DETAILED ACTION
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 .
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 – 22 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 pre-AIA the applicant regards as the invention.
Independent claim 1 representative of claim 20 recite limitation(s) “apparatus controller is configured to cause the recording part to record an image indicating a pre-participation reward, as a reward which is awarded to a user in accordance with the consumable part collected before the user participates in a reward-awarding service, the reward being awarded in accordance with collection of the consumable part in the reward-awarding service”. Applicant has not positively claimed how information related to reward earned in accordance with collection of the consumable part is determined and recorded as image for the user when the user is not registered with the service and how it is determined that the user has actually performed the activity of returning the consumable part. However, these limitation are confusing. Appropriate correction is requested.
Independent claim 21 representative of claim 22 recite limitation(s) “generate recordable data of an image indicating a pre-participation reward, as a reward which is awarded to a user, associated with the consuming apparatus, in accordance with the consumable part collected before the user participates in a reward-awarding service, the reward being awarded in accordance with collection of the consumable part in the reward-awarding service”. However, these limitation are confusing. Applicant has not positively claimed how information related to reward earned in accordance with collection of the consumable part is determined and generated as image for the user when the user is not registered with the service and how it is determined that the user has actually performed the activity of returning the consumable part. Appropriate correction is requested.
Dependent claims 2 – 19 inherit the deficiencies of parent claims 1 they claim dependency from and are also rejected under 35 U.S.C. 112(b) or (for pre-AIA ) 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, a joint inventor, or (for pre-AIA ) the applicant regards as the invention.
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 – 22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Independent claim 1, representative of claim 19, in part is directed toward a statutory category of invention, the claim appears to be directed toward a judicial exception namely an abstract idea. Claim 1 recites invention directed to cause the recording part to record an image indicating information such as pre-participation reward which is awarded to a user in accordance with the consumable part collected (e.g., consumable part returned by the user for recycling) before the user participates in a reward-awarding service, wherein the reward will be awarded in accordance with collection of the consumable part in the reward-awarding service.
These limitations describe marketing/sales/advertising activities directed to calculating a reward that should be awarded to the user when a consumable part is collected from them, and displaying the rewards earned by the user as reward wherein the marketing-team or a person collects the consumable item from the user and provides them with the information related to the reward they have earned for the return of the consumable part.
Independent claim 21, representative of claim 22, in part is directed toward a statutory category of invention, the claim appears to be directed toward a judicial exception namely an abstract idea. Claim 1 recites invention directed to generate recordable data of an image indicating a pre-participation reward, as a reward which is awarded to a user, associated with the consuming apparatus, in accordance with the consumable part collected before the user participates in a reward-awarding service, the reward being awarded in accordance with collection of the consumable part in the reward-awarding service.
These limitations describe marketing/sales/advertising activities directed to calculating a reward that should be awarded to the user when a consumable part is collected from them, and displaying the rewards earned by the user as reward wherein the marketing-team or a person collects the consumable item from the user and generating data with the information related to the reward user have earned for the return of the consumable part.
The independent claims 1 and representative claim 20 further recite the additional functional element of using a recording apparatus which is configured to accept the consumable part which is detachable and can be mounted in mounting part of the recording apparatus, and, a terminal control is configured to generate recordable data indicating a pre-participation reward. However, the judicial exception is not integrated into a practical application. These claims add the generic computer components (additional elements) of a printing device.
The independent claims 21 and representative claim 22 further recite the additional functional element of using an external terminal communicatively connected to a consuming apparatus (e.g., a recording apparatus) which is configured to accept the consumable part which is detachable and can be mounted in mounting part of the recording apparatus, and, recording part (e.g., print-head) which will record an image indicating a pre-participation reward. However, the judicial exception is not integrated into a practical application. These claims add the generic computer components (additional elements) of a printing device.
The devices are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer component. Accordingly, 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 element of the processor, memory, and non-transitory machine-readable medium amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
When taken as an ordered combination, nothing is added that is not already present when the elements are taken individually. When viewed as a whole, the marketing activities amount to instructions applied using generic computer components.
