DETAILED ACTION
Continued Examination Under 37 CFR 1.114
The present application is being examined under the pre-AIA first to invent provisions.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/18/2025 has been entered.
Notice to Applicant
This action is in reply to the filed on 11/18/2025.
Claims 1, 19 and 20 have been amended.
Claim 1-20 currently pending and have been examined.
Response to Amendments
The Applicant’s amendments, and cancellation, of the claims as currently submitted have been noted by the Examiner. Said amendments, and cancellation(s), are not sufficient to overcome the rejections previously set forth under 35 U.S.C. §101 and 35 U.S.C. §103, respectively. As such, said rejections are herein maintained for reasons set forth below.
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.
Human Interactions Organized
Applicant discloses (Applicant’s Specification, [0002]-[0006]) that even with automations it is difficult for the individuals and the pharmacies to make informed decisions regarding the prescription transactions. So a need exists to organize these human interactions through tailoring prescription transactions using the steps of “receiving pharmacy information, assessing advantages, dynamically optimizing costs, providing comparison information, presenting comparisons,” etc. Applicant’s system/method/computer readable medium is therefore a certain method of organizing the human activities as described and disclosed by Applicant.
Rejection
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1, 19 and 20 is/are directed to the abstract idea of “tailoring prescription transactions,” etc. (Applicant’s Specification, Abstract, paragraph(s) [0001]), etc., as explained in detail below, and thus grouped as a certain method of organizing human interactions. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea. Accordingly, claims 1-20 recite an abstract idea.
Step 2A Prong 1 – The Judicial Exception
The claim(s) recite(s) in part, system/method/computer readable medium for performing the steps of “receiving pharmacy information, assessing advantages, dynamically optimizing costs, providing comparison information, presenting comparisons,” etc., that is “tailoring prescription transactions,” etc. which is a method of managing personal behavior or relationships or interactions between people (social activities, teaching, following rules, instructions) and thus grouped as a certain method of organizing human interactions. Accordingly, claims 1-20 recite an abstract idea.
Step 2A Prong 2 – Integration of the Judicial Exception into a Practical Application
This judicial exception is not integrated into a practical application because the generically recited additional computer elements (i.e. computers, networks, switches, radios, access points, base stations, memories, electronic devices (Applicant’s Specification Figure 1, Figure 4), etc.) to perform steps of “receiving pharmacy information, assessing advantages, dynamically optimizing costs, providing comparison information, presenting comparisons,” etc. do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer and this is nothing more than an attempt to generally link the product of nature to a particular technological environment. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limit on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea.
Insignificant extra-solution activity
Claim(s) 1-20 recites storing data steps, retrieving data steps, providing data steps, output steps (Bilski v. Kappos, 561 U.S. 593, 610-12 (2010), Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F.Supp.2d 1054, 1066 (E.D. Mo. 2011), aff’d, 687 F.3d at 1266), and/or transmitting data step (buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014), Apple, Inc. v. Ameranth, Inc., 842 F.3d 1299, 1241-42 (Fed. Cir. 2016)) that is/are insignificant extra-solution activity. Extra-solution activity limitations are insufficient to transform judicially excepted subject matter into a patent-eligible application (MPEP §2106.05(g)).
Step 2B – Search for an Inventive Concept/Significantly More
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations (i.e. computers, networks, switches, radios, access points, base stations, memories, electronic devices, etc.) only store and retrieve information and perform repetitive calculations, and these are well-understood, routine, conventional computer functions as recognized by the Symantec, TLI, and OIP Techs. court decisions listed in MPEP § 2106.05(d)(II) (Berkheimer- Court Decisions). These court decisions indicate that mere collection or receipt of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner as it is here. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Accordingly, the claims are not patent eligible.
Individually and in Combination
The additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. The additional elements amount to no more than generic computer components that serve to merely link the abstract idea to a particular technological environment (i.e. computers, networks, switches, radios, access points, base stations, memories, electronic devices, etc.). At paragraph(s) Figure 1, Figure 4, Applicant’s specification describes conventional computer hardware for implementing the above described functions including “computers, networks, switches, radios, access points, base stations, memories, electronic devices,” etc. to perform the functions of “receiving pharmacy information, assessing advantages, dynamically optimizing costs, providing comparison information, presenting comparisons,” etc. The recited “computers, networks, switches, radios, access points, base stations, memories, electronic devices,” etc. does/do not add meaningful limitations to the idea of beyond generally linking the system to a particular technological environment, that is, implementation via computers. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Therefore, claims 1-20 do not amount to significantly more than the underlying abstract idea of “an idea of itself” (Alice).
Dependent Claims
Dependent claim(s) 2-18 include(s) all the limitations of the parent claims and are directed to the same abstract idea as discussed above and incorporated herein.
Although dependent claims 2-18 add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. Dependent claims 2-18 merely describe physical structures to implement the abstract idea. These information and physical characteristics do not change the fundamental analogy to the abstract idea grouping of certain method of organizing human interactions, and when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as independent claim(s) 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Peysekhman et al. (US 2020/0043035), in view of Allred et al. (US 2021/021018).
