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 .
This communication is Final Office Action in response to amendment and remarks filed on 11/10/2025. Claims 1-3, 5-13, 16 have been examined and are pending.
Response to Amendment
The amendment filed on 11/10/2025 cancelled claim 4, 14-15, 17. No claim was previously cancelled. No new claims are added. Claims 1, 16 have been amended. Claims 1-3, 5-13, and 16 are examined and pending.
Applicant’s amendments and arguments filed on 11/10/2025 are Not sufficient to overcome the Alice 101 rejections, set forth in the previous office action. Therefore, Examiner maintains Alice 101 rejections on claims under 35U.S.C.101.
Applicant’s amendments and arguments filed on 11/10/2025 are sufficient to overcome the 103 rejections, set forth in the previous office action. Therefore, Examiner withdraws rejections on claims under 35U.S.C.103.
Response to Arguments
Regarding the 101 rejections, the amendment and argument has been fully considered but is not persuasive.
The rejections are maintained because the claims as amended does not integrate the abstract idea into practical application.
The claim recites an abstract idea(s) as pointed out in the previous Office Action and below. The claim includes no additional element that are sufficient to amount to significantly more than the judicial exception and thus do not add something of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea.
The newly added procedural limitation, “automatically determine whether the patient is running out of the prescription/eligible…”, “automatically determine whether contact information is associated with another patient…”, “automatically determine whether the other patient is eligible to receive a refill… ”, “automatically generate and send an electronic message….. ”, are recited at high level of generality without reciting any particular configuration/specific how the system control/automate the determining/generating/sending of electronic messages. These limitations are specified at a high level of generality and is simply organized information through human activity or merely mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
The use of the term “automatically” does not disqualify the limitation from being categorized as an abstract idea. Language such as concurrently, automatically, instantly, or simultaneously to describe the automation of a manual process is not enough to overcome a subject matter eligibility rejection (MPEP § 2106.05(a)(I).
Simply using the word “automatically” do not mean that there is technical improvement or improved functioning of the computer itself or improve other technology to constitute “significant more” than the identified abstract idea. In other words, the instant claim is simply drafted in such a result-oriented way. It failed to recite a particular way of claiming a way of achieving it, or embodying a concrete a solution to a problem having “the specificity required transforming a claim from claiming a result to claiming a way of achieving it” (see Interval Licensing v. AOL). As such, do not constitute significantly more.
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality no. (iii) mere automation of manual processes). Examiner also notes that language such as this is not restricted to computer processes, humans can automatically/instantly/simultaneously/in real time complete different tasks (see MPEP § 2106.04(a)(2)(III) stating that the mental processes may be completely by humans plural – not just a singular human mind). Next, the instant application’s determining whether the patient/the other patient is projected to run out the medication/eligible to receive a refill, determining the contact information, generating/sending electronic messages, is fundamentally different than the data compatibility problem of Example 42. The data incompatibility at issue in Example 42 is due to software configuration constraints (i.e. data/file type incompatibility); the instant application does not detail any such software communications failure, only an information disorganization failure of the prior art. Therefore, Examiner does not find Example 42 analogous to the instant application.
Thus, it is the solution of the abstract idea but not an improvement to another technology or technical field nor an improvement to the functioning of the computer itself. Applicant merely defines a set of desirable results rather than defining a particular technology for achieving the set of desirable results. The Examiner notes the instant claimed invention is in fact merely carried out by a generically recited computing platform; that is, essentially any computing system as seen in the applicant’s specification. and as such does not constitute significantly more.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated above, the additional elements of a processor, a memory, are considered generic computer components performing generic computer functions that amount to no more than instructions to implement the judicial exception. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, the instant steps are mainly determining data, generating/sending messages, nothing in the claim element precludes the step from practically being performed in the human mind, and is simply mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
Even as an ordered combination, the claims as a whole do not contain any additional elements that amount to significantly more. The claims broadly state that “providing options to refill…” is performed on the determined data, and then used to identify the refill options. The rest of the additional limitations provide insignificant field-of-use limitations (describing the context rather than a particular technical manner of achieving the result).
At this level of generality, such limitations do nothing more than attempt to limit the claims to a particular technological field—namely, implementation via computers. More particularly, the claims attempt to limit the claimed invention to a particular technological field by reciting “generating and sending electronic messages, wherein the sent message include a link to an electronically-accessible patient portal… ”, and add insignificant extra-solution activities such as generating data, providing data, sending data.
Additionally, with regards to the claims’ recitation of generating/obtaining/sending data, this is a well-understood, routine, and conventional computing activities. See MPEP 2106.05(d)(II) (“Receiving or transmitting data over a network, e.g., using the Internet to gather/send data”).
As a whole, the claims do not go beyond stating the relevant functions in general terms, without limiting them to a technical means for performing the functions that are arguably an advance over conventional prescription dispensing technologies.
