DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prosecution Status
Applicant’s amendments filed 12/2/2025 have been received and reviewed. The status of the claims is as follows:
Claims 1-20 are pending.
Claims 1-20 stand rejected.
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.
1. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-20 are directed to facilitating a transfer transaction of medicine, which is considered a commercial interaction. Commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claim 1-7 recite a method and at least one step. Claims 8-14 recite a system comprising a memory and at least one processor. Claims 15-20 recite a non-transitory computer readable medium. Therefore, the claims are each directed to one of the four statutory categories of invention (process, apparatus, manufacture).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding independent claim 1, the claim sets forth a process in transactions to transfer medicines are facilitated, including through the facilitation of business-to-business interaction, in the following limitations:
tracking…a unique batch number corresponding to a medicine
detecting… that a requester has submitted a request for medicine;
determining…that a first threshold has been crossed prior to an expiration date of the medicine, wherein the medicine is available from a provider, and wherein the unique batch number corresponding to the medicine has been authenticated;
providing… a first notification to the provider indicating that the first threshold has been crossed, and an authentication status of the unique batch number corresponding to the medicine, wherein the first notification includes an option to transfer the medicine to the requester prior to the expiration date;
receiving, from the provider, responsive to the first notification, an acknowledgement to make the medicine available for transfer to the requester; and
consummating…a transaction to transfer the medicine from the provider to the requester prior to the expiration date.
The above-recited limitations establish a commercial interaction between businesses to facilitate the transfer of medicine between the businesses. This arrangement amounts to both a sales activity or behavior; and business relations. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 1 does recite additional elements:
by one or more processors
These additional elements merely amount to the general application of the abstract idea to a technological environment (“by one or more processors”). The specification makes clear the general-purpose nature of the technological environment. Paragraphs [0052] - [0065] indicate exemplary general-purpose systems that may implement the invention, and indicate that while these systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). In the instant case, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Communicating information (i.e., receiving or transmitting data over a network) has been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Independent Claims 8 and 15 are parallel in scope to claim 1 and ineligible for similar reasons.
Regarding Claims 2-7, 9-14, 16-20
Dependent claims 2-7, 9-14, and 16-20 merely set forth embellishments to the abstract idea of facilitating a transfer transaction of medicine, including facilitating interaction between businesses. While the claims do set forth the additional imitation of “the one or more processors”, this recitation is similar to the additional limitations in claim 1, as it does no more than generally link the use of the abstract idea to a particular technological environment. As such, it does not integrate the abstract idea into a practical application, and does not provide an inventive concept. Accordingly, the claims do not confer eligibility on the claimed invention and is ineligible for similar reasons to claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
2. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kello et al. (US 20210158413 A1, hereinafter Kello) in view of Alas et al (US 20240428189 A1, hereinafter Alas).
Regarding Claim 1
Kello discloses a method comprising:
detecting, by one or more processors, that a requester has submitted a request for medicine; (Kello: ¶108-109)
receiving, from the provider, responsive to the first notification, an acknowledgement to make the medicine available for transfer to the requester; and (Kello: ¶32)
consummating, by the one or more processors, a transaction to transfer the medicine from the provider to the requester prior to the expiration date (Kello: ¶7)
Kello does not explicitly disclose, but Alas teaches, in a similar environment:
tracking, by one or more processors, a unique batch number corresponding to a medicine (Alas: ¶52)
determining, by the one or more processors, that a first threshold has been crossed prior to an expiration date of the medicine, wherein the medicine is available from a provider; (Alas: ¶82-84, 107)
and wherein the unique batch number corresponding to the medicine has been authenticated (Alas: ¶52)
providing, by the one or more processors, a first notification to the provider indicating that the first threshold has been crossed, (Alas: ¶82-85, 107) wherein the first notification includes an option to transfer the medicine to the requester prior to the expiration date; (Alas: ¶85, 107)
and an authentication status of the unique batch number corresponding to the medicine (Alas: ¶52)
It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Kello, with the features of Alas, since such a modification would have allowed visibility to pharmaceutical asset information across different locations in an autonomous manner that minimally affects a business (Alas: ¶7).
Regarding Claims 8, 15
Claims 8 and 15 are substantially similar to claim 1 and rejected on similar grounds.
Regarding Claims 2, 9, 16
Kello further discloses:
wherein the request comprises a second quantity of the medicine as requested by the requester (Kello: at least ¶42, 88: quantity for purchase specified)
Regarding Claims 3, 10, 17
Kello does not explicitly disclose, but Alas teaches, in a similar environment:
wherein the consummating comprises: determining that a first quantity of the medicine is greater than or equal to the second quantity of the medicine; and receiving a transaction confirmation from both the provider and the requester to consummate the transaction (Alas: at least ¶84)
It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Kello, with the features of Alas, since such a modification would have allowed visibility to pharmaceutical asset information across different locations in an autonomous manner that minimally affects a business (Alas: ¶7).
