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 .
Status of Claims
This action is in reply to the current action submitted on 01/21/2026.
Claims 1, 11, and 20 have been amended.
Claims 1-20 are currently pending and have been examined.
This action is made final.
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 1-20 are rejected under 35 USC § 101 as being directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 Analysis:
Independent Claims 1 and 11 are within the four statutory categories. Claims 1 and 11 are drawn to a method and a computing device (i.e. machine), respectively. Dependent Claims 2-9 and 12-20 are further drawn to a method and computing device, respectively, and therefore also fall into one of the four statutory categories.
Step 2A Analysis – Prong One:
Claim 1, which is indicative of the inventive concept, recites the following:
A computer-implemented method for automated provision of auxiliary medication during prescription processing,
the method implemented using a medication provision computing device comprising a processor in communication with a memory, the method comprising:
processing a prescription for a first medication, the prescription including an identifier of the first medication;
detecting the identifier of the first medication, from the prescription, in a stored list of flagged medications;
in response to the detecting, generating auxiliary medication provision instructions including an identifier for an auxiliary medication and a description of the auxiliary medication and the first medication,
wherein the auxiliary medication is purchasable by the patient without a prescription, and wherein the auxiliary medication has a positive interaction with the first medication;
and transmitting the auxiliary medication provision instructions to a pharmacy computing device of a pharmacy at which the prescription is being dispensed,
the auxiliary medication provision instructions causing the pharmacy computing device to display the auxiliary medication provision instructions for provision of an auxiliary medication to a patient along with the first medication,
wherein the auxiliary medication provision instructions are displayed to the patient on at least one of a display screen of the pharmacy computing device, a printout, and a user computing device.
The limitations as shown in underline above, given the broadest reasonable interpretation, cover the abstract idea of certain methods of organizing human activity because they recite managing personal behavior or relationships or interactions between people (i.e. social activities, teaching, and following rules or instructions, and/or mental process that a neurologist should follow when testing a patient for nervous system malfunctions – in this case, processing a prescription, including a medication, detecting an identifier of the medication, generating auxiliary medication provision instructions, transmitting the instructions to a pharmacy, and displaying the instructions to the patient), e.g. see MPEP 2106.04(a)(2). Any limitations not identified above as part of the abstract idea are deemed “additional elements” and will be discussed in further detail below.
Dependent Claims 2-10 and 12-19 include other limitations directed to the abstract idea. For example, Claims 2 and 12 recite transmitting the auxiliary medication provision instructions and initiating printing of an instructional message related to the provision of the auxiliary medication, Claims 3, 5, 13, and 15 recite transmitting the auxiliary medication provision instructions cause the initiation of printing or electronic transmission of a promotion, Claims 4 and 14 recite transmitting the auxiliary medication provision instructions cause the display of an instructional message, Claim 6 recites querying a promotion manager to identify details of the promotion, Claims 7 and 16 recite the prescription further includes a prescription date, and further, comparing the date of the prescription to a current date; and only transmitting the auxiliary medication provision instructions when the current date is within a threshold date range relative to the date of the prescription, Claims 8 and 17 recite determining if the auxiliary medication was offered to the patient, determining if it was accepted by the patient, and when the auxiliary medication was offered and accepted, generating an acceptance record identifying the prescription and the auxiliary medication, Claims 9 and 18 recite generating a list of flagged medications and storing the list of flagged medications, Claims 10 and 19 recite determining an availability of an auxiliary medication, and if the availability is low, displaying to submit an order for the medication. These limitations only server to further narrow the abstract idea, and a claim may not preempt abstract ideas, even if the judicial exception is narrow, e.g., see MPEP 2106.04. Additionally, any limitations in dependent Claims 2-10 and 11-19 not addressed above are deemed additional elements to the abstract idea and will be further addressed below. Hence, dependent Claims 2-10 and 12-19 are nonetheless directed towards fundamentally the same abstract idea as independent Claims 1 and 11.
Step 2A Analysis – Prong Two:
Claims 1 and 11 are not integrated into practical application because the additional elements (i.e. the non-underlined limitations above – in this case, the medication provision computing device, processor, memory, user computing device, and pharmacy computing device of Claim 1, and the computing device, processor, memory, user computing device, and pharmacy computing device of Claim 11) are recited at a high level of generality (i.e. as a generic processor performing generic computer functions) such that they amount to no more than mere instructions to apply an exception using generic computer parts. For Example, Applicant’s specification explains that the user system 400 includes a processor 402 for executing instructions…executable instructions are stored in a memory area 404. The processor 402 may include one or more processing units, for example, a multi-core configuration. The memory area 404 is any device allowing information such as executable instructions and/or written works to be stored and retrieved. The memory area 404 may include one or more computer readable media (Applicant’s specification, ¶ 0084). The medication provision computing device 102 may include any suitable computing device(s), such as one or more personal computing devices (e.g., laptop computing device, desktop computing device, etc.) server computing device(s), databases, cloud-based computing and/or storage systems, and/or any other device(s) [0020]. Each pharmacy 104 includes at least one pharmacy workflow and point-of-sale (computing) device 110 physically located thereat, referred to generally herein as a pharmacy computing device 110. Other pharmacy computing device 110 may include computing devices (e.g., laptop computing devices, desktop computing devices, tablets, etc.) that are not themselves computing devices but that are physically located at the pharmacy 104 and in networked communication with at least one pharmacy computing device 110 [0025]. The user system 400 also includes at least one media output component 406 for presenting information to a user 408 (e.g., the patient 130, the prescriber 132, a pharmacy employee at the pharmacy 104, etc.). The media output component 406 is any component capable of conveying information to the user 408. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into practical application because they do not impose any meaningful limits on the abstract idea. Therefore, independent Claims 1 and 11 are directed to an abstract idea without practical application.
