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 .
Status of Claims
Claims 1, 8, 10, 11, 13-15 have been amended.
Claims 1, 3, 4, 6-8, 10, 11, 13-15, 17, 18 and 20 as presented January 1, 2026 are currently pending and considered below.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3, 4, 6-8, 10, 11, 13-15, 17, 18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of Patent No. 11,862,313 B2 in view of Taylor (US 2018/0130034 A1) and Korman (US 2007/0005643 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same subject matter in different statutory categories.
Instant Application
Patent No. 11,862,313 B2
1. A pharmacy node in a blockchain network, the pharmacy node comprising:
1. A method, comprising:
a memory storing one or more instructions; and a processor that when executing the one or more instructions is configured to:
receive a request for a refill of a prescription of a drug for a patient, the request containing a secret key of the patient;
receiving, by a pharmacy node in a blockchain network, a request from a patient node for a refill of a prescription, the request containing a secret key of a patient associated with the patient node;
extract the secret key from the request to verify an identity of the patient;
extracting, by the pharmacy node, the secret key from the request to verify an identify of the patient;
decrypt, using the secret key, prescription data of the patient retrieved from a blockchain ledger of the blockchain network;
decrypting, by the pharmacy node, a prescription data of the patient retrieved from a blockchain ledger of the blockchain network using the secret key;
validate the decrypted prescription data via execution of a blockchain smart contract of the blockchain ledger;
generating, by the pharmacy node, an authorization to refill the prescription, where the generating an authorization further comprises:
retrieve, travel data including a proof associated with the patient, from the blockchain ledger, wherein the proof is selected from the group consisting of a boarding pass, a proof of ticket purchase, and a proof of check-in at airport;
verify, based on the travel data including the proof associated with the patient, that the patient is traveling to a destination country that is different from an origin country of the patient, wherein the destination country is subject to different rules for refilling the prescription;
execute, based on the verification, the blockchain smart contract to verify that the refill of the prescription for the drug adheres to local regulations of the destination country based on a list of medications that cannot be obtained within the destination country;
execute the blockchain smart contract to determine that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country;
notify, based on the execution of the blockchain smart contract, a patient node in the blockchain network that the drug is available over-the counter in the destination country;
generate the refill based on the blockchain smart contract;
commit a blockchain transaction containing the generated refill to the blockchain ledger; and
link the blockchain transaction containing the generated refill to the local regulations that the refill adheres to via the blockchain ledger to generate proof that the refill adheres to the local regulations.
identifying, by the pharmacy node, a location of origin of the patient from the prescription data,
identifying, by the pharmacy node, rules for refilling the prescription that are associated with a jurisdiction of origin of the patient based on a smart contract,
identifying, by the pharmacy node, that the request for the refill originates in a different jurisdiction than the jurisdiction of origin,
in response to the identification that the request for the refill originates in the different jurisdiction, retrieving a boarding pass from the blockchain ledger and verifying that the patient is travelling to the different jurisdiction from where the request for refill originates based on the retrieved boarding pass, and
in response to the verification, modifying, by the pharmacy node, the smart contract to implement local rules of the different jurisdiction, wherein the local rules include a listing of medications that cannot be obtained within the different jurisdiction which are different than a listing of medications that cannot be obtained in the jurisdiction of origin,
determining, by the pharmacy node, that a medication included in the refill is permitted based on the modified smart contract including the listing of medications that cannot be obtained within the different jurisdiction;
in response to the medication included in the refill not being available, identifying an equivalent medication which is available for the patient in the different jurisdiction based on a prescription equivalence table of the pharmacy node; and
committing, by the pharmacy node, a transaction to the blockchain ledger based on the determination to permit the refill.
3. The pharmacy node of claim 1, wherein the processor is further configured to: update the blockchain ledger with a number of remaining refills of the prescription based on the blockchain transaction.
2.The method of claim 1, further comprising: updating the blockchain ledger with a number of remaining refills based on the transaction.
4.The pharmacy node of claim 1, wherein the processor is further configured to: identify a certain duration of a trip associated with the patient based on the travel data retrieved from the blockchain ledger; and calculate a quantity of the drug to be dispensed based on the identified certain duration.
