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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/08/2026 has been entered.
Status of the Claims
Claims 1, 4-6, 8, 9, and 11 are amended. Claims 2 and 3 are canceled. Claims 1 and 4-12 are pending.
Response to Arguments
Applicant's arguments filed 09/08/2026 regarding 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the amended limitations including a consumable tank and a consumable amount detector takes the claims out of the “merely reciting an improvement to the judicial exception” classification because they are physical components. Examiner disagrees. The judicial exception is not integrated into a practical application simply because the claims recite the additional elements of: an image forming device configured to form an image, a controller, user interface, a memory configured to store [contract] information, a consumable tank which stores the consumable amount detector which detects a remaining amount of consumable stored in the tank. The additional element of the controller, user interface, and memory are a computer components recited at a high-level of generality performing the limitations corresponding to the judicial exception as indicated in Step 2A Prong One in the 101 section, and amounts to no more than mere instructions to apply the judicial exception using a generic computer. The image forming device, consumable tank, and consumable amount detector amounts to generally linking the judicial exception to a particular field of use (contracts for services of image forming devices (printers)). Accordingly, 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 claims are directed to an abstract idea. Applicant’s argument that the claims “provide more efficient processing associated with assessment of a consumable and related processing based on such assessment”, further indicates that any alleged improvement is at best an improvement in the judicial exception itself (e.g., mental processes). ). It is important to keep in mind that an improvement in the judicial exception itself is not an improvement in technology (emphasis added). For example, in Trading Technologies Int’l v. IBG LLC, the court determined that the claim 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. Similarly, the Applicant’s claim recitations are an improvement in the judicial exception, not an improvement in technology. Assessing a remaining amount of a consumable and making a decision based on that assessment directly corresponds to the observation and evaluation of data, and making a judgment/opinion based on the observed and evaluated data. Technical improvement focuses on enhancing the tools, software, or machinery, while business process improvement focuses on streamlining the steps, workflows, and methodologies people use to do their work. Applicant’s claims fall in the latter. The use of a computer to process said data, or a detector (sensor) for the data gathering does not take the claims out of the judicial exception groupings. MPEP §2106.04(a)(2) makes it clear that claims can recite a mental process even if they are claimed as being performed on a computer. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept, the claim is considered to recite a mental process. (MPEP §2106.04(a)(2)(III)). Further, a consumable ink tank and detector that detects the reaming amount of ink generally links the judicial exception to a particular field of use in a printing environment. Additionally, providing more efficient processing associated with assessment of a consumable and related processing based on such assessment does not constitute an improvement in computers or technology. For the reasons set forth above, the judicial exception is not integrated into a practical application under Step 2A Prong Two.
Under Step 2B, the claims do not include additional elements that 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 elements amount to no more than mere instructions to apply the exception using a generic computer, and generally linking the judicial exception to a particular field of use. Mere instructions to apply an exception using a generic computer cannot provide an inventive concept. Thus, when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claims are not patent eligible.
The 35 U.S.C. 101 rejection is maintained.
Applicant’s arguments, see pg. 10, filed 09/08/2026, with respect to 35 U.S.C. 103 have been fully considered and are persuasive. The 35 U.S.C. 103 rejection has been withdrawn.
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 and 4-12 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.
Claims 1, 4-10, and 12 recite a system (i.e. machine), and claim 11 recites an apparatus (i.e. machine or article of manufacture). Therefore claims 1 and 4-12 fall within one of the four statutory categories of invention.
