DETAILED ACTION
This is responsive to RCE filed on 01/20/2026 in which claims 1, 3-4, 6-12, 14-15, and 17-20 are presented for examination; Claims 1, 6-7, 10, 12, 17 and 20 have been amended; claims 2, 5, 13, and 16 are cancelled.
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 has been entered.
Claim Objections
Claims 1, 12, and 15 are objected to because of the following informalities:
Claim 1, line 22 have been amended to remove antecedent basis from healthcare plan provisions, and jurisdictional regulations; in light of previous claim, and Fig. 3 of instant specification, it is clear that rules are applied to same healthcare plan provisions, and jurisdiction regulations that are associated with the retrieved prescriber reference data in querying step. It is suggested to not remove “the” from these terms in line 22.
Claim 12, line 20 have been amended to remove antecedent basis from healthcare plan provisions, and jurisdictional regulations; in light of previous claim, and Fig. 3 of instant specification, it is clear that rules are applied to same healthcare plan provisions, and jurisdiction regulations that are associated with the retrieved prescriber reference data in querying step. It is suggested to not remove “the” from these terms in line 22.
Claim 12, line 10 recites “the plurality of pharmacies”, since it is the first instance, it should be rewritten as ““a plurality of pharmacies”.
Claim 12, lines 11-12, recite “the plurality of pharmacy claims processor”, since it is the first instance, it should be rewritten as “a plurality of pharmacy claims processors.”
Claim 12, line 17 recites “access prescriber data”, and line 19 recites “the retrieved prescriber reference data”; based on claim 1 amendments, it is clear that applicant have amended “access” recited in line 17 to retrieve (see, claim 1). It is suggested to change “access” to “retrieve” in line 17.
Claim 12, Pg. 7, line 4, recites “said causing”, it should be changed to “said waiving causing.” (see, claim 1 amendment (pg. 3)
Claim 15, line 3, recites “pre-approval conditions”, which refers to first instance in claim 12, it should be changed to “the pre-approval conditions.”
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-4, 6-12, 14-15, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of co-pending Application No. 19/033,181 hereinafter A181 and further in view of Stambaugh et al. (US 20150012285 A1).
Claims 1-20 of A181 substantially teaches all the claim limitations of claims 1, 3-4, 6-12, 14-15, and 17-20; however, A181 doesn’t explicitly teach:
the set of pre-approval rules defining pre-approval conditions under which PA requirements are waived;
in response to the ongoing pharmacy claim transaction meeting the pre-approval conditions:
automatically waiving, in real-time, the PA requirement for the prescription, said waiving causing the pharmacy claim transaction message to bypass PA processing for the prescription during the ongoing pharmacy claim transaction and prior to fulfillment of the prescription.
Stambaugh teaches:
the set of pre-approval rules defining pre-approval conditions under which PA requirements are waived (Para “[0065] If it is determined in step 14 that all the criteria a), b), and c) are met ("YES"), the hard error is reclassified as a soft error and claim denial is bypassed (step 16), after which the method proceeds to step 20 and the claim is processed for payment. Thus, when an authorized HPP prescriber prescribes a drug and the drug with its associated HPP edit (error code) is found for that prescriber, the hard error is reclassified as a soft error and the claim with Pay with Waiver.
[0066] If, however, it is determined in step 14 that one or more of the criteria a), b), and c) are not met ("NO"), or that a hard edit still exists, the method proceeds to step 18 which checks whether an authorization exists. Thus, when HPP edits are not met, (e.g., the prescriber is not on the HPP list, or the drug does not meet the criteria), or other hard edits still exist on the claim, the method will check to see if an existing authorization exists.” Note: here, criteria (set of rules) is applied, and if the criteria meets (conditions meet), then the pre-authorization is bypassed (Fig. 2, element 14, 16), and if the conditions are not satisfied, then it is checked, if the pre-authorization exists (performing pre-authorization check, see Fig. 2, element 14, 18));
in response to the ongoing pharmacy claim transaction meeting the pre-approval conditions (Fig. 2, element 14, “Yes”):
automatically waiving, in real-time, the PA requirement for the prescription (Para, “[0075] The claim engine 42 waits for, e.g., a customer point of sale purchase of a drug (e.g., step 2 of FIG. 1 or step 10 of FIG. 2). Once the claim engine 42 receives a claim for a drug, it evaluates the claim according to its own internal logic. If the claim is going to be denied and the reason for denial is one of the edit codes on the drug edit list contained in the database 34, and the drug is one of the drugs listed in the drug edit list, then the claim engine 42 will call the authorization service 40. The authorization service 40 reads the request and sends it on to the rules engine 36B. The rules engine 36B searches to see if the customer has facts in the customer fact database (of database 34). If so, then the rules module 36 will load the appropriate set of rules and send the customer conditions as well as point of sale variables to be evaluated by the rules. The rules will return an answer as to whether an authorization waiver should be issued. The answer, negative or positive, is then sent back to the service module or authorization service 40. The service module 40 then encodes the answer and sends it back to the claim engine 42. The claim engine 42 checks for the existence of a waiver override inside of the message it received. If an authorization waiver was issued, the claim engine 42 then turns the specific hard edits into soft edits, allowing the claim to pay. The response is then sent back to the pharmacy.” Also, see Fig. 2; Fig. 3, shows that when claim is submitted, real time POS calls is made for claim processing), said waiving causing the pharmacy claim transaction message to bypass PA processing for the prescription during the ongoing pharmacy claim transaction and prior to fulfillment of the prescription (Para “[0061] During traditional claims processing, if a claim does not meet certain clinical edits, it is assigned a "hard edit," which is an error code that is set to deny payment of the claim unless later reclassified as a soft error. The new process according to the present invention will instead determine if the claim meets certain criteria to bypass denial of the claim.” Also, see Fig. 2).