3. The method of claim 1, further comprising: identifying that the patient will be on a trip having a certain duration based on information stored in the blockchain ledger; and calculating a quantity of medication to be dispensed based on the certain duration.
6. The pharmacy node of claim 1, wherein the processor is further configured to: calculate an out of pocket cost for the generated refill of the prescription based on insurance data of the patient retrieved from the blockchain ledger.
4. The method of claim 1, further comprising: calculating an out of pocket cost for the prescription refill based on insurance data of the patient retrieved from the blockchain ledger.
7. The pharmacy node of claim 1, wherein the processor is further configured to: determine if a generic substitute exists for the requested refill of the prescription.
5. The method of claim 1, further comprising:
identifying that a generic substitute exists for the refill from the prescription equivalence table.
Claim 1 of Patent No. 11,862,313 B2 includes the limitations of claim 1 of the instant application except:
validate the decrypted prescription data via execution of a blockchain smart contract of the blockchain ledger
determine that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country
notify a patient that the drug is available over-the counter in the destination country
link the blockchain transaction containing the generated refill to the local regulations that the refill adheres to via the blockchain ledger to generate proof that the refill adheres to the local regulations
However, Taylor teaches validating the decrypted prescription data via execution of a blockchain smart contract of the blockchain ledger ([0034], [0087]) and linking the blockchain transaction containing the generated refill to the local regulations that the refill adheres to via the blockchain ledger to generate proof that the refill adheres to the local regulations ([0036], [0046]-[0048]).
It would have been obvious to one of ordinary skill in the art to validate the decrypted prescription data via execution of a blockchain smart contract of the blockchain ledger and link the blockchain transaction containing the generated refill to the local regulations that the refill adheres to via the blockchain ledger to generate proof that the refill adheres to the local regulations as taught by Taylor, in order to enhance security, satisfy “regulatory or compliance” objectives and “determine which policy, rules, or regulations should apply to a transaction” (Taylor [0006], [0047], [0049], [0036]).
Taylor does not teach determining that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country and notifying a patient that the drug is available over-the counter in the destination country. However, Korman teaches determining that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country ([0012]) and notifying a patient that the drug is available over-the counter in the destination country (claim 3 and claim 1).
It would have been obvious to one of ordinary skill in the art to determine that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country and notify a patient that the drug is available over-the counter in the destination country, as taught by Korman in order to “support the traveler, who is in need of medical attention, by providing the assistance he requires” (Korman [0010]).
Claims 8, 10, 11, 13-15, 17, 18 and 20 of the instant application recite substantially similar limitations as claims 1, 3, 4, 6 and 7 of the instant application, and, as such are rejected for similar reasons as given above.
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, 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Roennow (WO 2018/037148 A1) in further view of Taylor (US 2018/0130034 A1), Korman (US 2007/0005643 A1) and Hao (CN110233869B).
