DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed April 06, 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 .
Request For Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/06/2026 claims and arguments have been entered.
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;
determining, based on the prescription fill request having been processed, and based on the first portion of the order message comprising the at least one third- party payer identification field with embedded pharmacy program identifier, a fulfillment notification indicating the prescription fill request has been processed;
and sending, based on the fulfillment notification, and based on the first portion of the order message comprising the at least one third-party payer identification field with
Therefore, the independent claims inherit the same abstract idea which 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
A dispensing pharmacy system
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, a dispensing pharmacy system, 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 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
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-20 are rejected to under 35 U.S.C. 103 as being unpatentable over John et. al, (hereinafter John) (US2012/0253846A1) in view of Hill SR. et. al, (hereinafter Hill) (US2006/0149587A1) and in further view of Welch (US2019/0279242A1)
As per claim 1, John teaches:
A method comprising: receiving, by a dispensing pharmacy system, from a first non-dispensing pharmacy system, a prescription fill request (“virtual pharmacy can deliver or direct the delivery of the prescription to the selected dispensing pharmacy”) comprising: a prescription identifier associated with a patient and at least one medication (“product identifier” and “patient identifier”), a first identifier associated with the first non-dispensing pharmacy system (“NPI code”) and a second identifier associated with the first non-dispensing pharmacy system (“one or more destination IDs”):
[0026] discloses, “Once the non-dispensing virtual pharmacy receives a selection of a dispensing pharmacy from the patient device, the virtual pharmacy can deliver or direct the delivery of the prescription to the selected dispensing pharmacy.”
[0104] discloses, “The electronic prescription may include one or more of the following prescription information:
[0106] discloses, “Drug or product identifier (e.g., National Drug Code (NDC)
[0114] discloses, “Patient Identifier”
[0126] discloses, “Identification of a destination pharmacy (e.g., National Provider Identifier (NPI) code), which can include either an identifier of an actual/dispensing pharmacy or a virtual pharmacy.”
[0144] discloses, “For example, there may be one or more destination IDs that are predefined to be associated with a virtual pharmacy.”
generating, based on the prescription fill request, an order message associated with the prescription identifier, wherein a first portion of the order message comprises …[…]…associated with the first non-dispensing pharmacy …[…]…comprises the first identifier and the second identifier
[0143] discloses, “the electronic prescription 302 may include identification of a destination pharmacy (e.g., National Provider Identifier (NPI) code), which can include either an identifier of an actual/dispensing pharmacy or a virtual pharmacy. However, this identification of the destination can be provided in a message, packet, frame, or other transmission separate from the electronic prescription 302 as well.”
[0104] discloses, “The electronic prescription may include one or more of the following prescription information:
[0106] discloses, “Drug or product identifier (e.g., National Drug Code (NDC)
[0114] discloses, “Patient Identifier”
[0126] discloses, “Identification of a destination pharmacy (e.g., National Provider Identifier (NPI) code), which can include either an identifier of an actual/dispensing pharmacy or a virtual pharmacy.”
[0144] discloses, “For example, there may be one or more destination IDs that are predefined to be associated with a virtual pharmacy.”
However, John does not teach the underlined portions:
…[…]…at least one third-party payer identification field; embedding, within the at least one third-party payer identification field, a pharmacy program identifier associated with the first non-dispensing pharmacy system wherein the embedded pharmacy program identifier comprises the first identifier and the second identifier;
sending, to a central fill system the order message, 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;
receiving, by the dispensing pharmacy system from the central fill system, an indication that the prescription fill request has been processed, wherein the indication identifies the order message:
determining, based on the prescription fill request having been processed, and based on the first portion of the order message comprising the at least one third- party payer identification field with the embedded pharmacy program identifier, a fulfillment notification indicating the prescription till request has been processed by the central fill system;
and sending, based on the fulfillment notification, and based on the first portion of the order message comprising the at least one third-party payer identification field withthe embedded pharmacy program identifier, a message to the first non-dispensing pharmacy system indicating that the at least one medication has been dispensed.
However, Hill does teach:
sending, to a central fill system the order message, 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;
[0020] discloses, “Referring to FIGS. 1 and 2, at step 202, patient 104 presents a request for a new or refill prescription to pharmacy system 106. For this example, pharmacy system 106 can include an individual pharmacy store in a chain of stores or pharmacies. Preferably, as part of the prescription request, patient 104 specifies the date and time when the prescribed drug or drugs are to be picked up. At step 204, a pharmacist or pharmaceutical technician checks the received prescription information for errors, and if no errors or only minor errors (e.g., typos) are found, enters the prescription information to pharmacy system 106.”
