a computer, an electronic device, a server, a processor and a memory, nothing in the claims precludes the steps for being performed in the human mind and/or the help of paper and pencil. This judicial exception is not integrated into a practical application. The computers are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using generic computer components performing generic computer functions. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computer environment is not a practical application of the abstract idea and does not take the claim out of the mental process and method of organizing a human activity grouping. The claims are directed to an abstract idea.
The claims do not include additional elements that even in combination are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of the abstract idea into a practical application, the additional element of using computers to perform the monitoring, updating, obtaining, comparing and displaying steps amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claims are not patent eligible.
Regarding dependent claims 22-31 and 33-34, these claims are directed to limitations which serve to limit the components, the processing steps and the information used. These claims neither introduce a new abstract idea nor additional limitations which are significantly more than an abstract idea. They provide descriptive details that offer helpful context, but have no impact on statutory subject matter eligibility.
Therefore the limitations on the invention, when viewed individually and in ordered combination are directed to in-eligible subject matter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 21-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoakim (US 2012/0173357 A1) in view of Silver (US 7,987,118 B1).
Claim 21
Yoakim discloses the following limitations:
A computer implemented method for monitoring consumption of a single serving, single use containers containing ground coffee by a beverage machine, (see at least paragraphs 0010-0014-preventing shortage at a customer location of consumable ingredient capsules).
the beverage machine comprising a container processing unit comprising an extraction unit with an injection head and a capsule holder, the container processing unit configured to process the container by perforation and injection of fluid to prepare a beverage therefrom, and a fluid supply comprising a reservoir for containing the fluid, a fluid pump, and a fluid heater being in fluid communication with each other to form a fluid line for injection of said fluid into the container, the method comprising: (see at least abstract and paragraphs 0013-0017-preparation machine).
deriving container consumption information, which is individualized by container type for a plurality of types of container; (see at least paragraph 0033-differentiate between the consumption of capsules of the different types).
updating, using the consumption information, stock state information, wherein said stock state information comprise information detailing an amount of containers at a location of the machine, which is individualized by container type for a plurality of types of container (see at least paragraphs 0045-0047-updating information).
obtaining stock order information, which comprises information detailing an amount of containers purchased by a user, which is individualized by container type for a plurality of types of container, and is associated with a first stock order identifier; (see at least paragraphs 0033 and 0045-0047-consumption monitoring by container type).
and updating the stock state information using the stock order information associated with the first stock order identifier (see at least paragraphs 0033 and 0045-0047-consumption monitoring by container type).
and implementing display via a user interface said amount of stock derived from the updated stock state information, which is individualized by container type for a plurality of types of container (see at least paragraphs 0030-0033, 0045-0047-consumption monitoring, 0039-the supplier server may be arranged to invite the customer via email, phone, fax or paper to make an order and paragraph 0006-GUI).
Yoaking does not explicitly discloses the following limitations, however Silver does:
comparing the first stock order identifier to a second stock order identifier; (see at least column 2 lines 30-65-comparing orders to see if they are the same or different orders).
determining if said identifiers are different, (see at least column 2 lines 30-65- comparing orders to see if they are the same or different orders).
and if different: storing the first stock order identifier as the second stock order identifier; (see at least column 2 lines 30-65 and figure 3-analyzing potential orders, duplicate orders and completed orders to store correct orders).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine the teachings in Yoaking and Silver in order to detect duplicate/erroneous orders (Silver abstract). A person of ordinary skill in the art would have conceived the idea of creating such configuration. Moreover, the claimed subject matter would have been no more than a predictable combination of known techniques according to their respective purposes within routine skill and creativity.
Claim 22
Furthermore, Yoakim discloses the following limitations:
wherein the stock state information comprises an array with elements detailing the stock of each type of container, and the stock order information and consumption information comprise corresponding arrays; (see at least paragraphs 0033 and 0045-0047).
with updating the stock state information based on the consumption information comprising arithmetic between the array of the stock state information and the array of the consumption information, and; (see at least paragraphs 0033 and 0045-0047).
updating the stock state information based on the stock order information associated with the first stock order identifier comprising arithmetic between the array of the stock state information and the array of the stock order information associated the first stock order identifier. (see at least paragraphs 0033 and 0045-0047).
Claim 23
Furthermore, Yoakim discloses the following limitations:
wherein the consumption information is determined based on a container detection sensor, which is arranged to determine a type of container processed by the beverage or foodstuff preparation machine. (see at least paragraphs 0034-0036).
Claim 24
Furthermore, Yoakim discloses the following limitations:
wherein the container detection sensor comprises one or more of: a code reader, including an optical code reader; a color sensor. (see at least paragraphs 0034-0036).
Claim 25
Furthermore, Yoakim discloses the following limitations:
wherein the containers have different types based on the ground coffee stored therein and/or container geometry. (see at least paragraph 0032).
Claim 26
Furthermore, Yoakim discloses the following limitations:
wherein the consumption information is determined based on a particular preparation process executed by the beverage machine for a particular container type, with container type consumed being based on the particular preparation process. (see at least paragraph 0032).
Claim 27
Furthermore, Yoakim discloses the following limitations:
comprising, prior to updating the stock state information:
obtaining a response from a user interface confirming that the stock order information associated with the first identifier is to be associated with the stock state information. (see at least paragraphs 0033 and 0045-0047).
Claim 28
Furthermore, Yoakim discloses the following limitations:
comprising: receiving an input from a user for manual adjustment of the stock state information and deriving therefrom stock state correction information; (see at least paragraph 0038).
updating of the stock state information using the stock state correction information;
displaying via a user interface the updated stock state information. (see at least paragraph 0038).
Claim 29
Furthermore, Yoakim discloses the following limitations:
comprising: receiving a user request to order an amount of containers;
ordering said amount of containers from a remote resource; obtaining associated stock order information associated with the order. (see at least abstract, paragraphs 0022-0025).
Claim 30
Furthermore, Yoakim discloses the following limitations:
comparing, using the stock state information, an amount of the actual stock of containers at a location of said machine to a predetermined value; if below said value then providing a notification to a user interface. (conditional limitation-no patentable weight; see at least paragraph 0030).
Claim 31
Furthermore, Yoakim discloses the following limitations:
comprising: accounting for more than one preparation process executed on the same container in the consumption information. (see at least abstract and paragraph 0017).
Claim 33
Furthermore, Yoakim discloses the following limitations:
comprising one or more single serving, single use containers containing ground coffee for use with the beverage preparation machine. (see at least paragraph 0014).
Claim 34
Furthermore, Yoakim discloses the following limitations:
wherein the container has a cup-shaped body with a flange closed by a lid, the body having an internal volume of 5 - 80 ml. (see at least figure 1 and paragraph 0043).
As per claims 32 and 35, claims 32 and 35 recite substantially similar limitations to claim 1 and are therefore rejected using the same art and rationale set forth above.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENISSE Y ORTIZ ROMAN whose telephone number is (571)270-5506. The examiner can normally be reached Monday-Thursday 9-7.
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/DENISSE Y ORTIZ ROMAN/Examiner, Art Unit 3627
/FAHD A OBEID/Supervisory Patent Examiner, Art Unit 3627
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