As for dependent claims 2 – 19, these claims recite limitations that further define the same abstract idea of defining reward is generated and allocated to user who does not participate in the reward-awarding service, defining what information will be printed on the image printed for the user, defining criteria when user can be allocated reward, defining where the consumable part will be install in the image recording device, defining that the user can accompany the image with the consumable part when they return it for recycling, defining structure of the consumable part, and defining threshold for enabling the user to earn reward., as drafted, is a process that, under its broadest reasonable interpretation, covers performance of organizing certain methods of human activity related to advertising, marketing or sales activities or behaviors but for the recitation of generic computer components. Accordingly, the claim recites an abstract idea.
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.
Claims 1 – 2, 5, 7 – 8, 11 – 12 and 14 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over Morikawa et al. US Publication 2020/0338900 in view of Office Depot published document “Ink and Toner Cartridge Recycling” hereinafter referred to as Office-Depot, Travel Dealz published article “How to Credit Miles Retroactively” hereinafter referred to as Travel-Dealz and Hewlett-Packard published support document “HP Printers – Printing Self-Test Pages” hereinafter referred to as HP.
Regarding claim 1 and representative claim 20, Morikawa teaches an image recording apparatus (Morikawa, The image-recording device includes a mount body, a tank, a recording device, a communication interface, and a controller.) [Morikawa, 0007] comprising:
a mounting part configured to mount a consumable part detachably (Morikawa, The mount body is configured to detachably hold a cartridge. The cartridge has a first chamber configured to store consumable therein and an outlet. The tank is configured to be in communication with the cartridge when the cartridge is held by the mount body.) [Morikawa, 0007];
a recording part configured to consume the consumable part mounted in the mounting part to record an image on a medium (Morikawa, The recording device is configured to record an image using consumable outputted from the second chamber.) [Morikawa, 0007]; and
Morikawa does not teach printing reward which is rewarded to a user in accordance with the consumable part collected before the user participates in a reward-awarding service. However, Office-Depot teaches rewards can be earned by users for bringing their empty printer-cartridges for recycling, and in exchange earn rewards which can be redeemed towards purchase of products [Office-Depot].
Morikawa in view of Office-Depot does not teach rewards can be earned by the user before the user participates in a reward-awarding service. However, Travel-Dealz teaches some product/service-providers like airline allow user to retroactively earn rewards before they participate in their membership-club. Travel-Dealz teaches British Airways gives user 3-months to claim their credit-miles they have earned before they decide to become a member [Travel-Dealz, page 2].
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Morikawa in view of Office-Depot by adopting teachings of Travel-Dealz to encourage user to consider recycling their used printer cartridges, and reduce production cost of manufacturers by refurbishing recycled product.
Morikawa in view of Office-Depot and Travel-Dealz teaches system and method further comprising:
indicating a pre-participation reward, as a reward which is awarded to a user in accordance with the consumable part collected before the user participates in a reward-awarding service (as responded to above) [Travel-Dealz], the reward being awarded in accordance with collection of the consumable part in the reward-awarding service (as responded to above) [Office-Depot];
Morikawa in view of Office-Depot and Travel-Dealz does not teach causing recording to record an image indicating reward information (e.g., printing a page with user and printer related information). However, HP teaches that printer information page(s) can be caused to record an image indication information (e.g., printing a page with user and printer related information).
Therefore, at the time of filing, it would have been obvious to one of ordinary skill in the art to modify Morikawa in view of Office-Depot and Travel-Dealz by adopting teachings of HP and print printer related information to the user to inform the user current status and related information to the user.
Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method further comprising:
an apparatus controller, wherein the apparatus controller is configured to cause the recording part to record an image (as responded to above) [HP, pages 1 – 9].
Regarding claim 2, as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the apparatus controller is configured to cause the recording part to record the image indicating the pre-participation reward before the user participates in the reward-awarding service (as responded to above) [Travel-Dealz].
Regarding claim 5, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the apparatus controller is configured to cause the recording part to record the image indicating the pre-participation reward after the user has participated in the reward-awarding service [Travel-Dealz].