[0021] discloses, “At step 206, pharmacy system 106 determines whether the prescription to be filled is eligible for processing by central fill system 108. For the example embodiment illustrated by FIG. 1, central fill system 108 is also prefer ably a computer-implemented System for processing pre Scription requests. In this regard, the automated functions of central fill system 108 can be implemented by one or more application programs executed by an appropriate computer processor (not explicitly shown). For this example embodi ment, in order for a prescription to be eligible for central fill processing, pharmacy system 106 can determine whether the following rules have been followed: (1) The patient has elected to pick up the prescribed drug after the next delivery cycle of central fill system 108; (2) The patient allows the prescription to be filled by central fill system 108; (3) The prescribed drug is listed on the central fill systems formulary (i.e., catalog of products available); (4) The local State government allows drugs to be filled by a central fill facility: and (5) If the request is for a new prescription, the local State government allows new prescriptions to be filled by a central fill facility. If a prescription request follows the above described rules, for this embodiment, pharmacy system 106 performs edit checks on the entered prescription information, and also a Drug Utilization Review (DUR) for the patient and drugs(s) involved.”
[0022] discloses, “at step 208, pharmacy system 106 creates a prescription request data packet formatted appropriately for transmission to central fill system 108. At step 210, pharmacy system 106 transmits the prescription request packet to central fill system 108.”
[0044] discloses, “Preferably, central fill system part 108(a) processes prescriptions to be transmitted to dispensing system part 108(b) in a batch mode. This procedure is referred to as an “order pull’.”
[0046] discloses, “At step 608, central fill system part 108(a) transmits the order packet for each order (e.g., Eltron label type) to dispensing system part 108(b).”
[0049] discloses, “For prescription requests that can be filled completely, dispensing system part 108(b) prints a generic, “stock label for that prescription, and places the labeled prescription drug in the appropriate tote for shipping.”
[0052] discloses, “At step 626, a pharmacist associated with dispensing system part 108(b) places all prescriptions and patient information related to an order into a bag, and attaches the appropriate order slip to that bag. The order bag is then routed to a dispatching area for shipping to pharmacy system 106 (e.g., prescription transport or shipping route represented by link 117). For example, a QA pharmacist can place an order bag into a tote destined for delivery to a particular pharmacy store.”
receiving, by the dispensing pharmacy system from the central fill system, an indication that the prescription fill request has been processed, wherein the indication identifies the order message: (under broadest reasonable interpretation the order message or order slip is considered attached to the prescription as previously cited and an indication of the prescription being processed is the update in the central fill queue having a status of ready for shipment or shipped)
[0052] discloses, “At step 622, when all of the prescriptions in an order have been processed (e.g., filled or rejected), dispensing system part 108(b) sends a message to central fill system part 108(a) that requests the central fill system part to print an order slip. An order slip is a document that lists each prescription in an order. At step 624, central fill system part 108(a) prints an order slip that includes all of the prescriptions in that order. At step 626, a pharmacist associated with dispensing system part 108(b) places all prescriptions and patient information related to an order into a bag, and attaches the appropriate order slip to that bag. The order bag is then routed to a dispatching area for shipping to pharmacy system 106 (e.g., prescription transport or shipping route represented by link 117). For example, a QA pharmacist can place an order bag into a tote destined for delivery to a particular pharmacy store.”)
[0055] discloses, “At step 710, when all order processing has been completed for that day, and orders are ready to be shipped to the appropriate pharmacy stores, an operator can request central fill system 108 to print Summary Manifest documents (step 712). A Summary Manifest is a document that lists the stops on a shipping route and the items to be delivered at each stop. For these reports, central fill system 108 selects those prescriptions in the central fill queue that have a status of “Ready for Shipment to Pharmacy’. After these prescriptions have been selected, central fill system 108 updates the status of these prescriptions in the central fill queue as “Shipped'.”
determining, based on the prescription fill request having been processed, and based on the first portion of the order message…[…]…, a fulfillment notification indicating the prescription till request has been processed by the central fill system; (central fill queue is interpreted as a type of platform using STP program accessible by the pharmacy and updating status to ready for shipment to pharmacy is interpreted as a notification that the at least one prescription has been processed)
[0033] discloses, “An STP program can also be used to transmit status update requests, formulary update requests, etc. Preferably, if pharmacy system 106 is part of a group or chain of related pharmacies, host system 120 is located at a centralized site for the group or chain (e.g., chain headquarters)
[0055] discloses, “At step 710, when all order processing has been completed for that day, and orders are ready to be shipped to the appropriate pharmacy stores, an operator can request central fill system 108 to print Summary Manifest documents (step 712). A Summary Manifest is a document that lists the stops on a shipping route and the items to be delivered at each stop. For these reports, central fill system 108 selects those prescriptions in the central fill queue that have a status of “Ready for Shipment to Pharmacy’.
and sending, based on the fulfillment notification, and based on the first portion of the order message …[…]…a message to the first non-dispensing pharmacy system indicating that the at least one medication has been dispensed. (central fill queue is interpreted as a type of platform using STP program accessible by the pharmacy and updating status to shipped is interpreted as a message indication that the at least one prescription has been dispensed)
[0033] discloses, “An STP program can also be used to transmit status update requests, formulary update requests, etc. Preferably, if pharmacy system 106 is part of a group or chain of related pharmacies, host system 120 is located at a centralized site for the group or chain (e.g., chain headquarters).”