Dependent Claims 2-5, 12-15, and 20 recite additional elements. Claims 2 and 12 recite the previously recited pharmacy computing device and specifies the device comprises the newly recited additional elements of a pharmacy workflow device and a pharmacy point-of-sale device. Claims 3 and 13 recite the previously recited pharmacy point-of-sale device and specifies the transmitting of the auxiliary provision instructions further causes the pharmacy point-of-sale device to initiate printing or electronic transmission of a promotion associated with the auxiliary medication. Claims 4 and 14 recite the previously recited pharmacy computing device and specifies the device comprises the newly recited additional element of a pharmacy point-of-sale device, and the pharmacy point of sale device displays an instructional message related to the provision of the medication on a display at the point-of-sale device. Claims 5 and 15 recite the previously recited pharmacy point-of-sale device and specify the transmitting of the instructions causes the pharmacy point-of-sale device to initiate printing or electronic transmission of a promotion associated with the auxiliary medication. Claim 20 recites new additional elements of a printer and display device and specifies the computing device comprises a printer or display device. However, these additional elements are used in their expected fashion, so they do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on the abstract idea. These limitations amount to no more than mere instructions to apply an exception, and hence, do not integrate the aforementioned abstract idea into practical application.
Step 2B Analysis:
The claims, whether considered separately or as an ordered combination, do not include any additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements of the medication provision computing device, processor, memory, and pharmacy computing device of Claim 1, and the computing device, processor, memory, and pharmacy computing device of Claim 11 amount to no more than mere instructions to apply an exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept (“significantly more”). MPEP 2106.05(I)(A) indicates that merely stating “apply it” or equivalent to the abstract idea cannot provide an inventive concept (“significantly more”). Accordingly, even in combination, these additional elements do not provide significantly more. For these reasons, the independent Claims 1 and 11 are not patent eligible.
Dependent Claims 6-10 and 16-19 do not recite any additional elements and only narrow the abstract idea. Claim 6 recites querying a promotion manager to identify details of the promotion, Claims 7 and 16 recite the prescription further includes a prescription date, and further, comparing the date of the prescription to a current date; and only transmitting the auxiliary medication provision instructions when the current date is within a threshold date range relative to the date of the prescription, Claims 8 and 17 recite determining if the auxiliary medication was offered to the patient, determining if it was accepted by the patient, and when the auxiliary medication was offered and accepted, generating an acceptance record identifying the prescription and the auxiliary medication, Claims 9 and 18 recite generating a list of flagged medications and storing the list of flagged medications, Claims 10 and 19 recite determining an availability of an auxiliary medication, and if the availability is low, displaying to submit an order for the medication.
Dependent Claims 6-10 and 16-19 recite previously cited additional elements, which are not eligible for the reasons stated above, and further narrow the abstract idea. Claims 3 and 13 recite the previously recited pharmacy point-of-sale device and specifies the transmitting of the auxiliary provision instructions further causes the pharmacy point-of-sale device to initiate printing or electronic transmission of a promotion associated with the auxiliary medication. Claims 5 and 15 recite the previously recited pharmacy point-of-sale device and specify the transmitting of the instructions causes the pharmacy point-of-sale device to initiate printing or electronic transmission of a promotion associated with the auxiliary medication.
Dependent Claims 2, 4, 12, 14, and 20 recite new additional elements. Claims 2 and 12 recite the previously recited pharmacy computing device and specifies the device comprises the newly recited additional elements of a pharmacy workflow device and a pharmacy point-of-sale device. Claims 4 and 14 recite the previously recited pharmacy computing device and specifies the device comprises the newly recited additional element of a pharmacy point-of-sale device, and the pharmacy point of sale device displays an instructional message related to the provision of the medication on a display at the point-of-sale device. Claim 20 recites new additional elements of a printer and display device and specifies the computing device comprises a printer or display device. Hence, Claims 2-10 and 12-20 do not include any additional elements that amount to “significantly more” than the judicial exception.
Thus, taken alone, the additional elements do not amount to significantly more than the abstract idea identified above. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, Claims 1-20 are nonetheless rejected under 35 U.S.C 101 as being directed to non-statutory subject matter.
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.
Claims 1, 2, 4, 10-12, 14, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Vishnubhatla et al. (US 20100324936 A1) in view of Ghouri et al. (US 7809585 B1) and Grady et al. (US 20190272909 A1).