CLAIM 1
As per claim 1, Peysekhman et al. disclose:
a computer system (Peysekhman et al., [0006] system), comprising:
an interface circuit (Peysekhman et al., [0011] interfaces) configured to communicate with a second computer system;
a processor (Peysekhman et al., [0037] processor 201) coupled to the interface circuit;
memory (Peysekhman et al., [0037] memory 203), coupled to the processor, configured to store program instructions, wherein, when executed by the processor, the program instructions cause the computer system to provide comparison information by performing operations comprising:
receiving, at the interface circuit, pharmacy information associated with the second computer system, wherein the pharmacy information specifies, for a potential prescription transaction for a prescription, a cost for an individual, an overhead associated with an entity when the potential prescription transaction is facilitated by the entity, and a residual amount (Peysekhman et al., Figure 1, Figure 2, Figure 3A, Figure 3B, Figure 3C);
assessing whether there is a prescription-transaction advantage based at least in part on the overhead and a second overhead associated with a second entity when a second potential prescription transaction for the prescription is facilitated by the second entity (Peysekhman et al., Figure 4E 432 Employer Cost);
when there is the prescription-transaction advantage, dynamically optimizing, based at least in part on the prescription-transaction advantage and one or more prescription-transaction constraints, a second cost for the individual and a second residual amount associated with the second potential prescription transaction (Peysekhman et al., Figure 3A, Figure 3B, Figure 3C, Figure -4C, Figure 4D, Figure 4E); and
providing, from the interface circuit, the comparison information associated with the second potential prescription transaction addressed to the second computer system, wherein the comparison information specifies the second cost and the second residual amount (Peysekhman et al., Figure 3A, Figure 3B, Figure 3C, Figure -4C, Figure 4D, Figure 4E)
where the providing comprises presenting the comparison information on a display in or proximate to a point-of-sale terminal (Peysekhman et al., Figure 1, 130 Pharmacy System, [0029] one or more pharmacy computer systems 130, [0091] comparing, [0096] visual comparison, [0102] comparison).
Peysekhman et al. fail to expressly disclose:
when there is the prescription-transaction advantage, dynamically optimizing, based at least in part on the prescription-transaction advantage and one or more prescription-transaction constraints, a second cost for the individual and a second residual amount associated with the second potential prescription transaction.
However, Allred et al. teach/es:
when there is the prescription-transaction advantage, dynamically optimizing, based at least in part on the prescription-transaction advantage and one or more prescription-transaction constraints, a second cost for the individual and a second residual amount associated with the second potential prescription transaction (Allred et al., [0007] optimize pricing).
One of ordinary skill in the art before the effective filing date would have found it obvious to include “when there is the prescription-transaction advantage, dynamically optimizing, based at least in part on the prescription-transaction advantage and one or more prescription-transaction constraints, a second cost for the individual and a second residual amount associated with the second potential prescription transaction,” etc. as taught by Allred et al. within the system as taught by the Peysekhman et al. with the motivation of providing improving interfacing and communication between prescribers, patients, pharmacies and pharmaceutical companies (Allred et al., [0002]).
CLAIM 2
As per claim 2, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the cost and the overhead are predefined and are associated with a prescription benefit manager (PBM) that manages prescription benefits (Peysekhman et al., Figure 1, Figure 2, Figure 3A, Figure 3B, Figure 3C).
CLAIM 3
As per claim 3, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the pharmacy information specifies a potential prescription cost corresponding to a drug ingredient in the prescription and potential revenue for the pharmacy for the potential prescription transaction; and wherein the comparison information specifies second potential revenue for the pharmacy for the second potential prescription transaction (Peysekhman et al., Figure 1, Figure 2, Figure 3A, Figure 3B, Figure 3C).
CLAIM 4
As per claim 4, Peysekhman et al. and Allred et al.
teach the system of claim 3 and further disclose the limitations of:
wherein the one or more prescription-transaction constraints comprise that the second potential revenue is positive (Peysekhman et al., Figure 1, Figure 2, Figure 3A, Figure 3B, Figure 3C).
CLAIM 5
As per claim 5, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the entity is different from a pharmacy and is different from the second entity (Peysekhman et al., Figure 1, Figure 2, Figure 3A, Figure 3B, Figure 3C]).
CLAIM 6
As per claim 6, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the entity is a prescription benefit manager (PBM) or a provider of a prescription discount card for the prescription and the second entity is a second PBM or a second provider of a second prescription discount card for the prescription (Peysekhman et al., Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 7
As per claim 7, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the second computer system is associated with a pharmacy (Peysekhman et al., Figure 1, Figure 2).
CLAIM 8
As per claim 8, Peysekhman et al. and Allred et al.
teach the system of claim 7 and further disclose the limitations of:
wherein the pharmacy has a contract with the second entity for a service that provides the comparison information (Peysekhman et al., [0017] contract, [0021] pricing contract).
