Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The Amendment filed March 18, 2026 has been entered. Claims 2, 4, 7, 10, and 13 are newly cancelled. Claims 20-31 are newly added. Claims 1, 3, 5, 6, 8, 9, 11, 12, and 14-31 are pending and are rejected for the reasons set forth below.
Claim Objections
3. The claims are objected to because of the following informalities, and the following is suggested to overcome the informalities and to improve claim clarity:
Claim 12 recites the limitations “returning supplemental benefit response data usable to generate the supplemental benefit payment request only upon pre-validation; and transmitting the at least one supplemental benefit to the pharmacy management computer system including information for generating a supplemental benefits payment request…” It appears that the applicant intended to introduce the term “a supplemental benefit payment request” in the first limitation listed above. These limitations should be amended to properly introduce this term in the claim. For example, the claims could be amended to state, “returning supplemental benefit response data usable to generate a supplemental benefit payment request only upon pre-validation; and transmitting the at least one supplemental benefit to the pharmacy management computer system including information for generating the supplemental benefits payment request…”
Appropriate correction or clarification is requested.
Claim Rejections - 35 USC §112
4. The following is a quotation of 35 U.S.C. §112(b):
(b) CONCLUSION —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. §112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claims 9-11 and 22-31 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 pre-AIA the applicant regards as the invention.
Claim 9 recites the limitation, “transmitting the adjudicated coupon payment value and the coupon processing request from the pharmacy claims switching system to the pharmacy management system for submittal to the payers by the pharmacy management system.” There is insufficient antecedent basis for this limitation in the claim. Specifically, the examiner notes that the term “pharmacy claims switching system” is not introduced in the claim before it is referred to in this limitation. For the purpose of examination, this limitation has been interpreted as stating, “transmitting the adjudicated coupon payment value and the coupon processing request from a pharmacy claims switching system to the pharmacy management system for submittal to the payers by the pharmacy management system.” Since claims 10 and 11 include the respective limitations of claim 9, these claims are rejected for the grounds and rationale used to reject claim 9. Appropriate correction or clarification of these claims is required. No new matter may be added.
Claim 11 recites the limitation, “The system of claim 9, wherein…” However, claim 9 does not recite a system claim. Rather, claim 9 recites a method. It appears that claim 11 was intended to depend from the method of claim 9. However, appropriate clarification of this claim is required. For the purpose of examination, claim 11 has been interpreted as stating, “The method of claim 9, wherein…”
Claim 22 recites the limitation, “wherein the adjudicated supplemental benefits payment value is transmitted to a reconciliation computer system…” It is unclear whether the “reconciliation computer system” introduced to in claim 22 refers to the same reconciliation computer system introduced in claim 20 (e.g., a reconciliation computer system implemented on the payment request adjudicator computer system). It appears that these terms refer to the same computer system. However, the claims should be amended to clarify how the terms are related. For the purpose of examination, claim 22 has been interpreted as stating, “wherein the adjudicated supplemental benefits payment value is transmitted to the reconciliation computer system…” However, appropriate correction or clarification of this claim is required. No new matter may be added.
Claim 23 recites the limitation, “The system of claim 1, further including a pharmacy management system (PMS) configured to…” This limitation appears to introduce a “pharmacy management system” to the system of claim 1. However, the term “a pharmacy management system” has already been introduced as part of the system of claim 1. Therefore, it is unclear is claim 23 is intended to introduce a second pharmacy management system, or further limit the functionality of the pharmacy management system recited in claim 1. For the purpose of examination, claim 23 has been interpreted as if it further limits the functionality of the pharmacy management of claim 1. For example, claim 23 has been interpreted as stating, “The system of claim 1, wherein the pharmacy management system is further configured to…” Since claims 24-30 include the respective limitations of claim 23, these claims are rejected for the grounds and rationale used to reject claim 23. Appropriate correction or clarification of these claims is required. No new matter may be added.