[0055] discloses, “After these prescriptions have been selected, central fill system 108 updates the status of these prescriptions in the central fill queue as “Shipped'.”
However, Hill also does not teach:
…[…]…at least one third-party payer identification field; embedding, within the at least one third-party payer identification field a pharmacy program identifier associated with the first non-dispensing pharmacy system wherein the embedded pharmacy program identifier comprises the first identifier and the second identifier;
determining, based on the prescription fill request having been processed, and based on the first portion of the order message comprising the at least one third- party payer identification field with the embedded pharmacy program identifier, a fulfillment notification indicating the prescription till request has been processed by the central fill system;
and sending, based on the fulfillment notification, and based on the first portion of the order message comprising the at least one third-party payer identification field withthe embedded pharmacy program identifier, a message to the first non-dispensing pharmacy system indicating that the at least one medication has been dispensed.
However, Welch does teach the underlined portions:
…[…]…at least one third-party payer identification field; embedding, within the at least one third-party payer identification field a pharmacy program identifier associated with the first non-dispensing pharmacy system wherein the embedded pharmacy program identifier comprises the first identifier and the second identifier;
determining, based on the prescription fill request having been processed, and based on the first portion of the order message comprising the at least one third- party payer identification field with the embedded pharmacy program identifier, a fulfillment notification indicating the prescription till request has been processed by the central fill system;
and sending, based on the fulfillment notification, and based on the first portion of the order message comprising the at least one third-party payer identification field withthe embedded pharmacy program identifier, a message to the first non-dispensing pharmacy system indicating that the at least one medication has been dispensed.
See [0046]-[0047] which discloses the eCoupon linked to various identifiers.
[ 0060 ] As described above , if the eCoupon response contains $ 0 . 00 in the third - party payment field , the pharmacy management system 120 will conduct the transaction as if no eCoupon was applied for and not print the patient notification . If the eCoupon response is greater than $ 0 . 00 in the third - party payment field , the pharmacy management system 120 will print the patient notification with the eCoupon amount being the value of the third - party payment field . If the response from the clearing house or process is greater than $ 0 . 00 , an actual coupon amount or patient / customer savings will be applied to the sales transaction . Processing information for the sales transaction is stored in the pharmacy management system 120
[0029] discloses, “Coupon management system 110 , further described below with reference to FIG . 2 , may include both a cloud service used for dispensing eCoupons to the pharmacy management system 120 , described below , and processors assigned to process eCoupon requests and send the responses back to the pharmacy management system to be implemented in the sale of specified goods or services .
[ 0030 ] Pharmacy management system 120 is a system operated from within a pharmacy , where patient information and prescription information are entered and stored . This system could be located physically in the pharmacy , in the cloud , or centralized chain system . For example , a pharmacy storefront location may be a single store having a computer implementing the pharmacy management system therein . Alternatively , a pharmacy storefront location may be one of a plurality of such storefronts communicating with a central computing system implementing the pharmacy management system.”
[ 0043 ] discloses, “In a step 310 , patient , prescription , and third - party information is entered into the pharmacy management system . The data may include all of the information specific to the transaction , including information about the goods or services , information about the transaction , information about the parties in the transaction ( including third parties ) , etc . The information may be obtained during the transaction , may be stored in the pharmacy management system , and / or may be obtained from one or more external sources . For example , in a pharmacy transaction , the transaction infor mation may include a pharmacy national association of boards of Pharmacy ( NABP ) number ( for validation ) , a patient state of residence , a patient date of birth , a patient gender , a prescription fill number , a national drug code identifier ( NDC ) of prescription , a number of units being dispensed , a number of days supply , a beneficiary identifi cation number ( BIN ) for primary insurance , a process con trol number ( PCN ) for primary insurance , a BIN for sec ondary insurance , a PCN for secondary insurance , a BIN for tertiary insurance , a PCN for tertiary insurance , a BIN for quaternary insurance , a PCN for quaternary insurance , a 340b plan ( y / n ) determination , a long term care ( LTC ) patient ( y / n ) determination , and a coupon request.”
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine John’s teachings of processing prescriptions through a non-dispensing pharmacy (virtual pharmacy) prior to a patient filling a prescription at a dispensing pharmacy to gather incentives and Hill’s teaching of processing a fill request for a prescription by way of a central fill system in network with a dispensing pharmacy with Welch’s pharmacy program in the form of discounts such as E-coupons associated with the network of fulfilling a pharmacy prescription as they are working to take into consideration third party payers and cost of prescriptions as well as improve the efficiencies of filling prescriptions (Hill [0007] and John [0005] and Welch [0007]). It would be obvious that by having the upfront work of parsing through where the most cost effective option is for the patient via an intermediary non-dispensing virtual pharmacy could save a dispensing pharmacy time and money and could further expedite the ability to send the prescription for filling to a central fill system which is also automated and providing cost and efficiency savings therefore, improving the overall process flow and level of service to a patient and decreases overall cost to the systems. It would not be unpredictable to use various types of data in the order and is merely a design choice as any identifiable specific data and fields such as a third party field with identifiers will improve the costing and payment process by providing clarity and efficiency.