Regarding Claim 1, Vishnubhatla discloses the following:
A computer-implemented method for automated provision of auxiliary medication during prescription processing, (Vishnubhatla discloses a healthcare and pharmacy data management and administration method and system (HPDMA) 100 that may facilitate ordering, dispensing, reporting,…real-time data collection and transfer, user interfaces, documentation, and the like related to a prescription, such as a prescribed medication, and to various patient-related events and outcomes, such as relating to a patient who is taking a prescribed medication [0080]. Data organization and management may be performed through computer implemented methods [0337].)
the method implemented using a medication provision computing device comprising a processor in communication with a memory, the method comprising: (Vishnubhatla discloses smart phones and other similar wired or wireless devices may be used for implementing the given invention [0026]. The processor may execute these threads based on priority or any other order based on instructions provided in the program code. The processor, or any machine utilizing one, may include memory that stores methods, codes, instructions and programs as described herein and elsewhere [0492].)
processing a prescription for a first medication,… in response to the detecting, (Vishnubhatla discloses the prescribing facility 154 may also allow the healthcare specialist to prescribe medication, such as through an electronic order entry facility… In an example, the electronic order entry facility may comprise an interface for aiding a healthcare specialist to prescribe the medication or treatment for the patient [0082].)
generating auxiliary medication provision instructions,… (Vishnubhatla discloses data …indicates that this medicine `X` results in certain side effects such as nausea, diarrhea, and extreme body ache. Clinical trials and analysis may recommend that these side effects are suppressed if the medicine `X` is supplemented with medicine `Y.` Information from clinical trial laboratories may be sent in real time to the various facilities including validation and selection facility of the prescription management facility. Upon validation of the `order entry` form for a patient, a safety check may be conducted to ensure that medicine `X` and medicine `Y` are prescribed together for any reported case of the above disease. Thus, the validation and safety checks may be in real time and actionable [0206]. Medicine ‘Y’ is interpreted as the auxiliary medication.)
and transmitting the auxiliary medication provision instructions to a pharmacy computing device of a pharmacy at which the prescription is being dispensed, (Vishnubhatla discloses a reader device in electronic communication with the workstation and capable of reading the electronically readable information regarding the at least one dosage of medications, wherein the workstation transmits the electronically readable information regarding the…medication (Claim 1). The information stored in databases may be utilized for generating reports, sheets, updates, and sending auto-generated emails to intended recipients…The reports and emails may depict…medical suggestions and the like [0222].)
the auxiliary medication provision instructions causing the pharmacy computing device to display the auxiliary medication provision instructions for provision of an auxiliary medication to a patient along with the first medication. (Vishnubhatla discloses the LTC facility specific dashboard may also provide a field to interchange the therapeutic data related to a patient…This field may identify the most cost effective drug for a based on the margin for a facility availed by the patient. The field may also suggest a preferred list of drugs for a particular medication for the patient [0272]. The pharmacist dashboard may further provide tools and analytics to a pharmacist to provide a better medication to the patient. These tools may suggest drugs and therapies to the pharmacist for the patient. The tools and analytics may apply some algorithms…to provide these suggestions to the pharmacist [0291].)
Vishnubhatla does not disclose the use of prescription identifiers in a stored list which met by Ghouri:
…the prescription including an identifier of the…medication… including an identifier for an…medication; (Ghouri teaches all FDA approved medications, for use in America, are classified according to the National Drug Code (NDC) catalog and each are assigned a unique numerical ID. Further classification of each medication is based on regimen (frequency and dose) which have implications for recommendation of other therapies due to possible interactions (col. 6, lines 55-60).)
detecting the identifier of the…medication, from the prescription, in a stored list of flagged medications; (Ghouri teaches the contents of ICD9 and/or SnoMed contribute to what is termed the "Rule Book of Medicine" in that they contain a list of terms which physicians recognize as identifying various medications, diseases, conditions, and the like, as well as certain synonyms for those terms and various categories of medications, diseases, conditions, etc. into which various other terms may be classified (col. 6, lines 28-37).)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate the prescription being stored in a list of medications with identifiers as taught by Ghouri. This modification would create a system and method capable of providing a physician/pharmacist with information regarding which medications are to be considered when treating a patient, what dosages should be employed and what, if any contraindications are suggested by any combination of clinical dimensions existing for a particular patient (see Ghouri, col. 5, lines 1-5).
Vishnubhatla and Ghouri do not teach the auxiliary medication being a non-prescription medication which is met by Grady:
and a description of the auxiliary medication and the first medication, (Grady teaches information for over-the-counter (OTC) medications or supplements whose use is encouraged in conjunction with the medication (such as those related to the suggested lifestyle changes or to ease side-effects of the prescription medication) may be provided [0079].)
wherein the auxiliary medication is purchasable by the patient without a prescription, and wherein the auxiliary medication has a positive interaction with the first medication; (Grady teaches OTC products can be useful, or harmful, in combination with prescription drugs, and, in some cases, in place of prescription drugs. OTC products can also be useful in treating side effects from prescription drug use [0009]. There may also be information on other related prescription products which the patient is likely to have need of. For instance, if the patient purchased insulin, there may be information provided for diabetic test strips of a particular brand. Alternatively, information for over-the-counter (OTC) medications or supplements whose use is encouraged in conjunction with the medication (such as those related to the suggested lifestyle changes or to ease side-effects of the prescription medication) may be provided [0079].)
wherein the auxiliary medication provision instructions are displayed to the patient on at least one of a display screen of the pharmacy computing device, a printout, and a user computing device (Grady teaches providing targeted material to a prescription medication patient …This material is generally geared specifically to the patient,… help to provide information about …related products made by a similar company whether prescription or over-the-counter (OTC), … provide information about or promote an adjunct application for a medication…The content may be provided by any party involved in any way with the medication or system [0037]. The patient may also be provided with a more traditional printout by mail with the medication by the e-pharmacy printing the material on a printer (not shown) and sending it with the medication. This printed content may be provided in addition to or instead of providing the content electronically [0075].)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate the auxiliary medication being non-prescription as taught by Grady. This modification would create a system and method capable of educating a patient on the proper use of their medication to ensure efficacy and prevent negative side effects (see Grady, ¶ 0004).
