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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/06/2026 has been entered.
Notice to Applicant
This communication is in response to the amendment filed 07/06/2026. Claims 1, 5, 14, 27 have been amended. Claims 4, 6 have been canceled. Claims 1-3, 5, 7-11, 13-14, 27-31, 35 are presented for examination.
Subject Matter Free of Prior Art
Claim(s) 1-3, 5, 7-11, 13-14, 27-31, 35 are allowable over prior art because the prior art of record fail to expressly teach or suggest, either alone or in combination, the features found within the independent claims, in particular: “providing one or more prescriptions associated with the one or more prescription contracts by the patient to a medication for a validation via a third electronic communication, wherein in the first, second, and third communications, credentials of at least one of the patient, the medical professional, or a dispensary receiving the one or more prescription contracts or the one or more prescriptions is retrieved and verified using (i) the SSI credentials and (ii) a database which is at least one of an issuer database or a verifier database, wherein the retrieval and the verification of the credentials occur in a decentralized public key infrastructure such that no personal or health information is stored in a central database; and submitting an electronic program of the patient to the mobile storage configuration, the electronic program including a digital schedule defining one or more procedures for the submission of an electronic record regarding use of the medication that includes one or more pills associated with the prescription by the patient, wherein: each of the one or more pills includes an individual scannable code, the digital schedule defines procedures for a submission of the electronic record of the use for each of the one or more pills, and the scannable code is composed of an ink that is sensitive to at least one of light or air such that the scannable code fades when the packaging revealing the scannable code is opened.” Because the prior art does not teach or disclose the above features in the specific manner and combinations recited in independent claims 1, 14, 27, claims 1, 14, 27 are hereby deemed to be allowable over prior art. Originally numbered dependent claims 2-11, 13, 28-31, 35 incorporate the allowable features of originally numbered independent claims 1, 14, 27, through dependency, respectively.
However, the claims are still rejected under 101.
Claim Rejections - 35 USC § 112
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.
Claims 2, 10-11, 13, 28, 30, 35 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.
Claims 2, 10-11, 13, 28, 30, 35 recites the limitation "the electronic program" in line 3 (claim 2). There is insufficient antecedent basis for this limitation in the claim. Amended independent claims 1, 27 now recites “an electronic program” and claims 2, 28, 30 previously recite “an electronic program.” Are they the same “electronic program” or different? If they are different, Examiner recommends numbering the different electronic programs (i.e., first, second, etc. electronic program). Appropriate clarification is requested for the proper interpretation of the claim limitations, as the ambiguity renders the metes and bounds of the claim unclear. For examination purposes, Examiner interprets “the electronic program” as a separate “electronic program” (i.e., the “electronic program” of claims 2, 28, 30 before the amendments to independent claims 1, 27).
Claim(s) 10-11, 13 is/are rejected as being dependent on claim 2.
Claim(s) 35 is/are rejected as being dependent on claim 28.
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, 7-11, 13-14, 27-31, 35 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. Based upon consideration of all of the relevant factors with respect to the claims as a whole, the claims are directed to non-statutory subject matter which do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following analysis:
Claim 1 is drawn to a method which is within the four statutory categories (i.e., method). Claim 14 is drawn to a non-transitory computer-accessible medium which is within the four statutory categories (i.e., manufacture). Claim 27 is drawn to a system which is within the four statutory categories (i.e., machine).
Independent claim 27 (which is representative of independent claims 1, 14) recites…provide the one or more prescription contracts associated with a medical professional…; facilitate a submission of a co-execution of the one or more prescription contracts by the patient…; provide one or more prescriptions associated with the one or more prescription contracts by the patient to a medication for a validation…, wherein in the first, second, and third communications, credentials of at least one of the patient, the medical professional, or a dispensary receiving the one or more prescription contracts or the one or more prescriptions is retrieved and verified using (i) the SSI credentials...; and facilitate a submission of an…program of the patient…, the…program including a…schedule defining procedures for the submission of an electronic record regarding use of the medication that includes one or more pills associated with the prescription by the patient, wherein: each of the one or more pills includes an individual scannable code, the digital schedule defines procedures for a submission of the electronic record of use for each of the one or more pills, and the scannable code is composed of an ink that is sensitive to at least one of light or air such that the scannable code fades when the packaging revealing the scannable code is opened.