As per claim 8, the apparatus claim which repeat the same limitations of claim 1 the corresponding method claim, as a collection of elements as opposed to a series of process steps as cited below in John:
An apparatus comprising: one or more processors; and memory storing computer-executable instructions that, when executed by the one or more processors, cause the apparatus to:
[0320] discloses , “The invention is described above with reference to block and flow diagrams of systems, methods, apparatuses, and/or computer program products according to example embodiments of the invention. It will be understood that one or more blocks of the block diagrams and flow diagrams, and combinations of blocks in the block diagrams and flow diagrams, respectively, can be implemented by computer-executable program instructions.”
Since the teachings and motivation to combine of John, Hill, and Welch disclose the underlying process steps that constitute the methods of claim 1 it is respectfully submitted that they provide the underlying structural elements that perform the steps as well. As such, the limitations of claim 8 is rejected for the same reasons given above for claim 1.
As per claim 15, it is an article of manufacture claim which repeats the same limitations of claim 1 and 8, the corresponding method and system claims respectively, as a collection of executable instructions stored on machine readable media as opposed to a series of process steps as cited below in John:
A non-transitory computer-readable storage medium comprising processor- executable instructions that, when executed by one or more processors of a computing device. cause the computing device to:
[0058] discloses, “These network devices and systems may also include any number of processors for processing data and executing computer-executable instructions, as well as other internal and peripheral components that are well known in the art.”
Since the teachings and motivation to combine of John, Hill, and Welch disclose the underlying system for claim 8 and process steps that constitute the system of claim 1, it is respectfully submitted that they likewise disclose the executable instructions that perform the steps as well. As such, the limitations of claim 15 are rejected for the same reasons given above for claims 1 and 8.
As per claims 2, 9, and 16 John does not teach:
…[…]…wherein determining the fulfillment notification comprises: receiving, from the central fill system, the indication: retrieving an index comprising a plurality of mappings. wherein each mapping identifies one of a plurality of non-dispensing pharmacy systems; determining, based on the indication identifying the order message, and based on the first portion of the order message, that a first mapping of the plurality of mappings is associated with the first non-dispensing pharmacy system, wherein the first mapping comprises the first identifier and the second identifier associated with the first non-dispensing pharmacy system; and determining, based on the prescription fill request having been processed, and based on the first mapping, the fulfillment notification.
However, Hill does teach:
…[…]…wherein determining the fulfillment notification comprises: receiving, from the central fill system, the indication: retrieving an index comprising a plurality of mappings. wherein each mapping identifies one of a plurality of non-dispensing pharmacy systems; determining, based on the indication identifying the order message, and based on the first portion of the order message (“order identification field”), that a first mapping of the plurality of mappings is associated with the first non-dispensing pharmacy system, wherein the first mapping comprises the first identifier and the second identifier associated with the first non-dispensing pharmacy system; and determining, based on the prescription fill request having been processed, and based on the first mapping, the fulfillment notification. (under broadest reasonable interpretation the index comprising a plurality of mappings is interpreted as a unique match between an index of a pharmacy with the mapping of items in the prescription file in central filling system queue, therefore a specific fulfillment notification can be mapped to a specific pharmacy)
[0045] discloses, “In response, central fill system part 108(a) updates the order identification field in the central fill queue to prepare the central fill queue with the pending transactions (orders to be filled) for transmission to dispensing system part 108(b). For example, a unique order ID is assigned to the associated central fill queue records, for each unique pharmacy NCPDP number and responsible party code. For this exemplary embodiment, a responsible party code is preferably a pharmacy system code that can link multiple patients to a family. Also, an order can be one or more prescriptions grouped together by responsible party (e.g., usually for a family). Central fill system part 108(a) sorts the orders in the central fill queue by: Eltron label code->store route group->store stop->store NCPDP number.”
John and Hill are analogous art as they both teach processing of prescriptions through pharmacies.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine John’s teachings of one or more dispensing pharmacies in network with a non-dispensing pharmacy having communication using e-prescribing script format such as a National Council for Prescription Drug Programs (NCPDP) SCRIPT form, an Electronic Data Interchange (EDI) ANSI format, an HL7 format, or the like and having information on the prescription such as NPI, destination ID, etc. with Hill’s teaching of an index with mappings of the prescription fulfillment process as these mappings are interpreted as the ability to keep each process flow associated with specific attributes and a pharmacy together through dispensing which is an obvious variant of being able to keep good records and information throughout transfers of prescriptions and accurate processing which would only improve and further the invention taught in John as John could now be notified of the fulfillment of the prescription at the dispensing pharmacy of choice and close out the process from beginning to end to fully incentivize the patient and allow the patient to be notified on when the prescription is ready. (John [0256] and [0257])
As per claims 3, 10, and 17 John does not teach:
…[…]…wherein the indication identities the order message and an address associated with the patient, and wherein the message indicates that the at least one medication was dispensed via a shipment associated with the address.