Regarding Claim 11, this claim recites limitations that are substantially similar to those recited in Claim 1 above; thus, the same rejection applies. Vishnubhatla further discloses:
A computing device for automated provision of auxiliary medication during prescription processing, the computing device comprising a processor in communication with a memory, the processor programmed to: (Vishnubhatla discloses systems, methods, and devices for automated ordering, dispensing, reporting, and billing of medication and the associated reporting and documentation of the administration of medication [0004]. The processor may be part of a server, client, network infrastructure, mobile computing platform, stationary computing platform, or other computing platform. The storage medium associated with the processor for storing methods, programs, codes, program instructions or other type of instructions capable of being executed by the computing or processing device may include but may not be limited to one or more of a CD-ROM, DVD, memory, hard disk, flash drive, RAM, ROM, cache and the like [0492].)
Regarding Claim 2, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 1 above. Vishnubhatla discloses the following:
wherein the pharmacy computing device includes a pharmacy workflow device and pharmacy point-of-sale device, (Vishnubhatla discloses a reader device in electronic communication with the workstation and capable of reading the electronically readable information regarding the at least one dosage of medications, wherein the workstation transmits the electronically readable information regarding the… medication (Claim 172). The reader device may read electronically readable information on packaging of the dosage of medication [0013]. The information may be provided via a user interface which is accessible on a workstation or maybe sourced from other facilities or data sources, such as through the backbone 103 [0088]. The reader device is interpreted as the workflow device, and the workstation is interpreted as the point of sale device.)
the transmitting of the auxiliary medication provision instructions causing the pharmacy point-of-sale device to initiate printing of an instructional message related to the provision of the auxiliary medication (Vishnubhatla discloses the output of the outcome analytics facility 128 may further be utilized by the pharmacy planning facility 142. In an exemplary case, the output of the outcome analytics facility 128 may reveal that many people suffer from a side effect, e.g., stomach infection, after taking a particular medication…In light of this observation, the pharmacy planning facility 142 may change the prescription instructions [0136]. The pharmacy planning facility 142 may change the prescription instructions. In extension to this, the pharmacy planning facility 142 may also include devising methods and processes to make this information public by means of improving product packaging through print and electronic media [0136].)
Regarding Claim 12, this claim recites limitations that are substantially similar to those recited in Claim 2 above; thus, the same rejection applies.
Regarding Claim 4, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 1 above. Vishnubhatla discloses the following:
wherein the pharmacy computing device includes a pharmacy point-of-sale device, (Vishnubhatla discloses a reader device in electronic communication with the workstation and capable of reading the electronically readable information regarding the at least one dosage of medications, wherein the workstation transmits the electronically readable information regarding the… medication (Claim 172). The reader device may read electronically readable information on packaging of the dosage of medication [0013]. The information may be provided via a user interface which is accessible on a workstation or maybe sourced from other facilities or data sources, such as through the backbone 103 [0088]. The reader device is interpreted as the workflow device. The workstation is interpreted as the point of sale device.)
the transmitting of the auxiliary medication provision instructions causing the pharmacy point-of-sale device to display an instructional message related to the provision of the auxiliary medication on a display of the pharmacy point-of-sale device. (Vishnubhatla discloses the LTC facility specific dashboard may also provide a field to interchange the therapeutic data related to a patient…This field may identify the most cost effective drug for a based on the margin for a facility availed by the patient. The field may also suggest a preferred list of drugs for a particular medication for the patient [0272]. The pharmacist dashboard may further provide tools and analytics to a pharmacist to provide a better medication to the patient. These tools may suggest drugs and therapies to the pharmacist for the patient. The tools and analytics may apply some algorithms…to provide these suggestions to the pharmacist [0291].)
Regarding Claim 14, this claim recites limitations that are substantially similar to those recited in Claim 4 above; thus, the same rejection applies.
Regarding Claim 10, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 1 above. Vishnubhatla further discloses:
determining an availability of the auxiliary medication; (Vishnubhatla discloses the prescription management facility 106 may include inventory management capabilities in that the system may match a prescribed drug with the pharmacy inventory. Discrepancies, such as low inventory, unavailability of a drug or its substitute, and the like may result in an order for this particular drug being prepared [0212].)
and when the availability is at or below a threshold, causing display of a prompt to submit an order for the auxiliary medication. (Vishnubhatla discloses real time connectivity between a pharmacy and a workstation of a doctor may provide information to the doctor about availability in the pharmacy of various medicines to be administered to the patient. In a similar manner, the E-EHR application may provide real time data about various treatments being conducted for a patient [0388]. The prescription administration facility 110 may also provide alerts for the refills …This alert may notify the pharmacy that a refill for a particular medication is required [0244].)
Regarding Claim 19, this claim recites limitations that are substantially similar to those recited in Claim 10 above; thus, the same rejection applies.
Regarding Claim 20, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 11 above. Vishnubhatla further discloses:
at least one of a printer or a display device. (Vishnubhatla discloses the user interface may be displayed on the validation workstation 210, a prescribing facility 154 (as shown in FIG. 1), any other electronic communication device (e.g. a mobile phone, a hand-held prescription entry device, and the like) [0143]. The server may provide an interface to other devices including, without limitation, clients, other servers, printers, database servers, print servers, file servers, communication servers, distributed servers and the like [0495].)