Under its broadest reasonable interpretation, the limitations noted above, as drafted, covers certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people…following rules or instructions), but for the recitation of generic computer components. The claims encompass a series of rules or instructions for a person or persons to follow, with or without the aid of a computer, to provide a patient with a prescription and check the patient’s medication adherence in the manner described in the identified abstract idea, supra. The rules or instructions are the claimed steps, as indicated supra. That is, other than reciting generic computer components (discussed infra), the claim amounts to managing personal behavior or relationships or interactions between people following rules or instructions. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Claim 1 recites additional elements (i.e., computer to implement the method; a mobile storage configuration of a patient via a first electronic communication; a control application of the medical professional via a second electronic communication; a third electronic communication; a database which is at least one of an issuer database or a verifier database; wherein the retrieval and the verification of the credentials occur in a decentralized public key infrastructure such that no personal or health information is stored in a central database; an electronic program…including a digital schedule). Claim 14 recites additional elements (i.e., a non-transitory computer-accessible medium; a computer processor; a mobile storage configuration of a patient via a first electronic communication; a control application of the medical professional via a second electronic communication; a third electronic communication; a database which is at least one of an issuer database or a verifier database; wherein the retrieval and the verification of the credentials occur in a decentralized public key infrastructure such that no personal or health information is stored in a central database; an electronic program…including a digital schedule). Claim 27 recites additional elements (i.e., a computer hardware arrangement; a mobile storage configuration of a patient via a first electronic communication; a control application of the medical professional via a second electronic communication; a third electronic communication; a database which is at least one of an issuer database or a verifier database; wherein the retrieval and the verification of the credentials occur in a decentralized public key infrastructure such that no personal or health information is stored in a central database; an electronic program…including a digital schedule). Looking to the specifications, a computing device having a computer-accessible medium, a computer processor, a computer hardware arrangement is described at a high level of generality (¶ 0105-0112), such that it amounts to no more than mere instructions to apply the exception using generic computer components. Also, “a mobile storage configuration,” “a control application,” “electronic [communications],” and “an electronic program…including a digital schedule” amounts to no more than mere instructions to implement an abstract idea on a computer, and only generally links the use of a judicial exception to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “a database which is at least one of an issuer database or a verifier database” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing and providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “wherein the retrieval and the verification of the credentials occur in a decentralized public key infrastructure such that no personal or health information is stored in a central database” only invokes the decentralized public key infrastructure merely as a tool in its ordinary capacity to perform an existing process (i.e., retrieving and verifying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea.
Reevaluated under step 2B, the additional elements noted above do not provide “significantly more” when taken either individually or as an ordered combination. The use of a general purpose computer or computers (i.e., a computing device having a computer-accessible medium, a computer processor, a computer hardware arrangement) amounts to no more than mere instructions to apply the exception using generic computer components and does not impose any meaningful limitation on the computer implementation of the abstract idea, so it does not amount to significantly more than the abstract idea. Also, “a mobile storage configuration,” “a control application,” “electronic [communications],” and “an electronic program…including a digital schedule” amounts to no more than mere instructions to implement an abstract idea on a computer, and only generally links the use of a judicial exception to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “a database which is at least one of an issuer database or a verifier database” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing and providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “wherein the retrieval and the verification of the credentials occur in a decentralized public key infrastructure such that no personal or health information is stored in a central database” only invokes the decentralized public key infrastructure merely as a tool in its ordinary capacity to perform an existing process (i.e., retrieving and verifying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology and their collective functions merely provide a conventional computer implementation of the abstract idea. Furthermore, the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generally linking the abstract idea to a particular technological environment or field of use, as the courts have found in Parker v. Flook; similarly, the current invention merely limits the claimed calculations to the healthcare industry which does not impose meaningful limits on the scope of the claim. Therefore, there are no 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.
Dependent claims 2-3, 5, 7-11, 13, 28-31, 35 include all the limitations of the parent claims and further elaborate on the abstract idea discussed above and incorporated herein.
