DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statements (IDS) submitted on 01/20/2026 and 04/28/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of Claims
3. Applicant filed the Request for Continued Examination on 05/05/2026. Claims 7-18 are pending. Claims 7 and 13 are amended.
Claim Rejections - 35 USC § 112
4. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claims 10 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Lack of Antecedent Basis
6 Claims 10 and 16 recite the limitation “the associated cash discount system”. There is insufficient antecedent basis for this limitation in the claims. The limitation should be corrected to “the cash discount system.”
Claim Rejections - 35 USC §101
7. 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.
8. Claims 7-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
9. In the instant case, claims 7 and 13 are directed to “an apparatus and at least one non-transitory computer-readable storage medium for providing real-time pricing information”.
10. Claim 7 recites “providing a patient a prescribed medication cash price and associated cash discount”. Specifically, claim recites “storing a maximum allowable response time and a history of cash transactions; receiving … a prescription benefit coverage inquiry associated with a patient, a pharmacy, and a prescribed medication; transmitting the prescription benefit coverage inquiry …; monitoring … from the time the prescription benefit coverage inquiry was transmitted for the maximum allowable response time to determine whether a response associated with the prescription benefit coverage inquiry is received … within the maximum allowable response time; based on the history of cash transactions, determining at least one cash price for which the prescribed medication was obtained from the pharmacy and for which an associated transaction was processed …; based on a determination that the response … is received within the maximum allowable response time, and the response comprises a patient pay amount that is not null and is non-negative, in real-time or near real-time responsive to receiving the prescription benefit coverage inquiry …: (a) comparing the at least one cash price to prescription benefit information returned in the response …; (b) in an instance the prescription benefit information indicates the patient pay amount is greater than the at least one cash price, displaying the prescription benefit information, the at least one cash price, and an indication of a provider of the at least one cash price …; and (c) in an instance the prescription benefit information indicates a lower than or equal patient pay amount than the at least one cash price, displaying the prescription benefit information; and based on a determination that the response … is not received within the maximum allowable response time, displaying the at least one cash price, and an identifier of the provider of the at least one cash price …”. Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial or legal interactions) and an abstract idea in prong one of step 2A (MPEP 2106.04(a)).
11. This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04 II), the additional elements of the claim 7 such as “an apparatus”, “at least one processor”, “at least one memory”, “a prescriber computer”, “a pharmacy claims processor computer”, “a communications network”, and “a cash discount system” do no more than represent the use of a computer as a tool to perform an abstract idea and/or generally linking the use of a judicial exception to a particular technological environment or field of use. Therefore, as they do no more than represent the use of a computer as a tool to perform an abstract idea and/or generally linking the use of a judicial exception to a particular technological environment or field of use, they do not improve computer functionality nor improve another technology or technical field. With respect to “storing a maximum allowable response time and a history of cash transactions”, “receiving, from a prescriber computer, a prescription benefit coverage inquiry associated with a patient, a pharmacy, and a prescribed medication”, and “transmitting the prescription benefit coverage inquiry to a pharmacy claims processor computer”, is simply transmitting data; “[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) (e.g., a fundamental economic practice) does not integrate a judicial exception into a practical application or provide significantly more, (MPEP 2106.05(f)(2)).
12. When analyzed under step 2B (MPEP 2106.04 II), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claim merely describes the concept of providing a patient a prescribed medication cash price and associated cash discount using computer technology (e.g., the processor). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
13. Hence, claim 7 is not patent eligible.
14. Claim 13 also recites “providing a patient a prescribed medication cash price and associated cash discount”. Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial or legal interactions) and an abstract idea in prong one of step 2A (MPEP 2106.04(a)).
