DETAILED ACTION
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 .
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.
Response to Amendment
In the amendment dated 4/16/2025, the following has occurred: Claims 1 and 11 have been amended.
Claims 1 – 20 are pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 20 are rejected 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.
The claim(s) recite(s) subject matter within a statutory category as a process (claims 11 – 20) and machine (claims 1 - 10) which recite steps of
a first pharmacy and a second pharmacy different than the first pharmacy;
facilitate communication between the first and second pharmacies; and
enable a prescription order to be exchanged between the first pharmacy and the second pharmacy.
These steps of claims 1 – 20, as drafted, under the broadest reasonable interpretation, includes performance of the limitation in the mind but for recitation of generic computer components. That is, other than reciting steps as performed by the generic computer components, nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the system language, transferring in the context of this claim encompasses a mental process of the user. Similarly, the limitation of network, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the computer language, exchanging in the context of this claim encompasses a mental process of the user. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
These steps of claims 1 – 20 , as drafted, under the broadest reasonable interpretation, includes methods of organizing human activity. The Examiner understands this based upon the claims in light of the Specification. The Specification, paragraph 4, describes the problem to be solved
[0004] Presently, situations may arise where patients need to transfer their prescriptions to a different pharmacy, such as when, for example, traveling or simply because their insurance mandates the prescription be filled at a certain pharmacy. However, this may often become a tedious task. In order to have the prescription order transferred to a different pharmacy, patients must contact their pharmacy and request that the prescription be transferred. However, this process is antiquated, inefficient and problematic. In part, because it requires for the schedules of a pharmacist in the transferring pharmacy and a pharmacist in the receiving pharmacy to coincide between tasks and during a short window (e.g., a few hours)-so that both can direct time and attention to verifying a communication to convey the required information used to transfer the prescription. And regulations require that the transfer be performed by pharmacists. As such, there is a need to more easily, quickly, and efficiently streamline the process for pharmacies to transfer patient prescription orders between one another to provide more widespread access to patients in need of prescribed medication.
The problem regards a patient movement and therefore the invention is related towards Methods of Organizing Human Activity. The invention applies technology to the abstract idea to obtain all the benefits of applying technology. There is no technological improvement. The result of the invention is data with only a potential usage. There is no practical application.
Regarding potential future arguments, the Examiner cannot find in the Specification information showing the invention is other than applying technology. For example, the Applicant does not invent a web browser. The Applicant does not invent a new web browser technology but rather uses generic “web-based portal” (paragraphs 7, 16, and 37) and generic “web-based form” (paragraph 45) to enter information. There are no specific requirements for display improvements disclosed.
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 2 – 10 and 12 – 20, reciting particular aspects of how transferring may be performed in the mind but for recitation of generic computer components).
This judicial exception is not integrated into a practical application. In particular, the additional elements do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as recitation of prescription order transfer system amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of enabling transfer amounts to insignificant application, see MPEP 2106.05(g))
Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (such as claims 2 – 10 and 12 – 20, additional limitations which amount to invoking computers as a tool to perform the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation and do not impose a meaningful limit to integrate the abstract idea into a practical application.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and generally link the abstract idea to a particular technological environment or field of use. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields (such as claims 1 – 20; transferring, e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i))
Additional Elements
Prescription order system (computer) – paragraph 63 general purpose computer
Network – Armstrong et al., Column 4, lines 36 – 55 internet
Module – paragraph 65
Storage medium – paragraph 61 tangible device
Dependent claims recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea. Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (such as claims 2 – 10 and 12 – 20, additional limitations which amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i)). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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 – 4 and 11 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Parker, Jr et al. (herein Parker), U.S. Patent 10,025,807 in view of Armstrong, U.S. Patent 12,087,418.
As per claim 1,
Parker teaches a system for enabling an electronic transfer of a prescription order between pharmacies, the system comprising:
a first pharmacy and a second pharmacy different than the first pharmacy (figure 2 #206 and #208, figure 3 Pharmacy A and Pharmacy B);
a host server in communication with the first and second pharmacies over a network and configured to facilitate communication between the first and second pharmacies (column 3, lines 6 – 32 network column 4, lines 6 – 29 computers or host server); and
wherein the host server comprises a prescription transfer module configured to enable a prescription order to be exchanged between the first pharmacy and the second pharmacy (column 4, lines 30 – 43 prescription transfer system).
Parker does not explicitly teach the system comprising
a host server in communication with the first and second pharmacies over a distributed network and configured to facilitate communication between the first and second pharmacies; and
Parker does teach in column 12, lines 18 - 22, “Additional variations of the embodiments discussed above will be appreciated by those skilled in the art (for example, features associated with certain configurations of the invention may instead be associated
with any other configurations of the invention, as desired).