Claims 3, 5-6, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Vishnubhatla, Ghouri, and Grady in view of Kline et al. (US 20210403308 A1).
Regarding Claim 3, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 2 above. Vishnubhatla further discloses:
wherein the transmitting of the auxiliary medication provision instructions further causes the pharmacy point-of-sale…device (Vishnubhatla discloses a reader device in electronic communication with the workstation and capable of reading the electronically readable information regarding the at least one dosage of medications, wherein the workstation transmits the electronically readable information regarding the… medication (Claim 1). The reader device may read electronically readable information on packaging of the dosage of medication [0013]. The reader device is interpreted as the point-of-sale device.)
…the auxiliary medication (Vishnubhatla clinical trials and analysis may recommend that these side effects are suppressed if the medicine `X` is supplemented with medicine `Y.` Information from clinical trial laboratories may be sent in real time to the various facilities including validation and selection facility of the prescription management facility. Upon validation of the `order entry` form for a patient, a safety check may be conducted to ensure that medicine `X` and medicine `Y` are prescribed together for any reported case of the above disease [0206]. Medicine ‘Y’ is interpreted as the auxiliary medication.)
Vishnubhatla, Ghouri, and Grady do not teach the following limitations met by Kline:
device to initiate printing or electronic transmission of a promotion associated with the…medication. (Kline teaches a push notification may be initiated at operation 700. Such a push notification may take the form previously described herein, i.e., via a wireless communication device, for example the Freestyle® smartphone app. Such notification may alert users to nearby locations at which a promotional product sampling offer is valid [0170]. The Examiner interprets this as an electronic transmission of the promotion.)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate the electronic transmission of a promotion as taught by Kline. This modification would create a system and method capable of appealing to a customers, so they are more likely to purchase the new product/medication (see Kline, ¶ 0010).
Regarding Claim 13, this claim recites limitations that are substantially similar to those recited in Claim 3 above; thus, the same rejection applies.
Regarding Claim 5, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 4 above. Vishnubhatla further discloses:
wherein the transmitting of the auxiliary medication provision instructions further causes the pharmacy point-of-sale device… (Vishnubhatla discloses the LTC facility specific dashboard may also provide a field to interchange the therapeutic data related to a patient…This field may identify the most cost effective drug for a based on the margin for a facility availed by the patient. The field may also suggest a preferred list of drugs for a particular medication for the patient [0272]. The pharmacist dashboard may further provide tools and analytics to a pharmacist to provide a better medication to the patient. These tools may suggest drugs and therapies to the pharmacist for the patient. The tools and analytics may apply some algorithms…to provide these suggestions to the pharmacist [0291].)
Vishnubhatla, Ghouri, and Grady do not teach the following limitations met by Kline:
to initiate printing or electronic transmission of a promotion associated with the auxiliary medication. (Kline teaches a push notification may be initiated at operation 700. Such a push notification may take the form previously described herein, i.e., via a wireless communication device, for example the Freestyle® smartphone app. Such notification may alert users to nearby locations at which a promotional product sampling offer is valid [0170]. The Examiner interprets this as an electronic transmission of the promotion.)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate the electronic transmission of a promotion as taught by Kline. This modification would create a system and method capable of appealing to a customers, so they are more likely to purchase the new product/medication (see Kline, ¶ 0010).
Regarding Claim 15, this claim recites limitations that are substantially similar to those recited in Claim 5 above; thus, the same rejection applies.
Regarding Claim 6, Vishnubhatla, Ghouri, Grady, and Kline teach the limitations as seen in the rejection of Claim 5 above. Vishnubhatla, Ghouri, and Grady do not teach the following limitations met by Kline:
further comprising querying a promotion manager to identify details of the promotion, the details including a promotional offer and the relevant product(s) and package size(s). (Kline teaches the product dispenser user interface 650 may display an offer to try a free sample of one or more products that may be dispensed from the product dispenser 600 as herein described [0155]. The product to be sampled 625 may be dispensed through a product sample dispenser 626, which may comprise, for example, in the case of a liquid or semi-liquid product a dispensing mechanism such as a nozzle that may further comprise a known volumetric or weight control mechanism to limit the size of the sample to a predetermined quantity [0158]. The sample product is interpreted as the promotional product.)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate providing details of a promotion as taught by Kline. This modification would create a system and method capable of appealing to a customers, so they are more likely to purchase the new product/medication (see Kline, ¶ 0010).
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Vishnubhatla, Ghouri, and Grady in view of Mendell et al. (US 20230196471 A1).
Regarding Claim 7, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 1 above. Vishnubhatla further discloses:
wherein the prescription further includes a date at which the prescription was generated by a prescriber, the method further comprising: (Vishnubhatla discloses data that may be sourced from events pertaining to the administration of prescriptions may include date, time, location, dosage, prescriber, patient, medication, generic medication, type or mode of administration,… [0344].)
Vishnubhatla, Ghouri, and Grady do not teach the following limitations met by Mendell:
parsing the prescription for the date; comparing the date of the prescription to a current date; and only transmitting the auxiliary medication provision instructions when the current date is within a threshold date range relative to the date of the prescription. (Mendell teaches the customer is allowed to select any of the prescriptions that are currently stored in the pharmaceutical system and request a refill. The customer enters a proposed date to pick up the refill from the pharmacy. If a prescription has expired (either by date or by number of refills) and the customer would like to continue receiving the prescription drug, the customer's physician is contacted for authorization. An example of an invalid request is a pickup date that is past a future expiration date of the selected prescription After the error message is displayed, the customer is redirected to step. If the request is valid, the request is saved in the database server. The customer's physician is contacted for authorization to continue the expired prescription [0294-295]. If the prescription has expired, it is interpreted as passing its threshold of date range.)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate determining if the prescription has passed a threshold and not providing the prescription if it is expired as taught by Mendell. This modification would create a system and method capable of providing patients with transparent and direct services that utilize digital assets and improve the virtual pharmacy experience (see Mendell, ¶ 0005-6).
