DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed July 23, 2026.
Claims 1-20 are pending.
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
Claims 1-20 are pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected to under 35 U.S.C 101 as not being directed to eligible subject matter based on the grounds set out in detail below:
Independent Claims 1, 8, and 15:
Eligibility Step 1 (does the subject matter fall within a statutory category?):
Independent Claim 1 falls within the statutory category of method
Independent claim 8 falls within the statutory category of system
Independent claim 15 falls within the statutory category of article of manufacture
Eligibility Step 2A-1 (does the claim recite an abstract idea, law of nature, or natural phenomenon?): Independent claims 1, 8, and 15 (claim 1 being representative) claimed invention is directed to an abstract idea without significantly more.
The claim elements which set forth the abstract idea are:
Receiving, a prescription fill request comprising:
a prescription identifier associated with a patient and at least one medication, a first identifier, and a second identifier
generating, based on the prescription fill request, an order message associated with the prescription identifier, wherein a first portion of the order message comprises at least one third-party payer identification field;
embedding, within the at least one third-party payer identification field, a pharmacy program identifier wherein the embedded pharmacy program identifier comprises the first identifier and the second identifier;
sending, the order message, in response to the order message, dispensing, the at least one medication and shipping the at least one medication to the patient;
receiving, an indication that the prescription fill request has been processed, wherein the indication identifies the order message;
retrieving an index comprising a plurality of mappings, wherein each mapping associates a respective first identifier and a respective second identifier …[…]…, from the at least one third-party payer identification field of the order message identified by the indication, the first identifier and the second identifier of the embedded pharmacy program identifier;
identifying, …[…]…by determining that a first mapping of the plurality of mappings, the first mapping comprising the first identifier and the second identifier extracted from the at least one third-party payer identification field, is associated…[…]…;
determining, based on the prescription fill request having been processed, and based on the first mapping, a fulfillment notification indicating the prescription fill request has been processed;
and sending, based on the fulfillment notification, and …[…]…identified by the first mapping, a message indicating that the at least one medication has been dispensed.
Therefore, the independent claims abstract idea is prescription medication data exchange by processing information through a central filling system, where the business relation is the relationship between a party submitting a prescription fill request (e.g. non-dispensing pharmacy) and fulfillment sources (e.g. dispensing and central fill system) when processing prescription requests therefore falls within business relations of “certain methods of organizing human activity”. See MPEP § 2106.04(a)(2).
Eligibility Step 2A-2 (does the claim recite additional elements that integrate the judicial exception into a practical application?): For Independent claims 1, 8, and 15 this judicial exception is not integrated into a practical application.
Independent claim 1 recites the additional elements below:
a first non-dispensing pharmacy system
plurality of dispensing pharmacy systems
to a central fill system
Examiner takes the applicable considerations stated in MPEP 2106.04 (d) and analyzes them below in light of the instant applications disclosure and claim elements as a whole.
There are no additional elements executing the abstract idea
Within the noted above additional claim elements, a first non-dispensing pharmacy system, is generally linking the abstract idea to the environment of pharmacies
Within the noted above additional claim elements, plurality of dispensing pharmacy systems, is generally linking the abstract idea to the environment of pharmacies
Within the noted above additional claim elements, a central fill system, is merely invoking the element as a tool to “apply-it” or an equivalent and therefore is no more than using the system as a tool to implement the abstract idea.
Independent claim 8 recites the additional elements below not already recited in the independent claim 1:
One or more processors with a memory executing computer executable instructions
Examiner takes the applicable considerations stated in MPEP 2106.04 (d) and analyzes them below in light of the instant applications disclosure and claim elements as a whole.
Within the noted above additional claim elements, One or more processors with a memory executing computer executable instructions, is performing the abstract idea and is recited in the manner of merely invoking the element as a tool to “apply-it” or an equivalent and therefore is no more than using these generic computer elements as a tool to implement the abstract idea.
Independent claim 15 recites the additional elements below not already recited in the independent claim 1:
A non-transitory computer-readable storage medium comprising processor-executable instructions of a computing device
Examiner takes the applicable considerations stated in MPEP 2106.04 (d) and analyzes them below in light of the instant applications disclosure and claim elements as a whole.
