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 a final action in response to amendment filed on 02/02/2026. Claims 1-12 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Argument
Applicant’s argument directed to claim objection is persuasive. The previous claim objection is withdrawn. Examiner notes the claim objection shown in this office action below is related to a newly introduced typographical error.
Applicant’s argument directed to 101 rejection has been fully considered but are not persuasive.
Applicant argues that the print plan (print cost having basic fee, upper limit, etc) are particular manipulation of data, examiner respectfully disagree.
The print plan can be shown in Fig. 4, table 142 in table form. While this may be a particular way to represent data, this is clearly something that can be performed by human mind, especially with help of physical aid. Further, the print plan shows a print cost calculation, which also represent a business relationship or forming a contract, it also falls into certain methods of organizing human activities. Therefore, this print plan is not an additional element that can be used to integrate the abstract idea into practical application. Therefore, Applicant’s argument is not persuasive.
Applicant goes on to argue that using display to receive selection can not be interpreted as an abstract idea. Examiner respectfully disagree for at least the reason that collecting information in Electric Power Group, are recognized as part of mental process. See at least MPEP 2106.04 (a) (2) III A.
Applicant lastly argues that claim improves efficiency associated with the selection, examiner respectfully disagree. The only disclosure on this topic appears to be 0003 and 0005 about an improvement in user convenience related to trial period so that a user can access service without paying. This improvement is an improvement to the business process (i.e., when to charge or the plan structure), which is an improvement to the abstract idea itself and have nothing to do with technology. Therefore, the argument is not persuasive.
Regarding Applicant’s argument directed to 103 rejection, the argument is moot. Examiner particular notes the newly cited reference shows overage being charged during trial period.
Claim Objection
Claims 1-12 are objected because the newly added “a usage fee” should be referring back to previously mentioned “usage fee”. Therefore, it should be labeled as “the usage fee”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-12 all include the following limitations:
wherein the predetermined period is a trial period during which a predetermined service related to the printer is used by a user but the user is not charged a usage fee for the predetermined service;
[…] the first print cost to be charged to the user is [the] usage fee corresponding to the first print plan in the predetermined period which is the trial period (correction made in view of objection above).
It’s not clear how a user is “not charged a usage fee for the predetermined service” and “charged …. [the] usage fee” during the same “trial period”. This is clearly a drafting oversight and Applicant is respectfully requested to clarify the claimed scope in subsequent amendment. For the purpose of examination, the feature is interpreted best understood by examiner.
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 1-12 are rejected under 35 U.S.C. 101 because they recite an abstract idea without significantly more.
Step 2A prong 1
As per claim 1, with the exception of physical hardware such as controller, physical printer, and the display, all the rest of the body recites an abstract idea.
In this case, these limitation shows a series of steps to calculate print cost and perform charging process. This is creating business relationship, forming contract, and following rules, all of which falls into certain methods of organizing human activities. Further, these steps are also broad enough to be completely performed in human mind through collecting information (e.g., selection), analyzing (calculating the proper charge) and presenting information (presenting selection). Therefore, claim 1 also recites a mental process, which also falls into an abstract idea
Step 2A prong 2
The additional elements identified above, are nothing more than generic computer components that’s used to generally linking the abstract idea into particular field of use (e.g., calculating print charge and using computer to calculate print cost). Whether viewed individually or as an ordered combination, they wouldn’t integrate the abstract idea into practical application. Therefore, analysis proceed to step 2B.
Step 2B
As discussed above in step 2A prong 2, of which the analysis still applies in step 2B, the additional elements, whether viewed individually or as an ordered combination, are nothing more than generic computer components that’s used to generally linking the abstract idea into particular field of use (e.g., calculating print charge and using computer to calculate print cost). Therefore, they wouldn’t provide significantly more to an abstract idea and the claim is not eligible.
Claims 2-10 merely further limit the abstract idea or contain additional element that’s similarly invoked in similar manner. They can still be similarly analyzed and wouldn’t be eligible.