Claim 27 recites the limitation, “The system of claim 23, wherein the reconciliation subsystem's nightly file ingestion adjusts subsequent coupon max amounts…” There is insufficient antecedent basis for this limitation in the claims. Specifically, the examiner notes that claims 1 and 23, from which claim 27 depend, do not recite a process for performing a “nightly file ingestion” by a “reconciliation subsystem.” Rather, the process for performing a nightly file ingestion is recited in claim 12 (e.g., “the reconciliation computer system ingesting a nightly, pipe-delimited PBM transaction file comprising…”). For the purpose of examination, this limitation has been interpreted as stating, “The system of claim 23, wherein the reconciliation system performs a nightly file ingestion which adjusts subsequent coupon max amounts…” However, appropriate correction or clarification of this claim is required. No new matter may be added.
Claim 28 recites the limitation, “The system of claim 23, wherein message flow constraints reduce the number of messages and steps across the PMS-switch-PBM network…” There is insufficient antecedent basis for this limitation in the claims. Claims 1 and 23, from which claim 28 depend, do not introduce the term, “PMS-switch-PBM network.” In fact, claims 1 and 23 do not appear to explicitly recite the use of any kind of network. It appears that the “PMS-switch-PBM network” refers to “computer network 100” described in Paragraph 75 of the applicant’s specification. However, appropriate introduction of this network in the claims is required. For the purpose of examination, claim 28 has been interpreted as stating, “The system of claim 23, wherein message flow constraints reduce the number of messages and steps across a computer network…” However, appropriate correction or clarification of this claim is required. No new matter may be added.
Claim 30 recites the limitation, “The system of claim 23, wherein the eCoupon processing system logs standards-compliant pharmacy claim transaction data for reconciliation with dispensing decisions.” There is insufficient antecedent basis for this limitation in the claim. Claims 1 and 23, from which claim 30 depends, do not introduce the term “eCoupon processing system” before it is referred to in claim 30. Claim 33 recites a limitation for receiving coupon response including an eCoupon BIN, PCN, Group, Name, Max Amount, and Print File.” However, the claims do not mention the use of an eCoupon processing system.For the purpose of examination claim 30 has been interpreted as stating, “The system of claim 23, wherein an eCoupon processing system logs standards-compliant pharmacy claim transaction data for reconciliation with dispensing decisions.” However, appropriate correction or clarification of this claim is required. No new matter may be added.
Claim 31 recites the limitation, “The system of claim 12, wherein…” However, claim 12 does not recite a system claim. Rather, claim 12 was amended to recite a method. Therefore, it is unclear if the applicant intended for claim 31 to depend from the method of claim 12, the system of claim 1, or another claim. For the purpose of examination, claim 31 has been interpreted as stating, “The method of claim 12, wherein…” However, appropriate correction or clarification of this claim is required. No new matter may be added.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1, 3, 5, 6, 8, 9, 11, 12, and 14-31 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and does not include an inventive concept that is “significantly more” than the judicial exception under the January 2019 and October 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Step 1
8. Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 9, 11, 12, 14-22, and 31) and a machine (claims 1, 3, 5, 6, 8, and 23-30). Therefore, we proceed to step 2A, Prong 1.
Step 2A, Prong 1
9. Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability.