It would have been obvious for a person of ordinary skill in the art to apply PA waiving/bypassing teachings of Stambaugh into the teachings of A181 at the time the application was filed in order to reduce the costs, and the impact on member at the point of service. (See, para 0008-0009)
This is a provisional nonstatutory double patenting rejection.
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, 3, 4, 6-12, 14-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1:
Step 1: Is the claim to a process, machine, manufacture or composition of matter?” Yes, it’s a method (process) claim.
Step 2a Prong 1 (judicial exception)
Step 2A (1): “Does the claim recite an abstract idea, law of nature, or natural phenomenon? Yes , the claim comes under mental processes and organizing human activity.
Claim 1 recites:
“A computer-implemented method for automated administration of pre-approval of pharmacy product prior authorizations, the method implemented using a prior authorization pre-approval (paPA) computing device comprising a processor in communication with a memory, the paPA computing device in networked communication with a pharmacy switch server associated with a plurality of pharmacies and a plurality of pharmacy claims processors, the method comprising: receiving, in real-time from one of an originating pharmacy via an Application Programming Interface (API) or the pharmacy switch server, a pharmacy claim transaction message associated with an ongoing pharmacy claim transaction for a prescription, in response to the ongoing pharmacy claim transaction satisfying a prior authorization (PA) trigger condition indicating a PA requirement is associated with the prescription, the pharmacy claim transaction message formatted according to a data messaging standard processable by computers of the pharmacy switch server, the plurality of pharmacies, and the plurality of pharmacy claims processors, wherein the pharmacy claim transaction message includes data fields populated with (i) a plan identifier associated with a healthcare plan under which the prescription was submitted at the originating pharmacy, and (ii) a prescriber identifier associated with a prescriber of the prescription; querying a reference database with the prescriber identifier and the plan identifier to retrieve prescriber reference data associated with the prescriber of the prescription, healthcare plan provisions of the healthcare plan, and jurisdictional regulations; applying a set of pre-approval rules to a combination of the retrieved prescriber reference data, healthcare plan provisions, and jurisdictional regulations, the set of pre-approval rules defining pre-approval conditions under which PA requirements are waived ; in response to the ongoing pharmacy claim transaction meeting the pre-approval conditions : automatically waiving, in real-time, the PA requirement for the prescription, said waiving causing the pharmacy claim transaction message to bypass PA processing for the prescription during the ongoing pharmacy claim transaction and prior to fulfillment of the prescription: automatically appending an approval data element to the pharmacy claim transaction message to generate a PA approval message formatted according to the data messaging standard, the approval data element indicating the PA requirement for the prescription was waived based on the ongoing pharmacy claim transaction meeting the pre-approval conditions; and transmitting in real-time the PA approval message to the one of the originating pharmacy, via the API or the pharmacy switch server , to fulfill the prescription and complete the ongoing pharmacy claim transaction without PA processing based on the approval data element , or to a first pharmacy claims processor for further adjudication of the ongoing pharmacy claim transaction without PA processing based on the approval data element ; and writing a new record to the reference database including an indication of whether the ongoing or completed pharmacy claim transaction for the prescription satisfied the pre-approval conditions.”