Claims 5, 7-10, 13, 31 further define the analysis and organization of data for the performance of the abstract idea and do not recite any additional elements. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Claims 2, 28 further recites the additional elements of “submitting an electronic program of the patient to the mobile storage configuration via a fourth communication” and “a fifth communication.” Claims 3, 29 further recites the additional elements of “a sixth communication,” “an electronic program,” and “submitting the modified electronic program by the medical professional to the mobile storage configuration in a seventh communication.” Claim 30 further recites the additional elements of “an electronic program.” The “electronic program” and other communications amounts to no more than mere instructions to implement an abstract idea on a computer, and only generally links the use of a judicial exception to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, functional limitations further define the analysis and organization of data for the performance of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims as a whole do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Claims 11, 35 further recites the additional elements of “an electronic dashboard” and “at least one computer processor.” The “ electronic dashboard” and “computer processor” amounts to no more than mere instructions to implement an abstract idea on a computer, and only generally links the use of a judicial exception to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, functional limitations further define the analysis and organization of data for the performance of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims as a whole do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Although the dependent claims add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. These information characteristics do not change the fundamental analogy to the abstract idea grouping of “Certain Methods of Organizing Human Activity,” and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as the independent claims.
Response to Arguments
Applicant's arguments filed 07/06/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed 07/06/2026.
In the remarks, Applicant argues in substance that:
Regarding the 101 rejections,
“the claims recite a specific technical architecture-including SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure-that improves computer network security by ensuring no personal health information is stored in a central database. Computer network security is a "technology or technical field," and improving how data is secured and verified on networks certainly constitutes an improvement to that technical field regardless of what originally "caused" the security problem. Moreover, the Examiner's characterization is not only legally incorrect under the applicable standard, but also factually incorrect. The Specification of the present application describes technical problems that are rooted in computer network architecture-specifically, the vulnerabilities inherent in centralized data storage systems-and provides a technical solution to those problems…The vulnerability of centralized databases to data breaches, unauthorized access, and single points of failure is a problem caused by the computing and network architecture-it arises from how computer systems store and manage data, not from human behavior or business practices. The recited decentralized public key infrastructure directly addresses this architectural vulnerability by ensuring that no personal health data is stored in a central database, which is a structural change to how the computer network operates. This is analogous to the claims found eligible in SRI Int'l, Inc…Similarly, amended independent claims 1, 14 and 27 recite a specific architectural improvement to computer network security through decentralized credential verification that ensures no personal health information is stored centrally…Applicants respectfully assert that the Examiner's analysis in the Final Office Action does precisely what such USPTO memoranda caution against: it evaluates each element in isolation, dismisses each as generic, and fails to consider whether the elements as an ordered combination confer a technological improvement…Similarly [to Example 41], amended independent claims 1, 14 and 27 integrate any alleged abstract idea into a practical application of securing healthcare communications through a decentralized credential verification using SSI credentials and a decentralized public key infrastructure…the claims need not invent the underlying technology to be patent-eligible. In Example 41, the applicant did not invent the RSA encryption algorithm, yet the claims were found eligible because they integrated the known RSA encryption algorithm concepts into a practical application of securing network communications…even if the decentralized public key infrastructure and SSI credential verification are existing technologies, amended independent claims 1, 14 and 27 integrate them into a specific process for securing healthcare communications through decentralized credential verification, which constitutes a practical application…the abstract idea grouping is irrelevant to the Prong Two analysis, which focuses on whether the additional elements integrate the exception into a practical application regardless of which grouping the abstract idea falls into…amended independent claims 1, 14 and 27 recite specific improvements over prior art systems by requiring SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure that ensures no personal health information is stored centrally. These are not merely generic computer components but a specific architectural improvement to how healthcare data is exchanged and verified on computer networks. Just as the claim in Example 42 is eligible because it recites a particular technical solution for standardizing and sharing medical records (rather than merely the abstract idea of managing medical information), amended independent claims 1, 14, and 27 recite a particular technical solution for securing healthcare communications through a decentralized credential verification (rather than merely the abstract idea of managing prescriptions)… These [amended] recitations tie the digital prescription management system to a physical medication packaging with tamper-evident technology…it involves specific physical structures (packaging with light- and air-sensitive ink scannable codes) and their interaction with the digital system (digital schedule procedures for electronic record of use tied to individual scannable codes on pills). This exemplary combination of physical tamper-evident packaging technology with the digital SSI credential verification system creates a cyber-physical system that goes well beyond generic computer implementation of an abstract idea.”