Claim 12 recites the abstract idea of:
A computer-implemented method for obtaining at least one supplemental benefit to be applied to a transaction for pharmacy goods or services using [[a computer processor to execute instructions stored in non-transient memory]], comprising:
receiving transaction information at [[a supplemental benefits dispensing computer system]] for a transaction pertaining to filling a prescription or providing services from [[a pharmacy management computer system]],
determining at least one available supplemental benefit in response to the transaction where the transaction information satisfies criteria in a business rules set for each of the at least one supplemental benefit, wherein the available supplemental benefits has an unknown final redemption value, and returning supplemental benefit response data usable to generate the supplemental benefit payment request only upon pre-validation; and
transmitting the at least one supplemental benefit to [[the pharmacy management computer system]] including information for generating a supplemental benefits payment request that includes ordering, formatting and routing information; and
receiving the supplemental benefits payment request at [[a supplemental benefit processing computer system acting as a clearinghouse]], the supplemental benefits payment request including transaction payment information and the at least one supplemental benefit for the transaction and routing the supplemental benefits payment request, directly or via [[a pharmacy claims switching system]], based at least on routing identifiers including BIN/PCN/Group or successor routing identifiers;
transmitting the supplemental benefits payment request to [[a pharmacy benefits payment request adjudicator computer system]] that determines an adjudicated supplemental benefits payment value based at least in part on the transaction payment information
receiving a response to the supplemental benefits payment request from [[the pharmacy benefits payment request adjudicator computer system]], the response including the adjudicated supplemental benefits payment value, and
transmitting the adjudicated supplemental benefits payment value to [[the pharmacy management computer system]] to update pricing for the transaction along with purchaser notifications data about application of the supplemental benefits and additional information from the supplemental benefits payer.
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: certain methods of organizing human activity, which includes fundamental economic practices or principles and/or commercial interactions (e.g., facilitating payments for medications at a pharmacy).
Step 2A, Prong 2
10. Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which claim 12 is directed does not include limitations or additional elements that integrate the abstract idea into a practical application.
Besides reciting the abstract idea, the limitations of claim 12 also recite generic computer components (e.g., a computer processor to execute instructions stored in non-transient memory, a supplemental benefits dispensing computer system, a pharmacy management computer system, a supplemental benefit processing computer system acting as a clearinghouse, a pharmacy claims switching system, a pharmacy benefits payment request adjudicator computer system, and a reconciliation computer system implemented on the payment request adjudicator computer system). In particular, the recited features of the abstract idea are merely being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See e.g., MPEP §2106.05(f)). Therefore, these additional elements are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. In other words, the additional elements are simply used as tools to perform the abstract idea.
Claim 12 also recites the limitation, “the transaction information being formatted as a structured, machine-readable request including XML or JSON and including at least routing identifiers including BIN/PCN/Group or successor routing identifiers, and one or more of a pharmacy identifier, a purchaser identifier, or prescription information.” This limitation simply states that the transaction information is formatted into a request using industry standard formatting structures. Such limitations do not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea. Rather, such limitations amount to no more than merely applying generic, existing formatting techniques to implement the abstract idea on a computer.
Claim 12 also recites the following limitations:
wherein the pharmacy management computer system stores a record of the supplemental benefits payment request and returned payment for financial audit and reconciliation purposes,
wherein the pharmacy management computer system stores a record of the supplement benefits payment request and returned payment for financial audit and reconciliation purposes, and
the reconciliation computer system ingesting a nightly, pipe-delimited PBM transaction file comprising at least a PDN Processor ID, BIN, PCN, Group, transaction type, third-party pay amount, transaction date-time, and a list of approved NABP numbers to adjust budget and max-amount parameters used by the rule sets.
These limitations simply state that the pharmacy management system stores information regarding the supplemental benefits payment request and returned payment for financial audit and reconciliation purposes, However, the claims do not provide significant technical detail regarding how the data is stored. Therefore, such limitations amount to no more than merely storing data, which is a form of insignificant extra-solution activity (See MPEP 2016.05(d): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363). Similarly, simply stating that the reconciliation computer system “ingests” a nightly transaction file amounts to no more than merely storing data. The claims do not provide significant technical detail how the data is ingested. Therefore, such limitations amount to no more than merely storing data for analysis.
Claim 12 also recites the following limitation:
wherein… reconciliation information about the adjudicated supplemental benefits is transmitted from the supplemental benefit processing computer system to a reconciliation computer system implemented on the payment request adjudicator computer system,
wherein… information about the adjudicated benefits payment is transmitted from the supplemental benefit processing computer system computer to a reconciliation computer system implemented on the payment request adjudicator computer system.
These limitations simply states that information is transmitted between the supplemental benefit processing computer and a reconciliation computer system. However, the claims do not provide significant technical data regarding how the information is transmitted between the computer systems. Therefore, these limitations amount to no more than merely receiving/transmitting data, which is a form of insignificant extra-solution activity (See MPEP 2106.05(g): OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2024)).