The dependent claims when analyzed both individually and in combination are also held to be ineligible for the same reason above and the additional recited limitations fail to establish that the claims are not directed to an abstract. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Looking at these limitations as an ordered combination and individually adds nothing additional that is sufficient to amount to significantly more than the recited abstract idea because they simply provide instructions to use generic computer components, to "apply" the recited abstract idea. Thus, the elements of the claims, considered both individually and as an ordered combination, are not sufficient to ensure that the claim as a whole amount to significantly more than the abstract idea itself. Therefore, claims 1, 3-4, 6-15 are not patent eligible.
Therefore, for at least the aforementioned reasons, the claims are rejected under 35 U.S.C. 101 for being directed to a judicial exception (i.e., an abstract idea) without significantly more. The 101 rejection is maintained.
Secondly, Applicant’s amendment and arguments with respect to the rejection(s) of claim 1, 16 in the Remark dated 11/10/2025 have been fully considered and are persuasive.
Applicant' arguments addressed to the newly amended portion in claim 1, 16, are persuasive. Examiner hereby withdraws the 103 rejections.
With respect to dependent claims Applicant argues that claim 2-3, 5-13, dependent from independent claim 1, therefore allowable for at least the same reasons. In response, Examiner respectfully agrees and submits that these dependent claims allowable by virtue of their dependency from the respective base claims and for their own individually recited features. Accordingly claims 1-3, 5-13, and 16 are allowable over the recited arts of record.
This rejection has been amended to reflect the changes to the claim language and addresses any arguments submitted by the applicant. Therefore, the Examiner maintains the 101 rejections to the Applicant’s claims.
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, 5-13, 16 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.
Alice Corp. also establishes that the same analysis should be used for all categories of claims, regardless of a system/apparatus, a method, or a product claim.
The claimed invention (Claims 1-3, 5-13, 16) 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) abstract ideas including “Certain Methods of Organizing Human Activity”, “an idea “of itself”, which have been identified/found by the courts as abstract ideas in new 101 memos of the subject matter eligibility in here (https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility) including 2019 Revised Patent Subject Matter Eligibility Guidance. This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because it/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
Independent claim 16 (Step 2A, Prong I): is directed to multiple abstract ideas including “Certain Methods of Organizing Human Activity”, and “Mental process”.
Claim 16, Steps of,
automatically, determining, by a processing system, whether a patient is projected to run out of a first prescription medication within a first window of time extending a first number of days ahead of a current day;
in response to a determination that the patient is projected to run out of the first prescription medication within the first window of time,
determining whether the patient is eligible to receive a refill of one or more second prescription medications within a second window of time extending a second number of days from a day when the patient is projected to run out of the first prescription medication, and
determining whether contact information associated with the patient is associated with another patient;
in response to a determining that the contact information is associated with the another patient, automatically determining whether the other patient is eligible to receive a refill of a third prescription medication within the second window of time and
automatically generating and sending an electronic message based on the contact information associated with the patient, wherein the sent message includes a link to a an electronically-accessible patient portal,
wherein, in response to a determination that the patient is eligible to receive the refill of the one or more second prescription medications within the second window of time,
and in response to a determination that the other patient is eligible to receive the refill of the third prescription medication within the second window of time,
i. providing, by the patient portal, an option of a refill order of the first prescription medication and the one or more second prescription medications and
ii. providing, by the patient portal, an option of a refill order of the first prescription medication and the third prescription medication,
iii. providing, by the patient portal, an option of a refill order of the first prescription medication, the one or more second prescription medications and the third prescription medication,
iv. receiving, via the patient portal, a refill order selected from the group consisting of i, ii, or iii.
fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of managing personal behavior or relationships or interactions between people (including following rules or/and instructions). The instant claims recite “automatically determining if a patient is running out a prescription/if the patient is eligible to refill”, “automatically generating/sending email to notify the patient of the refill“ which are human activities and/or interactions and therefore, certain methods of organizing human activity which encompasses both certain activity of a single person, certain activity that involves multiple people, and certain activity between a person and a computer.
In addition, claim 16, steps mentioned above also falls within the abstract “Mental Processes” grouping of abstract ideas since these limitation covers performance of the limitations in the mind. For example, a human being can evaluate/determine if a patient is running out of the prescription, can evaluate/determine if a patient is eligible for refill, can observe/send email.
Further, Step of (“generating/sending email/information”) are considered as “insignificant extra-solution activity” to the judicial exception since they are merely collecting/providing/sending/displaying information.
Independent claim 16, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites additional element (a processing system, a patient portal), Other than reciting “by a processing system”, nothing in the claim element precludes the step from practically being performed in the mind or by paper and pen, let alone any specificity regarding any technology, just broadly, a display/user interface to present/display/provide information, a database to collect and store information, and a computing device to send/receive information over internet.
It should be noted the limitations of the method claims are claimed as being performed by a generic processor/a computer/system recited in method claim 16 and reciting them as though they are performed by the generically recited physical computing device does not constitute an improvement to another technology or technical field. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions such as receiving/retrieving data, transmitting data that are well-understood, routine and conventional activities previously known to the industry.