However, Armstrong further teaches the system comprising
a host server in communication with the first and second pharmacies over a distributed network and configured to facilitate communication between the first and second pharmacies (column 4, lines 6 – 14 cloud network and figure 1) ; and
It would have been obvious to one of ordinary skill in the art before the effective filing date to add these features into Parker. One of ordinary skill in the art before the effective filing date would have added these features into Parker with the motivation to facilitate order and delivery of prescription medication (Armstrong, Abstract).
As per claim 2, Parker in view of Armstrong teaches the system of claim 1 as described above.
Parker further teaches the system where the first and second pharmacies exchange the prescription order via a web-based portal implemented by the system (column 4, lines 30 – 43 software portal or column 9, lines 36 – 43 web portal).
As per claim 3, Parker in view of Armstrong teaches the system of claim 1 as described above.
Parker further teaches the system wherein when exchanging the prescription order, at least one of the first and second pharmacy is configured to generate a prescription order transfer request (figure 3, step #308).
As per claim 4, Parker in view of Armstrong teaches the system of claim 3 as described above.
Parker further teaches the system wherein the prescription order transfer request includes:
identifying information for a patient (column 4, lines 59 – 67 patient name); and
a prescription order corresponding to the patient (column 4, lines 59 – 67 prescription number).
As per claim 11,
Parker in view of Armstrong teaches a prescription order transfer system, the prescription order transfer system maintaining a web-based portal, the prescription order transfer system as described above in claim 1.
As per claim 12, Parker in view of Armstrong teaches the system of claim 11 as described above.
Parker further teaches the system wherein the plurality of computing devices comprises a computing device of a transferring pharmacy and a computing device of a receiving pharmacy (column 9, lines 45 – 57).
As per claim 13, Parker in view of Armstrong teaches the system of claim 12 as described above.
Parker further teaches the system wherein upon receipt of a prescription order transfer request, one of the transferring pharmacy and the receiving pharmacy may accept or decline the request (column 5, lines 35 – 54 There are several issues with the claim language. First, “may accept or decline” is a conditional statement without providing conditions. Second, the “transferring pharmacy and the receiving pharmacy” are not positively stated as being part of the system. A computing device is part but the pharmacies themselves are not. Further, whether this “accept or decline” are transferred back via the network is not claimed – see claim 14.).
As per claim 14, Parker in view of Armstrong teaches the system of claim 13 as described above.
Parker further teaches the system wherein the prescription transfer module is configured to generate and send a notification to the transferring and receiving pharmacies indicating whether the prescription order transfer request has been accepted or declined (column 5, lines 35 – 54 It should be noted that the notification does not have to be received (send to) and further does not define how the message is sent. There is further nothing that requires what the notification must include).
As per claim 15, Parker in view of Armstrong teaches the system of claim 14 as described above.
Parker further teaches the system
wherein upon acceptance of the prescription order transfer request (column 10, lines 44 – 63 where how the “acceptance” is determined is not disclosed),
the prescription order transfer module generates a transfer summary that includes a set of information associated with the prescription order (column 10, lines 44 – 63 transfer file),
the set of information is presented to each of the transferring and receiving pharmacies via a display of their respective computing devices (column 10, lines 44 – 63 output of the transfer file including printing).
As per claim 16, Parker in view of Armstrong teaches the system of claim 17 as described above.
Parker further teaches the system wherein the prescription order transfer request includes:
identifying information for a patient (figure 4 Patient Name); and
a prescription order corresponding to the patient (figure 4 Prescription Drug Name).
Claims 5 – 10 and 17 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over Parker, Jr et al. (herein Parker), U.S. Patent 10,025,807 in view of Armstrong, U.S. Patent 12,087,418, as applied to claims 1 and 11 respectively above, and further in view of Telus, “Pharmacists Quick Tips.”
As per claim 5, Parker in view of Armstrong teaches the system of claim 4 as described above.
Parker further teaches the system wherein the prescription order transfer request is a Transfer Out Request (column 8, lines 19 – 46 send out and also column 11, lines 14 – 31 where it is not clear whether which pharmacy is requesting a transfer).
Parker in view of Armstrong do not explicitly teach the system wherein the prescription order transfer request is one of a Transfer In request and a Transfer Out Request.
However, Telus further teaches the system wherein the prescription order transfer request is one of a Transfer In request and a Transfer Out Request (page 14, transferring an Rx from another store and Transferring an Rx to another store).
It would have been obvious to one of ordinary skill in the art before the effective filing date to add these features into Parker in view of Armstrong. One of ordinary skill in the art before the effective filing date would have added these features into Parker in view of Armstrong with the motivation to perform various actions that pertain to prescriptions (Telus page 11, Prescriptions)
As per claim 6, Parker in view of Armstrong, further in view of Telus teaches the system of claim 5 as described above.