However, Hill does teach:
…[…]…wherein the indication identities the order message and an address associated with the patient, and wherein the message indicates that the at least one medication was dispensed via a shipment associated with the address (summary manifest lists the stops on a shipping route and status is updated to shipped / under broadest reasonable interpretation if a shipment route is known the addresses are known and the pharmacy to which the order is being shipped would be associated with the patient and order message still held within the central fill queue with this information).
[0055] discloses, “At step 710, when all order processing has been completed for that day, and orders are ready to be shipped to the appropriate pharmacy stores, an operator can request central fill system 108 to print Summary Manifest documents (step 712). A Summary Manifest is a document that lists the stops on a shipping route and the items to be delivered at each stop. For these reports, central fill system 108 selects those prescriptions in the central fill queue that have a status of “Ready for Shipment to Pharmacy’. After these prescriptions have been selected, central fill system 108 updates the status of these prescriptions in the central fill queue as “Shipped'.”
John and Hill are analogous art as they both teach processing of prescriptions through pharmacies.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine John’s teachings of a non-dispensing virtual pharmacy facilitating and using incentives to fulfill prescriptions through dispensing pharmacies with Hill’s teaching of an order message and an address associated with the patient that the prescription has been shipped for the same reasons as stated above for claims 2,9, and 16 as it would be obvious for John to close out , incentivize, and let the patient know where the process is at for fulfilling a prescription as this is the continuum of the facilitation taught in John.
As per claim 4, 11, and 18, John further teaches:
The method of claim 1, wherein the first identifier comprises a first processor identification number (“BIN number”).
[0269] discloses, “BIN Number and Processor Control Number (PCN) that designates an intended destination of the prescription claim 330”
As per claim 5, 12, and 18 John further teaches:
The method of claim 1, wherein the second identifier comprises a processor control number (“Processor Control Number (PCN)”)
[0269] discloses, “BIN Number and Processor Control Number (PCN) that designates an intended destination of the prescription claim 330”
As per claims 6, 13, and 19, John further teaches:
…[…]…wherein the order message comprises a National Council for Prescription Drug Programs (NCPDP) message
[0267] “To facilitate the prescription claim adjudication, the service provider computer 204 and/or virtual pharmacy module 205 may deliver a prescription claim 330 to the financial processing computer 208 (e.g., claims processor computer). The prescription claim 330 may be in accordance with a version of a National Council for Prescription Drug Programs (NCPDP) Telecommunication Standard, although other standards may be utilized as well. The prescription claim 330 may include a BIN Number and/ or a combination of a BIN Number and Processor Control Number (PCN) for identifying a particular claims processor computer or payor, such as the financial processing computer 208, as a destination for the prescription claim 330. In addition, the prescription claim 330 may also include information relating to the patient, payor, prescriber, healthcare provider, and/or the prescribed drug or product.”
As per claims 7, 14, and 20 John further teaches:
…[…]…further comprising: receiving, by the dispensing pharmacy system, from another dispensing pharmacy system or a provider system (under broadest reasonable interpretation the provider system can make a transaction directly to a dispensing pharmacy or likewise to a non-dispensing pharmacy), a prescription comprising the prescription identifier (“product identifier”) and a dosage for the at least one medication (“dosage instructions”):
[0024] discloses, “For example, if a healthcare provider (e.g., a prescribing physician) currently utilizes an industry standard healthcare transaction to deliver an electronic prescription to an actual (or non-virtual) or dispensing pharmacy, the healthcare provider can likewise use the same industry standard transaction to deliver an electronic prescription to a virtual pharmacy.”
[0104] discloses, “The electronic prescription may include one or more of the following prescription information:…”
[0106] discloses, “Drug or product identifier (e.g., National Drug Code (NDC)”
[0110] discloses, “Dosage Instructions”
sending, to the first non-dispensing pharmacy system, a prescription fill inquiry associated with the prescription: and receiving, from the first non-dispensing pharmacy system, the prescription fill request.
[0104] discloses, “At block 405, the service provider computer 204 and/or virtual pharmacy module 205 may receive an electronic prescription 302 from either a healthcare provider 110 or a patient 115. In an example embodiment of the invention, the electronic prescription 302 may be generated and delivered by a healthcare provider computer 202 as a healthcare transaction request in an e-prescribing script format such as a National Council for Prescription Drug Programs (NCPDP) SCRIPT form, an Electronic Data Interchange (EDI) ANSI format, an HL7 format, or the like.”
