DETAILED ACTION
Status of the Application
In response filed on May 4, 2026, the Applicant amended claims 1 and 15; and cancelled claims 9 and 20. Claims 14 and 19 were previously cancelled. Claims 1-8, 10-13, and 15-18 are pending and currently under consideration for patentability.
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 .
Response to Amendments and Arguments
v Applicant’s amendments, with respect to the rejection of claims 1-8, 10-13, and 15-18 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement have been considered and are persuasive. The new matter identified in the previous action has been removed from the claims. However, Examiner notes that the newly added limitations of “transmit, to the patient electronic device, the prescription ID, wherein the patient electronic device transmits the prescription ID to the pharmacy electronic device of the selected pharmacy; receive, from the pharmacy electronic device of the selected pharmacy, an input representative of the prescription ID and a notice of whether the selected pharmacy accepts fulfilling the order; confirm whether the input matches the prescription ID and that the pharmacy has accepted to fulfill the order; and responsive to confirming that the input matches the prescription ID and that the pharmacy has accepted to fulfill the order, transmit, to the pharmacy electronic device of the selected pharmacy, the order to be filled by the selected pharmacy” have introduced a new grounds of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ). See the rejection below.
v Applicant’s arguments, with respect to the rejection of claims 1-8, 10-13, and 15-18 under 35 U.S.C. 101 have been fully considered and are not persuasive. The rejections of claims 1-8, 10-13, and 15-18 under 35 U.S.C. 101 have been maintained accordingly.
Applicant specifically argues that
“First, Applicant respectfully submits that "not all methods of organizing human activity are abstract ideas" (MPEP § 2106.04(a)(2)II)…and that the limitations of the independent claims are not analogous to any of the examples of this category of abstract ideas listed in MPEP § 2106.04(a)(2).II.C…Applicant notes that all of the provided examples in the above-cited portion of the MPEP correspond merely to instructions or rules that can simply be relayed to a human and then performed by the human. Further, none of the specific examples set forth in that list are relevant in any way to the subject matter of the claims, i.e., the current claims do not filter content, they do not track financial transactions to determine whether they exceed a pre-set spending limit, they are not rules for playing games, etc… As such, the systems and processes are not implemented merely by the actions of a user divorced from an electromechanical (physical) machine”
Examiner respectfully disagrees with Applicant’s first argument.
Applicant’s assertion that “all of these examples…are simply meant to be relayed to a human and then performed by the human” is incorrect, and irrelevant. The MPEP states that “the sub-groupings encompass…certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping”. Applicant’s cited examples do not include all of the examples discussed in the MPEP. Furthermore, a claim may include limitations/steps that a human cannot practically perform, and may still be directed to subject matter falling within the “certain methods of organizing human activity” subject matter grouping of abstract ideas. Whether or not a claim includes limitations/steps that a human cannot practically perform in their mind or with pen and paper is not part of the analysis for whether or not a claim recites limitations that fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas. For example, a new method of price optimization was found to be a fundamental economic concept (See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364, 115 U.S.P.Q.2d 1090, 1092 (Fed Cir. 2015)) even though a human was not recited in the claims. See also processing insurance claims for a covered loss or policy event under an insurance policy (i.e., an agreement in the form of a contract), Accenture Global Services v. Guidewire Software, Inc., 728 F.3d 1336, 1338-39, 108 USPQ2d 1173, 1175-76 (Fed. Cir. 2013), or the example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle). See also processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).
Second, Applicant respectfully submits that the mere possibility that any one limitation can be performed as a mental step is insufficient to establish that a claim as a whole is directed to an abstract idea. For example, various features of claim 1 do not recite a mental process because they are not recited at "a high level of generality such that they could practically be performed in the human mind." (Emphasis added) (MPEP 2106.04(a)(2)(III)(A)).
Examiner respectfully disagrees with Applicant’s second argument.
Whether or not a claim includes limitations/steps that a human cannot practically perform in their mind or with pen and paper is not part of the analysis for whether or not a claim recites limitations that fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
Further, claim limitations that improve an existing technological process (not limited to simply the "computer technology") are not directed to a mere abstract idea. (Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336-37, 118 USPQ2d 1684, 1689-90 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games America, Inc. 837 F.3d 1299, 1314, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016)). Here, functions such as transmitting, to the patient electronic device, the prescription ID, wherein the patient electronic device transmits the prescription ID to the pharmacy electronic device of the selected pharmacy; receiving, from the pharmacy electronic device of the selected pharmacy, an input representative of the prescription ID and a notice of whether the selected pharmacy accepts fulfilling the order; confirming whether the input matches the prescription ID and that the pharmacy has accepted to fulfill the order cannot be practically performed in the human mind. Specifically, implementing at least one limitation of claim 1 requires complex processing and therefore imposes meaningful limits on the claim. (See MPEP § 2164.04(d); "If the claim as a whole integrates the judicial exception into a practical application based upon evaluation of these considerations, the additional limitations impose a meaningful limit on the judicial exception and the claim is eligible at Step 2A.").