Regarding claim 7, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the apparatus controller is configured to cause the recording part to record an image indicating information on the consumable part collected before participating in the reward-awarding service, together with the image indicating the pre-participation reward [Office-Depot in view of Travel-Dealz and HP].
Regarding claim 8, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the apparatus controller is configured to cause the recording part to record an image indicating a collecting method of the consumable part collected before participating in the reward-awarding service, together with the image indicating the pre-participation reward [Office-Depot in view of Travel-Dealz and HP].
Regarding claim 11, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the recording image is an image indicating information on the consumable part mounted in the mounting part [HP, pages 1 – 9].
Regarding claim 12, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the recording image is an image which is to accompany the consumable part in a case where the consumable part is collected (Office-Depot, Rewards members can conveniently recycle their used ink and toner cartridges at any one of our almost 1,100 stores nationwide) [Office-Depot, page 2].
Regarding claim 14, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the recording image is an image with which a function provided by a server communicatively connected to the image recording apparatus is enabled (Morikawa, The mount body is configured to detachably hold a cartridge. The cartridge has a first chamber configured to store consumable therein and an outlet. The tank is configured to be in communication with the cartridge when the cartridge is held by the mount body.) [Morikawa, 0007].
Regarding claim 15, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the apparatus controller is configured to cause the recording part to record the image indicating the pre-participation reward in a case where the image recording apparatus is communicatively connected to a server including a server memory which stores pre-participation reward information on the pre-participation reward (Office-Depot, Get $2 back in rewards per recycled cartridge. Once the $10 qualifying purchase is satisfied, rewards will be paid out next data as rewards certificate online) [Office-Depot, page 2].
Regarding claim 16, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the apparatus controller is configured to cause the recording part to record the image indicating the pre-participation reward in a case where the consumable part is detached from the mounting part (Office-Depot, Get $2 back in rewards per recycled cartridge. Once the $10 qualifying purchase is satisfied, rewards will be paid out next data as rewards certificate online) [Office-Depot, page 2].
Regarding claim 17, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the consumable part is a main tank configured to store a recording material with which an image is to be recorded, and the image recording apparatus further comprising a sub-tank configured to communicate with the main tank and to store the recording material supplied from the main tank (Morikawa, The space of the sub-tank 72 constitutes a liquid chamber 79. The liquid chamber 79 stores ink. The sub-tank 72 is an example of the tank. The liquid chamber 79 is an example of the second chamber.) [Morikawa, 0047, Fig. 3 and associated disclosure].
Regarding claim 18, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the pre-participation reward includes a benefit obtained in a case where the user participates in the reward-awarding service and uses the reward (Office-Depot, Get $2 back in rewards per recycled cartridge. Once the $10 qualifying purchase is satisfied, rewards will be paid out next data as rewards certificate online) [Office-Depot, page 2].
Regarding claim 19, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method, wherein the apparatus controller causes the recording part to record the image indicating the pre-participation reward in a case where the pre-participation reward satisfies a predetermined condition (Office-Depot, Get $2 back in rewards per recycled cartridge. Once the $10 qualifying purchase is satisfied, rewards will be paid out next data as rewards certificate online) [Office-Depot, page 2].
Regarding claim 21 and representative claim 22, Morikawa teaches an external terminal communicatively connected to a consuming apparatus configured so that a consumable part is detachably mounted in the consuming apparatus (Morikawa, The image-recording device includes a mount body, a tank, a recording device, a communication interface, and a controller.) [Morikawa, 0007], the external terminal comprising a terminal controller (Morikawa, The communication circuit 12 includes the Internet and the like. The information-processing device 11 is a server connected to the Internet.) [Morikawa, 0025],
as responded to above, and as combined and under the same rationale as above in independent claim 1, Morikawa in view of Office-Depot, Travel-Dealz and HP teaches system and method wherein the terminal controller is configured to
generate recordable data of an image indicating a pre-participation reward [Office-Depot, in view of HP], as a reward which is awarded to a user, associated with the consuming apparatus (Office-Depot, Get $2 back in rewards per recycled cartridge. Once the $10 qualifying purchase is satisfied, rewards will be paid out next data as rewards certificate online) [Office-Depot, page 2], in accordance with the consumable part collected before the user participates in a reward-awarding service (Travel-Dealz, some product/service-providers like airline allow user to retroactively earn rewards before they participate in their membership-club. Travel-Dealz teaches British Airways gives user 3-months to claim their credit-miles they have earned before they decide to become a member) [Travel-Dealz, page 2], the reward being awarded in accordance with collection of the consumable part in the reward-awarding service (Office-Depot, Get $2 back in rewards per recycled cartridge. Once the $10 qualifying purchase is satisfied, rewards will be paid out next data as rewards certificate online) [Office-Depot, page 2].
