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 .
DETAILED ACTION
This communication is in response to the Request for Continued Examination for filed on 07/27/2026 for the application No. 18/773,789, Claims 1-15 and 17 are currently pending and have been examined. Claims 1-15 and 17 have been rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on 07/27/2026 has been entered.
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 1-15 and 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-15 and 17 are not compliant with 101, according with the last “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). Examiner’s analysis is presented below in the claims.
Claim 1: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites “a printer system”.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim? Yes. The claim recites the limitations of
“ (c) determining, after receiving the one or more delivery …[information] , specific delivery …[information]… from among the one or more delivery….[ information] received …., the specific piece of delivery information corresponding to a winning bid among the one or more bids placed in the auction; (f) executing a waiting process to wait for progress information …., the progress information indicating progress of printing of the specific delivery …[information] ….; (g) determining whether or not results of the waiting process meet a predetermined condition, the predetermined condition corresponding to completion of the printing of the specific piece of delivery… [information]; (i) determining whether a printer error has occurred, the printer error including occurrence of a paper jam, depletion of ink consumable, or the communication unit becoming disconnected from a network to take the printer offiine; wherein, in the (g) determining… determines that the results of the waiting process do not meet the predetermined condition when the server controller receives the progress information indicating that the printer error has occurred … in the waiting process.….”The “determining, executing” limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitations as certain methods of organizing human activity, advertising, marketing or sales activities or behaviors. A printer system to hold an auction in which bids are solicited for use of an information delivery service. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application? No. The claim recites additional limitations, such as,
“ (a) transmitting a bid solicitation request …the bid solicitation request requesting …. to hold an auction in which bids are solicited for use of an information delivery service; (b) receiving, …, one or more pieces of delivery information corresponding to one or more bids placed in the auction held in response to the bid solicitation request, each of the one or more pieces of delivery information being information designated as a target … in association with placement of the corresponding bid”; “(d) transmitting, in response to determining the specific delivery…[ information], a delivery decision notice …, the delivery decision notice being a notice of a decision to deliver the specific delivery…[ information] …. (e) transmitting the specific delivery ….[information]”; “(h) …transmitting, when determining that the results of the waiting process do not meet the predetermined condition, winning bid rescission information …, the winning bid rescission information indicating that the winning bid has been rescinded.”; “(j) transmitting, when determining that the printer error has occurred, the progress information indicating that the printer error has occurred …”.
These are limitations toward sending or receiving data (gathering data). The Examiner analyses other supplementary elements in the claim in view of the instant disclosure:
“A printing system comprising: a printer comprising a communication unit, a printer controller and a printing unit; and a delivery information provision server comprising a server controller, wherein the server controller is configured …”; “ a delivery information management server, to a printer as the information delivery service; to the printer; from the printer, one or more delivery images, printing-related information for the specific delivery image, the printing-related information enabling the printer to print the specific delivery image; the executing including setting at least one timer, the term “automatically”. All these elements are recited in a very generic way. They are generic computer elements and software.
The use of “A printing system comprising: a printer comprising a communication unit, a printer controller and a printing unit; and a delivery information provision server comprising a server controller, wherein the server controller is configured …”; “ a delivery information management server,” It is not sufficient to integrate the abstract idea because it merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h).
The “A printing system comprising: a printer comprising a communication unit, a printer controller and a printing unit; and a delivery information provision server comprising a server controller, wherein the server controller is configured …”; “ a delivery information management server,” elements when the claim invokes computers or other machinery merely as a tool to perform a process. The use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more. The combination of these additional elements can also be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f).
Also the additional elements:
“ (a) transmitting a bid solicitation request …the bid solicitation request requesting …. to hold an auction in which bids are solicited for use of an information delivery service; (b) receiving, …, one or more pieces of delivery information corresponding to one or more bids placed in the auction held in response to the bid solicitation request, each of the one or more pieces of delivery information being information designated as a target … in association with placement of the corresponding bid”; “(d) transmitting, in response to determining the specific delivery…[ information], a delivery decision notice …, the delivery decision notice being a notice of a decision to deliver the specific delivery…[ information] …. (e) transmitting the specific delivery ….[information]”; “(h) …transmitting, when determining that the results of the waiting process do not meet the predetermined condition, winning bid rescission information …, the winning bid rescission information indicating that the winning bid has been rescinded.”; “(j) transmitting, when determining that the printer error has occurred, the progress information indicating that the printer error has occurred …”. These are limitations toward accessing or receiving data. It is merely gathering data can be considered pre-solution and post-solution activity. The Examiner gives the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim as a whole does not integrate the method of organizing human activity into a practical application. Thus, the claim is ineligible because is directed to the recited judicial exception (abstract idea).