Thus, claim 12 does not include any limitations or additional elements that integrate the abstract idea into a practical application. As a result, claim 12 is directed to an abstract idea.
Step 2B
11. Under the 2019 PEG step 2B analysis, the additional elements of claim 12 are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the recited additional elements (e.g., a system for obtaining at least one supplemental benefit to be applied to a transaction for pharmacy goods or services using a computer processor to execute instructions stored in non-transient memory, a supplemental benefits dispensing system implemented on a first computer, a pharmacy management system implemented on a second computer, a supplemental benefit processing system acting as a clearinghouse that is implemented on a second computer, a pharmacy benefits payment request adjudicator system implemented on a third computer system, and a reconciliation system implemented on the third computer), do not amount to an innovative concept since, as stated above in the Step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming (See e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality such that they are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved (See e.g., MPEP 2106.05(I)(A)); (See also applicant’s Specification at least Paragraph 36).
Additionally, the following limitation identified above as insignificant extra-solution activity (merely storing data) has been reevaluated under Step 2B:
wherein the pharmacy management computer system stores a record of the supplemental benefits payment request and returned payment for financial audit and reconciliation purposes,
wherein the pharmacy management computer system stores a record of the supplement benefits payment request and returned payment for financial audit and reconciliation purposes, and
the reconciliation computer system ingesting a nightly, pipe-delimited PBM transaction file comprising at least a PDN Processor ID, BIN, PCN, Group, transaction type, third-party pay amount, transaction date-time, and a list of approved NABP numbers to adjust budget and max-amount parameters used by the rule sets.
As stated in MPEP 2106.05(d), a factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity (Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)). In view of this requirement set forth by Berkheimer, this limitation does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of merely storing data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363).
Additionally, the following limitation identified above as insignificant extra-solution activity (merely receiving/transmitting data) has been revaluated in Step 2B:
wherein… reconciliation information about the adjudicated supplemental benefits is transmitted from the supplemental benefit processing computer system to a reconciliation computer system implemented on the payment request adjudicator computer system,
wherein… information about the adjudicated benefits payment is transmitted from the supplemental benefit processing computer system computer to a reconciliation computer system implemented on the payment request adjudicator computer system.
In view of the requirement set forth by Berkheimer, these limitations do not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea, because the courts have found the concept of merely receiving/transmitting data to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)).
Thus, claim 12 does not recite any additional elements that amount to “significantly more” than the abstract idea.
Additional Independent Claims
12. Independent claims 1, 9, and 20 are similarly rejected under 35 U.S.C. 101 for the reasons described below:
Claim 1 recites limitations that are substantially similar to those recited in claim 12. However, the primary difference between claims 1 and 12 is that claim 1 is drafted as a system rather than as a method. Similarly, as described above regarding claim 12, claim 1 recites generic computer components (e.g., a computer processor to execute instructions stored in non-transient memory, a supplemental benefits dispensing system implemented on a first computer, a pharmacy management system, a supplemental benefit processing system acting as a clearinghouse that is implemented on a second computer, a pharmacy benefits payment request adjudicator system implemented on a third computer system, and a reconciliation system implemented on the third computer) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 12 and 1, claim 1 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Claim 9 recites limitations that are substantially similar to those recited in claim 12. However, the primary difference between claims 9 and 12 is that claim 9 recites the use of an “electronic coupon” rather than a “supplemental benefit.” However, this distinction does not integrate the abstract idea into a practical application, or cause the claims to amount to significantly more than the abstract idea. Similarly, as described above regarding claim 12, claim 9 recites generic computer components (e.g., a computer processor to execute instructions stored in non-transient memory, a pharmacy management system, a coupon claim request at a coupon processing system acting as a clearinghouse, and a pharmacy claims switching system) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 12 and 9, claim 9 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Claim 20 recites limitations that are substantially similar to those recited in claim 12. However, the primary difference between claims 20 and 12 is that claim 20 is simply a broadly drafted version of claim 12. Claim 20 simply omits several limitations recited in amended claim 12. Similarly, as described above regarding claim 12, claim 20 recites generic computer components (e.g., a computer processor to execute instructions stored in non-transient memory, a supplemental benefits dispensing computer system, a pharmacy management computer system, a supplemental benefit processing computer system acting as a clearinghouse, a pharmacy benefits payment request adjudicator computer system, and a reconciliation computer system implemented on the payment request adjudicator computer system) that are simply being used as a tool (“apply it”) to implement the abstract idea. Therefore, since the same analysis should be used for claims 12 and 20, claim 20 is not patent eligible (See Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)).