Examiner respectfully disagrees with Applicant’s third argument.
Applicant has not identified how an existing technological process has been improved in any technical sense. The claimed subject matter involves communicating with physicians, pharmacies, and patients in order to identify medical supply orders and to identify a pharmacy to fill the order (i.e., sell/transact the medical supply, such as a prescription medicine), and therefore clearly amounts to a sales activity or behavior (and/or managing personal behavior or relationships or interactions between people, such as following rules or instructions). The plain focus of the claims is not on an improvement to computer functionality. Any underlying improvement is to the abstract idea itself (i.e., an improved process for identifying/facilitating a pharmacy to fill the order).
Third, Applicant respectfully notes that the limitations of these claims amount to significantly more than any abstract idea because the recited structural elements are required to execute the limitations of the claims and are therefore inseparable from these limitations. Further, these limitations, taken as a whole, constitute an improvement to the technological field of prescription management and control for patients using a specific technically improved architecture and messaging system. Applicant respectfully notes that such an improvement is not constrained by a requirement to improve the functioning of a computer, but is expressly permitted to be an improvement to "any other technology or technical field," which is precisely what the limitations, inter alia, accomplish (MPEP § 2106.05(a)(II)).
Examiner respectfully disagrees with Applicant’s fourth argument.
Applicant has not identified how the additional elements constitute an improvement to the technological field of prescription management in any technical sense, or how the architecture and messaging system is “technically improved”. The Examiner finds no technical problem being addressed by the instant claims. Nor does the Examiner see a technical solution to which the claims are directed. The need for patients and physicians to communicate and/or visit with one another existed prior to computers. It is an abstract business/personal problem. That general purpose computers are used to facilitate this communication amounts to mere instructions to implement the abstract idea on a generic computer (i.e., merely using computers as tools in their ordinary capacity). Relatedly, the need to know the location of the patient in order to identify relevant/nearby pharmacies is not a technical problem. This same problem existed prior to computers. It is an abstract business/personal problem. That the received location data may be “based on a global positioning system” simply suggests that a general-purpose computer was used at some point to provide the location data. There is no technical problem or solution here. Furthermore, the desire to find a pharmacy that a patient can get to by/within a certain time is not a technical problem. This is a subject problem from the perspective of the patient, and it existed prior to computers. That a location of the patient electronic device is used to determine estimated travel time does not make the problem or solution any more technical. See In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021) (A claim does not “cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.”). See also In re Smith, No. 2022-1310, 2022 (Fed. Cir. Sept. 9, 2022) (“But utility is not the test for patent eligibility under the Supreme Court’s cases.”); and SAP, 898 F.3d at 1163 (“We may assume that the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.”) (citation omitted
A claim may be directed to a fundamental economic principle or practice and/or a commercial or legal interactions (specifically, an advertising, marketing or sales activity or behavior; business relations) and/or managing personal behavior or relationships or interactions between people (e.g., following rules or instructions) while reciting limitations that are performed by computers. Initiating a telehealth session may require technology, but it amounts to a requirement to initiate a meeting between the physician and patient using generic computer (i.e., merely using computers as tools in their ordinary capacity). That general purpose computers are used to facilitate this communication amounts to mere instructions to implement the abstract idea on a generic computer. The same is true for determining a location of the patient device “based on” a GPS (e.g., receiving a location of the device, wherein the location was at some point based on a GPS), or determining estimated travel time based on location of device.
The claimed subject matter involves communicating with physicians, pharmacies, and patients in order to identify medical supply orders and to identify a pharmacy to fill the order (i.e., sell/transact the medical supply, such as a prescription medicine), and therefore clearly amounts to a sales activity or behavior (and/or managing personal behavior or relationships or interactions between people, such as following rules or instructions). The plain focus of the claims is not on an improvement to computer functionality. Furthermore, any computers used directly (e.g., “a memory…a processor”) or indirectly (e.g., “via the patient electronic device and the physician electronic device”, “based on a global positioning system”) are used in their ordinary capacity. Examiner notes that there is nothing in the original disclosure to suggest there was a problem with conventional systems associated with “having to leave the display of the patient electronic device and access the network of pharmacies”. The Examiner finds no discussion of a technical problem being addressed by the instant claims here. Nor does the Examiner see a technical solution to which the claims are directed. Doing something (displaying data) “without communicating with a network of pharmacies” is not a technical solution.