All the limitations above are abstract idea related to the mental process (concepts performed in the human mind (including an observation, evaluation, judgment, opinion)) and organizing human activity with the exception of bold and underlined limitations. Claim language pertains to pre-approval of pre-authorization of any pharmacy product (medication/drug, lab orders etc.). It involves the process of checking if the claim requires pre-authorization, and waiving the pre-authorization if the certain conditions meet, thus bypassing the entire PA process. It is a common practice in a clinical setting/pharmacy to carry out all the steps mentioned above, for a product to be pre-approved. If a product is approved, a pharmacy is notified, and a record is kept to indicate that the product has fulfilled all the conditions for pre-approval. This concept relates to insurance, and legal interaction etc. In addition, all the limitations identified as abstract idea could be done on paper using pen (manual claim processing).
Step 2A(2): Prong Two: evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception. NO
The claim does recite additional elements; however they don’t integrate the exception into a practical application of the exception.
computer-implemented, automated administration of pre-approval of pharmacy product prior authorizations, using a prior authorization pre-approval (paPA) computing device comprising a processor in communication with a memory, the paPA computing device in networked communication with a pharmacy switch server associated with a plurality of pharmacies and a plurality of pharmacy claims processors, the method comprising: receiving, in real-time from one of an originating pharmacy via an Application Programming Interface (API) or the pharmacy switch server (All these elements, and the ecosystem is implemented at apply it level; instant specification para 0020 states “[0020] Notably, pharmacies 104, pharmacy claims processors 108, and electronic PA vendor computing devices 110 are configured to function, in general, the same in the pharmacy claim processing system 100 as in conventional systems. That is, the pharmacy claim processing system 100 of the present disclosure provides the technical benefits and improvements described herein without a significant restructuring of existing entities, which enables the pharmacy claim processing system 100 substantially seamless functionality. It should be recognized, however, that the conventional functionality of the electronic PA vendor computing device 110 may be employed less frequently, as the automatic pre-approval of prior authorization may render such functionality moot in many cases.” Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f))
querying a reference data base (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f))
receiving, in real-time from … an Application Programming Interface (API) or the pharmacy switch server(Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) )
data messaging standards processable by computers(Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f))
automatically appending (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f))
automatically waiving (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f))
transmitting the PA approval message (Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) )
Step 2B: evaluate whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception? NO
As discussed previously with respect to Step 2A Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component.
Regarding the claim limitations:
“ receiving, in real-time from … an Application Programming Interface (API) or the pharmacy switch server” the courts have recognized the computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (“i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information”); See, MPEP 2106.05 (d)(II)
transmitting the PA approval message the courts have recognized the computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (“i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information”); See, MPEP 2106.05 (d)(II)
The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Regarding claim 12, claim 12 is a computing device claim that falls under statutory category of machine, and corresponds to the method claim of claim 1. All the limitations are substantially same as recited in claim 1, thus claim 12 is rejected in same manner as claim 1 above.
Regarding claims 3, and 14, claims further narrows the abstract idea defined in claims 1 and 12. Here, set of pre-approval rules are being generated, using processors or pharmacy switch servers. Which are on apply it level. (MPEP 2106.05(f)))
Regarding claims 4, and 15, claims further narrows the abstract idea defined in claims 1 and 12. Here, if the condition for ongoing pharmacy claim transaction does not meet the pre-approval conditions: automatic appending and transmitting of rejection message is carried out. The additional elements “automatically appending”, “transmitting, in real-time”, “pharmacy switch server”, “electronic PA vendor” already have been addressed with regard to claim 1.
Regarding claims 6, and 17, claims further narrows the abstract idea of claims 1 and 12; and further adds additional limitation of storing the claimed information in the reference database. The storing of information in the database is merely applying the database. (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)) Note: last limitation of claim 17 is addressed in claim 7 below.
Regarding claim 7, claim further narrows the abstract idea defined in claim 6.
Storing of information in the reference database (pre-approval rules, threshold and percentages) is merely applying the database. (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f))
Regarding claims 8, and 18, claims further narrows the abstract idea defined in claims 6 and 17. In addition, storing of information in the reference database (healthcare plan provisions, jurisdictional provisions, national provider identifier, prescription drug identifiers, quantity according to days, number of refills) is merely applying the database. (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f))
Generating the rules could be done using paper and pen (both based on healthcare plan, and jurisdictional regulations).
Regarding claim 9, further narrows the abstract idea defined in claim 1. Updating of record is done.
Regarding claims 10, 19 and 20, claims further narrows the abstract idea defined in claims 1 and 12. In addition, a second pharmacy claim transaction message is being received and automatically appended upon approval without further applying the pre-approval rules. The additional elements are “querying the reference database”, “automatically appending”, “switch server”, and have been addressed with regard to claim 1.