Dependent Claims
13. Dependent claims 3, 5, 6, 8, 11, 14-19, and 21-31 are also rejected under 35 U.S.C. 101 for the reasons described below:
Claims 3 and 14 simply provide further definition to the “business rules” recited in claims 1 and 12. Simply stating that the business rules comprise various criteria does not provide an indication of an improvement to any technology or technological field. Rather, this merely defines the type of rules and criteria used to determine the supplemental benefit.
Claims 5, 16, and 21 simply provide further definition to the “supplemental benefit information” recited in claims 1 and 12. Simply stating that the supplemental benefit information comprises a supplemental benefit adjudication order and format and routing instructions does not provide an indication of an improvement to any technology or technological field. Rather, this merely defines the type of information included in the supplemental benefit information. Additionally, claim 16 recites the limitation, “the adjudication order being stored as an adjudication-order marker in the pharmacy management computer system to control subsequent reversal handling, the format conforming to an industry pharmacy claims telecommunications standard (such as NCPDP D.0 or F6) that defines adjudication request/response and reversal semantics (including B1-type and B2-type messages), and the routing being determined by routing identifiers including BIN/PCN/Group or successor routing identifiers.” This limitation simply states that the adjudication order is stored in the pharmacy management computer system. Simply defining the industry standards which are used to store the information does not amount to an improvement to any technology or technological field. Rather, this amounts to no more than merely applying existing standards to the process of storing the order data. Therefore, this limitation amounts to no more than merely storing data, which is a form of insignificant extra-solution activity (See MPEP 2016.05(d): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363).
Claims 6, 17, and 18 simply provide further definition to the “adjudicated supplemental benefit payment value” recited in claims 1 and 12. Simply stating that the adjudicated supplemental benefit payment value is generated based on a third-party payment value, and that the adjudicated supplemental benefit payment value is received by the pharmacy management system, does not provide an indication of an improvement to any technology or technological field. Rather, this merely defines the type of information included in the adjudicated supplemental benefit payment value, and the destination where this information is received.
Claims 8, 11, 19, and 22 adjudicated supplemental benefit payment value recited in claims 1, 9, and 12. Simply stating that the adjudicated supplemental benefit payment value is transmitted to a reconciliation system does not provide an indication of an improvement to any technology or technological field. Rather, this merely defines the destination where this information is transmitted.
Claim 15 simply provides further definition to the process of transmitting the supplemental benefit to the pharmacy management system recited in claim 12. Simply stating that this process comprises transmitting a printable version of the supplemental benefit does not provide an indication of an improvement to any technology or technological field. Rather, this merely defines the type of information transmitted to the pharmacy management system. Similarly, simply stating that the purchaser notification is “programmatically generated” and “automatically collated with a prescription label” does not integrate the abstract idea into a practical application. The claims do not provide any technical detail regarding how these processes are performed. Therefore, such limitations amount to no more than merely applying generic computer-related components to automate the abstract idea.