Parker in view of Armstrong do not explicitly teach however, Telus further teaches the system wherein the Transfer In request is one of:
a request received by a receiving pharmacy to receive a prescription order from a transferring pharmacy (page 14, Transferring an Rx from Another Store); and
a request sent by the receiving pharmacy to request that the prescription order be transferred by the transferring pharmacy.
It would have been obvious to one of ordinary skill in the art before the effective filing date to add these features into Parker in view of Armstrong for the reasons as described above.
As per claim 7, Parker in view of Armstrong, further in view of Telus teaches the system of claim 5 as described above.
Parker further teaches the system wherein the Transfer Out request is one of:
a request sent by a transferring pharmacy requesting that a receiving pharmacy accepted the transfer of a prescription order from the transferring pharmacy (column 11, lines 14 – 31 where it is not clear whether which pharmacy is requesting a transfer); and
a request received by the transferring pharmacy requesting that the prescription order be sent to the receiving pharmacy.
As per claim 8, Parker in view of Armstrong, further in view of Telus teaches the system of claim 5 as described above.
Parker further teaches the system wherein one of the first pharmacy and the second pharmacy is a transferring pharmacy and the other is a receiving pharmacy (column 8, lines 19 – 46).
As per claim 9, Parker in view of Armstrong, further in view of Telus teaches the system of claim 8 as described above.
Parker further teaches the system wherein the prescription order transfer request is generated by at least one of the transferring pharmacy and receiving pharmacy via a computing device configured to receive input from a user, the computing device is in communication with the web-based portion (column 8, lines 19 – 46).
As per claim 10, Parker in view of Armstrong, further in view of Telus teaches the system of claim 8 as described above.
Parker further teaches the system wherein upon receipt of the prescription order transfer request, the prescription transfer module is configured to receive input from the computing device of the user, the input indicating whether at least one of the transferring and receiving pharmacies accepts or declines the request (column 5, lines 4 – 15).
As per claim 17, Parker in view of Armstrong teaches the system of claim 16 as described above.
Parker in view of Armstrong, further in view of Telus further teaches the system as described above in claim 5.
As per claim 18, Parker in view of Armstrong, further in view of Telus teaches the system of claim 17 as described above.
Parker in view of Armstrong, further in view of Telus further teaches the system as described above in claim 6.
As per claim 19, Parker in view of Armstrong, further in view of Telus teaches the system of claim 17 as described above.
Parker in view of Armstrong, further in view of Telus further teaches the system as described above in claim 7.
As per claim 20, Parker in view of Armstrong, further in view of Telus teaches the system of claim 17 as described above.
Parker in view of Armstrong, further in view of Telus further teaches the system as described above in claim 8.
Response to Arguments
Applicant’s arguments, see Claim Rejection-35 U.S.C. §102, filed 4/16/2025, with respect to the rejection(s) of claim(s) claims under 35 U.S.C. §102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of 35 U.S.C. §103, Parker in view of Armstrong.
Applicant's arguments filed 4/16/2025 have been fully considered but they are not persuasive.
Claim Rejection-35 U.S.C. §101
The Applicant states (Emphasis added), “The claimed invention is not merely an abstract idea but a specific technological solution to a problem in the field of pharmacy prescription transfers. The specification describes a novel system and method for enabling a compliant communication protocol over a distributed network for the electronic transfer of prescriptions between pharmacies. This system addresses inefficiencies in the current manual process of prescription transfers, which is antiquated and problematic due to the need for pharmacists' schedules to coincide.” The Examiner agrees that the instant invention is a technological solution to a manual problem. The invention applies technology to the abstract idea to achieve all the benefits of applying the technology to that abstract idea.
The Applicant states, “The claims integrate the abstract idea into a practical application by providing a specific technological solution that improves the process of transferring prescriptions between pharmacies.” The instant invention communicates data that has a potential usage. There is no claimed practical application.
The Applicant further states, “This integration is evident in the system's ability to facilitate communication between pharmacies via a distributed network, using a host server and a prescription transfer module.” The Applicant does not invent distributed network technology but rather is applying existing technology.
The Applicant states, “These elements are not merely generic computer components but are specifically configured to perform the functions necessary for the electronic transfer of prescription orders and communications between separate pharmacies.” The Examiner agrees that these elements are generic components capable of transferring information via a network.
The Applicant states, “The specification describes how the system's prescription transfer module is configured to enable the exchange of prescription orders between pharmacies, which is a specific and novel application of technology.” The invention potentially enables something to occur. There is no claimed or disclosed “specific and novel application of technology.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Allred et al Pub. No.: US 2021/0210185 A system for processing medical prescriptions is disclosed.
Saunders Pub. No.: US 2023/0335245 The present invention provides a system and method for medical providers to give electronic prescriptions ("eRx") to patients.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Neal R Sereboff whose telephone number is (571)270-1373. The examiner can normally be reached M - T, M - F 8AM - 6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Morgan can be reached on (571)272-6773. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEAL SEREBOFF/
Primary Examiner
Art Unit 3626