Regarding claim 11, further narrows the abstract idea defined in claim 1. A progress status for approval is being monitored. (It could be done by checking the report)
Allowable Subject Matter Over the Prior Art
Claims 1, 3-4, 6-12, 14-15, and 17-20 are allowable over the prior art. The applicants’ arguments presented on 01/20/2026 are persuasive. The closest prior art Stambaugh et al. (US 20150012285 A1) substantially teaches the claimed concept including receiving a claim that is subject to clinical edits, applying the criteria/rules to determine if the pre-authorization can be waived/bypassed; performing pre-authorization process if the pre-authorization can’t be bypassed (See, Fig. 2). Though the reference teaches the core concept of waiving/bypassing pre-authorization, the reference differs as to how the various information are retrieved from database using specific information provided in the claim transaction message and applying a set of pre-approval rules to a combination of the retrieved prescriber reference data, healthcare plan provisions, and jurisdictional regulations, the set of pre-approval rules defining pre-approval conditions for pharmacy PAs under which PA requirements are waived.
The previously cited (Pinsonneault) reference does teach providing prior authorization support, and appending message that indicates whether the request was accepted or rejected (Fig. 5, step 505 and related disclosure); however, it is not in the context of claimed invention. In addition, it doesn’t explicitly teach using specific information provided in the claim transaction message and set of pre-approval rules are applied to the combination of the retrieved information, including the jurisdictional regulations.
Todd et al. (US 20220036990 A1) teaches “coverage requests for medicines are received from pharmacy systems. Databases are queried to retrieve policy rules for the coverage requests. A coverage decision analysis is performed and where an associated medication is otherwise approved for coverage and where genetic efficacy testing is available for the associated medication, a prior authorization for such genetic efficacy testing is automatically generated and included with which is transmitted together with an approval of coverage decision to a requesting one of said number of pharmacy systems.” However, as described above, it does not explicitly provide the claimed details, as discussed above.
Momita (US 20130041676 A1) teaches receiving claim, collecting member information, and based on that determining if the claim should be approved or denied; in case, the claim should be denied, it determines if the denial of claim should be overridden (See, para 0028-0029). Para 0032-0035, further explain that after it is adjudicated that claim should be denied, how the system can use the historical record to override. However, as described above, it does not explicitly provide the claimed details, as discussed above.
Allred et al. (US 20210210185 A1) as previously used to teach jurisdictional regulations, teaches handling prescriptions in various manners based on the jurisdictional restrictions applicable to each transaction (see, para 0069); however, claim have been amended to specify that applied rules to jurisdictional regulation define pre-approval conditions under which PA requirements are waived.
Although the limitation could potentially be addressed individually, it would not be obvious to a person of ordinary skill in the art to combine the references to teach the claimed invention without improper hindsight reasoning.
Response to Arguments
Remarks - 35 USC § 101
Applicant's arguments filed on 01/20/2026 have been fully considered but they are not persuasive.
In remarks, Pgs. 11-16, applicant discusses ARP decision regarding improvement aspects, and list different improvements disclosed in the specification with regard to claimed invention, and contends: “At least the above recitations in claim 1 (and similarly for independent claim 12) are respectfully submitted to reflect improvements to the overall technology field of computer-based pharmacy claim transaction message processing, making claim 1 eligible for reasons similar to the eligible claim in the ARP Decision. For example, the improvements reflected in the claims enable the pharmacy claim transaction computing ecosystem to use less of its storage capacity, and to operate with reduced system complexity, exactly the technical achievements acknowledged in the ARP Decision.”
The case facts of the ARP don’t align with the instant claimed invention, as the instant claims don’t present any improvement in the performance of a machine learning model or related subject matter. The improvement being presented in instant specification, and the remarks, relates to business process rather than technical environment, or ecosystem as discussed in the remarks and argument above. For example, applicant states “accordingly, the Specification outlines technical problems, namely, that prior authorization (PA) processing is resource intensive in both computing resources as well as human resources, and that data gaps between parties in the pharmacy claim processing computing ecosystem prevent these parties from accurate and timely PA processing as well as other types of messaging and data transmission in real-time..... In particular, the pharmacy claim processing system includes a prior authorization pre-approval (paPA) computing device that facilitates the receipt and processing of pharmacy claims that satisfy PA trigger conditions, indicating a prior authorization for a prescription product (e.g., medication, medical devices, medical supply, laboratory order, etc.) is called for by the applicable healthcare plan. The paPA computing device applies data from the pharmacy claim and data from database of prescriber and plan reference data to a set of pre-approval rules. If the pre-approval rules are satisfied, then the PA is considered "pre- approved," such that the requirement for the PA is waived, without requiring any further intervention from a prescriber, pharmacy, or other provider...”