Step 2B : claim provides an inventive concept? No.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim,
“A printing system comprising: a printer comprising a communication unit, a printer controller and a printing unit; and a delivery information provision server comprising a server controller, wherein the server controller is configured …”; “ a delivery information management server, to a printer as the information delivery service; to the printer; from the printer, one or more delivery images, printing-related information for the specific delivery image, the printing-related information enabling the printer to print the specific delivery image; the executing including setting at least one timer, the term “automatically”, amount to no more than mere instructions to apply the exception. i.e., mere instructions to apply an exception using generic hardware, software and data elements cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Further, additional limitations, such as,
“ (a) transmitting a bid solicitation request …the bid solicitation request requesting …. to hold an auction in which bids are solicited for use of an information delivery service; (b) receiving, …, one or more pieces of delivery information corresponding to one or more bids placed in the auction held in response to the bid solicitation request, each of the one or more pieces of delivery information being information designated as a target … in association with placement of the corresponding bid”; “(d) transmitting, in response to determining the specific delivery…[ information], a delivery decision notice …, the delivery decision notice being a notice of a decision to deliver the specific delivery…[ information] …. (e) transmitting the specific delivery ….[information]”; “(h) …transmitting, when determining that the results of the waiting process do not meet the predetermined condition, winning bid rescission information …, the winning bid rescission information indicating that the winning bid has been rescinded.”; “(j) transmitting, when determining that the printer error has occurred, the progress information indicating that the printer error has occurred …”, were considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. Again, these are limitations toward accessing or receiving data (gathering data). Accessing or receiving data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Further, the instant specification does not provide any indication that the elements
“A printing system comprising: a printer comprising a communication unit, a printer controller and a printing unit; and a delivery information provision server comprising a server controller, wherein the server controller is configured …”; “ a delivery information management server, to a printer as the information delivery service; to the printer; from the printer, one or more delivery images, printing-related information for the specific delivery image, the printing-related information enabling the printer to print the specific delivery image; the executing including setting at least one timer, the term “automatically”, were are anything other than generic software and hardware, and the OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); and v. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; court decisions cited in MPEP 2106.05(d)(II) indicate that merely computer receives and sends information over a network and presenting or displaying or printing information, is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, a conclusion that the “A printing system comprising: a printer comprising a communication unit, a printer controller and a printing unit; and a delivery information provision server comprising a server controller, wherein the server controller is configured …”; “ a delivery information management server, to a printer as the information delivery service; to the printer; from the printer, one or more delivery images, printing-related information for the specific delivery image, the printing-related information enabling the printer to print the specific delivery image; the executing including setting at least one timer, the term “automatically”, limitations (pointed above) are well-understood, routine, conventional activity is supported under Berkheimer Option 2. The claim is ineligible.
Claim 10: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a “printer system” (a system).
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above.
Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above.
Step 2B : claim provides an inventive concept? No. Because the same reasons pointed above. The claim is ineligible.
Claim 14: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a method.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above. .
Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above.
Step 2B : claim provides an inventive concept? No. Because the same reasons pointed above. The claim is ineligible.
Claim 15: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a method.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above. .
Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above.
Step 2B : claim provides an inventive concept? No. Because the same reasons pointed above. The claim is ineligible.
Dependent claims 2-9, 11-13 and 17, the claims recite elements such as
“wherein the controller is configured to further perform: (i) transmitting, when determining that the results of the waiting process meet the predetermined condition, a billing notice to the delivery information management server, the billing notice being a notice for charging a cost for delivering the specific delivery image”, etc. These elements do not integrate the system of organizing human activity into a practical application. The claims are ineligible.
Examiner’s Note
US Pg. Pub. No. 20080221982 (Harkins). The publication discloses “Disclosed are systems and methods for selecting and placing advertisements via one or more advertising agents and/or advertising mediums. In one aspect of the present invention, the advertising agents are retail merchants who utilize a common card processing service and the advertisements are text, logos, coupons, or the like printed on the face of a card receipt. In another aspect, the rights to print such card receipt advertisements at particular retail advertising agent locations are auctioned to potential advertisers via an Internet-based auction system. Auctions may be segmented based upon criteria such as area code, zip code, industry of product to be advertised, amount of card charge for receipt upon which the advertisement shall be printed, etc. In another aspect, the Internet-based system transmits the winning advertisements to the retail merchants in the form of an advertisement data string appended to an authorization data string”, abs.