“Once the prescription 304 has been received by the pharmacy 120a-n, the pharmacy 120a-n may fill the prescription 304 by packaging requested drugs or products for pick-up by or delivery to the patient 115.”
Response to Arguments Regarding 35 U.S.C § 101 Rejection
Applicant argues on pages 1-3 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. The U.S. Supreme Court has provided a two-step test for determining patent eligibility under 35 U.S.C. § 101. First, a court will determine whether the claims at issue are directed to a patent-ineligible concept, such as laws of nature, natural phenomena, or abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014). Second, if the claim is directed to a patent ineligible concept, the court will determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. Id. Such elements are transformative if they are directed to an "'inventive concept,' i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.' In performing such analysis, a court must consider the elements of each claim both individually and as an ordered combination." Id.
In the present case, the Office Action asserts - and the Decision affirmed - that the claims are allegedly directed to "business relations of 'certain methods of organizing human activity[.]'" Office Action, (p. 4). Applicant respectfully disagrees.
A. The claims as amended are not directed to a judicial exception
The Decision characterized the claims as directed to "business relations" in the form of prescription processing. Decision at 7. Applicant respectfully submits that this characterization does not apply to the present claims as amended.
The claims as amended recite a concrete, end-to-end prescription fulfillment workflow that goes beyond abstract business relations. Specifically, amended claim 1 now recites tangible, real-world steps including "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[,]" which are physical acts of dispensing and shipping medication, not abstract concepts. When considered as an ordered combination, the claims recite a specific technical workflow involving multiple distinct systems (dispensing pharmacy system, non-dispensing pharmacy system, central fill system) performing specific roles in a defined sequence, culminating in the physical dispensing and shipping of medication and a closed-loop confirmation flow back through the system chain. 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 dispensing and shipping step ("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") recites a concrete, tangible outcome in which physical medication is dispensed and shipped. This is not an abstract concept. Second, the amended receiving step ("receiving, by the dispensing pharmacy system from the central fill system, an indication that the prescription fill request has been processed, wherein the indication identifies the order message") defines a specific inter-system communication where the central fill system confirms back to the dispensing pharmacy system that processing is complete. Third, the determining step uses the embedded pharmacy program identifier within the third-party payer identification field to determine a fulfillment notification, which is a specific use of the data structure to drive a downstream process. Fourth, the sending step routes the fulfillment message to the correct non- dispensing pharmacy system based on the embedded pharmacy program identifier, which is a specific, claim-recited use of the data that imposes meaningful limits.
Taken together as an ordered combination, these limitations define a particular solution to a particular problem: how to process prescriptions from multiple non-dispensing pharmacies through a single dispensing pharmacy platform and central fill system, and route fulfillment confirmations back to the correct originating non-dispensing pharmacy. As stated in the Specification, "[b]y utilizing a custom data field within an order message corresponding to a prescription, embodiments of the disclosure can solve the issue of delineating patients and their prescriptions between cohort systems associated with respective non-dispensing pharmacies," and "[t]he efficient use of computing resources can mitigate network congestion and/or other types of blockade of access to processing time and/or storage resources." Specification at[0022] The claims as amended reflect this technical improvement: the embedded pharmacy program identifier within the third-party payer identification field may serve as the "custom data field" that solves the delineation problem, and the downstream determining and sending steps, which functionally rely on that embedded identifier, are the specific claim limitations through which the improvement is achieved.
Furthermore, this practical application is achieved in an unconventional manner. Rather than requiring separate, dedicated data channels or additional message exchanges between the dispensing pharmacy system and each non-dispensing pharmacy system to track which prescriptions belong to which cohort, the claims recite repurposing an existing third-party payer identification field to carry pharmacy program identifiers that would not ordinarily be conveyed in that field. 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." Specification at [0022]. The claims do not merely recite the idea of prescription processing - they recite a specific technical workflow with specific inter-system communications and a specific, unconventional data structure (the embedded pharmacy program identifier within the third-party payer identification field) that drives the routing of fulfillment notifications. This is not a conventional arrangement of known elements; it is a particular solution that departs from the ordinary use of third-party payer identification fields in prescription messaging.
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 limitation, which repurposes an existing third-party payer identification field in an unconventional manner, with the physical dispensing and shipping step and the closed-loop confirmation flow represents an unconventional arrangement of steps that confines the claims to a particular useful application. Accordingly, Applicant respectfully requests that the rejection of claims 1-20 under 35 U.S.C. § 101 be withdrawn.
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).