The improvement and the technical solution being highlighted is that prior authorization requirements are waived, thus reducing the communication and processing. Though, such business decision, when the transaction meets the pre-approval conditions does reduce the processing, communication and time; from claims, and the specification, it is very clear that this improvement is result of applying a set of pre-approval rules, which is a business decision rather than technical improvement in the ecosystem as claimed. In addition, applying a ruleset to determine, whether prior authorization should be bypassed or waived, falls under the abstract ideas itself, as the claim being processed is evaluated against the rules, to judge whether to perform prior authorization process or not.
In remarks, Pgs. 16-19, applicant discusses 35 U.S.C 101 analysis, and related guidelines, and further contends: “one path to establishing a practical application is to show an improvement to a technical field or another technology. Applicant respectfully submits the claimed invention represents an improvement to the technical field of electronic pharmacy claim processing. The technical problems existing in the state of the art, as set forth in the present Specification, have been explained above. These technical problems are necessarily rooted in computer technology, in that the existing pharmacy claim transaction processing ecosystem has been built up with particular data compliance standards and regulations. This context is critical to the implementation of existing message processing and to the need for the technical solutions of the present Application. Indeed, this type of message processing cannot be disambiguated from its existing computing architecture, which has been designed and promulgated to comply with federal law and regulations. Therefore, the presently claimed invention is not "generally" or nominally linked to a particular technological environment.”
The claimed solution as presented is not rooted in computer technology, rather the claimed solution is business decision. The implementation of business decision, does changes the workflow of claim processing based on contingent language, however this change in workflow is change in business process. For example, the instant specification states:
“[0020] Notably, pharmacies 104, pharmacy claims processors 108, and electronic PA vendor computing devices 110 are configured to function, in general, the same in the pharmacy claim processing system 100 as in conventional systems. That is, the pharmacy claim processing system 100 of the present disclosure provides the technical benefits and improvements described herein without a significant restructuring of existing entities, which enables the pharmacy claim processing system 100 substantially seamless functionality. It should be recognized, however, that the conventional functionality of the electronic PA vendor computing device 110 may be employed less frequently, as the automatic pre-approval of prior authorization may render such functionality moot in many cases.”
The above disclosure, substantially sums up the improvement being presented; which is clearly applying the business practice of pre-approval of prior authorization (based on set of rules), that depending on evaluation of condition could result in less frequent requirement of prior authorization.
In remarks, Pgs. 19-24, the applicant further discusses the improvement aspect of the claimed invention, with regard to examiners remark in previous action.
As discussed in the above response, the applicant specification makes it very clear that claimed invention can be implemented without restructuring of the existing entities, and substantially enables a seamless functionality. Further, the specification admits the entities are configures to function in general, the same in the pharmacy claim processing system 100 as in conventional systems.
In remarks, Pgs. 24-26, the applicant contends: “In the instant application, the pending claims clearly recite more than well-understood, routine, or conventional activities at least with respect to automating the waiver of prior authorization (PA) processing for ongoing prescription claim transactions that meet specific pre- approval conditions, including (a) receiving, in real-time from one of an originating pharmacy via an Application Programming Interface (API) or the pharmacy switch server...”
Similar to above response, the waiver of prior authorization aspect is not a technical improvement, rather abstract idea itself; as the rules are being applied to take a business decision to waive the prior authorization. Furthermore, regarding the real-time aspect of claim processing, para 0018 of instant specification recites ““Real-time” refers to processes or routines that occur without substantial delay, such as within seconds or minutes. “Real-time PA pre-approval,” therefore, takes place within seconds or minutes of a pharmacy claim transaction being initiated. The paPA computing device 102 may be configured to receive, transmit, format, and re-format messages according to any suitable messaging standard for pharmacy claims processing, such as, but not limited to, NCPDP SCRIPT Standard.” The specification makes it very clear that real time processing is simply refers to processes or routines that occur without substantial delay, which is true for the majority of processes performed by the computer. Furthermore, even the messaging/communication being performed is using any suitable messaging standards.
Double Patenting
The applicant doesn’t provide any arguments with regard to double patenting rejection, rather requests the rejection be held in abeyance. The rejection has been updated to address the claim amendments above.
.S.C 103
Applicant’s arguments with regard to prior art rejections, see remarks, filed on 01/20/2026, with respect to the rejections of claims 1, 3-4, 6-12, 14-15, and 17-20 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. For further information and prior art discussion, please see reason of allowance over prior art above.
Conclusion
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/HUMA WASEEM/Examiner, Art Unit 3686