Independent claim 1 recites the limitations: receive a user input from a user of the [image forming device]; store contract information indicating a contract to utilize the [image forming device]; detect a remaining amount of the consumable stored in the [consumable tank]; receive a request to switch the contract from a first contract to a second contract different from the first contract, each of first contract information on the first contract and second contract information on the second contract including particular information defining a condition for delivering the consumable, such that the condition constitutes a delivery condition; and notify the user that the consumable is to be delivered in response to the condition being satisfied after receiving the request to switch the contract from the first contract to the second contract; wherein the particular information includes threshold information indicating a threshold of a remaining amount of the consumable as the condition for delivering the consumable, wherein the first contract information includes a first threshold as the threshold information for the first contract, wherein the second contract information includes a second threshold as the threshold information for the second contract, determine, after receiving the request to switch the contract, that the first threshold is different from the second threshold; obtain remaining-amount information indicating the remaining amount of the consumable detected; determine whether the remaining amount indicated by the obtained remaining- amount information is equal to or less than the second threshold; and notify the user that the consumable is to be delivered in response to determining that the first threshold is different from the second threshold and the remaining amount is equal to or less than the second threshold. The invention and claims are drawn towards a consumable (e.g., toner cartridge, etc.) management system allowing for the switching of contracts for consuming devices such as image forming devices (e.g., printers), and the claims recite limitations that correspond to certain methods of organizing human activity (commercial interactions, business relations, following rules or instructions; managing personal interactions, behavior or relationships) as evidenced by the limitations detailing receiving a user input from a user of the [image forming device]; storing contract information indicating a contract to utilize the [image forming device]; receiving a request to switch the contract from a first contract to a second contract different from the first contract, each of first contract information on the first contract and second contract information on the second contract including particular information defining a condition for delivering the consumable, such that the condition constitutes a delivery condition; and notifying the user that the consumable is to be delivered in response to the condition being satisfied after receiving the request to switch the contract from the first contract to the second contract; wherein the particular information includes threshold information of a remaining amount of the consumable as the condition for delivering the consumable, wherein the first contract information includes a first threshold as the threshold information for the first contract, wherein the second contract information includes a second threshold as the threshold information for the second contract, determine, after receiving the request to switch the contract, that the first threshold is different from the second threshold; obtain remaining-amount information indicating the remaining amount of the consumable detected; determine whether the remaining amount indicated by the obtained remaining- amount information is equal to or less than the second threshold and notify the user that the consumable is to be delivered in response to determining that the first threshold is different from the second threshold and the remaining amount is equal to or less than the second threshold. The claim limitations also correspond to mental processes (observation, evaluation, judgment, opinion), as evidenced by the limitations detailing the observation and evaluation of data in order to make a decision or determination (e.g., receiving a request to switch contracts, detecting a remaining amount of the consumable, and transmitting the notifications to a user based on the observed and evaluated data). The claims recite an abstract idea.
Note: The features or elements in brackets in the above Step 2A Prong One section are inserted for reading clarity, but are analyzed as “additional elements” under Step 2A Prong Two and Step 2B.
The judicial exception is not integrated into a practical application simply because the claims recite the additional elements of: an image forming device configured to form an image, a controller, user interface, a memory configured to store [contract] information, a consumable tank, and a consumable amount detector. The additional element of the controller, user interface, and memory are a computer components recited at a high-level of generality performing the above-mentioned limitations, and amounts to no more than mere instructions to apply the judicial exception using a generic computer. The image forming device, consumable tank, and consumable amount detector amounts to generally linking the judicial exception to a particular field of use (contracts for services of image forming devices (printers)). Accordingly, 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 claims are directed to an abstract idea.
The claims do not include additional elements that 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 elements amount to no more than mere instructions to apply the exception using a generic computer, and generally linking the judicial exception to a particular field of use. Mere instructions to apply an exception using a generic computer cannot provide an inventive concept. Thus, when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claims are not patent eligible.
Dependent claims 4-10 recite additional limitations that are further directed to the abstract idea analyzed in the rejected claims above. The claims also recite additional elements that have been analyzed in the rejected claims above. Thus, claims 4-10 are also rejected under 35 U.S.C. 101.