Claims 11-12 can be similarly analyzed as claim 1 except for being in different statutory category.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haruka (JP 2011035779A) in view of Brother (Brother, “Refresh EZ Print Subscription Ready”, https://web.archive.org/web/20221129234130/https://www.brother-usa.com/supplies/subscription-info/hybrid, 11/29/2022).
Examiner notes Brother is published 11/29/2022, which is more than one year prior to the application’s effective filing date of 12/26/2023 (one-year date being 12/26/2022).
As per claim 1, Haruka discloses a control device comprising a controller,
wherein the controller (see at least Haruka 0020 server 3. See also Fig. 1 for illustration) is configured to:
calculate a plurality of print costs corresponding to a plurality of print plans by using print history information of a printer in a predetermined period, wherein the predetermined period is a
display, on a display, a selection screen including related information which is related to the plurality of calculated print costs, the selection screen being for selecting one print plan from among the plurality of print plans (see at least 0053, display information for notifying user of result by charging plan determination. Examiner notes “being for selecting one print plan from among the plurality of print plans” is intended use.); and
in a case where a first print plan among the plurality of print plans is selected on the selection screen, execute a first charge process for charging the user a first print cost corresponding to the first print plan among the plurality of calculated print costs (see at least 0078, that multiple plans are calculated and cheapest selected.).
wherein, in each of the plurality of print costs, a basic fee required for a unit period and an upper limit value related to a print amount within the unit period are predetermined (see 0059 and Fig. 9-10, noting billing plan can be associated with a basic fee that is based on time period and an upper limit of importance level where any importance level, an extra fee is charged. Examiner notes “related to a print amount …” can be broadly interpreted to encompass importance level threshold per page printed), and
Haruka does not explicitly disclose a trial period where a user is not charged a usage fee for a predetermined service and a usage fee corresponding to the first print plan being charged during the trial period.
Brother teaches a trial period where a user is not charged a usage fee for a predetermined service (see page 2, legal disclaimers, “Free Trial; 2 Month Free trial”) as well as a usage fee for a predetermined service and a usage fee corresponding to the first print plan being charged during the trial period (see page 2, legal disclaimers, “Free Trial; 2 Month Free trial”, where overages and taxes apply during trial).
Brother further teaches a plan where a basic fee required for a unit period and an upper limit value related to a print amount within the unit period are predetermined (see page 2, legal disclaimer, “Free trial” and “rollover pages”, where an upper limit of page allotment is assigned for plan, which can be rollover if unused, overage will be applicable even during trial).
Therefore, it would have been obvious for one ordinary skilled in the art to apply Brother’s plan structure to Haruka for the purpose of using trial period to incentivize plan adoption.
As per claim 2, Haruka further discloses the control device as in claim 1, wherein, in the first print plan, a first basic fee required for a unit period, a first upper limit value related to a print amount within the unit period, and a first excess fee required when the print amount within the unit period exceeds the first upper limit value are predetermined (see at least 0059, Fig. 9 and 10, where billing plan can be associated with basic fee that is based on a time period. For importance level above certain level, extra fee (excess cee) is charged).
Examiner notes Brother also teaches this limitation (see page 2, legal disclaimer, “Free trial” and “rollover pages”, where an upper limit of page allotment is assigned for plan, which can be rollover if unused, overage will be applicable even during trial).
The rationale would combine would persist.
As per claim 3, Haruka further discloses the control device as in claim 1, wherein the plurality of print plans further includes a second print plan (see Fig. 13 plan 001-004 are listed),
in the second print plan, a second basic fee required for the unit period, a second upper limit value related to a print amount within the unit period, and a second excess fee required when the print amount within the unit period exceeds the second upper limit value are predetermined (see 0059, time period can be associated individually to different plan, as well as fees),
the second basic fee is different from the first basic fee (0059 and Fig. 9 where fee calculation basis are different across different plans),
the second upper limit value is different from the first upper limit value (0079 where Fig. 10’s billing can be based on different charging scheme), and
the second excess fee is different from the first excess fee (0079, 0059, and Fig. 10 where different level of pricing can be used for different level),
wherein the controller is further configured to:
in a case where the second print plan is selected on the selection screen, execute a second charge process for charging the user a second print cost corresponding to the second print plan among the plurality of calculated print costs (0078).