Within the noted above additional claim elements, A non-transitory computer-readable storage medium comprising processor-executable instructions of a computing device, is performing the abstract idea and is recited in the manner of merely invoking the element as a tool to “apply-it” or an equivalent and therefore is no more than using these generic computer elements as a tool to implement the abstract idea.
Eligibility Step 2B (Does the claim amount to significantly more?): The independent claims 1, 8, and 15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as analyzed above in step 2A prong 2, these additional elements, whether viewing the claim as a whole, each additional element individually, or as an ordered combination with the abstract idea, amount to no more than generally linking and merely using generic computer components as a tool to implement the processing of filling a prescription. The same analysis also applies here. Therefore, the claims do not amount to significantly more and the claims are patent ineligible.
Dependent Claims 2-7, 9-14, and 16-20:
Eligibility Step 1 (does the subject matter fall within a statutory category?):
The dependent claims 2-7 fall within the statutory category of process
The dependent claims 9-14 fall within the statutory category of machine
The dependent claim 16-20 fall within the statutory category of article of manufacture
Eligibility Step 2A-1 (does the claim recite an abstract idea, law of nature, or natural phenomenon?): Dependent claims 2-7, 9-14, and 16-20 claimed invention is directed to an abstract idea without significantly more. The claims continue to limit the independent claims 1, 9, and 17 abstract idea by (1) further limiting the fulfillment notification and (2) further limiting the order and prescription. Therefore, the dependent claims inherit the same abstract idea which is prescription medication data exchange by processing information through a central filling system, where the business relation is the relationship between a party submitting a prescription fill request (e.g. non-dispensing pharmacy) and fulfillment sources (e.g. dispensing and central fill system) when processing prescription requests therefore falls within business relations of “certain methods of organizing human activity”. See MPEP § 2106.04(a)(2).
Eligibility Step 2A-2 (does the claim recite additional elements that integrate the judicial exception into a practical application?): For claims 2-7, 9-14, and 16-20 this judicial exception is not integrated into a practical application.
Claims 2-7, 9-14, and 16-20 recite no additional elements not already recited in the independent claims and purely recite the abstract idea
Eligibility Step 2B (Does the claim amount to significantly more?): No additional elements to consider
Subject Matter Free of Prior Art
Claims 1-20 are free of prior art. The cited prior art of record fails to expressly teach or suggest, either alone or in combination, the features found within the independent claims (Claim 1 as representative). In particular, the cited prior art of record fails to expressly teach or suggest the combination of: “retrieving an index comprising a plurality of mappings, wherein each mapping associates a respective first identifier and a respective second identifier with a respective one of a plurality of non-dispensing pharmacy systems; extracting, from the at least one third-party payer identification field of the order message identified by the indication, the first identifier and the second identifier of the embedded pharmacy program identifier; , from among the plurality of non-dispensing pharmacy systems, the first non- dispensing pharmacy system by determining that a first mapping of the plurality of mappings, the first mapping comprising the first identifier and the second identifier extracted from the at least one third-party payer identification field, is associated with the first non-dispensing pharmacy system;” was not found as positively recited in the prior art in combination with the remainder of the limitations in the independent claims. For additional reasons, see pages 4-8 of applicant’s remarks filed July 23, 2026.
The most remarkable prior art of record is as follows:
John et. al, (hereinafter John) (US2012/0253846A1)
Systems and methods may be provided for interactive virtual pharmacies. The systems and methods may include receiving, by a non-dispensing virtual pharmacy comprising one or more computers, an electronic prescription associated with a patient, where the electronic prescription is associated with at least one drug or product prescribed for the patient; determining, by the virtual pharmacy, a respective total price payable to each of the plurality of dispensing pharmacies for filling the prescribed drug or product for the patient; determining, by the virtual pharmacy based upon the determined respective total prices, availability of a respective incentive or penalty for filling the prescription at one or more of the plurality of dispensing pharmacies; and delivering, in real-time from the virtual pharmacy to a patient device, a presentation of at least a portion of the plurality of dispensing pharmacies, where the presentation is based at least in part on the determined incentive or penalty for filling the prescription.