Regarding claim 1, Roennow teaches: A pharmacy node in a blockchain network system, the pharmacy node (system for “for blockchain verification of healthcare prescriptions” with multiple users, where the third user/node is the certified pharmacist, [0050], [0052]) comprising:
a memory storing one or more instructions; and a processor that when executing the one or more instructions is configured to: ([0156]-[0158])
receive a request for a refill of a prescription of a drug for a patient, the request containing a secret key of the patient; (the patient (“second user”) initiating a transaction to transfer ownership of a prescription to the pharmacist for dispensing, where the prescription can be for a “partially consumed prescription” (which is understood to include a refill), [0081], [0093]; transactions are authenticated by the users signing with their private key (therefore, the refill request contains the patient’s secret key, i.e. their private cryptographic key), [0100], [0104]-[0105], [0115])
extract the secret key from the request to verify an identity of the patient; (“The pharmacist presents the patient with a challenge to verify his/her identity. In an embodiment, the patient signs the previous record issued by the doctor thus verifying their identity.” [0109])
decrypt, using the secret key, prescription data of the patient retrieved from a blockchain ledger of the blockchain network; (sensitive data may be asymmetrically encrypted and stored on the blockchain, “The user can now at any time decrypt the data and send it to a third party node” [0061], [0074]-[0075])
retrieve, […] data including a proof associated with the patient, from the blockchain ledger […] (“A distributed ledger is a database that can securely record user transaction data for sharing across a network through entirely transparent updates of information.” [0131]; the pharmacist device that “fetches a reference cryptographic hash block from block chain” and then compare the fetched block to verify the transcription data [0143]; the ledger “contains a ledger that has at least a hash entry, a pointer to a file, a doctor's ID and patient ID” and in order to use this information, a node must first retrieve it from the ledger [0115])
[…] wherein the destination country is subject to different rules for refilling the prescription; (“medical prescriptions are handled differently in different countries. This means that a prescription given in first country is not usually valid in second country. People moving across the border have difficulties when trying to get medicine from pharmacy of second country for which they have prescription in first country. This is due incompatible systems and difficulties in second country to validate prescriptions given by doctor of the first country (difficulties are caused by lack of information, trust, and legislation).” [0003])
generate the refill based on the blockchain […]; (“The transaction is published in the blockchain” which marks the prescription or part of it as used (the pharmacist provides the medicine after validating the transaction), [0089-[0090])
commit a blockchain transaction containing the generated refill to the blockchain ledger; (“The transaction is published in the blockchain” which marks the prescription or part of it as used [0089-[0090]; for a partial fill, the pharmacist “modify the prescription (e.g. subtracts the amount of medicine given to patient from prescription) and transacts it back to patient” [0093]; “The pharmacist creates a transaction that invalidates the prescription.”; after the pharmacist creates the transaction, “The transaction is verified and added to the next block according to the consensus algorithm.” [0113])
Roennow does not teach:
validate the decrypted prescription data via execution of a blockchain smart contract of the blockchain ledger;
execute, based on the verification, the blockchain smart contract to verify that the refill of the prescription for the drug adheres to local regulations of the destination country based on a list of medications that cannot be obtained within the current jurisdiction
link the blockchain transaction containing the generated refill to the local regulations that the refill adheres to via the blockchain ledger to generate proof that the refill adheres to the local regulations.
However, Taylor in the analogous art of blockchain management of regulated drugs ([0043]-[0044]) teaches:
validate the decrypted prescription data via execution of a blockchain smart contract of the blockchain ledger; (“smart contracts” to add predefined conditions and contingencies to transactions; “Smart contracts can also be used in connection with prescription transactions in a blockchain, with such contracts including conditions and/or terms based on the existence of, e.g., prescriber keys, prescriptions, and refill authorizations.” [0034], [0087])
execute, based on the verification, the blockchain smart contract to verify that the refill of the prescription for the drug adheres to local regulations of the destination country based on a list of medications that cannot be obtained within the current jurisdiction (a prescription creates the right of the user to receive an item of a specific type in specified instance quantities with a specified time interval; smart contracts can be used in connection with prescription transactions in a blockchain including conditions and/or terms based on refill authorizations; the prescription is checked against known restrictions and added to the patient’s digital wallet, e.g. see [0087]; the geographic location of the user and geo-fencing of the privileges can be a part of an authentication or a licensing or regulatory check; geographic information can be used to determine which policy, rules or regulations should apply to a transaction, e.g. if the transaction is occurring in one jurisdiction versus another, as well as to determine which regulatory entity may have authority with respect to a transaction [0036]; supply chains for regulated products can be jurisdiction-specific, through a patchwork of national and state regulation, e.g. see [0044]; for example, block in the blockchain validating ownership of a dose of an opioid might contain the stipulation requiring the patient demonstrating they have a prescription and the provider of the dose must demonstrate ownership, and can also require the Drug Enforcement Agency (DEA) be able to view the block, e.g. see [0055] (Therefore, geo-fencing and location-aware wallets are used to determine applicable local regulations. Further, smart contracts and permissions are used to validate prescriptions based on user roles, locations and regulatory stipulations, which includes checking if the prescription is for a prohibited medication within a jurisdiction.))