Regarding Claim 16, this claim recites limitations that are substantially similar to those recited in Claim 7 above; thus, the same rejection applies.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Vishnubhatla, Ghouri, and Grady in view of Paris et al. (US 20240112216 A1).
Regarding Claim 8, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 1 above. Vishnubhatla further discloses:
…the auxiliary medication (Vishnubhatla clinical trials and analysis may recommend that these side effects are suppressed if the medicine `X` is supplemented with medicine `Y.` Information from clinical trial laboratories may be sent in real time to the various facilities including validation and selection facility of the prescription management facility. Upon validation of the `order entry` form for a patient, a safety check may be conducted to ensure that medicine `X` and medicine `Y` are prescribed together for any reported case of the above disease [0206]. Medicine ‘Y’ is interpreted as the auxiliary medication.)
Vishnubhatla, Ghouri, and Grady do not teach the following limitations met by Paris:
determining whether the…medication was offered to the patient (Paris teaches FIG. 2 also illustrates the situation where the patient qualifies for an eligibility program, with eligibility being indicated as affirmative or positive (Y) 165. The electronic healthcare record of the patient is updated to indicate the patient has been provided with the offer 166 [0044].)
determining whether the…medication was accepted by the patient; (Paris teaches the system, method and device provide for physician notification during the patent consultation or visit that the patient has qualified for the offer 167, and during that visit the patient may accept the offer 170 or decline the offer 171. If the patient declines the offer 171, the patient may receive the prescription 169 in the traditional route at the retail pharmacy 162b similar to the patient prescription for a patient who did not qualify for the offer (see 160a, 160b, 161, 162a) [0044].)
and when the…medication was offered and accepted, generating an acceptance record identifying the prescription and the…medication. (Paris teaches where the patient declines the offer 171, however, the patient record (electronic healthcare record (EHR)) may be updated to indicate the patient has declined the offer 173 . As depicted in FIG. 2, the system, method and device are designed to receive the information about the prescription status for the patient who has accepted the offer 170. The prescription status preferably may be made available to the prescribing physician through the EHR 180, the intelligent system 181 (to provide updated information for the patient and program). The program pharmacy that fills the initial prescription 187 for the qualifying patient also has the prescription status 182, as well as the delivery status 183… the status information 180, 181 also includes information about the shipment and delivery of the medication to the patient…The information also is maintained in the patient electronic health record (EHR) 173 [0044].)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate determining if the patient has received an offer of a medicine and if they accept, recording the acceptance as taught by Paris. This modification would create a system and method capable of monitoring a patient’s medications to ensure all medications they take are compatible (see Paris, ¶ 0004).
Regarding Claim 17, this claim recites limitations that are substantially similar to those recited in Claim 8 above; thus, the same rejection applies.
Claims 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Vishnubhatla, Ghouri, and Grady in view of Ma et al. (US 20240153608 A1).
Regarding Claim 9, Vishnubhatla, Ghouri, and Grady teach the limitations as seen in the rejection of Claim 1 above. Vishnubhatla does not disclose the following limitations met by Ghouri:
the list of flagged medications including a plurality of entries associating product codes of prescription medications (Ghouri teaches all FDA approved medications, for use in America, are classified according to the National Drug Code (NDC) catalog and each are assigned a unique numerical ID. Further classification of each medication is based on regimen (frequency and dose) which have implications for recommendation of other therapies due to possible interactions (col. 10, lines 55-60). The contents of ICD9 and/or SnoMed contribute to what is termed the "Rule Book of Medicine" in that they contain a list of terms which physicians recognize as identifying various medications, diseases, conditions, and the like, as well as certain synonyms for those terms and various categories of medications, diseases, conditions, etc. into which various other terms may be classified (col. 6, lines 30-37).)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate the prescription being stored in a list of medications with identifiers as taught by Ghouri. This modification would create a system and method capable of providing a physician/pharmacist with information regarding which medications are to be considered when treating a patient, what dosages should be employed and what, if any contraindications are suggested by any combination of clinical dimensions existing for a particular patient (see Ghouri, col. 5, lines 1-5).
Vishnubhatla, Ghouri, and Grady do not teach generating the list of medications or the medications being over-the-counter which is met by Ma:
generating the list of flagged medications, (Ma teaches a medication list may be created and/or determined where the medication list may include prescribed, OTC, and complementary medicines [0095].)
with respective product codes for over-the-counter auxiliary medications; (Ma teaches a universal product code (UPC) may be used for an OTC that may not have an NDC on the medication label. The UPC may be used to determine the NDC. The medication module may be used to determine text entries of names and/or NDC numbers [0156].)
and storing the list of flagged medications in the memory to establish the stored list of flagged medications. (Ma teaches the medication module may provide capabilities (e.g., robust capabilities) to help patients capture one or more (e.g., all) of the respective medications of the patients (e.g., both Rx's and OTCs). Patients may choose an entry of a medication based on one or more of a national drug code (NDC), …Rx and OTC medications and such respective usage may be captured (e.g., easily and robustly) via a medication module (e.g., through a patient-centric approach). Records within the medication module may be stored as standardized concepts (e.g., RxNorm and NDC) that may facilitate interoperability and/or aggregation [0117-118].)