Utility is not the standard for eligibility. Nothing in the cited paragraphs explain how the claimed invention addresses a technical problem. As discussed above, the need for patients and physicians to communicate and/or visit with one another existed prior to computers. It is an abstract business/personal problem. That general purpose computers are used to facilitate this communication amounts to mere instructions to implement the abstract idea on a generic computer (i.e., merely using computers as tools in their ordinary capacity). Relatedly, the need to know the location of the patient in order to identify relevant/nearby pharmacies is not a technical problem. This same problem existed prior to computers. It is an abstract business/personal problem. That the received location data may be “based on a global positioning system” simply suggests that a general-purpose computer was used at some point to provide the location data. There is no technical problem or solution here. Furthermore, the desire to find a pharmacy that a patient can get to by/within a certain time is not a technical problem. This is a subject problem from the perspective of the patient, and it existed prior to computers. That a location of the patient electronic device is used to determine estimated travel time does not make the problem or solution any more technical.
v Applicant’s argument, with respect to the rejection of amended claims 1 and 15 (as well as each of the dependent claims), under 35 U.S.C. 103 as being unpatentable over John, Hassad, Gilman, Lamoncha, and Siegel has been considered, and is persuasive.
All of Applicant’s arguments are not persuasive, with the exception of the assertion that the cited prior art fails to disclose “responsive to confirming that the input matches the prescription ID and that the pharmacy has accepted to fulfill the order, transmitting, to the pharmacy electronic device of the selected pharmacy, the order to be filled by the selected pharmacy”, which the Examiner finds persuasive.
Claim Interpretation
Independent claims 1 and 15 have been amended to recite “based on the travel time and the price of the order, receive…an indication representing a selection, from the first list of network pharmacies, of a second list of network pharmacies”. The claims subsequent refer to “each pharmacy in the second list that satisfies the travel time and the price of the order”. The claims subsequently refer to “the availability of the pharmacies in the second list to fill the order that satisfy the travel time and the price of the order, wherein the second list of the pharmacies available to fill the order at a location that satisfies the travel time and the price of the order is displayed”. The claims subsequently recite “based on the availability to fill the order, the travel time, and the price of the order, receive, from the patient…an indication representing a selection by the patient of a selected pharmacy, from the second list of pharmacies, to fill the order”.
The claims require that the first list of network pharmacies provided to the patent include pharmacies meeting the trait requirements of “price of the order” and “travel time”. As such, all of the pharmacies in the first list satisfy the travel time and the price of the order. As such, any selected pharmacy from the first list of network pharmacies can be said to be “based on the travel time and the price of the order”, as each pharmacy from the first list of network pharmacies was selected for inclusion in the first list based on these traits. The claimed “second list of network pharmacies” is what the patient selects from the first list of network pharmacies. As such each of the pharmacies in the second list of network pharmacies necessarily “satisfies the travel time and the price of the order” traits (again, because each pharmacy from the first list of network pharmacies was selected for inclusion in the first list based on these traits, and therefore each pharmacy in the select list satisfies these required traits). Furthermore, receiving any selection of one or more pharmacies from the second list of pharmacies can be said to be “based on the travel time and the price of the order”, as each pharmacy from the second list of network pharmacies was selected from the first list of pharmacies, which where each selected for inclusion in the first list of pharmacies based on these traits.
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.
v Claim(s) 1-8, 10-13, and 15-18 is/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.
Step 1:
Claim(s) 15-18 is/are drawn to methods (i.e., a process), while claim(s) 1-8 and 10-13 is/are drawn to systems (i.e., a machine/manufacture). As such, claims 1-8, 10-13, and 15-18 is/are drawn to one of the statutory categories of invention (Step 1: YES).
Step 2A - Prong One:
In prong one of step 2A, the claim(s) is/are analyzed to evaluate whether it/they recite(s) a judicial exception.