CLAIM 9
As per claim 9, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the operations comprise accessing historical information specifying prior prescription transactions for prescriptions of at least the individual; and wherein the dynamic optimizing is based at least in part on the historical information (Allred et al., [0074] historical prescription data).
The obviousness of combining the teachings of Allred et al. with the system as taught by Peysekhman et al. is discussed in the rejection of claim 1, and incorporated herein.
CLAIM 10
As per claim 10, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the operations comprise receiving, at the interface circuit, at least one of the one or more prescription-transaction constraints associated with the second computer system (Peysekhman et al., Figure 3B, Figure 3C, Figure 4C, Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 11
As per claim 11, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the pharmacy information specifies at least one of the one or more prescription-transaction constraints (Peysekhman et al., Figure 3B, Figure 3C, Figure 4C, Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 12
As per claim 12, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the operations comprise: receiving, at the interface circuit, acceptance information associated with the second computer system, wherein the acceptance information specifies that a prescription transaction for the prescription has been conducted between the pharmacy and the individual based at least in part on the comparison information; and selectively performing a second prescription transaction based at least in part on the acceptance information, where the second prescription transaction comprises receiving the second overhead (Peysekhman et al., Figure 2, Figure 3A, Figure 3B, Figure 3C, Figure 4C, Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 13
As per claim 13, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the prescription-transaction advantage corresponds to a difference of the overhead and the second overhead; and wherein there is the prescription-transaction advantage when the overhead is greater than the second overhead (Peysekhman et al., Figure 4E 432 Employer Cost).
CLAIM 14
As per claim 14, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the comparison information specifies a comparison of the cost and the second cost, a comparison of the residual amount and the second residual amount, or both (Peysekhman et al., Figure 3B, Figure 3C, Figure 4C, Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 15
As per claim 15, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the one or more prescription-transaction constraints are associated with a pharmacy (Peysekhman et al., Figure 3B, Figure 3C, Figure 4C, Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 16
As per claim 16, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the dynamic optimization segments the prescription-transaction advantage into a portion and a second portion, and the second cost corresponds to a sum of the cost and the portion (Allred et al., [0007] optimize pricing).
The obviousness of combining the teachings of Allred et al. with the system as taught by Peysekhman et al. is discussed in the rejection of claim 1, and incorporated herein.
CLAIM 17
As per claim 17, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the one or more prescription-transaction constraints comprise a minimum potential revenue of a pharmacy (Peysekhman et al., Figure 2, Figure 3A, Figure 3B, Figure 3C, Figure 4C, Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 18
As per claim 18, Peysekhman et al. and Allred et al.
teach the system of claim 1 and further disclose the limitations of:
wherein the one or more prescription-transaction constraints comprise: a preference for maximizing a potential revenue, a second preference for minimizing the second cost, or a third preference for apportioning a portion of the prescription-transaction advantage to the second cost and apportioning a second portion of the prescription-transaction advantage to the potential revenue (Peysekhman et al., Figure 2, Figure 3A, Figure 3B, Figure 3C, Figure 4C, Figure 6, Figure 7, Figure 8A, Figure 8B).
CLAIM 19
As per claim 19, claim 19 is directed to a computer readable medium. Claim 19 recites the same or similar limitations as those addressed above for claims 1-18. Claim 19 is therefore rejected for the same reasons set forth above for claims 1-18.
CLAIM 20
As per claim 20, claim 20 is directed to a system. Claim 20 recites the same or similar limitations as those addressed above for claims 1-18. Claim 20 is therefore rejected for the same reasons set forth above for claims 1-18.
Response to Arguments
Applicant’s arguments filed 11/18/2025 with respect to claims 1-20 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed herein below in the order in which they appear in the response filed 11/18/2025.
Applicant’s arguments filed on 11/18/2025 with respect to claims 1-20 have been fully considered but are moot in view of the new ground(s) of rejection.
Applicant argues that (A) Peysekhman et al. and Allred et al. do not render obvious the present invention because Peysekhman et al. and Allred et al. do not disclose “in or proximate to a point-of-sale terminal,” etc. in the previously presented and/or presently amended claims, (B) the Applicant’s claimed invention is directed to statutory matter.
103 Responses
In response to Applicant’s argument (A), it is respectfully submitted that the Examiner has applied/recited new passages and citations to amended claims 1, 19 and 20 at the present time. The Examiner notes that the amended limitations were not in the previously pending claims. As such, Applicant’s remarks with regard to the application of Peysekhman et al. and Allred et al. to the amended limitations are addressed above in the Office Action.
101 Responses
As per Applicant’s argument (B), Applicant’s remarks with regard to the statutory nature of Applicant’s claimed invention are addressed above in the Office Action.
Applicant did not make any substantive arguments in Applicant’s Remarks
Conclusion
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/C. P. C./
Examiner, Art Unit 3683
/ROBERT W MORGAN/Supervisory Patent Examiner, Art Unit 3683