15. As in the case of claim 7, the judicial exception is not integrated into a practical application because when analyzed under prong two of step 2A (MPEP 2106.04 II), the additional elements of the claim 13 such as “at least one non-transitory computer-readable storage medium”, “one or more processors”, “a prescriber computer”, “a pharmacy claims processor computer”, “a communications network”, and “a cash discount system” do no more than represent the use of a computer as a tool to perform an abstract idea and/or generally linking the use of a judicial exception to a particular technological environment or field of use. Therefore, as they do no more than represent the use of a computer as a tool to perform an abstract idea and/or generally linking the use of a judicial exception to a particular technological environment or field of use, they do not improve computer functionality nor improve another technology or technical field. With respect to “storing a maximum allowable response time and a history of cash transactions”, “receiving from a prescriber computer, a prescription benefit coverage inquiry associated with a patient, a pharmacy, and a prescribed medication”, and “transmitting the prescription benefit coverage inquiry to a pharmacy claims processor computer for processing”, is simply transmitting data; “[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) (e.g., a fundamental economic practice) does not integrate a judicial exception into a practical application or provide significantly more, (MPEP 2106.05(f)(2)).
16. When analyzed under step 2B (MPEP 2106.04 II), the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of providing a patient a prescribed medication cash price and associated cash discount using computer technology (e.g., the processor). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
17. Hence, claim 13 is not patent eligible.
18. The following dependent claims recent additional elements not addressed above:
claims 8 and 14 recite “precluding display”;
claims 9 and 15 recite “a plurality of pharmacy computers” and “a plurality of cash discount systems”;
claims 10 and 16 recite “the associated cash discount system”; and
claims 11 and 17 recite “different cash discount systems”.
When considered individually, and as a whole, each of these additional elements amount to merely "apply it", as they are merely applying the abstract idea to the technical environment of precluding display, the plurality of pharmacy computers, the plurality of cash discount systems, the associated cash discount system, and the different cash discount systems.
Dependent claims 8-12 and 14-18 merely expand upon the abstract ideas of the independent claims 21 and 41, and are therefore rejected under the same rationale as claims 7 and 13.
Conclusion of 35 USC §101
19. The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
20. Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 103
21. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
22. 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.
23. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
24. Claims 7-18 are rejected under 35 U.S.C. 103 as being unpatentable over US20160188820A1 to Brown et al. in view of US10565656B1 to Pinsonneault et al. and US8712797B1 Bezdek et al.
25. As per claim 7:
Brown et al. discloses the following limitations:
An apparatus comprising at least one processor and at least one memory including computer program code, that when executed by the at least one processor, causes the at least one processor to perform steps of (Fig.1, items 100, 106, 108; [0008] discloses a computer system configured (i.e., processor and memory executing instructions) to perform operations)
storing a maximum allowable response time … ([0525]-[0527] discloses a stored, configurable time-out parameter per transaction used to bound the response window)
receiving, from a prescriber computer, a prescription benefit coverage inquiry associated with a patient, a pharmacy, and a prescribed medication ([0053], [0126], [0541] discloses a prescription benefit coverage inquiry (BENREQ) sent from the prescriber/prescriber vendor computer identifying the patient, pharmacy, and prescribed drug)
transmitting the prescription benefit coverage inquiry to a pharmacy claims processor computer ([0058]-[0059], [0528] discloses transmission of the RTBC Request through the Surescripts switch to the PBM (the pharmacy claims processor) for processing)
monitoring a communications network from the time the prescription benefit coverage inquiry was transmitted for the maximum allowable response time to determine whether a response associated with the prescription benefit coverage inquiry is received from the pharmacy claims processor computer within the maximum allowable response time ([0526], [0528] discloses monitoring the communications channel from transmission of the request for the configured time-out period and determining whether a response was received from the PBM within that period)
based on a determination that the response from the pharmacy claims processor computer is received within the maximum allowable response time, and the response comprises a patient pay amount that is not null and is non-negative, in real-time or near real-time responsive to receiving the prescription benefit coverage inquiry from the prescriber computer ([0065], [0122], [0526] discloses real-time request/response processing returning an estimated patient cost (a non-null patient pay value), conditioned on receipt of the response within the configured time-out)