Claim 23 simply further refines the abstract idea because it recites various process steps (e.g., generating and transmitting requests, receiving information associated with the supplemental benefit, generating purchaser notifications, etc.) that fall under the category of certain methods of organizing human activity, as described above regarding claim 12. Claim 23 recites significant detail regarding the standards and formats used to receive and transmit information. However, such details do not provide any indication of an improvement to any technology or technological field. As described above, regarding claims 5, 16, and 21, simply defining the industry standards which are used to receive, transmit, and store the various information used within the method does not amount to an improvement to any technology or technological field. Rather, this amounts to no more than merely applying existing standards to the process of receiving, transmitting, and storing the various information. Additionally, claim 23 recites the limitations, “whereby (a) coupon claim rejections are eliminated by enforcing a deterministic B 1-type/B2-type flow with automated reversal handling, (b) the number of standards-compliant transactions required per coupon adjudication is reduced, improving network response time and reducing overhead, and (c) supplemental benefits are adjudicated for cash-pay transactions without insurer enrollment.” However, these limitations simply recite intended results of the claimed methods. The benefits identified in these limitations are not achieved through an improvement to any technology or technological field. Rather, these benefits are simply achieved through an improvement in the abstract idea itself, and the application of generic computer-related technology and existing formatting standards. Therefore, such limitations do not integrate the abstract idea into a practical application or amount to significantly more than the abstract idea.
Claim 24 simply provides further description regarding how the pharmacy managements system manages claim responses. Simply stating that the PMS treats a third-party pay amount of $0.00 as a success does not provide any indication of an improvement to any technology or technological field. Rather, this simply further refines the abstract idea.
Claim 25 simply states that the machine-readable request includes a “coupon request flag,” and that all information is bundled into a specified format before transmission. However, the claims do not provide any technical detail regarding the purpose and/or functionality of the coupon request flag. Therefore, this limitation amounts to no more than merely defining the type of information included in the request. Similarly, the claims do not provide any technical detail regarding the “specified format.” Therefore, this limitation amounts to no more than merely applying a generic format to the information included in the request.
Claim 26 simply states that cash-pay transactions are processed without the use of an insurance plan. However, such limitations do not provide an indication of an improvement to any technology or technological field. Rather, this limitation simply defines the conditions under which cash-pay transactions are processed.
Claim 27 simply further refines the abstract idea because it recites a process step (e.g., adjusting subsequent coupon max amounts to align recommended values with actual third-party payments) that fall under the category of certain methods of organizing human activity, as described above regarding claim 12.
Claim 28 simply claims as intended result of the claimed methods (e.g., improving processing speed and reducing network overhead). As described above regarding claim 23, the benefits identified in these limitations are not achieved through an improvement to any technology or technological field. In other words, the claims do not recite any limitation which represents how the claimed benefits are achieved through a technical improvement to a technology or technological field. Rather, the claims simply state that improved processing speed and reduced network overhead are benefits of the method.
Claim 29 simply states that only a PMS configured with the required fields and identification values can generate a standards-compliant pharmacy claims telecommunications payload. However, the claims do not provide any technical detail regarding how the “required fields and identification values” are implemented to restrict the generation of the telecommunications payloads. Therefore, such limitations simply define the conditions under which the PMS may generate communications, and do not provide an indication of a technical improvement to any technology or technological field.
Claim 30 simply states that an eCoupon processing system logs/stores standards-compliant pharmacy claim transaction data. However, the claim does not provide any technical detail regarding how this data is logged/stored. Therefore, such limitations amount to no more than merely storing data, which is a form of insignificant extra-solution activity (See MPEP 2016.05(d): Versata Dev. Group, Inc. v. SAP Am., Inc., 793F.3d 1306, 1334 (Fed. Cir. 2015); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d at 1363).
Claim 31 simply further refines the abstract idea because it recites a process step (e.g., generating a purchaser notification) that fall under the category of certain methods of organizing human activity, as described above regarding claim 12. Simply stating that the notification is only generated when a third-party pay amount is greater than $0.00 does not provide an indication of an improvement to any technology or technological field. Rather, this simply defines the conditions under which the notification is generated.
Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Response to Arguments
14. Applicant’s arguments filed March 18, 2026 have been fully considered.
Arguments Regarding 35 U.S.C. 112(b)
15. The prior rejections applied to claims 1-19 under 35 U.S.C. 112(b) have mostly been withdrawn in response to the applicant’s claim amendments and arguments. However, the examiner has maintained the rejection of claim 9 regarding the term “the pharmacy claims switching system.” As noted above, claim 9 recites the term “the pharmacy claims switching system,” which is not properly introduced before it is referred to in the claim. Additionally, the newly added claims and claim amendments present numerous additional issues under 35 U.S.C. 112(b). The applicant is directed to the rejection above for further detail.
Arguments Regarding 35 U.S.C. 101
16. Applicant’s arguments (Amendment, Pgs. 14-20) concerning the prior rejection of the claims under 35 USC §101, including supposed deficiencies in the rejection, are not persuasive for the following reasons. Under the prior and current 101 analysis under 2019 PEG, the amended claims recite and are directed to a patent ineligible abstract idea, without something significantly more, for the reasons given above after consideration of the claimed features and elements. The abstract idea has been restated herein in line with the 2019 PEG guidance and the amended claims. Applicant is directed to the above full Alice/Mayo analysis in the 101 rejection.
Additionally, on page 15 of their remarks, the applicant argues, “First, amended claim 12 recites a particular machine-implemented integration between a pharmacy management computer system and a supplemental-benefits dispensing and processing architecture. Claim 12 requires receiving transaction information formatted as a structured, machine-readable request (e.g., XML or JSON) including at least routing identifiers (BIN/PCN/Group or successor routing identifiers) and one or more of a pharmacy identifier, a purchaser identifier, or prescription information; determining an available supplemental benefit according to a business rules set; and returning response data usable to generate a supplemental benefits payment request only upon pre-validation. These are industry mandated, machine readable, protocol specific transaction formats, and their construction, routing, and parsing are technical operations rather than business concepts.” Similarly, on pages 15 and 16 of their remarks, the applicant argues, “Second, the pending claims further recite protocol- and workflow-specific pharmacy management system behavior implemented as machine logic. For example, new system claim 23 recites… These are computer-implemented state transitions and protocol- processing operations that improve operation of a pharmacy management system, rather than abstract economic practices.” The examiner respectfully disagrees. As noted in the 101 rejection above, simply stating that the method comprises steps for implementing industry standards does not amount to an improvement to any technology or technological field. Rather, such limitations amount to no more than merely applying generic, existing formatting techniques to implement the abstract idea on a computer. In other words, simply applying known systems for structuring and exchanging data between systems does not integrate the abstract idea into a practical application, or amount to significantly more than the abstract idea.
Additionally, on page 15 of their remarks, the applicant argues, “Additionally, amended claim 12 does not set forth or describe an abstract idea since the claims describe a system that solves computer centric problems. As described in the specification, the computer-implemented system reduces messaging and processing overhead and improves PMS. Reducing the messaging overhead provides improvements in the functioning of the underlying computer system, not improvements in business rules.” The examiner respectfully disagrees. Specifically, the examiner notes that simply stating that the claimed systems and methods reduce messaging and processing overheads does not amount to an improvement in the functioning of a computer. Claim 12 does not recite an improvement to any technology or technological field which produces the benefits identified by the applicant. Rather, the claim simply recites the use of generic computer-related systems and generic industry standards to perform the abstract idea on a computer. Therefore, the benefits identified by the applicant are simply achieved through the application of generic computer-based technology rather than an improvement to the technology itself.
Additionally, on page 16 of their remarks, the applicant argues, “Third, the claims recite technical reliability mechanisms that reduce failed or rejected processing in a standards-routed environment. Claim 12 requires pre-validation gating (returning response data usable to generate a supplemental benefits payment request only upon pre- validation) and routing based at least on BIN/PCN/Group (or successors). These are concrete controls on message generation and routing that improve end-to-end processing reliability.” The examiner respectfully disagrees. Specifically, the examiner notes that simply stating that the method includes a pre-validation process does not provide any indication of an improvement to any technology or technological field. The claims do not provide any technical detail regarding how the pre-validation is performed. Similarly, simply stating that the requests are routed based on “BIN/PCN/Group or successor routing identifiers” does not provide any indication of an improvement to message generation and routing technology. Rather, this simply defines the type of information which is used to route the requests.