“[0094] In some embodiments of the present invention, the advertisement data string provides the card processing machine with the ability to print a graphical advertisement in a high resolution and/or color format. The advertisement data string includes a high resolution color image for printing by the card processing machine, however, the actual print quality and/or color will be determined by the specifications of the printer installed at the advertising agent's location. However, the ability to print a high resolution color graphic via a card processing machine text printer is not required to implement the systems and methods of the present invention. Process 500 then proceeds to 510”, paragraph 94.
US Pg. Pub. No. 20110282736 (Lee). This publication discloses “According to one aspect of the disclosure, provided are methods of providing user requested printed material, including one or more targeted communications to the user. According to one exemplary embodiment, the targeted communications are associated with an auction, whereby an optimal reserve price is determined to maximize profits.”
The references do not disclose:
automatically transmitting, when determining that the results of the waiting process do not meet the predetermined condition, a print cancellation instruction to the printer, and winning bid rescission information to the delivery information management server, the winning bid rescission information indicating that the winning bid has been rescinded, wherein the printer is configured to perform: (i) determining whether a printer error has occurred, the printer error including occurrence of a paper jam, depletion of ink consumable, or the communication unit becoming disconnected from a network to take the printer offiine; and (j) transmitting, when determining that the printer error has occurred, the progress information indicating that the printer error has occurred to the delivery information provision server, and wherein, in the (g) determining, the server controller determines that the results of the waiting process do not meet the predetermined condition when the server controller receives the progress information indicating that the printer error has occurred from the printer in the waiting process.
Allowable Subject Matter
Claims 1-15 and 17 would be allowed if Applicant can overcome the 101 rejection found in the instant Office action.
Also, allowance subject to the completion of all the mandatory searches for allowance “In the examination of an application for patent, an examiner must conduct a thorough and complete search of the prior art.”, see MPEP 904 and 719.
Response to Arguments
Applicant’s arguments of 07/27/2026 have been very carefully considered but are not persuasive.
Applicant argues: (remarks 14-17)
II. Rejection of Claims 1-17 Under 35 U.S.C. §101
Claims 1 - 17 were rejected under 35 U.S.C. § 101 as allegedly directed to non-statutory
subject matter. Specifically, the FOA asserts that the claims are directed to certain methods of
organizing human activity, advertising, marketing or sales activities or behaviors. The FOA
contends that the "delivery information provision server" recited in the claims is directed to
-14-
holding an auction in which bids are solicited for use of an information delivery service. The
FOA further contends that claims do not integrate the alleged abstract idea into a practical
application. (See: FOA page 3, para. 3 - page 4, last para.).
Applicant respectfully disagrees with the rejection set forth in the FOA. However,
without acquiescing to the propriety of the rejection set forth in the FOA, but rather in an effort
to facilitate expeditious prosecution of the instant application, the claims have been amended to
further clarify the recited features….
In response the Examiner asserts that the claims were amended. The amended claims are considered and a new prima facie of unpatentability is issue herein.(see rejection above).
Further, as recited in
independent Claim 1, a winning bid may be rescinded based on criteria such as printing errors
(e.g., paper jams, depletion of ink, etc.). Thus, the printer is not merely a generic component, but
rather an integral part of the claimed system. It should be noted that as recited in the claims and
disclosed in the specification, the claimed system recites a complex interplay between the printer
and the delivery information provision server that is beyond what a generic printer and server are
capable of without the particular programming and configurations needed to implement the
claimed features….
In response the Examiner considered the printer individually and as a whole in the claims. Printing an image is generally not considered a standalone practical application that transforms an abstract idea into patent-eligible subject matter under 101.
Instead, simply outputting, displaying, or printing data onto a physical medium
usually falls under "data gathering" or an abstract concept. The Examiner again considered the printer and all the elements in the claim under the 2019 PGE test. Here the instant claims are directed to the judicial exception, the abstract idea “A printer system to hold an auction in which bids are solicited for use of an information delivery service”.
Moreover, controlling how limited resources (e.g., time, consumables, etc.) of a printer
are allocated - in the present claims by means of a winning auction bid - is a solution to a
technical problem as well.