Independent claim 11 recites the limitations: detect a remaining amount of the consumable stored in [the consumable tank]; receive a request to switch the contract from a first contract to a second contract different from the first contract, each of first contract information on the first contract and second contract information on the second contract including particular information defining a condition for delivering the consumable, such that the condition constitutes a delivery condition; and transmit a notification to a user of the [image forming device] that the consumable is to be delivered in response to the condition being satisfied after receiving the request to switch the contract from the first contract to the second contract, wherein the particular information includes threshold information indicating a threshold of a remaining amount of the consumable as the condition for delivering the consumable, wherein the first contract information includes a first threshold as the threshold information for the first contract, wherein the second contract information includes a second threshold as the threshold information for the second contract, and wherein [the controller] is configured to determine, after receiving the request to switch the contract, that the first threshold is different from the second threshold; obtain, from [the image forming device], remaining-amount information indicating the remaining amount of the consumable detected by the consumable amount detector; determine whether the remaining amount indicated by the obtained remaining- amount information is equal to or less than the second threshold; and notify the user that the consumable is to be delivered in response to determining that the first threshold is different from the second threshold and the remaining amount is equal to or less than the second threshold. The invention and claims are drawn towards a consumable (e.g., toner cartridge, etc.) management system allowing for the switching of contracts for consuming devices such as image forming devices (e.g., printers), and the claims recite limitations that correspond to certain methods of organizing human activity (commercial interactions, business relations, following rules or instructions; managing personal interactions, behavior or relationships) as evidenced by the limitations detailing
Note: The features or elements in brackets in the above Step 2A Prong One section are inserted for reading clarity, but are analyzed as “additional elements” under Step 2A Prong Two and Step 2B.
The judicial exception is not integrated into a practical application simply because the claims recite the additional elements of: an image forming device configured to form an image, a controller, user interface, a memory configured to store [contract] information, a consumable tank, and a consumable amount detector. The additional element of the controller, user interface, and memory are a computer components recited at a high-level of generality performing the above-mentioned limitations, and amounts to no more than mere instructions to apply the judicial exception using a generic computer. The image forming device, consumable tank, and consumable amount detector amounts to generally linking the judicial exception to a particular field of use (contracts for services of image forming devices (printers)). Accordingly, 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 claims are directed to an abstract idea.
The claims do not include additional elements that 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 elements amount to no more than mere instructions to apply the exception using a generic computer, and generally linking the judicial exception to a particular field of use. Mere instructions to apply an exception using a generic computer cannot provide an inventive concept. Thus, when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claims are not patent eligible.
Dependent claim 12 recites additional limitations that are further directed to the abstract idea analyzed in the rejected claims above. The claims also recite additional elements that have been analyzed in the rejected claims above. Thus, claim 12 is also rejected under 35 U.S.C. 101.
Allowable Subject Matter
Claims 1 and 4-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
The closest patent or patent application prior art reference found that is relevant to the applicant’s invention is Shiori (2023/0182481) which discloses a printing apparatus to which a consumable part filled with a printing material can be detachably attached, so as to perform printing according to a color mode setting by use of the printing material filled in the consumable part whose type differs according to a contract. The reference does not appear to disclose the details of the amended limitations. The claims appear to overcome the prior art. Additionally, references found to be relevant to the applicant’s invention includes:
Yamada (2022/0100440): The consumable determination process is to determine whether a particular consumable is included in one or more of consumables attached to the printing device, the particular consumable being a consumable that meets a prescribed condition required for transition to a specific printing state where specific printing under a contract with the server is allowed.
Mikami (2021/0237494): discloses ordering a consumable according to contract information is to be provided. In a printing apparatus that is connected to an ordering apparatus that orders a consumable and configured to perform printing with consumption of a consumable, a first obtaining unit obtains a degree of consumption of a consumable and information related to a consumable, and a second obtaining unit obtains information related to a contract for the printing apparatus.
Neither reference appear to disclose the details of the amended limitations.
The closest non-patent literature found that is relevant to the applicant’s invention is the publication “ Managed print service contract analysis system” (The IP.com Journal; 2012) which discloses proposing to estimate the value of the provided printing services based on the monetary gain of the customer instead of a combination of ad-hoc procedures and negotiations. The reference does not appear to disclose the details of the amended limitations. The claims appear to overcome the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONE N SIMPSON whose telephone number is (571)272-5513. The examiner can normally be reached M-F; 7:30 a.m.-4:30 p.m..
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DIONE N. SIMPSON
Primary Examiner
Art Unit 3628
/DIONE N. SIMPSON/Primary Examiner, Art Unit 3629