Claim 1 (representative of independent claim(s) 15) recites/describes the following steps;
initiate a…session between the patient… and the physician…
determine, based on a global positioning system (GPS) a location of the patient… wherein the location is used as a trait associated with the patient
receive, from one of the physician…and patient…an order for the medical supply where the order has a trait and is associated with the patient;
select, from the network of pharmacies, a first list of network pharmacies meeting a trait of the order, wherein the trait of the order comprises at least a price of the order and one pick-up time of the order at a location of the pharmacy determined based at least on a travel time from the location of the patient…to the location of the pharmacy, and wherein the price of the order is based on supply and demand of the order;
transmit, to the patient…the first list of network pharmacies;
based on the travel time and the price of the order, receive, from the patient…an indication representing a selection, from the first list of network pharmacies, of a second list of network pharmacies;
receive, from each pharmacy…in the second list that satisfies the travel time and the price of the order, an…indication of the availability to fill the order;
transmit, to the patient…the availability of the pharmacies in the second list to fill the order that satisfy the travel time and the price of the order, wherein the second list of the pharmacies available to fill the order at a location that satisfies the travel time and the price of the order is displayed
based on the availability to fill the order, the travel time, and the price of the order, receive, from the patient…an indication representing a selection by the patient of a selected pharmacy, from the second list of pharmacies, to fill the order; and
generate a prescription ID associated with the order
transmit, to the patient…the prescription ID, wherein the patient…transmits the prescription ID to the…the selected pharmacy;
receive, from…the selected pharmacy, an input representative of the prescription ID and a notice of whether the selected pharmacy accepts fulfilling the order;
confirm whether the input matches the prescription ID and that the pharmacy has accepted to fulfill the order; and
responsive to confirming that the input matches the prescription ID and that the pharmacy has accepted to fulfill the order, transmit, to…the selected pharmacy, the order to be filled by the selected pharmacy
These steps, under its broadest reasonable interpretation, describe or set-forth a business process for facilitating a health session between a patient and physician, and coordinating the selection of a pharmacy from a plurality of pharmacies to fill an order for a medical supply based on stock availability, order traits (e.g., location, price, time proximity etc.), and user preferences (e.g.,, selections from lists of potential pharmacies) and facilitation of the filling of the order by transmitting the order to the selected pharmacy, which amounts to a fundamental economic principle or practice and/or a commercial or legal interactions (specifically, an advertising, marketing or sales activity or behavior; business relations) and/or managing personal behavior or relationships or interactions between people (e.g., following rules or instructions). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
As such, the Examiner concludes that claim 1 recites an abstract idea (Step 2A – Prong One: YES).
Independent claim(s) 15 recite/describe nearly identical steps (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and this/these claim(s) is/are therefore determined to recite an abstract idea under the same analysis.
Each of the depending claims likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and this/these claim(s) is/are therefore determined to recite an abstract idea under the same analysis. Any element(s) recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Step 2A - Prong Two:
In prong two of step 2A, an evaluation is made whether a claim recites any additional element, or combination of additional elements, that integrate the exception into a practical application of that exception. An “addition element” is an element that is recited in the claim in addition to (beyond) the judicial exception (i.e., an element/limitation that sets forth an abstract idea is not an additional element). The phrase “integration into a practical application” is defined as requiring an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception.
The claim(s) recite the additional elements/limitations of
“a system…the system comprising: a memory for storing machine-readable instructions; a processor in communication with the memory wherein the processor is configured to execute the machine-readable instructions to” (claim 1)
“a physician electronic device associated with a physician…a patient electronic device associated with a patient…a pharmacy electronic device associated with a pharmacy…the location of the patient electronic device… from one of the physician electronic device and patient electronic device…the location of the patient electronic device…to the patient electronic device…that is displayed by the patient electronic device…from the patient electronic device…from each pharmacy electronic device…an electronic indication… to the patient electronic device…is displayed by the patient electronic device… from the patient electronic device…to the pharmacy electronic device…to the patient electronic device…wherein the patient electronic device transmits…to the pharmacy electronic device of the selected pharmacy…from the pharmacy electronic device of the selected pharmacy…to the pharmacy electronic device of the selected pharmacy” (claim 1)