link the blockchain transaction containing the generated refill to the local regulations that the refill adheres to via the blockchain ledger to generate proof that the refill adheres to the local regulations. (see above; start to end supply chain events for regulated products, e.g. prescription drugs, using blockchain transactions recorded with unique identifiers, role-based digital wallets and multi-signature authentication, e.g. see [0057], [0044], [0085]-[0086], [0051]; geo-fencing and wallet location information are used to determine which rules, policies or regulations to apply a transaction, e.g. see [0036], [0048], [0052]; smart contracts and notaries enforce rules including regulation-dependent contingencies, e.g. DEA viewing rights, prescription requirements, in a block, e.g. see [0055]-[0060], [0063]-[0066]; the transactions logged on the blockchain provide an inalterable, auditable record to prove compliance, e.g. see [0046], [0002], [0085]; the system is designed to satisfy “regulatory or compliance objectives”; regulators can block invalid transactions and enforce rules based on geo-location and user’s wallet privileges, e.g. see [0036], [0047]-[0048])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Roennow to include validate the decrypted prescription data via execution of a blockchain smart contract of the blockchain ledger, execute the blockchain smart contract to verify that the refill of the prescription for the drug adheres to local regulations of the destination country based on a list of medications that cannot be obtained within the current jurisdiction and link the blockchain transaction containing the generated refill to the local regulations that the refill adheres to via the blockchain ledger to generate proof that the refill adheres to the local regulations as taught by Taylor, for the purposes of enhance security, satisfy “regulatory or compliance” objectives and “determine which policy, rules, or regulations should apply to a transaction” (Taylor [0006], [0047], [0049], [0036]).
Roennow and Taylor do not teach:
determine that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country;
notify a patient that the drug is available over-the-counter in the destination country;
However, Korman in the analogous art of providing prescription services ([0012]) teaches:
determine that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country; (“provide the traveler with a prescription, in the appropriate language, or simply identify an over the counter medication that should be administered to the traveler” [0012])
notify a patient that the drug is available over-the-counter in the destination country; (the system delivers medical assistance to the traveler by “providing an over the counter (OTC) prescription depending on the foreign country requirements”, claim 3 and claim 1)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Roennow and Taylor to include determine that the drug, which requires the prescription in the origin country, is available over-the-counter in the destination country and notify a patient that the drug is available over-the counter in the destination country as taught by Korman, for the purposes of “support[ing] the traveler, who is in need of medical attention, by providing the assistance he requires” (Korman [0010]).
Roennow, Taylor and Korman do not teach:
retrieve, travel data including a proof associated with the patient, from the blockchain ledger, wherein the proof is selected from the group consisting of a boarding pass, a proof of ticket purchase, and a proof of check-in at airport
verify, based on the travel data including the proof associated with the patient, that the patient is traveling to a destination country that is different from an origin country of the patient
However, Hao in the analogous art of blockchain-based data sharing, distributed ledgers and cryptographic identification (pg. 5 paras. 13, 15) teaches:
retrieve, travel data including a proof associated with the patient, from the blockchain ledger, wherein the proof is selected from the group consisting of a boarding pass, a proof of ticket purchase, and a proof of check-in at airport; (“the airline company node or the airport node acquires a chain tail block of a main chain in a block chain network, and acquires a unique code of an airplane, a travel origin, a travel destination and boarding time from the chain tail block”, pg. 2 claim 7; “Step S2, generating a rider data block: the method comprises the steps that an airline company node obtains passenger data and an airplane unique code, the passenger data comprises identity information, a passenger data block is generated from the passenger data, the passenger data block is linked to a main chain corresponding to the airplane unique code…The airline node may obtain passenger data from the ticket reservation system, the passenger data including identity information of the passenger, ticket purchasing information, and the like…The ticket purchasing information comprises ticket purchasing terminal information, ticket purchasing date and time, flight information, travel origin, destination information, boarding time, boarding gate, cabin space, serial number, seat number, ticket price and the like.” (ticket purchasing information, flight information, boarding time and seat number are contents of a boarding pass/ticket), pg. 7 paras. 4-5)
verify, based on the travel data including the proof associated with the patient, that the patient is traveling to a destination country that is different from an origin country of the patient, wherein the destination country is subject to different rules for refilling the prescription; (“step S501, acquiring data: the method comprises the steps that an airline company node or an airport node obtains a chain tail block of a main chain in a block chain network, and obtains a unique code of an airplane, a travel origin, a travel destination and boarding time from the chain tail block. The step can be realized by any node in an airline company node or an airport node, the node acquires hash values corresponding to chain tail blocks of all main chains from a block chain list of the node, searches flight data blocks corresponding to the hash values in a block chain database of a block chain network, and reads the unique code of the airplane, the trip origin, the trip destination and the boarding time in the flight data blocks.”, pg. 9 paras. 3-4)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Roennow, Taylor and Korman to include retrieve travel data including a proof associated with the patient from the blockchain ledger, wherein the proof is selected from the group consisting of a boarding pass, a proof of ticket purchase, and a proof of check-in at airport and verify based on the travel data including the proof associated with the patient that the patient is traveling to a destination country that is different from an origin country of the patient as taught by Hao, for the purposes of ensuring the transaction “cannot be tampered” with and is “reliable and real” (Hao, pg. 6 para. 11).