Additionally, on page 17 of their remarks, the applicant argues, “One such practical application is the provision of a computer-implemented system that provides deterministic, always successful B1-type transaction flows. Traditional coupon systems face switch rejections and multi message retries. However, the recited system (i) dispenses supplemental benefits only after rule-based validation, (ii) ensures that the switching and adjudication flow returns a successful B1-type response (even when the benefit amount is $0.00), and (iii) automatically reverses state upon receiving a B2-type message. This combination produces a different computer result by reducing (or eliminating) supplemental-benefit claim failures. Another practical application is reducing standards compliant transaction load (a direct system performance gain). As described, implementation of the recited limitations reduces the number of messages, the number of steps, and overall network overhead. Because pharmacies may be charged per transaction, this provides economic benefit, but more importantly, it constitutes a technical reduction in protocol level traffic.” The examiner respectfully disagrees. Specifically, the examiner notes that such limitations do not provide an indication of a technical improvement to transaction flow management systems. Rather, such limitations simply define the rules and conditions under which the transactions are processed. While the examiner recognizes that these processes may provide certain benefits (e.g., reducing the number of messages required for processing requests), these benefits are not achieved through a technical improvement to any technology or technological field. Rather, the claims simply recite improvements to the abstract idea itself.
Additionally, on pages 17 and 18 of their remarks, the applicant argues, “The computer implemented system further claims standards-aware payload generation and routing that software must perform… This cannot be performed by a human and is not accomplished by a generic computer absent implementation of protocol- specific formatting, routing, and parsing rules.” The examiner respectfully disagrees. Specifically, the examiner notes that whether a process can be performed by the human mind is not a consideration for claims that recite certain methods of organizing human activity. Rather, this is a consideration for claims that are determined to recite mental processes. Additionally, the claims do not provide any indication that the formatting and routing operations are performed by anything other than generic computer-related components using generic industry standard techniques. The implementation of such generic computer-related technologies does not prevent the claims from reciting an abstract idea and/or integrate the abstract idea into a practical application.
Additionally, on page 18 of their remarks, the applicant argues, “Finally, the pending claims further recite closed-loop feedback that updates rule-set parameters using reconciliation data. For example, new system claim 23 recites a reconciliation subsystem configured to ingest a PBM transaction file and update budget and max-amount parameters used by the rule sets, and claim 27 further ties such ingestion to adjustment of subsequent max amounts to constrain future dispensing decisions. This is a dynamic, machine- driven feedback control loop implemented in software, not an abstract concept.” The examiner respectfully disagrees. Specifically, the examiner notes that claims 23 and 27 do not provide any technical detail regarding how the file ingestion process is performed. As noted in the 112(b) rejections above, claims 1 and 23, from which claim 27 depends, do not even mention a file ingestion process. Rather, this process is described in claim 12. However, the examiner notes that simply stating that the file ingestion process involves adjusting subsequent coupon amounts does not provide any indication of an improvement to any technology or technological field. Rather, this simply further refines the abstract idea.
Therefore, for these reasons and the reasons given above, the rejection of these claims under 35 U.S.C. 101 is maintained.
Citation of Pertinent Prior Art
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Brofman (U.S. Pre-Grant Publication No. 20060085231): Describes a method and system for distribution of, and payment for, pharmaceutical products. In particular, the invention relates to a method and system which improves pharmaceutical patient therapy persistence and compliance via the use of an incentive program which incorporates media, such as a debit card, which can be funded with monetary value for immediate use by a consumer.
Wiley (U.S. Pre-Grant Publication No. 20160321411): Describes systems and methods that relate to providing consumer discounts for prescription drugs and medications. More specifically, the present disclosure relates to providing consumer discounts for compounded prescription drugs and medications.
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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/WILLIAM D NEWLON/Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696
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