In response the Examiner agrees that the instant application is in compliance with the utility requirement. The claimed invention has a readily apparent well-established utility (see MPEP 2107). But, per MPEP 2106 an invention also must comply with the Subject Matter Eligibility test under Alice framework, see “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). The instant claims are directed to an abstract idea. None of the limitations considered as an ordered combination, provides eligibility, because taken as a whole, the claim simply instruct the practitioner to implement an abstract idea with routine, conventional technology. Accordingly, the claims are ineligible (see complete and facially sufficient analysis of the rejection above).
Additionally, embodiments of the present invention, as claimed, also solve the problem
of wasting consumables on printing an image when the print job has been delayed to an extent
where the output is no longer needed. For example, as noted in paragraphs [0044] and [0056] of
the instant application, a bid may include a strict time demand (set as a second time limit) after
which the value (e.g., usefulness) of the delivery image drops significantly. When the second
time limit cannot be satisfied by the printing system, the printing system automatically transmits
a print cancellation instruction to the printer (print cancellation instruction S60, S97, S 115 shown
in FIG. 3), as recited in amended Claim 1, and rescinds the winning bid (winning bid
cancellation notice S120 shown in FIG. 3) (see also amended claim 14). In this way, the claimed
printing system avoids needlessly wasting time, ink/toner and paper on a delivery image that is
no longer useful or needed.
In response the Examiner asserts that according with high level of generality claimed and the conventional technology described in the specification, when construed, as broadly as reasonable, none of the limitations considered as an ordered combination, provides eligibility, because taken as a whole, the claim simply instruct the practitioner to implement the abstract idea with routine, conventional technology. Further, in Step 2B of the Alice’s framework, USPTO instructed that Examiners should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the nonconventional and non-generic arrangement of known, conventional elements (in the instant case, the Examiner analyzed both the claims and the specifications. The Examiner found that the additional or supplemental elements in this case, pointed out in analysis above (“A printing system comprising: a printer comprising a communication unit, a printer controller and a printing unit; and a delivery information provision server comprising a server controller, wherein the server controller is configured …”; “ a delivery information management server, to a printer as the information delivery service; to the printer; from the printer, one or more delivery images, printing-related information for the specific delivery image, the printing-related information enabling the printer to print the specific delivery image; the executing including setting at least one timer, the term “automatically”. And the additional limitations, such as,
“ (a) transmitting a bid solicitation request …the bid solicitation request requesting …. to hold an auction in which bids are solicited for use of an information delivery service; (b) receiving, …, one or more pieces of delivery information corresponding to one or more bids placed in the auction held in response to the bid solicitation request, each of the one or more pieces of delivery information being information designated as a target … in association with placement of the corresponding bid”; “(d) transmitting, in response to determining the specific delivery…[ information], a delivery decision notice …, the delivery decision notice being a notice of a decision to deliver the specific delivery…[ information] …. (e) transmitting the specific delivery ….[information]”; “(h) …transmitting, when determining that the results of the waiting process do not meet the predetermined condition, winning bid rescission information …, the winning bid rescission information indicating that the winning bid has been rescinded.”; “(j) transmitting, when determining that the printer error has occurred, the progress information indicating that the printer error has occurred …”, do not integrate the abstract idea into a “practical application” because the instant claims do not include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• 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, as discussed in MPEP § 2106.05 (e).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“A Cloud Reservation System for Big Data Applications”. IEEE. 2017.
“Emerging Big Data applications increasingly require resources beyond those available from a single server and may be expressed as a complex workflow of many components and dependency relationships-each component potentially requiring its own specific, and perhaps specialized, resources for its execution. Efficiently supporting this type of Big Data application is a challenging resource management problem for existing cloud environments. In response, we propose a two-stage protocol for solving this resource management problem. We exploit spatial locality in the first stage by dynamically forming rack-level coalitions of servers to execute a workflow component. These coalitions only exist for the duration of the execution of their assigned component and are subsequently disbanded, allowing their resources to take part in future coalitions. The second stage creates a package of these coalitions, designed to support all the components in the complete workflow. To minimize the communication and housekeeping overhead needed to form this package of coalitions, the technique of combinatorial auctions is adapted from market-based resource allocation. This technique has a considerably lower overhead for resource aggregation than the traditional hierarchically organized models. We analyze two strategies for coalition formation: the first, history-based uses information from past auctions to pre-form coalitions in anticipation of predicted demand; the second one is a just-in-time-that builds coalitions only when support for specific workflow components is requested.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA VICTORIA VANDERHORST whose telephone number is (571)270-3604. The examiner can normally be reached on business hours from Monday through Friday from 8:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashraf Waseem can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA V VANDERHORST/Primary Examiner, Art Unit 3621 8/5/2026
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