“to the patient electronic device…that is displayed by the patient electronic device…from each pharmacy electronic device…to the patient electronic device…is displayed by the patient electronic device… from the patient electronic device… to the patient electronic device…wherein the patient electronic device transmits…to the pharmacy electronic device of the selected pharmacy…from the pharmacy electronic device of the selected pharmacy…to the pharmacy electronic device of the selected pharmacy” (claim 15)
“a telehealth session via the patient electronic device and the physician electronic device” (claims 1 and 15)
“a location of the patient electronic device” (claims 1 and 15)
“patient electronic device” (claims 3-5, 8, and 11)
“physician electronic device” (claims 8 and 11)
“pharmacy electronic device” (claim 12)
The requirement to execute the claimed steps/functions using “a system…the system comprising: a memory for storing machine-readable instructions; a processor in communication with the memory wherein the processor is configured to execute the machine-readable instructions to” (claim 1) and/or “a telehealth session via the patient electronic device and the physician electronic device” (claims 1 and 15) is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. Applicants own disclosure suggests that the system device may be a general-purpose computer (e.g., see para [0039] “systems described herein can be implemented using a general-purpose computer or general-purpose processor…”) This/these limitation(s) do/does not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The recited additional element(s) of “a physician electronic device associated with a physician…a patient electronic device associated with a patient…a pharmacy electronic device associated with a pharmacy…the location of the patient electronic device… from one of the physician electronic device and patient electronic device…the location of the patient electronic device…to the patient electronic device…that is displayed by the patient electronic device without communicating with the network of pharmacies…from the patient electronic device…from each pharmacy electronic device…an electronic indication… to the patient electronic device…is displayed by the patient electronic device without communicating with the network of pharmacies… from the patient electronic device…to the patient electronic device…wherein the patient electronic device transmits…to the pharmacy electronic device of the selected pharmacy…from the pharmacy electronic device of the selected pharmacy…to the pharmacy electronic device of the selected pharmacy” (claim 1) or “to the patient electronic device…that is displayed by the patient electronic device…from each pharmacy electronic device…to the patient electronic device…is displayed by the patient electronic device… from the patient electronic device…to the patient electronic device…wherein the patient electronic device transmits…to the pharmacy electronic device of the selected pharmacy…from the pharmacy electronic device of the selected pharmacy…to the pharmacy electronic device of the selected pharmacy” (claim 15) and/or “a telehealth session via the patient electronic device and the physician electronic device” (claims 1 and 15) and/or “a location of the patient electronic device” (claims 1 and 15) and/or “patient electronic device” (claims 3-5, 8, and 11) and/or “physician electronic device” (claims 8 and 11) and/or “pharmacy electronic device” (claim 12) serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. Specifically, it/they serve(s) to limit the application of the abstract idea to a conventional computing environment such as the internet, where information is exchanged digitally between computing devices over a network and wherein the computing devices are proxies for humans as opposed to physically/audibly between human beings. This reasoning was demonstrated in Intellectual Ventures I LLC v. Capital One Bank (Fed. Cir. 2015), where the court determined "an abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer"). This/these limitation(s) do/does not impose any meaningful limits on practicing the abstract idea, and therefore do/does not integrate the abstract idea into a practical application (see MPEP 2106.05(g)).
Furthermore, although the claims recite a specific sequence of computer-implemented functions, and although the specification suggests certain functions may be advantageous for various reasons (e.g., business reasons), the Examiner has determined that the ordered combination of claim elements (i.e., the claims as a whole) are not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem.
Dependent claims 2, 6, 7, 10, 13, and 16-18 fail to include any additional elements. In other words, each of the limitations/elements recited in respective dependent claims 2, 6, 7, 10, 13, and 16-18 is/are further part of the abstract idea as identified by the Examiner for each respective dependent claim (i.e. they are part of the abstract idea recited in each respective claim). For example, claim 2 recites “wherein the order is as an order for a prescription medication”. This is an abstract limitation which further sets forth the abstract idea encompassed by claim 2. This limitation is not an “additional element”, and therefore it is not subject to further analysis under Step 2A- Prong Two or Step 2B. The same logic applies to each of the other dependent claims, whose limitations are not being repeated here for the sake of brevity and clarity. With respect to the other dependent claims not specifically listed here - each of the limitations/elements recited in these dependent claims other than those identified as being “additional” elements above (at the beginning of the Prong One analysis), are further part of the abstract idea encompassed by each respective dependent claim (i.e. it should be understood that these limitations are part of the abstract idea recited in each respective claim).
The Examiner has therefore determined that the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application. Accordingly, the claim(s) is/are directed to an abstract idea (Step 2A – Prong two: NO).