based on a determination that the response from the pharmacy claims processor computer is not received within the maximum allowable response time … ([0526] discloses generating a response to the original sender (the prescriber) when the PBM does not respond within the time-out)
Brown et al. does not disclose, however, Pinsonneault et al., as shown, teach the following limitations:
storing … a history of cash transactions (Col.10, lines 27-31; 33-40; discloses storage of healthcare claim transaction data including discount card purchase related records, supplying the history of cash transactions)
(c) in an instance the prescription benefit information indicates a lower than or equal patient pay amount than the at least one cash price, displaying the prescription benefit information (Col.22, lines 4-7, 9-11; col.24, lines 11-13; discloses when the PBM patient pay amount is less than or equal to the cash (U&C) price, the original adjudicated claim transaction response (prescription benefit information) is transmitted unchanged to the pharmacy computer for display)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for conducting audit evaluation by comparing the patient pay amount to the Usual and Customary Charge amount and determining the amount being less than or less than or equal to the patient pay amount of Pinsonneault et al. (‘656, abstract) with teaching of Brown et al. of providing to enable real-time request/response transactions initiated by a prescriber to a pharmacy benefits management (‘820, abstract) for storing information associated with various patients and/or from various healthcare claim transactions that have been received by the service provider computer, determining if the patient pay amount is less than or equal to the Usual and Customary Charge amount based on the comparison of the two, and transmitting the adjudicated prescription claim transaction response to the pharmacy computer (‘656, col.10, lines 28-30; col.22, lines 4-7; col.24, lines 11-13).
Neither Brown et al. nor Pinsonneault et al. disclose, however, Bezdek et al., as shown, teach the following limitations:
based on the history of cash transactions, determining at least one cash price for which the prescribed medication was obtained from the pharmacy and for which an associated transaction was processed via a cash discount system (Col.8, lines 31-40; discloses determining cash prices at a specific pharmacy via a cash-discount card system (the discount drug card providers), using mock adjudication or stored pricing rules)
comparing the at least one cash price to prescription benefit information returned in the response from the pharmacy claims processor computer (Col.3, lines 42-44, 47-52; discloses comparing PBM agreement prices (including PBM cash discount card pricing) for the same drug to determine which is lower for display)
(b) in an instance the prescription benefit information indicates the patient pay amount is greater than the at least one cash price, displaying the prescription benefit information, the at least one cash price, and an indication of a provider of the at least one cash price associated with the cash discount system (Col.1, lines 63-65; col.8, lines 23-24, 41-43; discloses displaying the lower cash discount card price together with the discount coupon identifying the relevant cash discount system provider (PBM/discount card issuer))
[based] … displaying the at least one cash price, and an identifier of the provider of the at least one cash price associated with the cash discount system (Col.11, lines 45-49, 53-58; discloses displaying U&C price (i.e., a cash price) when drug prices are not available under agreement)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for conducting audit evaluation by comparing the patient pay amount to the Usual and Customary Charge amount and determining the amount being less than or less than or equal to the patient pay amount of Pinsonneault et al. (‘656, abstract) and a method of displaying prices for drugs from a plurality of pharmacy benefit managers via a user interface using a computer processor of Bezdek et al. (‘797, col.1, lines 27-30) with teaching of Brown et al. of providing to enable real-time request/response transactions initiated by a prescriber to a pharmacy benefits management (‘820, abstract) for working with multiple discount drug card providers that issue a discount card that provides access to pharmacy discounts at retail pharmacies, the first set of prices may include a first price for the first drug determined by an agreement between the first PBM and a first pharmacy, displaying at least a portion of the first set of prices and the second set of prices at least in part by comparing the first price, including an identification number that is recognized by a PBM associated with the selected price, identifying the relevant PBM and the associated price, displaying the lowest price among the set of multiple discount cards, receiving drug prices from sources other than PBMs, i.e., a pharmacy, and when prices for the drug under agreements between the PBMs and pharmacies are not available, display the pharmacy's U&C price for the drug (‘797, col.8, lines 31-33; col.3, lines 42-44, 47-49; col.1, lines 64-65; col.8, lines 23-24, 41-42; col.11, lines 45-46, 54-55, 57-58).
Claim 13 is rejected using the same rationale that was used for the rejection of claim 7.
