DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant's arguments filed 5/05/2026 have been fully considered but they are not persuasive.
Applicant has amended the claims to require that the print job is aborted based on the detection of one or more errors and that status information is provided regarding the detection of one or more errors.
It is argues that this would overcome the 101 rejections due to a practical application being provided.
This is not found to be persuasive by the Examiner as the practical application does not constitute “significantly more” than the judicial exception.
Initially it is argued that after the print job is stopped then a second and third practical application is caused to occur in that the printing is restarted to correctly print the item in an expedited time frame.
These limitations are not present in the claims. The amended claims require the print job to be aborded upon the detection of an error. There are no steps in correcting said error. Also the limitations expeditiously restarting the print job has been removed and no longer present in the claimed limitations. Also there are no steps in restarting the print job present.
There is no correction to avoid the error in a future print. The act of providing status information regarding the detection of the error does not require anything beyond a declaration that an error occurs.
The claims are broader in scope that the arguments present.
For example, the argument that the act of providing status information about the detected one or more errors allowing for a user to make adjustments to correct for the determined errors is not part of the claims. The claims simply require that the status information regarding the detection of the error is provide, not information on the error itself. Additionally, it would be improper to include what actions might be done by a user after the method occurs as part of the determination of patentability. The claims can be utilized to produce a statistical analysis on how often an error occurs for example and not have any corrections take place in the execution of the print job for example.
MPEP 2106.05 addresses whether a claim amounts to significantly more. Ion it is states that “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.”
The same section provides examples of when “significantly more” has been qualified and when it has not been enough to qualify.
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:
i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
iii. Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g));
There is also a teaching of an example of limitations that do produce significantly more
iii. Applying the judicial exception with, or by use of, a particular machine, e.g., a Fourdrinier machine (which is understood in the art to have a specific structure comprising a headbox, a paper-making wire, and a series of rolls) that is arranged in a particular way to optimize the speed of the machine while maintaining quality of the formed paper web, as discussed in Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 64-65 (1923) (see MPEP § 2106.05(b));
This example seems to be the closest to the instant application. The example gives a specific arrangement that allow for use of the judicial exception to improve the machine (in this case a specific configuration to optimize the speed while maintaining quality of the paper).
The instant claims do not have such an application. The act of providing instructions to abort the job upon receiving an error is standard practice and does not amount to significantly more. This is more in line with the non-examples provided above such as applying conventional activities to the judicial exception.
The arguments are not found to be pervasive and the rejections are maintained.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim requires a method to include a machine vision system to obtain information, comparing information collected with stored information, analyzing the comparison to detect errors, and providing instructions to the printer to stop the print job based on the errors such that the printer is restarted or aborting the print job.
The limitation of analyzing, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting "with a machine vision system," nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the "with a machine vision system" language, "determining" in the context of this claim encompasses the user manually calculating the amount of use of each icon. The steps of analyzing image content by comparing actual 3D results to expected 3D results and analyzing the comparison to detect errors are definitely steps that could be done mentally if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Looking at the second prong of the 101 analysis, we look to see if the abstract idea been integrated into a particular practical application? Once an error is detected, an alert is provided to the remote user. However, this is not integrating the abstract idea into a particular practical application. This is more like the alarm in Parker V. Flook. This judicial exception is not integrated into a practical application.
Looking into the second prong of the 101 analysis, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In this case the limitations of providing instructions to the printer to stop based on the detection of one or more errors does not rise to the level of "significantly more" than the judicial exception (see arguments above).
MPEP 2106.05 tells us:
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:
i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
This application effectively applies the detection of errors to the printer in without significantly more as required. MPEP 2106.05 additional gives guidance of what would count as significantly more by stating:
iii. Applying the judicial exception with, or by use of, a particular machine, e.g., a Fourdrinier machine (which is understood in the art to have a specific structure comprising a headbox, a paper-making wire, and a series of rolls) that is arranged in a particular way to optimize the speed of the machine while maintaining quality of the formed paper web, as discussed in Eibel Process Co. V. Minn. & Ont. Paper Co., 261 U.S. 45, 64-65 (1923) (see MPEP § 2106.05(b));
In this case the particular arrangement of applying the judicial exception is not claimed in a manner to disclose the specific arrangement that allows it to read as significantly more. If these details were added to the act of providing the instructions from the vision system to the printer the claims might be overcome.
The claim is not patent eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,086,475. Although the claims at issue are not identical, they are not patentably distinct from each other because all of claimed limitations of the instant application are included in the parent application. The broader scope of claims would have been obvious in view of the claims of the '475 Patent.
Conclusion
Pertinent prior art not utilized is listed as Klassen, US Patent Publication 2006/0038828 which utilizes three dimension analysis of the color of a print job to determine if the color printed is within specified requirements and to abort the print job if it is not while listing an error for identification of the issue for a user to correct [0085].
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 JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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