Applicant's arguments have been fully considered but they are not persuasive. 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 limitation argued which recites “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 computer dispensing in response to an order message and shipping the at least one medication the patient as identified are directed to an abstract idea of certain methods of organizing human activities such as business relations. A reasonable human activity is 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 "at least one third-party payer identification field" and the "embedded pharmacy program identifier" are not considered additional elements as the elements as positively recited in the claim are broad and therefore under reasonable interpretation are interpreted as merely fields 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. Further the limitation, “receiving, by the dispensing pharmacy system from the central fill system, an indication that the prescription fill request has been processed, wherein the indication identifies the order message” is abstract. The claims must be interpreted as recited in the application, the specification may be used in light to understand definitions of these items claimed (which examiner notes there are no limiting definitions in instant application specification for these custom fields) but the specification is not what is examined.
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. Some of the problem identified by the applicant were not caused by the computer they are, at best, a business problem specific to the remote pharmacy world. 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 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. Therefore, they also do not amount to significantly more. Therefore, examiner maintains the rejection under 35 U.S.C §101.
Response to Arguments Regarding 35 U.S.C § 103 Rejections
Applicant argues on pages 3-6 of the remarks that Applicant submits that, for aprimafacie case of obviousness, the Examiner is required to "explain why the differences between the prior art and the claimed invention would have been obvious to one of ordinary skill in the art," (MPEP 2141(III)) and provide "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1396 (2007)). MPEP § 2142.02 provides that "[i]n determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious." Id. (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)). Furthermore, rejections based on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be explicit analysis including some rational underpinning to support the legal conclusion of obviousness. K.S.R. International Co. v. Teleflex, Inc., et al., 550U.S. 14 (2007), citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
A. John in view of Hill and Welch does not teach or suggest "at least one third-party payer identification field" and "embedding, within the at least one third-party payer identification field, a pharmacy program identifier" as claimed
The Office Action rejected claims 1-20 as obvious over John in view of Hill and Welch, relying on John for the non-dispensing and dispensing pharmacy systems, Hill for the central fill system workflow, and Welch for the third-party payer identification field and embedded pharmacy program identifier. The Decision affirmed this rejection, but did so in significant part by denying patentable weight to the claimed data content.
Specifically, the Decision applied the printed matter doctrine to discount the claimed data content, holding that "[c]laim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight." See Decision at 12. The Board found no "new and unobvious functional relationship between the argued descriptive material (information data content) and the substrate (field and embedded data structure)." Id. Applicant respectfully submits that the claims as amended make the functional relationship clearer.
The embedded pharmacy program identifier within the third-party payer identification field is not merely descriptive content. Rather, it is functionally relied upon in two subsequent claim steps. First, the determining step of amended claim 1 recites "determining, based on the prescription fill request having been processed, and based on the first portion of the order message comprising the at least one third-party payer identification field with the embedded pharmacy program identifier, a fulfillment notification." Second, the sending step of amended claim 1 recites "sending, based on the fulfillment notification, and based on the first portion of the order message comprising the at least one third-party payer identification field with the embedded pharmacy program identifier, a message to the first non-dispensing pharmacy system[.]" The embedded data directly controls which non-dispensing pharmacy system receives the fulfillment message. This establishes a new and unobvious functional relationship between the data content and the system's operation, rather than merely descriptive labeling.
Moreover, Welch's eCoupon processing is an entirely different endeavor as compared to embedding pharmacy program identifiers (comprising two distinct identifiers) within a third- party payer identification field to drive fulfillment notification routing. Welch describes eCoupon values in a third-party payment field that cause transactions to be processed differently based on monetary amounts. See Welch at 60. However, an eCoupon value that causes a transaction to be processed one way versus another is not the same as embedded identifiers within a third-party payer identification field that together identify a "pharmacy program" and drive the routing of fulfillment notifications as claimed.
Accordingly, John in view of Hill and Welch does not teach or suggest the claimed features. Therefore, Applicant respectfully requests that the rejection of independent claims 1, 8, and 15 be withdrawn.
B. The Office Action's motivation to combine John, Hill, and Welch is legally
deficient
The Office Action's stated motivation to combine John, Hill, and Welch is that "they are working to take into consideration third party payers and cost of prescriptions as well as improve the efficiencies of filling prescriptions." Office Action at 18-19. The Office Action further asserted that "it would not be unpredictable to use various types of data in the order and is merely a design choice as any identifiable specific data and fields such as a third party field with identifiers will improve the costing and payment process by providing clarity and efficiency." Id. Applicant respectfully submits that this rationale is legally deficient.
First, the Office Action's motivation conflates the general goals of the references with a specific reason to combine them in the manner claimed. John is directed to incentive structures for virtual pharmacies, such as presenting pricing and incentive information to patients to help them select a dispensing pharmacy. Hill is directed to automated central fill prescription processing, such as by routing prescription requests from a pharmacy system to a central fill system for dispensing. Welch is directed to coupon processing and adjudication, such as by determining whether eCoupons apply to pharmacy transactions. While all three references relate broadly to pharmacy systems, the Office Action does not articulate why a person of ordinary skill in the art would have been motivated to take Welch's eCoupon processing fields and embed them within an order message in the manner claimed. That is, the Office Action does not articulate why a person of ordinary skill in the art would have been motivated to embed a pharmacy program identifier comprising two distinct identifiers within a third-party payer identification field, and then using that embedded identifier to drive fulfillment notification routing back to the correct non-dispensing pharmacy system.