As per claim 13 Brown et al. additionally discloses the following limitations:
at least one non-transitory computer-readable storage medium ([0848] discloses a computer useable or readable storage medium having stored computer software)
one or more processors ([0838] discloses one or more processors (e.g., central processing units (CPUs))
26. As per claim 8:
Brown et al. does not disclose, however, Pinsonneault et al., as shown, teach the following limitations:
The apparatus according to claim 7, wherein the computer program code, when executed by the at least one processor, further cause the at least one processor to perform step of: further in an instance the prescription benefit information indicates a lower than or equal price to the at least one cash price, precluding display of the at least one cash price (Col/line 21/62-22/1; col.22, lines 9-11; discloses that when patient pay less or equal U&C amount the system follows path that does not surface cash price option)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for conducting audit evaluation by comparing the patient pay amount to the Usual and Customary Charge amount and determining the amount being less than or less than or equal to the patient pay amount of Pinsonneault et al. (‘656, abstract) with teaching of Brown et al. of providing to enable real-time request/response transactions initiated by a prescriber to a pharmacy benefits management (‘820, abstract) for adjudicating prescription claim transaction response that can be audited to determine if the patient would save money and the pharmacy would make more money if the pharmacy charged the Usual and Customary Charge amount and the patient pay amount is less than or equal to the Usual and Customary Charge amount (‘656, col.21, lines 62-66; col.22, lines 9-11;).
Claim 14 is rejected using the same rationale that was used for the rejection of claim 8.
27. As per claim 9:
Brown et al. does not disclose, however, Pinsonneault et al., as shown, teach the following limitations:
The apparatus according to claim 7, wherein the at least one memory and the computer program code, when executed by the at least one processor, further cause the at least one processor to perform steps of: receiving a plurality of records from a plurality of pharmacy computers pertaining to cash transactions via a plurality of cash discount systems (Col.21, lines 36-38, 47-50; discloses cash transaction U&C and data received from a plurality pharmacy computers)
storing the plurality of records as historical data for subsequent access, wherein the cash transaction history accessed to determine the at least one cash price for the prescribed medication at the pharmacy is accessed from the stored historical data (Col.21, lines 47-55; discloses historical U&C and cash price data accessible for subsequent transactions)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for conducting audit evaluation by comparing the patient pay amount to the Usual and Customary Charge amount and determining the amount being less than or less than or equal to the patient pay amount of Pinsonneault et al. (‘656, abstract) with teaching of Brown et al. of providing to enable real-time request/response transactions initiated by a prescriber to a pharmacy benefits management (‘820, abstract) for identifying value or amount in the Usual and Customary Charge field in the prescription claim transaction and input into the prescription claim transaction may also be included in the adjudicated prescription claim transaction response in order to determine the value or amount in the Usual and Customary Charge field (‘656, col.21, lines 36-38, 47-55).
Claim 15 is rejected using the same rationale that was used for the rejection of claim 9.
28. As per claim 10:
Brown et al. discloses the following limitations:
The apparatus according to claim 7, wherein at least one of the prescription benefit information, the at least one cash price, or the associated cash discount system of the at least one cash price is displayed at the prescriber computer in real-time or near real-time relative to transmission of the prescription benefit coverage inquiry by the prescriber computer ([0462] discloses real-time benefit information displayed to prescriber at point of care)
Claim 16 is rejected using the same rationale that was used for the rejection of claim 10.
29. As per claim 11:
Neither Brown et al. nor Pinsonneault et al. disclose, however, Bezdek et al., as shown, teach the following limitations:
The apparatus according to claim 7, wherein determining the at least one cash price for the prescribed medication at the pharmacy comprises accessing a plurality of cash transaction records associated with different cash discount systems (Col.8, lines 14-19, 31-32; discloses accessing cash transaction/price records from multiple discount card systems/PBMs)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for conducting audit evaluation by comparing the patient pay amount to the Usual and Customary Charge amount and determining the amount being less than or less than or equal to the patient pay amount of Pinsonneault et al. (‘656, abstract) and a method of displaying prices for drugs from a plurality of pharmacy benefit managers via a user interface using a computer processor of Bezdek et al. (‘797, col.1, lines 27-30) with teaching of Brown et al. of providing to enable real-time request/response transactions initiated by a prescriber to a pharmacy benefits management (‘820, abstract) for searching the fee schedules associated with multiple PBM discount cards to identify lower-cost prices while working with multiple discount drug card providers (‘797, col.8, lines 14-15, 31-32;)
Claim 17 is rejected using the same rationale that was used for the rejection of claim 11.