It is respectfully submitted that Examiner has considered Applicant’s arguments and does not find them persuasive. Examiner has attempted to address all of the arguments presented by Applicant; however, any arguments inadvertently not addressed are not persuasive for at least the following reasons:
In response to Applicant’s argument that (a) regarding the 101 rejections,
“the claims recite a specific technical architecture-including SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure-that improves computer network security by ensuring no personal health information is stored in a central database. Computer network security is a "technology or technical field," and improving how data is secured and verified on networks certainly constitutes an improvement to that technical field regardless of what originally "caused" the security problem. Moreover, the Examiner's characterization is not only legally incorrect under the applicable standard, but also factually incorrect. The Specification of the present application describes technical problems that are rooted in computer network architecture-specifically, the vulnerabilities inherent in centralized data storage systems-and provides a technical solution to those problems…The vulnerability of centralized databases to data breaches, unauthorized access, and single points of failure is a problem caused by the computing and network architecture-it arises from how computer systems store and manage data, not from human behavior or business practices. The recited decentralized public key infrastructure directly addresses this architectural vulnerability by ensuring that no personal health data is stored in a central database, which is a structural change to how the computer network operates. This is analogous to the claims found eligible in SRI Int'l, Inc…Similarly, amended independent claims 1, 14 and 27 recite a specific architectural improvement to computer network security through decentralized credential verification that ensures no personal health information is stored centrally…Applicants respectfully assert that the Examiner's analysis in the Final Office Action does precisely what such USPTO memoranda caution against: it evaluates each element in isolation, dismisses each as generic, and fails to consider whether the elements as an ordered combination confer a technological improvement…Similarly [to Example 41], amended independent claims 1, 14 and 27 integrate any alleged abstract idea into a practical application of securing healthcare communications through a decentralized credential verification using SSI credentials and a decentralized public key infrastructure…the claims need not invent the underlying technology to be patent-eligible. In Example 41, the applicant did not invent the RSA encryption algorithm, yet the claims were found eligible because they integrated the known RSA encryption algorithm concepts into a practical application of securing network communications…even if the decentralized public key infrastructure and SSI credential verification are existing technologies, amended independent claims 1, 14 and 27 integrate them into a specific process for securing healthcare communications through decentralized credential verification, which constitutes a practical application…the abstract idea grouping is irrelevant to the Prong Two analysis, which focuses on whether the additional elements integrate the exception into a practical application regardless of which grouping the abstract idea falls into…amended independent claims 1, 14 and 27 recite specific improvements over prior art systems by requiring SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure that ensures no personal health information is stored centrally. These are not merely generic computer components but a specific architectural improvement to how healthcare data is exchanged and verified on computer networks. Just as the claim in Example 42 is eligible because it recites a particular technical solution for standardizing and sharing medical records (rather than merely the abstract idea of managing medical information), amended independent claims 1, 14, and 27 recite a particular technical solution for securing healthcare communications through a decentralized credential verification (rather than merely the abstract idea of managing prescriptions)… These [amended] recitations tie the digital prescription management system to a physical medication packaging with tamper-evident technology…it involves specific physical structures (packaging with light- and air-sensitive ink scannable codes) and their interaction with the digital system (digital schedule procedures for electronic record of use tied to individual scannable codes on pills). This exemplary combination of physical tamper-evident packaging technology with the digital SSI credential verification system creates a cyber-physical system that goes well beyond generic computer implementation of an abstract idea”:
It is respectfully submitted that Applicant argues “the claims recite a specific technical architecture-including SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure-that improves computer network security by ensuring no personal health information is stored in a central database.” However, the claim limitations to which Applicant refer as the “SSI credentials” are interpreted as part of the rules or instructions for a person or persons to follow, with or without the aid of a computer, to provide a patient with a prescription and check the patient’s medication adherence in the manner described in the identified abstract idea, supra, which is the abstract idea and not additional elements to be interpreted in Step 2A, Prong Two. The claim limitations to which Applicant refer as the “issuer/verifier database” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing and providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, the “decentralized public key infrastructure” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., retrieving and verifying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “Computer network security is a "technology or technical field," and improving how data is secured and verified on networks certainly constitutes an improvement to that technical field regardless of what originally "caused" the security problem. Moreover, the Examiner's characterization is not only legally incorrect under the applicable standard, but also factually incorrect. The Specification of the present application describes technical problems that are rooted in computer network architecture-specifically, the vulnerabilities inherent in centralized data storage systems-and provides a technical solution to those problems…The vulnerability of centralized databases to data breaches, unauthorized access, and single points of failure is a problem caused by the computing and network architecture-it arises from how computer systems store and manage data, not from human behavior or business practices. The recited decentralized public key infrastructure directly addresses this architectural vulnerability by ensuring that no personal health data is stored in a central database, which is a structural change to how the computer network operates.” However, as stated previously in Office Action dated 03/05/2026, the aforementioned alleged improvements to the “problems” of “centralized data storage systems” are addressed by the invention of “a decentralized public key infrastructure,” which is an additional element that is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., retrieving and verifying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Examiner cannot find any problem caused by the technological environment to which the claims are confined, which per broadest reasonable interpretation of the claim in light of the specification, is a well-known, general purpose computer. The computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. While the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement or any physical improvement to the computer. See MPEP § 2106.04(d)(1) and 2106.05(a).