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the system and method for receiving a prescription order and recommending an auxiliary medication to treat side effects of the prescription as disclosed by Vishnubhatla to incorporate the prescription being over-the-counter medicines stored in a list with a code as taught by Ma. This modification would create a system and method capable of maintaining a complete and accurate record of patient medications to ensure they are recommended for safe and effective use (see Ma, ¶ 0002).
Regarding Claim 18, this claim recites limitations that are substantially similar to those recited in Claim 9 above; thus, the same rejection applies.
Relevant Art Made of Record Not Currently Being Applied
The following art is considered pertinent to Applicant’s disclosure but is not currently being applied:
Jiang et al. (CN 118230897 A) teaches a method which obtains input disease and treatment information and matches auxiliary medicine information with treatment information on a database to recommend supplementary medications for patients.
Eberting et al. (US 20190214116 A1) teaches a digital health platform which enables the creation of a curated selection of products available for recommendation by healthcare providers and/or purchase by patients.
Response to Arguments
Regarding the objection to Claim 20, Applicant’s amendments have been considered and the objection has been withdrawn.
Regarding rejections under 35 USC 101 to Claims 1-20, Applicant’s arguments have been considered but are not persuasive. The rejection has been updated in light of the amendments above.
Applicant argues in the recent case Ex Parte Carmody the PTAB determined that although the claims were directed to methods of organizing human activity and mental processes, the claim recited “an improvement in training of models for use by a recommendation engine to generate useful orchestration” making the claims patent eligible under 101. Similarly to the allowed Carmody case, the present claims recite specific improvements, specifically provide an improvement to pharmaceutical patient care by facilitating improved patient awareness and overall health outcomes (see Applicant’s Remarks, p. 8-10).
Regarding (a), Examiner respectfully disagrees. Carmody was found to be eligible under 35 USC 101 because the claims recited an architectural improvement to tactic-specific machine learning systems with support for the technical improvement in the specification. Conversely, the instant claims are not analogous to the claims of Carmody because they do not recite any machine learning or artificial intelligence model and further, there is no apparent improvement to any field of technology in the claims or within the specification. On review of the specification, it is unclear to the Examiner how the specific additional elements, alone or in combination, provide a solution to the stated problem of automating provisions of auxiliary medication in the context of the abstract idea of processing a prescription. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art (MPEP § 2106.05(a)). Additionally, an important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome. McRO, 837 F.3d at 1314-15, 120 USPQ2d at 1102-03 (MPEP § 2106.05(a)(II)). The instant claims seem analogous to MPEP § 2106.05(a)(II) examples that the courts have indicated may not be sufficient to show an improvement to technology, example iii. Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48.
Applicant argues in Ex Parte Desjardins, the claimed invention relates to an improvement in efficiency of machine-learning models through training. The PTAB pointed out that claims directed to an improvement in the functioning of a computer, or an improvement to other technology or technical field are patent eligible. In Desjardins, the PTAB pointed out that an improvement to training is an improvement to an Artificial Intelligence. The PTAB states that the following reflects the improvement: "adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task." The PTAB was persuaded that the above limitation constitutes an improvement to how the machine learning model itself operates, and not, for example, an identified mathematical calculation. In the instant application, there is clearly described a process of training and retraining a machine-learning model that is very similar to that of Desjardins. Instant claim 1 describes in response to the detecting, generating auxiliary medication provision instructions including an identifier for an auxiliary medication and a description of the auxiliary medication and the first medication, wherein the auxiliary medication is purchasable by the patient without a prescription, …the auxiliary medication has a positive interaction with the first medication and transmitting the auxiliary medication provision instructions to a pharmacy computing device of a pharmacy at which the prescription is being dispensed, the auxiliary medication provision instructions causing the pharmacy computing device to display the auxiliary medication provision instructions for provision of an auxiliary medication to a patient along with the first medication, wherein the auxiliary medication provision instructions are displayed to the patient… (p. 10-11 and 13-14).
Regarding (b), Examiner respectfully disagrees. Desjardins was found to be an improvement to the functioning of artificial intelligence because the invention addressed the technical problem of “accidental forgetting” in machine learning which is a specific improvement upon the currently existing machine learning models. Examiner notes that the instant invention does not provide a process of training and retraining a machine learning model similar to Desjardins as is argued above. There is no machine learning model or training of a model claimed nor in the specification. Therefore, the instant invention is not comparable to Desjardins and cannot provide a practical application in the same manner.
Furthermore, if it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art (MPEP § 2106.05(a)). In the instant specification, there is no improvement to any other technological field or to the functioning of a computer present in the claims or the specification (see response to (a) above). The identified problem being solved in the specification is automating provision of auxiliary medications during the processing and dispensing of prescriptions and facilitating improved notification of availability auxiliary medications which is not a technological problem. Instead the identified problem is at best a business problem.