Step 2B:
In step 2B, the claims are analyzed to determine whether any additional element, or combination of additional elements, is/are sufficient to ensure that the claims amount to significantly more than the judicial exception. This analysis is also termed a search for an "inventive concept." An "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)
As discussed above in “Step 2A – Prong 2”, the requirement to execute the claimed steps/functions using “a system…the system comprising: a memory for storing machine-readable instructions; a processor in communication with the memory wherein the processor is configured to execute the machine-readable instructions to” (claim 1) and/or “a telehealth session via the patient electronic device and the physician electronic device” (claims 1 and 15) is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more” (see MPEP 2106.05(f)).
As discussed above in “Step 2A – Prong 2”, the recited additional element(s) of “a physician electronic device associated with a physician…a patient electronic device associated with a patient…a pharmacy electronic device associated with a pharmacy…the location of the patient electronic device… from one of the physician electronic device and patient electronic device…the location of the patient electronic device…to the patient electronic device…that is displayed by the patient electronic device…from the patient electronic device…from each pharmacy electronic device…an electronic indication… to the patient electronic device…is displayed by the patient electronic device… from the patient electronic device…to the patient electronic device…wherein the patient electronic device transmits…to the pharmacy electronic device of the selected pharmacy…from the pharmacy electronic device of the selected pharmacy…to the pharmacy electronic device of the selected pharmacy” (claim 1) or “to the patient electronic device…that is displayed by the patient electronic device…from each pharmacy electronic device…to the patient electronic device…is displayed by the patient electronic device… from the patient electronic device…to the patient electronic device…wherein the patient electronic device transmits…to the pharmacy electronic device of the selected pharmacy…from the pharmacy electronic device of the selected pharmacy…to the pharmacy electronic device of the selected pharmacy (claim 15) and/or “a telehealth session via the patient electronic device and the physician electronic device” (claims 1 and 15) and/or “a location of the patient electronic device” (claims 1 and 15) and/or “patient electronic device” (claims 3-5, 8, and 11) and/or “physician electronic device” (claims 8 and 11) and/or “pharmacy electronic device” (claim 12) serves merely to generally link the use of the judicial exception to a particular technological environment or field of use. These limitations therefore do not qualify as “significantly more” (see MPEP 2106.05(g)).
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, and generally link the abstract idea to a particular technological environment or field of use.
Dependent claims 2, 6, 7, 10, 13, and 16-18 fail to include any additional elements. In other words, each of the limitations/elements recited in respective dependent claims 2, 6, 7, 10, 13, and 16-18 is/are further part of the abstract idea as identified by the Examiner for each respective dependent claim (i.e. they are part of the abstract idea identified by the Examiner to which each respective claim is directed).
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claim(s) amount to significantly more than the abstract idea identified above (Step 2B: NO).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
v Claims 1-8, 10-13, and 15-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent, and sets forth the minimum requirements for the quality and quantity of information that must be contained in the patent to justify the grant.
v Claims 1 and 15 have been amended to recite “responsive to confirming that the input matches the prescription ID and that the pharmacy has accepted to fulfill the order, transmit, to the pharmacy electronic device of the selected pharmacy, the order to be filled by the selected pharmacy”. These limitations contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant cited paragraphs [0027]-[0029] of the original disclosure as providing support for this added feature. Examiner agrees that these paragraphs are the most relevant paragraphs of the disclosure to this feature (paragraphs [0008] and [0034] also discuss validating/matching prescription ID, although with less detail/context). Paragraphs [0027]-[0028] suggest the processor can transmit the order to be filled to the selected pharmacy responsive to receiving a notice from the selected pharmacy that they accept fulfilling the order (see “the processor may 26 may notify, via an electronic notice (e.g., email, text, or other indication) that the pharmacy may fill an order, and the notice provide an option for the pharmacy to select if it will accept or decline fulfilling the order…some embodiments, the processor 26 may be configured to transmit, to the pharmacy electronic device 32 of the selected pharmacy, that the order is to be filled by the selected pharmacy. In other words, the RX Platform 20 communicates with each of the patient and pharmacy that the order is to be filled and picked-up at a selected network pharmacy”). Paragraph [0029], however, discloses a process for checking/matching the prescription ID at the selected pharmacy in order to ensure the prescription/order is provided to the correct patient by the selected pharmacy (i.e., the pharmacy has already filled the order by preparing the