30. As per claim 12:
Brown et al. does not disclose, however, Pinsonneault et al., as shown, teach the following limitations:
The apparatus according to claim 11, wherein determining the at least one cash price for the prescribed medication at the pharmacy comprises assessing pharmacy revenue and an amount to be paid by the patient (Col.9, lines 31-34; col/line 21/62-22/3; discloses assessing pharmacy revenue (income/profit) and patient pay amount when determining the better cash price)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for conducting audit evaluation by comparing the patient pay amount to the Usual and Customary Charge amount and determining the amount being less than or less than or equal to the patient pay amount of Pinsonneault et al. (‘656, abstract) with teaching of Brown et al. of providing to enable real-time request/response transactions initiated by a prescriber to a pharmacy benefits management (‘820, abstract) for including computer-executable instructions for facilitating the auditing of pharmacy income potential for discount card based purchases and the patient pay amount identified in the adjudicated prescription claim transaction response (‘656, col.9, lines 32-34; col.22, lines 1-3).
Claim 18 is rejected using the same rationale that was used for the rejection of claim 12.
Response to Arguments
31. After careful consideration of applicant arguments, the examiner finds them to be not persuasive. Claims 7-18 are rejected.
Rejections under 35 U.S.C. § 103
32. Applicant is of the opinion that the prior art references John et al. in view of Harris et al. and Pinsonneault et al. do not teach claims 7-18 limitations.
Applicant arguments are no longer applicable because they are moot in light of the new ground of rejection.
Rejection under 35 USC § 101
33. Applicant’s arguments toward 35 U.S.C. § 101 rejection is not persuasive. Amended independent claim 21 do not have additional elements that could lead to an improvement in the functioning of a computer, or an improvement to other technology or technical field.
34. Applicant is of the opinion that the claims are not directed to an abstract idea, but to improvements to existing technology.
Examiner respectfully disagrees.
Claims as a whole directed to providing a patient a prescribed medication cash price and associated cash discount which is grouped under “Certain methods of organizing human activity” is similar to commercial interactions.
35. Applicant is of the opinion that the claims integrate the abstract idea into a practical application, because “[t]he amended independent claims specify the monitoring of a communications for a response within the maximum allowable response time, and providing a cash price for the prescription based on historical data if a response is not received within the maximum allowable response time. Accordingly, in real-time or near real-time responsive to determining a response is not received within the time threshold, the cash price based on the historical price is displayed via the prescriber computer. In this regard, if a benefit response is not received within the time threshold, such as within 0.2 seconds, the cash price is displayed in real-time or near real-time to the prescriber”.
Examiner respectfully disagrees.
Mentioned above the claim features performed by using the computer components. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)).
Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to the abstract idea.
36. Applicant is of the opinion that “[s]imilar to Ex parte Scheer, which improves upon existing technology of location monitoring, the pending claims improve upon existing technology. Also as in Ex parte Scheer, an example embodiment provides automatic monitoring and notification, without further user intervention, when a certain criterion is satisfied. In the case of the instant claims, the criterion is a lack of response received over the network within a time threshold.”.
Examiner respectfully disagrees.
In Ex parte Scheer, “The claim recites additional elements including a local agent device, a sub-system at the location which is in communication with the local agent device, contacting a remote monitoring center in response to detecting an alarm event at or within the sub-system, and contacting emergency personnel in response to detecting an emergency event at or within the sub-system…Specifically, these additional elements recite an improvement to location monitoring in that specific events may be defined which cause the system to automatically contact a remote monitoring center without user intervention, and other emergency events cause the system to automatically contact emergency personnel without needing user intervention.”