Regarding Claims 4, 11, 18
Kello further discloses:
wherein the consummating comprises: receiving payment from the requester to purchase the second quantity of the medicine from the provider. (Kello: at least ¶9, 51, 93)
Regarding Claims 5, 12, 19
Kello further discloses:
wherein the request comprises a deadline by which the requester requires the medicine (Kello: at least ¶4, 36: expiration date)
Regarding Claims 6, 13, 20
Kello further discloses:
wherein the request comprises a requester listing corresponding to the request in an electronic marketplace; and wherein the consummating comprises generating a provider listing in the electronic marketplace, wherein the provider listing comprises a quantity of the medicine available from the provider in excess of the second quantity of the medicine. (Kello: at least ¶32, 74, 80)
Regarding Claims 7, 14
Kello further discloses:
wherein the one or more processors track the medicine from a manufacturer to the provider based on an identifier, wherein the identifier validates an authenticity of the medicine. (Kello: at least ¶32: “Descriptive entries and/or fields may include: a product image, regulated product name (e.g., pharmaceutical name for a pharmaceutical), serial number, national drug code (NDC) number, lot number, expiration date, packaging type, available quantity, price, discount type, modification date, the like, or a combination thereof”)
Response to Arguments
Applicant’s arguments with respect to the 35 USC 101 rejection of the claims have been fully considered, but they are not persuasive. With regard to Step 2A, Prong 1 of the Alice/Mayo framework, applicant asserts that “the claims as amended do not recite an abstract idea…The claimed invention is directed towards a unique computer network infrastructure connecting computers from disparate networks. The network has an added complexity in that the information stored in the databases is time sensitive. This means that the network has to perform simultaneous monitoring of potentially millions of database entries and collate that information with requests from different parts of the computer network.” Applicant further notes that “these operations are firmly entrenched in a technical environment.” The Examiner respectfully disagrees. The disclosure makes clear that the invention addresses a commercial problem (see at least [0012]):
A pharmacy may estimate what customer demand is likely to be for various medicines, and based on these estimations, the pharmacy may then order medicines in bulk to serve their patients or customers. However, ordering medicines in this manner is an inaccurate process that often results in some pharmacies ordering too much medicine, medicine which is wasted if it unused or unsold prior to the expiration date, while other pharmacies do not order enough medicine or have access to enough medicine to serve their patients, and their patients are left to suffer without access to the proper medicines.
The claim language is consistent with address such a commercial (i.e., meeting customer demand) problem by providing a commercial solution via a “medicine marketplace system”. Referring to independent claim 1, the claim sets forth operations to track a medicine based on its age relative to its expiration date, and facilitate a transaction for the medicine based in response to the tracking. Clearly, this is a commercial process to transfer the medicine, generally for use between pharmacies (see [0067] and [0071]). While applicant argues that the invention is directed towards a “unique computer network infrastructure”, the claims do not reflect any specific technology for performing the claimed operations, instead only reciting “by one or more processors”. That the claim recites technology and that the operations handle time sensitive information does not preclude the claims from reciting an abstract idea under Prong 1.
Applicant further asserts, with regard to Step 2A, Prong 2, that “the claims integrate any alleged judicial exception into a practical application. Applicant respectfully asserts that the claims as amended recite a technical solution to a technical problem.” Applicant points to the newly-amended “unique batch numbers” as “a practical solution that provides a centralized way of keeping track of millions of disparate data items across a computer network. The unique batch number of the claimed embodiments also provides a way to keep a chain of custody over the inventory of medicine in the system.” However, an accounting mechanism to track products has no inherent connection to technology, and the claims do not set forth any specific technological mechanisms or procedures for implementing such a solution “across a computer network”. Similarly, assertions that the unique batch numbers “provide an improvement to inventory
tracking technology by using an authentication approach for medicine inventory” are erroneous, since inventory tracking technology is not recited in the claims at all. Applicant’s additional assertions that the claimed embodiments “provide improvements to a computing system” because “the number of requests transmitted by the provider's computing system is reduced, thereby conserving network bandwidth of the provider's computing system” are similarly erroneous, as the claims are silent as to the technical manner of requesting or transmitting, and neither the claims nor the disclosure contemplate bandwidth usage. Even if such an improvement would be recognized by one of ordinary skill in the art as emerging from the disclosure, the claims do not reflect any implementation of a bandwidth usage improvement.
For the above reasons, applicant’s arguments are found to not be persuasive, and the claims are held to be ineligible.
Applicant’s arguments with respect to the 35 USC 103 rejections of the claims have been fully considered, but they are not persuasive. Applicant asserts that the cited prior art references, Kello and Alas, do not disclose or teach the newly-added limitations adding unique batch number authentication and notification functionality. However, Alas, in paragraph [0052] teaches such functionalities, as noted in the rejection above, and is reproduced below (emphasis added):
[0052] In some embodiments, the identifier uniquely identifies the asset. For example, the identifier comprises a code for uniquely identifying the packet of medicine (e.g., for individually tracking each packet of medicine). In some embodiments, the pharmaceutical asset tracker may prevent counterfeiting of the asset. For example, the identifier is configured for verifying authenticity of the asset. The identify may comprise information for verifying authenticity of the asset to prevent counterfeiting of the asset. As another example, the presence of a pharmaceutical asset tracker with the asset may confirm the authenticity of the asset.
Alas goes on to describe notifications of information regarding the asset based on the asset tracker to acquire information on the contents of an asset (i.e., pharmaceutical) package. One of ordinary skill in the art would have found it obvious to integrate these unique identification, authentication, and notification techniques into Kello. Accordingly, applicant’s arguments are not persuasive and the rejection is maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Smith can be reached at 571272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688