Claims 8 and 15 recite substantially similar limitations as those already addressed in claim 1, and, as such is rejected for similar reasons as given above.
Claims 3, 6, 7, 10, 13, 14, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Roennow, Taylor, Korman and Hao in further view of Stockert (US 2019/0057763 A1).
Regarding claim 3, Roennow, Taylor, Korman and Hao teach the pharmacy node of claim 1 as described above.
Roennow further teaches:
update the blockchain ledger […] of the prescription based on the blockchain transaction (“for partially consumed prescription the pharmacy…can modify the prescription (e.g. subtracts the amount of medicine given to patient from prescription) and transacts it back to patient” (this calculation results in an updated records of the remaining balance or number of refills available to the patient) [0093])
Roennow, Taylor, Korman and Hao do not teach:
a number of remaining refills
However, Stockert in the analogous art of secure authorization of prescriptions using blockchain ([0027], [0032]) teaches:
a number of remaining refills (the refill transaction is analyzed by the smart contract and the blockchain reflects the number of refills associated with the prescription [0058]; user interface specifies the number of remaining refills [0079])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Roennow, Taylor, Korman and Hao to include the number of refills as taught by Stockert, for the purposes of providing the patient a current, up to date count on the number of refills remaining (Stockert [0057], [0079]).
Regarding claim 6, Roennow, Taylor, Korman and Hao teach the pharmacy node of claim 1 as described above.
Roennow, Taylor, Korman and Hao teach data retrieved from the blockchain ledger as described above.
Roennow, Taylor, Korman and Hao do not teach:
calculate an out of pocket cost for the generated refill of the prescription based on insurance data of the patient
However, Stockert in the analogous art teaches:
calculate an out of pocket cost for the generated refill of the prescription based on insurance data of the patient (“the system may enable integration with medical payers, such that a cost associated with a prescription…is automatically provided to a medical payer…The medical payer can then rapidly approve some, or all, of the associated cost of the prescription. This approval can be provided to the pharmacy, which may remove the approved portion of the cost from the patient's in-pharmacy bill.” [0035]; the patient’s insurance information is accessed and pricing information of brand and generic versions of the prescription are obtained from the pharmacies [0080]; the patient can request the prescription through a refill [0058])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Roennow, Taylor, Korman and Hao to include calculate an out of pocket cost for the generated refill of the prescription based on insurance data of the patient as taught by Stockert, for the purposes of allowing the patient to select whether they would prefer the brand or generic version of the drug (Stockert [0080]).
Regarding claim 7, Roennow, Taylor, Korman and Hao teach the pharmacy node of claim 1 as described above.