Regarding the newly amended limitations of
wherein the second print cost to be charged to the user is a usage fee corresponding to the second print plan in the predetermined period which is the trial period
Please see the cited portion of in claim 1 as well as the description regarding plan options related to rollover limits in “Rollover page”.
The rationale to combine would persist.
As per claim 4, Haruka further discloses the control device as in claim 2, wherein the plurality of print plans further includes a second print plan (see Fig. 13 plan 001-004 are listed), and
in the third print plan, a basic fee required for the unit period, an upper limit value related to a print amount within the unit period, and an excess fee required when the print amount within the unit period exceeds the upper limit value are not predetermined but a fee per unit print amount is predetermined (see 0059, time period can be associated individually to different plan, as well as fees and 0079 where per unit cost can be used for the charging plan shown in Fig. 10),
wherein the controller is further configured to:
in a case where the second print plan is selected on the selection screen, execute a third charge process for charging the user a lowest print cost among the plurality of calculated print costs (0078).
As per claim 5, Haruka further discloses the control device as in claim 2, wherein the plurality of print plans further includes a second print plan (see Fig. 13 plan 001-004 are listed),
in the third print plan, a basic fee required for the unit period, an upper limit value related to a print amount within the unit period, and an excess fee required when the print amount within the unit period exceeds the upper limit value are not predetermined but a fee per unit print amount is predetermined (see 0059, time period can be associated individually to different plan, as well as fees and 0079 where per unit cost can be used for the charging plan shown in Fig. 10), and
Regarding trial period, please see the discussion in claim 1 regarding trial period. The same teaching is still applicable here and the rationale to combine would persist.
As per claim 6, Haruka further discloses the control device as in claim 2, wherein the plurality of print plans further includes a second print plan (see Fig. 13 plan 001-004 are listed), and
in the second print plan, a basic fee required for the unit period, an upper limit value related to a print amount within the unit period, and an excess fee required when the print amount within the unit period exceeds the upper limit value are not predetermined but a fee per unit print amount is predetermined (see 0059, time period can be associated individually to different plan, as well as fees and 0079 where per unit cost can be used for the charging plan shown in Fig. 10),
wherein the controller is further configured to:
in a case where the second print plan is selected on the selection screen, execute a fourth charge process for charging the user a second print cost corresponding to the second print plan among the plurality of calculated print costs (0078).
Regarding charges during trial period, please see Brother’s relevant discussion above. The rationale to combine would persist.
As per claim 7, Haruka further discloses the control device as in claim 1, wherein the print history information is a number of print media printed by the printer within a unit period (see at least Haruka, 0059, 0078 where charging plan can be based on per page. See also Fig. 9 for charging methods (right-most column)).
As per claim 8, Haruka further discloses the control device as in claim 1, wherein the related information includes the plurality of print costs (Fig. 13).
As per claim 9, Haruka further discloses the control device as in claim 1, wherein the related information includes a message which recommends the user use a print plan corresponding to a lowest print cost among the plurality of print costs (0053, 0059)
As per claim 10, Haruka further discloses the control device as in claim 1, wherein the control device is a server configured separately from the printer (0020 and Fig. 1 for illustration of server 3)
Claims 11-12 contains limitations substantially similar to claim 1 and are rejected under similar rationale set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE CHEN whose telephone number is (571)270-5499. The examiner can normally be reached Monday-Friday, 8:30 AM -5:00 PM Eastern.
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GEORGE CHEN
Primary Examiner
Art Unit 3628
/GEORGE CHEN/Primary Examiner, Art Unit 3628
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