order/prescription for pick-up, and they are verifying the patient ID to ensure they are providing the filled order to a patient authorized to have it) . The process for checking/matching the prescription ID at the selected pharmacy disclosed in paragraph [0029] is not performed in order to transmit the order to be filled to the selected pharmacy (i.e., an instruction/authorization for the selected pharmacy to fill the order). See in paragraph [0029] “In some embodiments, the processor 26 may be configured to generate a prescription ID associated with the order. The prescription ID may be used by the patient and pharmacy, similar to the patient ID described above, to confirm the order and identity of the patient prior to the pharmacy providing the patient with the order. In some embodiments, the processor may be configured to transmit, to the patient electronic device 30, the prescription ID. In some embodiments, the patient electronic device 30 is configured to transmit, to the pharmacy electronic device 32 of the selected pharmacy, an option to confirm the prescription ID. With the option in the pharmacy electronic device 32 available to the pharmacy, the patient may provide the prescription ID received by the patient to the pharmacy. In some embodiments, the processor is configured to receive, from the pharmacy electronic device 32, an input representative of the prescription ID (e.g., pharmacy enters the prescription ID provided by the patient). In some embodiments, the processor may be configured to confirm that the input, representative of the prescription ID, matches the prescription ID”. As such, one of ordinary skill in the art would not recognize that the written description of the invention provides support for an embodiment where the processor confirms whether the input representative of the prescription ID received from the pharmacy device matches the generated prescription ID transmitted to the patient electronic device and responsive to confirming that the input matches the prescription ID and that the pharmacy has accepted to fulfill the order, transmit, to the pharmacy electronic device of the selected pharmacy, the order to be filled by the selected pharmacy”. A skilled artisan would not have understood that Applicant was in possession of the claimed invention as a whole at the time the application was filed. Per the MPEP section 2163 “if a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. This conclusion will result in the rejection of the claims affected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.112, first paragraph.”
Each of the dependent claims are similarly rejected by virtue of their dependency on this one of these claims.
Indication of Novel and Non-Obvious Subject Matter
Independent claims 1 and 15 recite novel and non-obvious subject matter. Each of the dependent claims similarly recite novel and non-obvious subject matter by virtue of their dependency on one of these claims.
The following is an examiner’s statement of reasons for indication of novel and non-obvious subject matter:
The closest prior art of record is John et al. (U.S. PG Pub No. 2012/0253833, October 4, 2012 - hereinafter "John”); Siegel (U.S. PG Pub No. 2021/0065862 March 4, 2021 - hereinafter "Siegel”); Hassad (U.S. PG Pub No. 2019/0147994, May 16, 2019 - hereinafter "Hassad”); Gilman et al. (U.S. PG Pub No. 2018/0253682 September 6, 2018 - hereinafter "Gilman”); Lamoncha (U.S. PG Pub No. 2021/0065861, March 4, 2021 - hereinafter "Lamoncha”); Bhow (U.S. Patent No. 12,033,110 July 9, 2024); Vinals (U.S. PG Pub No. 2015/0142463, May 21, 2015); Laxer (U.S. PG Pub No. 2019/0362828, November 28, 2019); Blackley et al. (U.S. PG Pub No. 2020/0135316, April 30, 2020); Eby et al. (U.S. Patent No. 11,157,596, October 26, 2021); and “New Mobile App from Reasor’s Provides Smart and Simple Ways to Manage Prescriptions on the Go” (published on July 16, 2018 at https://www.reasors.com/news/new-mobile-app-from-reasors-provides-smart-and-simple-ways-to-manage-prescriptions-on-the-go)
John discloses an online platform that enables coordinating the selection of a pharmacy from a plurality of pharmacies to fill an order for a medical supply based on stock availability, order traits (e.g., location, price, etc.), and user preferences (e.g., selections from lists of potential pharmacies) and facilitation of the filling of the order by transmitting the order to the selected pharmacy.
Siegel discloses an online platform that enables coordinating the selection of a pharmacy from a plurality of pharmacies to fill an order for a medical supply based an order trait that comprises at least one pick-up time of the order at a location of the pharmacy determined based at least on a travel time from the location of the patient electronic device to the location of the pharmacy.
Hassad discloses an online platform that enables coordinating the selection of a pharmacy from a plurality of pharmacies to fill an order for a medical supply involving a sequence of operations including the steps of receive, from each pharmacy electronic device of each pharmacy in the second list, an electronic indication of the availability to fill the order; transmit, to the patient electronic device, the availability of the pharmacies in the second list to fill the order, wherein the second list of the pharmacies available to fill the order at a location is displayed by the patient electronic device without communicating with the network of pharmacies, and based on the availability to fill the order, and receive, from the patient electronic device, an indication representing a selection by the patient of a selected pharmacy, from the second list of pharmacies, to fill the order.