Hill SR. et. al, (hereinafter Hill) (US2006/0149587A1)
An automated system and method for processing prescription requests is disclosed, whereby a patient or physician enters a prescription request to an automated pharmacy prescription processing system. For example, a request for a new or refill prescription can be transmitted from a physicians office to the prescription processing system as a digital file or facsimile message, or using keypad or voice commands in an Interactive Voice Response (IVR) system running in the prescription processing system. A request for a prescription refill can also be entered by a patient using an IVR system, or the patient can physically carry the refill prescription request to a pharmacy for entry to the prescription processing system by a technician. The automated pharmacy system determines whether the new or refill prescription request can be filled by a central fill inventory. The automated pharmacy prescription processing system sends eligible, pending prescription requests to an automated central fill prescription request processing system. The automated central fill processing system processes and fills each valid prescription request from a central fill inventory, initiates a quality assurance procedure to double check each prescription to be filled, labels the double checked, approved prescriptions, and routes them to a stag ing area for shipment to the appropriate pharmacy stores.
Welch (US2019/0279242A1)
computer - implemented system is provided for adjudicating coupons to be applied to a transaction for goods or services using a computer processor to execute instructions stored in non - transient memory. The system includes a coupon dispensing system configured to receive a coupon request including transaction information for a transaction from a pharmacy management system , identify at least one electronic coupon for the transaction wherein the transaction information satisfies all of the criteria in a business rules set for each of the at least one electronic coupon , and transmit the at least one electronic coupon to the pharmacy management system . The system further includes a coupon processing system configured to receive a coupon claim request including transaction payment information for the transaction from the pharmacy management system. A coupon payment value is determined based on the transaction payment information, and transmitted to the pharmacy management system.
US7926709 – Dooley
Systems, and methods for reimbursing prescription fulfillment that includes identifying a drug associated with a claim submitted by a pharmacy for reimbursement by a payer (e.g., insurance carrier) and identifying a change in a manufacturer set price associated with the drug. The invention includes monitoring reimbursed claims received from at least one payer, where one of the reimbursed claims received from the payer is associated with the drug and determining if the payer has updated its internal pricing value associated with the drug. The invention further includes generating a report that includes the payer's updated internal pricing value associated with the drug, and/or creating and submitting a reversal transaction to the at least one payer followed by a resubmission of the original claim, where the resubmitted claim value is based on the payer's updated internal pricing value associated with the drug.
Response to Arguments Regarding 35 U.S.C § 101 Rejection
Applicant argues on pages 1-4 of remarks that claims 1-20 rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter should be withdrawn in view of the following arguments.
A. The claims as amended are not directed to a judicial exception The Office Action characterized the claims as directed to processing information through a central fill system, where the alleged business relation is the relationship between a party submitting a prescription fill request, such as a non-dispensing pharmacy, and fulfillment sources, such as the dispensing pharmacy and central fill system, when processing prescription requests. Applicant respectfully submits that this characterization does not apply to the present claims as amended.
The claims as amended recite a specific, technical sequence of operations that goes beyond any alleged business relation. For example, claim 1 as amended now recites "retrieving an index comprising a plurality of mappings, wherein each mapping associates a respective first identifier and a respective second identifier with a respective one of a plurality of non-dispensing pharmacy systems," "extracting, from the at least one third-party payer identification field of the order message identified by the indication, the first identifier and the second identifier of the embedded pharmacy program identifier," and "identifying, from among the plurality of non- dispensing pharmacy systems, the first non-dispensing pharmacy system by determining that a first mapping of the plurality of mappings ... is associated with the first non-dispensing pharmacy system."
Claim 1 as amended further recites the physical acts of "dispensing, via the central fill system, the at least one medication and shipping the at least one medication to the patient." Applicant submits these are concrete operations directed to specific data manipulation and physical fulfillment, not an abstract business relation. Accordingly, for this reason alone, the rejection should be withdrawn.
B. The claims as amended integrate any allegedly-recited judicial exception into a practical application through an unconventional arrangement of claim limitations, and amount to significantly more. First, the amended claims impose meaningful limits on any use, or reliance on, any abstract idea. The extracted first and second identifiers are not mere descriptive content but are used as operands in positively recited steps. Claim 1 as amended requires "identifying ... the first non-dispensing pharmacy system by determining that a first mapping of the plurality of mappings ... is associated with the first non-dispensing pharmacy system" and then "sending, based on the fulfillment notification, and to the first non-dispensing pharmacy system identified by the first mapping, a message." Applicant submits these steps impose meaningful limits by tying the operation to a specific, recited use of the extracted identifiers to select and route the fulfillment message to the correct originating non-dispensing pharmacy system.