Claims 3, 4, 6 , 9, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Morikawa et al. US Publication 2020/0338900 in view of Office Depot published document “Ink and Toner Cartridge Recycling” hereinafter referred to as Office-Depot, Travel Dealz published article “How to Credit Miles Retroactively” hereinafter referred to as Travel-Dealz, Hewlett-Packard published support document “HP Printers – Printing Self-Test Pages” hereinafter referred to as HP and Official-Notice.
Regarding claim 3, Morikawa in view of Office-Depot, Travel-Dealz and HP does not explicitly teach content of the image as desired by the applicant. However, Official-Notice is taken that it a design choice to decide what content should be printed in an image for the user to educate/inform the user accordingly. Therefore,
as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz, HP and Official-Notice, teaches system and method, wherein the apparatus controller is configured to cause the recording part to record an image indicating information for participating in the reward-awarding service, together with the image indicating the pre-participation reward, before the user participates in the reward-awarding service (Official-Notice is taken that it a design choice to decide what content should be printed in an image for the user to educate/inform the user accordingly) [Official-Notice].
Regarding claim 4, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz, HP and Official-Notice teaches system and method, wherein the information for participating in the reward-awarding service includes a two-dimensional code indicating a URL (Official-Notice is taken that it a design choice to decide what content should be printed in an image for the user to educate/inform the user accordingly) [Official-Notice].
Regarding claim 6, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz, HP and Official-Notice teaches system and method, wherein the apparatus controller is configured to cause the recording part to record an image indicating a specific point in time associated with a collection date of the consumable part collected before participating in the reward-awarding service, or with an awarding date when the reward has been awarded in accordance with the collection of the consumable part, together with the image indicating the pre-participation reward (Official-Notice is taken that it a design choice to decide what content should be printed in an image for the user to educate/inform the user accordingly) [Official-Notice].
Regarding claim 9, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz, HP and Official-Notice teaches system and method, wherein the consumable part collected before participating in the reward-awarding service includes a first consumable part and a second consumable part, and the apparatus controller is configured to cause the recording part to record an image individually indicating the pre-participation reward for the first consumable part and the pre-participation reward for the second consumable part, together with the image indicating the pre-participation reward (Official-Notice is taken that it a design choice to decide what content should be printed in an image for the user to educate/inform the user accordingly) [Official-Notice].
Regarding claim 10, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz, HP and Official-Notice teaches system and method, wherein the apparatus controller is configured to perform a recording process of causing the recording part to record a recording image based on a recording command [HP, pages 1 – 9], and while the apparatus controller is performing the recording process, the apparatus controller causes the recording part to record the image indicating the pre-participation reward in a margin area as an area, in the medium, other than a recording area in which the recording image is recorded (Official-Notice is taken that it a design choice to decide what content should be printed in an image for the user to educate/inform the user accordingly) [Official-Notice].
Regarding claim 13, as responded to above, and as combined and under the same rationale as above, Morikawa in view of Office-Depot, Travel-Dealz, HP and Official-Notice teaches system and method, wherein the recording image is a test image to confirm recording performed by the recording part (Official-Notice is taken that it a design choice to decide what content should be printed in an image for the user to educate/inform the user accordingly) [Official-Notice].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Naresh Vig whose telephone number is (571)272-6810. The examiner can normally be reached Mon-Fri 06:30a - 04:00p.
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/NARESH VIG/Primary Examiner, Art Unit 3622
July 22, 2026
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