However, there is no similarities between Ex parte Scheer and the present application. In the present application, claim 7 recites “monitoring a communications network from the time the prescription benefit coverage inquiry was transmitted for the maximum allowable response time to determine whether a response associated with the prescription benefit coverage inquiry is received from the pharmacy claims processor computer within the maximum allowable response time” and according to the specification “The method further includes monitoring a network, by the one or more service provider computers, for receipt of a response associated with the prescription benefit coverage inquiry from the pharmacy claims processor computer.” (para 5, similar paras 11, 13, 18, 54, and 55) which concept is quite different from Ex parte Scheer, therefore is not integrated into a practical application.
37. Applicant is of the opinion that “the claims provide significantly more than the alleged abstract idea of organizing human activity, as they are directed to non-routine and unconventional processes.”
Examiner respectfully disagrees.
The rejection was not based on routine or conventional elements. To the contrary, the claim is directed to the abstract idea of providing a patient a prescribed medication cash price (e.g., (claim 7) “… displaying the at least one cash price, and the identifier of the provider of the at least one cash price …”; (PGPub, para 4) “Methods, apparatuses, and computer program products are therefore provided for supplying a prescriber at the point of prescribing (e.g., during a healthcare service with a patient) with information to provide to a patient, and particularly for providing information relating to cash prices for prescribed drugs at a patient's pharmacy”) and does not improve functioning of a computer or computer technology.
The claims are not patent eligible.
38. Applicant is of the opinion that in Bascom “’inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional’”, and concludes “in view of Bascom, the claims are patent eligible.”
Examiner respectfully disagrees.
Bascom's claims were a technical solution to a problem unique to the internet, that Bascom's claimed invention improves the computer system itself, and that Bascom's “inventive concept” overcomes existing problems with prior internet filtering systems. The court concluded that Bascom's claims are not simply directed to the idea of filtering content. However, the present claimed invention does not have inventive concept similar in Bascom.
39. Applicant is of the opinion that “Additionally, ‘DDR Holdings, LLC … provides an example of additional elements that favored eligibility because they were more than well-understood, routine conventional activities in the field… Embodiments of the claims provide a modification to conventional prescriber- facing interface and/or associated service provider computers to enable automated provision of a cash price based on historical data, in real-time or near real-time if a benefit response is not received.”
Examiner respectfully disagrees.
Unlike DDR, where the click of a hyperlink would cause an e-commerce website to lose a customer to a rival e-commerce website, there is no such business or technical problem confronting the user. Applicant’s invention does not set out to solve any specific business or technological challenges comparable to that in DDR. There is no risk of losing business to a rival because of a mouse click. The claimed invention does not involve internet browsing and its associated challenges. Nor do the claims describe any technical solutions to any problem. Based on the history of cash transactions, determining at least one cash price for which the prescribed medication was obtained from the pharmacy and for which an associated transaction was processed via a cash discount system is not even remotely comparable to navigating a merchant website. Hence, the DDR analogy does not apply here.
The claims are not patent eligible.
Conclusion
40. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20120253846A1 – John et al. – Discloses systems and methods may be provided for interactive virtual pharmacies, wherein method includes 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.
US10423759B1 – Harris et al. – Discloses a method of a healthcare transaction for a product or service for a patient is received and includes a transaction submission time, and transaction comparison data, wherein the transaction comparison data can be compared to a multitude of transaction records of previously processed healthcare transactions to identify a match.
US8538777B1 – Kaye et al – Discloses systems and methods for obtaining and providing patient medication history wherein methods include receiving a request for medication history information of a patient, the request including identification information for the patient and at least one memory may be accessed utilizing at least a portion of the identification information.
41. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANULLA ABDULLAEV whose telephone number is (571)272-4367. The examiner can normally be reached Monday-Friday 9:30AM -4:30PM ET.
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/AMANULLA ABDULLAEV/Examiner, Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
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