Thus, the computing system/processor/user interface is not an essential element to actually create, change, or display functionality, and is simply used as a tool to automate the mental tasks. Applicant simply use a generic processor/computing device/ as a tool to implement the abstract ideas. The Examiner notes the instant claimed invention is in fact merely carried out by a generically recited computing platform; that is, essentially any computing system as seen in the applicant’s specification. The additional element limitations are simply a field of use that attempt to limit the abstract idea to a particular technological environment. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further the courts have found that simply limiting the use of the abstract idea to a particular environment does not add significant more.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. There is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself, and does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Independent claim 16 (step 2B): The additional element (i.e., a processing system, a patient portal), is recited at high level of generality and is a generic computing component, and add nothing of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea.
These components are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer/device components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/transmit/present/display information does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 16).
According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "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); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” (evidence required by Berkeimer memo). Further, according to Berkheimer memo 04/19/2018, section III.A.1, “A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)”.
Applicant’s Specification [0079--0081] indicate a general-purpose system perform the instant steps and demonstrates the well-understood, routine, conventional nature of the information processing device (a processor/a computer) in any computing implementation. In other word, in light of the description in the specification as mentioned above with respect to the generic computer/user interface in the Specification demonstrates that the additional elements must be sufficiently well-known. Thus, evidence has been provided to show these additional elements are well-understood, routine, conventional activity according to Berkheimer memo.
The newly added procedural limitation, “automatically determine whether the patient is running out of the prescription/eligible…”, “automatically determine whether contact information is associated with another patient…”, “automatically determine whether the other patient is eligible to receive a refill… ”, “automatically generate and send an electronic message….. ”, are recited at high level of generality without reciting any particular configuration/specific how the system control/automate the determining/generating/sending of electronic messages. These limitations are specified at a high level of generality and is simply organized information through human activity or merely mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
The use of the term “automatically” does not disqualify the limitation from being categorized as an abstract idea. Language such as concurrently, automatically, instantly, or simultaneously to describe the automation of a manual process is not enough to overcome a subject matter eligibility rejection (MPEP § 2106.05(a)(I).
Simply using the word “automatically” do not mean that there is technical improvement or improved functioning of the computer itself or improve other technology to constitute “significant more” than the identified abstract idea. In other words, the instant claim is simply drafted in such a result-oriented way. It failed to recite a particular way of claiming a way of achieving it, or embodying a concrete a solution to a problem having “the specificity required transforming a claim from claiming a result to claiming a way of achieving it” (see Interval Licensing v. AOL). As such, do not constitute significantly more.
Thus, it is the solution of the abstract idea but not an improvement to another technology or technical field nor an improvement to the functioning of the computer itself. Applicant merely defines a set of desirable results rather than defining a particular technology for achieving the set of desirable results. The Examiner notes the instant claimed invention is in fact merely carried out by a generically recited computing platform; that is, essentially any computing system as seen in the applicant’s specification. and as such does not constitute significantly more.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated above, the additional elements of a processor, a memory, are considered generic computer components performing generic computer functions that amount to no more than instructions to implement the judicial exception. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Therefore, for the above-mentioned reasons, viewed as a whole, even in combination, the above steps do not amount to significantly more/do not provide an inventive concept and is non-statutory subject matter.
Independent claim 1: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent system/apparatus claim 1 is also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claim(s) 16.
Further, the components (i.e. a processor, a system, a patient portal) described in independent claim 1, add nothing of substance to the underlying abstract idea. Similarly, as it relates to the computer system claims, the limitations appear to be performed by a generic computing system. These components are merely recited at a high level of generality and/or are recited as performing generic computing functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/collect/provide/storing/ transmit/present/display information over communication network/internet does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 16).
Dependent claims 2-3, 5-13, are merely add further details of the abstract steps/elements recited in claim 1, without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 2-3, 5-13 are also non-statutory subject matter.
Viewed as a whole, the claims (1-3, 5-13, 16) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Thus, the claims do NOT recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Thus, the claimed invention, as a whole, does not provide 'significantly more' than the abstract idea, and is non-statutory subject matter.
Rejections under 35 USC 103
The rejections of claims 1-3, 5-13, and 16 under 35 USC 103 are withdrawn in view of Applicant’s amendments and argument to the independent claims 1, 16. The closest prior art is understood to be the art of record, but does not expressly teach all of the limitations of the independent claims as amended. A search of publicly available prior art fails to yield a reference or combination of references that would make the claimed combination obvious when considered as a whole.
Allowable Subject Matter
As to the prior art rejections, in interpreting the claims, in light of the specification, upon further search and consideration, and for the reasons presented by the claims, the Examiner finds the claimed invention to be patentably distinct from the prior art of records. It is found that claim 1-3, 5-13, 16 are allowable subject to outstanding Alice 101 rejections.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding 101 issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art made of record cited or referenced relied upon is considered pertinent to applicant’s disclosure.
Lion (US 2023/0197235),
Heidenreich et al. (US 2008/0091468).
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 SUN M LI whose telephone number is (571)270-5489. Fax is 571-270-6489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm
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/SUN M LI/
Primary Examiner, Art Unit 3685
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