Gilman discloses wherein the processor is further configured to: generate a prescription ID associated with the order; transmit, to the patient electronic device, the prescription ID; transmit, to the pharmacy electronic device of the selected pharmacy, an option to confirm the prescription ID; receive, from the pharmacy electronic device, an input representative of the prescription ID; and confirm the input, representative of the prescription ID, matches the prescription ID, because doing so can provide an efficient and convenient mechanism to ensure the correct patient is receiving the correct medication from the pharmacy and to ensure the person picking up the medication is actually authorized to do so.
Lamoncha discloses initiating a telehealth session via the patient electronic device and the physician electronic device.
Bhow teaches an online platform that enables coordinating the selection of a pharmacy from a plurality of pharmacies to fill an order for a medical supply based on stock availability, order traits (e.g., location, price, etc.), and user preferences (e.g., selections from lists of potential pharmacies) and facilitation of the filling of the order by transmitting the order to the selected pharmacy.
Vinals teaches an online platform that enables coordinating the selection of a pharmacy from a plurality of pharmacies to fill an order for a medical supply based on stock availability, order traits (e.g., location, price, etc.), and user preferences (e.g., selections from lists of potential pharmacies) and facilitation of the filling of the order by transmitting the order to the selected pharmacy.
Laxer teaches an online platform that enables coordinating the selection of a pharmacy from a plurality of pharmacies to fill an order for a medical supply based on stock availability, order traits (e.g., location, price, etc.), and user preferences (e.g., selections from lists of potential pharmacies) and facilitation of the filling of the order by transmitting the order to the selected pharmacy.
Blackley teaches generating a prescription ID associated with the order; transmit, to the patient electronic device, the prescription ID; transmit, to the pharmacy electronic device of the selected pharmacy, an option to confirm the prescription ID; receive, from the pharmacy electronic device, an input representative of the prescription ID; and confirm the input, representative of the prescription ID, matches the prescription ID ([0017]).
Eby teaches generate a prescription ID associated with the order; transmit, to the patient electronic device, the prescription ID; transmit, to the pharmacy electronic device of the selected pharmacy, an option to confirm the prescription ID; receive, from the pharmacy electronic device, an input representative of the prescription ID; and confirm the input, representative of the prescription ID, matches the prescription ID.
“New Mobile App from Reasor’s Provides Smart and Simple Ways to Manage Prescriptions on the Go” teaches a mobile app that enables users to locate pharmacies that can fill their medicine order.
As per claims 1 and 15, the closest prior art of record taken either individually or in combination with other prior art of record fails to teach or suggest the specific combination of limitations required by the claim language, and specifically the requirement to “transmit, to the patient electronic device, the prescription ID, wherein the patient electronic device transmits the prescription ID to the pharmacy electronic device of the selected pharmacy; receive, from the pharmacy electronic device of the selected pharmacy, an input representative of the prescription ID and a notice of whether the selected pharmacy accepts fulfilling the order; confirm whether the input matches the prescription ID and that the pharmacy has accepted to fulfill the order; and responsive to confirming that the input matches the prescription ID and that the pharmacy has accepted to fulfill the order, transmit, to the pharmacy electronic device of the selected pharmacy, the order to be filled by the selected pharmacy” in combination with each of the other limitations of the claim. Examiner notes that a process for checking/matching the prescription ID at the selected pharmacy in order to ensure a filled prescription/order is provided to the correct patient by the selected pharmacy (i.e., the pharmacy has already filled the order by preparing the order/prescription for pick-up, and they are verifying the patient ID to ensure they are providing the filled order to a patient authorized to have it) is not what is required by the claim language. The claim language requires a process for checking/matching the prescription ID at the selected pharmacy in order to transmit the order to be filled to the selected pharmacy (i.e., an instruction/authorization for the selected pharmacy to fill the order). While individual features may be known per se, there is no teaching or suggestion absent applicants’ own disclosure to combine these features other than with impermissible hindsight
Claims 2-8, 10-13, and 16-18 depend upon claims 1 or 15 and have all the limitations of claims 1 or 15, and therefore similarly recite novel and non-obvious subject matter.
Conclusion
No claim is allowed
THIS ACTION IS MADE FINAL. 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 JAMES M DETWEILER whose telephone number is (571)272-4704. The examiner can normally be reached on Monday-Friday from 8 AM to 5 PM ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached at telephone number (571)-270-3948. 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 Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JAMES M DETWEILER/Primary Examiner, Art Unit 3621
Prosecution Insights