Applicant argues “This is analogous to the claims found eligible in SRI Int'l, Inc…Similarly, amended independent claims 1, 14 and 27 recite a specific architectural improvement to computer network security through decentralized credential verification that ensures no personal health information is stored centrally.” However, Applicant fails to specify how “amended independent claims 1, 14 and 27” are similar to the claims found eligible in “SRI Int'l, Inc.” Regardless, the claim limitations of the present invention are different from the claim limitations of the aforementioned case law. Even if the claim limitations of the present invention are similar to that of the claims found eligible (and they are not similar), the claimed inventions are fundamentally different in scope and examples should be interpreted based on the asserted fact patterns; as previously stated above, other fact patterns may have different eligibility outcomes, as is the case with the claims of the present invention. Unlike the claims found eligible in “SRI Int'l, Inc.,” the claims of the present invention do not recite “an improvement in computer network technology”; the claims of the present invention encompass a series of rules or instructions for a person or persons to follow, with or without the aid of a computer, to provide a patient with a prescription and check the patient’s medication adherence in the manner described in the identified abstract idea, supra, which amounts to managing personal behavior or relationships or interactions between people following rules or instructions within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. As stated previously above, the “decentralized public key infrastructure” to which Applicant seems to refer as providing the alleged improvement is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., retrieving and verifying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “Applicants respectfully assert that the Examiner's analysis in the Final Office Action does precisely what such USPTO memoranda caution against: it evaluates each element in isolation, dismisses each as generic, and fails to consider whether the elements as an ordered combination confer a technological improvement.” However, as stated in Office Action dated 03/05/2026 and above: “Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.”
Applicant argues “Similarly [to Example 41], amended independent claims 1, 14 and 27 integrate any alleged abstract idea into a practical application of securing healthcare communications through a decentralized credential verification using SSI credentials and a decentralized public key infrastructure…the claims need not invent the underlying technology to be patent-eligible. In Example 41, the applicant did not invent the RSA encryption algorithm, yet the claims were found eligible because they integrated the known RSA encryption algorithm concepts into a practical application of securing network communications…even if the decentralized public key infrastructure and SSI credential verification are existing technologies, amended independent claims 1, 14 and 27 integrate them into a specific process for securing healthcare communications through decentralized credential verification, which constitutes a practical application…the abstract idea grouping is irrelevant to the Prong Two analysis, which focuses on whether the additional elements integrate the exception into a practical application regardless of which grouping the abstract idea falls into.” However, as stated in Office Action dated 03/05/2026, the claim limitations of the present invention are different from the claim limitations of the aforementioned case law. Even if the claim limitations of the present invention are similar to that of the claims found eligible (and they are not similar), the claimed inventions are fundamentally different in scope and examples should be interpreted based on the asserted fact patterns; as previously stated above, other fact patterns may have different eligibility outcomes, as is the case with the claims of the present invention. Furthermore, the claims of the present invention covers managing personal behavior or relationships or interactions between people within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and not the “Mathematical Concepts” grouping of abstract ideas like the claims of Example 41, which is another reason why the claim limitations of the present invention are different from the claim limitations of the aforementioned case law and the claimed inventions should be interpreted based on the asserted fact patterns. Regardless, the claim limitations to which Applicant refer as the “SSI credentials” are interpreted as part of the rules or instructions for a person or persons to follow, with or without the aid of a computer, to provide a patient with a prescription and check the patient’s medication adherence in the manner described in the identified abstract idea, supra, which is the abstract idea and not additional elements to be interpreted in Step 2A, Prong Two. The “decentralized public key infrastructure” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., retrieving and verifying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “amended independent claims 1, 14 and 27 recite specific improvements over prior art systems by requiring SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure that ensures no personal health information is stored centrally. These are not merely generic computer components but a specific architectural improvement to how healthcare data is exchanged and verified on computer networks.” However, Applicant fails to specify what the “specific improvements over prior art systems” are and how “SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure” improve “how healthcare data is exchanged and verified on computer networks.” As stated previously above, the claim limitations to which Applicant refer as the “SSI credentials” are interpreted as part of the rules or instructions for a person or persons to follow, with or without the aid of a computer, to provide a patient with a prescription and check the patient’s medication adherence in the manner described in the identified abstract idea, supra, which is the abstract idea and not additional elements to be interpreted in Step 2A, Prong Two. The claim limitations to which Applicant refer as the “issuer/verifier database” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing and providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, the “decentralized public key infrastructure” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., retrieving and verifying data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Examiner cannot find any problem caused by the technological environment to which the claims are confined, which per broadest reasonable interpretation of the claim in light of the specification, is a well-known, general purpose computer. The computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. While the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement or any physical improvement to the computer. See MPEP § 2106.04(d)(1) and 2106.05(a).