Applicant submits that claim 1 as amended reflects the improvement described in the specification by solving the issue of delineating patients and their prescriptions between cohort systems associated with respective non-dispensing pharmacies while efficiently using computing resources and mitigating network congestion, and doing so "without convoluted, risky data processing or protected health information (PHI) processing." As-Filed Specification, paragraph [0022]. The retrieving, extracting, and identifying steps of claim 1 as amended are the specific claim limitations through which this improvement is achieved, because they enable the system to route the fulfillment confirmation back to the correct originating non-dispensing pharmacy without requiring additional message exchanges or PHI processing.
Furthermore, this practical application is achieved in an unconventional manner. Rather than requiring separate dedicated data channels or additional message exchanges, claim 1 as amended repurposes an existing third-party payer identification field to carry a pharmacy program identifier comprising two distinct identifiers not ordinarily conveyed in that field. The claims then recite extracting those identifiers from the field and matching them against an index of mappings to route the fulfillment confirmation back to the correct originating non-dispensing pharmacy system. This is a departure from the ordinary use of third-party payer identification fields in prescription messaging, which typically identify a payer or claims processor rather than an originating non-dispensing pharmacy.
Applicant submits that claim 1 as amended is analogous to eligible claim 1 of USPTO Subject Matter Eligibility Example 42 (2019 Revised Patent Subject Matter Eligibility Guidance, Example 42: Method for Transmission of Notifications When Medical Records Are Updated). In Example 42, claim 1 was found to recite an abstract idea in the same grouping the Office Action relies upon here - namely, a "method of organizing human activity" that is "a method of managing interactions between people," yet the claim was held eligible at Step 2A, Prong Two. Specifically, Example 42's claim 1 was eligible because its ordered combination of additional elements "recite a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user."
Applicant submits that claim 1 as amended herein likewise provides a specific improvement over prior approaches within standardized healthcare messaging. Specifically, the claim's re-purposing of the standardized third-party payer identification field to carry the first and second identifiers, as well as the recited steps of retrieving, extracting, identifying, and routing, together deliver a closed-loop fulfillment confirmation to the correct originating non- dispensing pharmacy system. These recited steps, therefore, integrate any alleged exception into a practical application for the same reasons as those in Example 42's claim 1.
By contrast, Example 42's ineligible claim 2 was found to "merely describe[] how to generally 'apply' the concept" using computer components "recited at a high level of generality and ... merely invoked as tools," which is the same "apply it" rationale the Office Action has alleged here. However, Applicant submits that claim 1 as amended here is unlike Example 42's claim 2 and unlike the Office Action's characterization, because amended claim 1 recites specific, non-generic operations of extracting the embedded first and second identifiers from the third-party payer identification field, matching them against an index of mappings, and routing the fulfillment message to the identified non-dispensing pharmacy system, rather than merely invoking a generic computer as a tool.
Thus, for the same reasons the claims integrate the judicial exception into a practical application, they also amount to significantly more. The combination of the embedding of the pharmacy program identifier within the third-party payer identification field, the retrieving, extracting, and identifying steps, the physical dispensing and shipping of the at least one medication, and the closed-loop confirmation routed back to the correct originating non- dispensing pharmacy system, as recited by claim 1, represents an unconventional arrangement of steps that confines the claims to a particular useful application.
Moreover, the level of detail claimed ensures the claim is not monopolizing all uses of the alleged abstract idea. Because claim 1 as amended is confined to the specific operations of extracting the embedded first and second identifiers from the third-party payer identification field and using them to identify and route the fulfillment message to the correct non-dispensing pharmacy system, claim 1 does not preempt all approaches to prescription processing. Accordingly, Applicant respectfully requests that the rejection of claims 1-20 under 35 U.S.C. § 101 be withdrawn.
Applicants’ arguments have been fully considered but they are not persuasive. The MPEP 2106.04(a) states certain methods of organizing human activity encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, 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. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings. Another example of subject matter where the commercial or legal interaction is business relations includes: i. 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).