Second, the Office Action's assertion that the use of "various types of data" in the order is "merely a design choice" improperly dismisses the specific claimed arrangement as obvious without analysis. The claims do not merely recite placing generic data in a generic field. Rather, claim 1 recites a specific data structure - namely, a pharmacy program identifier comprising two distinct identifiers embedded within a third-party payer identification field, and that specific data structure serves a specific functional purpose: driving the determination of a fulfillment notification and the routing of a message to the correct non-dispensing pharmacy system. The Office Action has not explained why a person of ordinary skill would have arrived at this specific arrangement, nor identified any teaching, suggestion, or motivation in the references themselves that would have led to embedding non-dispensing pharmacy identifiers within a third-party payer field to achieve the claimed fulfillment notification routing.
Accordingly, for at least these reasons, Applicant respectfully requests that the rejection of independent claims 1, 8, and 15 be withdrawn.
As the Federal Circuit noted in In re Fine, "dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious." 5 U.S.P.Q.2d 1596, 1600 (Fed. Cir. 1988). Thus, it is submitted that the present dependent claims are non- obvious over the cited art. Therefore, it is respectfully requested that the rejection of the present dependent claims be withdrawn.
Applicant’s arguments have been considered but are not persuasive. The MPEP § 2111 states, “During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification….[…]…The court explained that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.). See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). …[…]…"Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment."
Therefore, Examiner interprets the third party field with a pharmacy program identifier as a third party field with the identifier being formatted in many different ways but identifying a unique association between the prescription associated with the prescription number (or prescription identifier) and the vendor. The primary reference discloses the non-dispensing pharmacy and various identifiers that can be considered a first and second identifier as examples. Welch discloses a third party field with a unique identifier of an eCoupon which has its own identifiers as disclosed such as NDC, units dispensed, or BIN/PCN numbers which under broadest reasonable interpretation is a unique association between the prescription and the vendor or prescription number and is well within the broad recitation of pharmacy program identifier claimed as no specific limiting identifier is claimed and the specification leaves them open ended as being formatted in different ways but associating a unique relationship with the prescription and the vendor.
The examiner notes the full obviousness statement given was as follows, “It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine John’s teachings of processing prescriptions through a non-dispensing pharmacy (virtual pharmacy) prior to a patient filling a prescription at a dispensing pharmacy to gather incentives and Hill’s teaching of processing a fill request for a prescription by way of a central fill system in network with a dispensing pharmacy with Welch’s pharmacy program in the form of discounts such as E-coupons associated with the network of fulfilling a pharmacy prescription as they are working to take into consideration third party payers and cost of prescriptions as well as improve the efficiencies of filling prescriptions (Hill [0007] and John [0005] and Welch [0007]). It would be obvious that by having the upfront work of parsing through where the most cost effective option is for the patient via an intermediary non-dispensing virtual pharmacy could save a dispensing pharmacy time and money and could further expedite the ability to send the prescription for filling to a central fill system which is also automated and providing cost and efficiency savings therefore, improving the overall process flow and level of service to a patient and decreases overall cost to the systems. It would not be unpredictable to use various types of data in the order and is merely a design choice as any identifiable specific data and fields such as a third party field with identifiers will improve the costing and payment process by providing clarity and efficiency.” Examiner stands by that a reason to combine was given and someone of ordinary and reasonable skill would have combined the references as aforementioned as the limitation in question recites, “and sending, based on the fulfillment notification, and based on the first portion of the order message comprising the at least one third-party payer identification field with the embedded pharmacy program identifier, a message to the first non-dispensing pharmacy system indicating that the at least one medication has been dispensed.” Unlike applicants assertion this limitation is broad and gives no specific technical details on the embedding process and also does not give specifics on driving fulfillment routing through any technical means, rather the limitation argues merely send “based” on a notification of fulfillment and “based” on the first portion of the order message a message which comprises a field with an identification of at least one third party payer with the embedded pharmacy program identifier. As pointed out several times not the embedding and the field data structures themselves are left broad with no specifics but rather what one of ordinary skill would understand them to be which is a field meaning a unit of information which relates to a one-third party identification and an embedding meaning representing data to capture meaning and relationships such as claimed the pharmacy program identifier, thus examiner maintains it is therefore reasonable that the descriptive data is a choice in which is reasonably obvious as it is not dependent Ent on the underlying structure rather what one of ordinary skill understands of prescription data and relationships among such data for end results of prescription processing which reasonably is a motivation of the combination of references as the motivation and teachings are cited in the obviousness statement aforementioned.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Therefore, examiner maintains the 35 U.S.C § 103 rejection.
Prior Art Cited but Not Relied Upon
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.
Conclusion
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
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