Roennow, Taylor, Korman and Hao do not teach:
determine if a generic substitute exists for the requested refill of the prescription
However, Stockert in the analogous art teaches:
determine if a generic substitute exists for the requested refill of the prescription (transaction for a prescription refill [0058]; presenting branded and generic versions of each drug and the cost for each [0080])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Roennow, Taylor, Korman and Hao to include determine if a generic substitute exists for the requested refill of the prescription as taught by Stockert, for the purposes of providing options for the user to “select a choice associated with a preferred version of a pharmaceutical” (Stockert [0080]).
Claims 10 and 17 recite substantially similar limitations as those already addressed in claim 3, and, as such are rejected for similar reasons as given above.
Claims 13 and 20 recite substantially similar limitations as those already addressed in claim 6, and, as such are rejected for similar reasons as given above.
Claim 14 recites substantially similar limitations as those already addressed in claim 7, and, as such is rejected for similar reasons as given above.
Claims 4, 11 and 18 is rejected under 35 U.S.C. 103 as being unpatentable over Roennow, Taylor, Korman and Hao in further view of Sekura (US 2005/0041531 A1).
Regarding claim 4, Roennow, Taylor, Korman and Hao teach the pharmacy node of claim 1 as described above.
Roennow, Taylor, Korman and Hao teach travel data retrieved from the blockchain ledger as described above. Roennow, Taylor, Korman and Hao do not teach:
identify a certain duration of a trip associated with the patient; and
calculate a quantity of the drug to be dispensed based on the identified certain duration
However, Sekura in the analogous art of management of prescription medications ([0006]-[0013]) teaches:
identify a certain duration of a trip associated with the patient; and (the user has a planned trip over a specified period between two dates [0145])
calculate a quantity of the drug to be dispensed based on the identified certain duration (calculating the amount of medication needed over a specified period between two dates of a trip [0145])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Roennow, Taylor, Korman and Hao to include identify a certain duration of a trip associated with the patient and calculate a quantity of the drug to be dispensed based on the identified certain duration as taught by Sekura, for the purposes of indicating to the user when their medications needs to be refilled (Sekura [0145], [0010]).
Claims 11 and 18 recite substantially similar limitations as those already addressed in claim 4, and, as such are rejected for similar reasons as given above.
Response to Arguments
Regarding the rejection under 35 U.S.C. § 103 of 1, 3, 4, 6-8, 10, 11, 13-15, 17, 18 and 20, the Examiner has considered the Applicant’s arguments; however the arguments are not persuasive. Any arguments directed to amended limitations are moot given the new grounds of rejection as necessitated by amendment.
Applicant argues “Korman does not teach or suggest determining that the drug which requires the prescription in the origin country is available over-the-counter in the foreign country” or “notifying a patient node in a blockchain network, based on execution of smart contract, that the drug is available over-the-counter in the foreign country”.
The Examiner respectfully disagrees. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Korman establishes that evaluating a traveler’s medication needs against a foreign country’s requirements to determine over-the-counter availability is a known process ([0012], [0018]). It would have been obvious to a person of ordinary skill in the art to modify the blockchain smart contracts of Taylor by incorporating the cross-border medication evaluation rules of Korman to expand the geographic rule-enforcement capabilities of Taylor and automatically handle a traveling patient’s medication needs (Korman [0010]).
In addition, Korman teaches providing medical assistance to a subscriber traveling abroad, specifically addressing the traveler’s home (origin) medical needs evaluated under “foreign country [destination] requirements” (claim 3 and claim 1). When a patient request a refill for their home-country prescription while traveling, applying the foreign country requirements of Korman to see if an OTC equivalent exists fulfills this limitation.
Applicant argues the Korman does not teach notifying a patient node based on the execution of the smart contract. Roennow teaches the blockchain network returning a notification of the prescription status to the patient node ([0050], [0053]. Taylor teaches utilizing a patient smart contract to execute and broadcast transactions based on geographic rules. By automating the OTC determination of Korman into the smart contract of Taylor, the resulting executing triggers the notification to the patient node as taught by Roennow.
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 extension fee 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 Aaisha Abdullah whose telephone number is (571)272-5668. The examiner can normally be reached on Monday through Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter H Choi can be reached on (469) 295-9171. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A./Examiner, Art Unit 3686
/PETER H CHOI/Supervisory Patent Examiner, Art Unit 3681
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