Applicant argues “Just as the claim in Example 42 is eligible because it recites a particular technical solution for standardizing and sharing medical records (rather than merely the abstract idea of managing medical information), amended independent claims 1, 14, and 27 recite a particular technical solution for securing healthcare communications through a decentralized credential verification (rather than merely the abstract idea of managing prescriptions).” However, Example 42 was not found to be eligible simply “because it recites a particular technical solution for standardizing and sharing medical records (rather than merely the abstract idea of managing medical information)”; as noted by Applicant, “Example 42, claim 1 was found eligible because it recited "a specific improvement over prior art systems by allowing remote users to share information in real time in a standardized format regardless of the format in which the information was input by the user."” As stated previously above, Applicant fails to specify what the “specific improvements over prior art systems” are and how “SSI credentials, an issuer/verifier database, and a decentralized public key infrastructure” improve “how healthcare data is exchanged and verified on computer networks.” Furthermore, the claim limitations of the present invention are different from the claim limitations of the aforementioned case law. Even if the claim limitations of the present invention are similar to that of the claims found eligible (and they are not similar), the claimed inventions are fundamentally different in scope and examples should be interpreted based on the asserted fact patterns; as previously stated above, other fact patterns may have different eligibility outcomes, as is the case with the claims of the present invention.
Applicant argues “These [amended] recitations tie the digital prescription management system to a physical medication packaging with tamper-evident technology…it involves specific physical structures (packaging with light- and air-sensitive ink scannable codes) and their interaction with the digital system (digital schedule procedures for electronic record of use tied to individual scannable codes on pills). This exemplary combination of physical tamper-evident packaging technology with the digital SSI credential verification system creates a cyber-physical system that goes well beyond generic computer implementation of an abstract idea.” However, the claim limitations to which Applicant refer as “submitting an electronic program including a digital schedule defining procedures for the submission of an electronic record regarding use of medication that includes one or more pills” are interpreted as part of the rules or instructions for a person or persons to follow, with or without the aid of a computer, to provide a patient with a prescription and check the patient’s medication adherence in the manner described in the identified abstract idea, supra, which is the abstract idea and not additional elements to be interpreted in Step 2A, Prong Two. The claims of the present invention do not actively recite the “physical medication packaging” and the claim limitations of “whereas each pill includes an individual scannable code, and whereas the scannable code is composed of an ink that is sensitive to at least one of light or air such that the scannable code fades when the packaging revealing the scannable code is opened” only further define the analysis and organization of data for the performance “submitting an electronic program including a digital schedule defining procedures for the submission of an electronic record regarding use of medication,” which is part of the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. The “program” being “electronic” and the “schedule” being “digital” amounts to no more than mere instructions to implement an abstract idea on a computer, and only generally links the use of a judicial exception to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Thus, the claims are directed to an abstract idea and the claim as a whole does not integrate the recited judicial exception into a practical application.
Reevaluated under step 2B, the additional elements noted above do not provide “significantly more” when taken either individually or as an ordered combination. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claim as a whole does not amount to significantly more than the judicial exception.
Thus, Examiner maintains the 101 rejections of claims 1-3, 5, 7-11, 13-14, 27-31, 35, which have been updated to address Applicant’s remarks and to comply with the 2019 Revised Patent Subject Matter Eligibility Guidance and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence in the above Office Action.
Conclusion
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/EMILY HUYNH/Primary Examiner, Art Unit 3683
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