The claim limitations identified fall within business relations of certain methods of organizing human activity as the limitations recite processing information through a central filling system, where the business relation is the relationship between a party submitting a prescription fill request (e.g. non-dispensing pharmacy) and fulfillment sources (e.g. dispensing and central fill system) when processing prescription requests. The new limitations argued of "retrieving an index comprising a plurality of mappings, wherein each mapping associates a respective first identifier and a respective second identifier with a respective one of a plurality of non-dispensing pharmacy systems," "extracting, from the at least one third-party payer identification field of the order message identified by the indication, the first identifier and the second identifier of the embedded pharmacy program identifier," and "identifying, from among the plurality of non- dispensing pharmacy systems, the first non-dispensing pharmacy system by determining that a first mapping of the plurality of mappings ... is associated with the first non-dispensing pharmacy system.” and “in response to the order message, dispensing, via the central fill system, the at least one medication and shipping the at least one medication to the patient” is certain methods of organizing human activity with the additional element of the central fill system. It is not would a human do it but could a human do it and executed by a general purpose processor does not make the claim dispositive of an abstract idea. Therefore, the claim limitations at the breadth in which they are claimed as the index comprising a plurality of mappings and computer dispensing in response to an order message and shipping the at least one medication the patient as identified is a part of the abstract idea of certain methods of organizing human activities such as part of the data exchange of the business relations. A reasonable human activity is indexing a plurality of mappings which identify pharmacy systems and reviewing an order message, dispensing a medication and shipping the medication, there is no further limiting steps to the claim to indicate a particular machine, operation, or control of a dispensing or shipping apparatus with aid of a computer to transform the claim into a tangible process executed. Rather the claim seeks to fill a prescription request with use of a general computer (see [0086]) thus examiner concludes the claim is still directed to the abstract idea of certain methods of organizing human activity business relations.
The judicial exception (abstract idea) cannot integrate itself into a practical application but identification of any additional elements recited in the claim can be evaluated to determine if the additional elements integrate the exception into a practical application. The indexing a plurality of mappings and further data manipulation is not considered additional elements as the elements as positively recited in the claim are broad and therefore under reasonable interpretation are interpreted as merely human review and confirmation of identifiers to a specific system reference such as you might have even on a piece of paper in which you insert identifiers of a pharmacy into and even interpreted in relation to a computer does not preclude the elements from still being abstract. The claims must be interpreted as recited, the specification may be used in light to understand definitions of these items claimed but the specification is not read into the claims.
Additionally, there is no physical improvement to the computer; the computer is merely used as a tool to perform the abstract idea. There is also no identified technical problem that the claimed invention is solving. The problem identified by the applicant was not caused by the computer, they are, at best, a business problem specific to the pharmacy business of prescription fill request workflow management. In regard to the problem identified by applicant that this unconventional use of an existing field within a standardized order message avoids the need for "convoluted, risky data processing or protected health information (PHI) processing.”; the positively recited claims do not reflect or recite an improvement in data processing/ data processing structures within the confines of the general purpose computer environment as claimed but rather at the breadth in which it is claimed the identifiers and other embedded pharmacy program identifier within the third-party payer identification field custom field is abstract and given reasonable definition with the computer merely an additional element to more efficiently process the data within these fields which could be articulated and understood as well as executed by a human in relation of a real world problem of prescription processing. Finally, the claims recited in the instant application have no nexus with claim 1 of example 42. While the instant application claims recite identifiers in fields there is no technical problem identified with conversion or formatting of network based disparate documents and no conversion steps in real time for immediate notification. The claims instead resemble claim 2 as the instant claims describes how to generally “apply” the concept of processing a prescription fill request in a computer environment. The claimed computer components are recited at a high level of generality and are merely invoked as tools to perform an existing prescription filling process. The recitation of different pharmacy systems with no further technical detailing on the specific computer-based disparities and solution of routing through these specific systems and technical problem vs just the data identifier itself and how to reference and index those mappings in a way to associate with a pharmacy does not amount to technical specific unconventional steps. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea and linking the computer to the pharmacy environments even if this is platform based to bring these systems into communication does not detail technical improvements to the computer environment or unconventionality rather the claims direct to the judicial exception of the data at a broad level as an order message and business relation steps a human could implement. Therefore, they also do not amount to significantly more. Therefore, examiner maintains the rejection under 35 U.S.C §101.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for replying 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no case, 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 Ashley Elizabeth Evans whose telephone number is (571) 270-0110. The examiner can normally be reached Monday – Friday 8:00 AM – 5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached on (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned 571-273-8300.
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/ASHLEY ELIZABETH EVANS/Examiner, Art Unit 3687
/MAMON OBEID/Supervisory Patent Examiner, Art Unit 3687