Applicant argues the UPSTO issued an update to the MPEP on December 5, 2025 to add Desjardins as an example of a claim which integrates a judicial exception into a practical application, an example of an application in which the specification identified an improvement to the technology and the claims reflected that improvement and examples of improvements to computer functionality from Desjardins. Further, MPEP §2106.05(a), fourth and fifth paragraphs are revised to cite Desjardins for the directive that examiners should not evaluate claims at such a high level of generality that potentially meaningful technological limitations are dismissed or considered as mere generic computer components. More specifically, at page 1, the memorandum states "Examiners are expected to consider existing precedent like Enfish, as discussed in MPEP 2106, in addition to these updates when assessing eligibility under 35 USC101, particularly when evaluating claims related to machine learning or artificial intelligence". Here, the claimed invention offers advances over prior art NGS methodologies, i.e., the claimed invention addresses genotyping "genes that include large repeat structures in their nucleic acid code [that] have proven difficult to genotype, due to inherent limitations of the NGS technology." (p. 12).
Regarding (c), Examiner respectfully disagrees. The claimed invention of the instant application does not recite any machine learning or artificial intelligence model. The instant invention does not provide any apparent improvement to a computer functionality or any technological field (see response to (a) above). Examiner also notes that the claimed invention does not provide any NGS technologies or improvements to genotyping as the claimed invention is directed toward provisions of auxiliary medications and not gene technology.
Applicant argues in Enfish LLC v. Microsoft Corp, the invention involved a logical model for a computer database wherein the model was self-referential. Thus, in short, Enfish set the controlling precedent that software-related inventions showing technical improvements are not abstract, and thus, are not subject to rejection under 35 USC 101. Similar to the technical improvements in Enfish, the instant claim recitations is disclosed a process to provide an improvement to pharmaceutical patient care by facilitating improved patient awareness and overall health outcomes. Thus, the clear technical improvements increased efficiency and accuracy of the operation is described in claim 1, like Enfish. Thus, the i) overall technical field of software inventions and ii) claimed technological improvements in the present application and claims are both very similar to Enfish (p. 14-15).
Regarding (d), Examiner respectfully disagrees. In particular, Enfish recognized that "[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes." 822 F.3d at 1339. Moreover, because "[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can," the Federal Circuit held that the eligibility determination should turn on whether "the claims are directed to an improvement to computer functionality versus being directed to an abstract idea." Id. at 1336.
The instant claims are not analogous to Enfish because Enfish claimed software features that were not conventional and which provided a clear improvement to computer functionality, whereas the instant invention does not provide any improvement to computer functionality or any unconventional means to solving a technological problem. As stated in response to (b) above, the problem being solved in the claims is at best a business problem, not a technological problem.
Applicant argues with respect to Step 2A, Prong One, the Examiner alleges that certain claim steps are mental processes (Office Action, p. 4), but Applicant submits that these steps cannot practically be performed mentally. In Claim 1, the Examiner identified "in response to the detecting, generating auxiliary medication provision instructions" as mental processes. However, performing such analysis represents billions of data points that cannot be mentally processed, compared, or analyzed by a human (p. 15).
Regarding (e), Examiner respectfully disagrees. The claims were grouped into the abstract idea of certain methods of organizing human activity and not mental processes. In this case, the example of “a mental process a that neurologist should follow when testing a patient for nervous system malfunctions” is a court case (In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982)) which was also grouped into the certain methods of organizing human activity abstract ideas grouping. The Examiner did not label this case in the mental processes grouping, but as an example of a court case grouped in the same abstract idea category of certain methods of organizing human activity.
Examiner notes that there is nothing in the claims that states performing such analysis represents “billions of data points”. This limitation of generating medication provision instructions can be done by person using a generic computer. October 2019 Update: Subject Matter Eligibility on p. 5 states a certain activity between a person and a computer may fall within the “certain methods of organizing human activity” grouping.
Applicant argues that the pending claims are not drawn to any of the enumerated certain methods of organizing human activity as recited in in the MPEP 2106.04(a)(2)(II) (p. 15).
Regarding (f), Examiner respectfully disagrees. The human interaction subgroup “managing personal behavior or relationships or interactions between people” would include processing prescription information to identify a related auxiliary medication to recommend. It is important to note that the text within the parentheses stating social activities, teaching, and following rules or instructions are provided as examples and not an exclusive listing and that the October 2019 Update: Subject Matter Eligibility on p. 5 stating certain activity between a person and a computer may fall within the “certain methods of organizing human activity” grouping.
Applicant argues the claims include additional limitations that integrate the alleged exception into a practical application. “One way to demonstrate such integration is when the claimed invention …improves the functioning of a computer, or to any other technology or technical field.” MPEP 2106.04(d)(1). As described above in Desjardins PTAB found the subject matter claimed in Desjardins to identify improvements in training the machine learning model itself, which thus, "integrates an abstract idea into a practical application." Similarly, the present claims describe improvements to pharmaceutical patient care by facilitating improved patient awareness and overall health outcomes. Thus, the clear technical improvements increased efficiency and accuracy of the computer assisted diagnosis as described in Claim 1, like in Enfish (p. 16).
Regarding (g), Examiner respectfully disagrees. The instant invention is not analogous to Desjardins or Enfish for the reasons stated in (b)-(d) above. There is no improvement to a technology or technical field present in the instant invention as the claimed problem being solved is improvements to “pharmaceutical patient care by facilitating improved patient awareness and overall health outcomes”. The instant invention does not provide an unconventional solution to a technical problem because the issue of patient awareness is not a technological problem and existed before the use of computers.
MPEP 2106.05(f) states when determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following: (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). The claims appear to merely recite the solution with no details of how this solution is reached which cannot provide an improvement to a technical field.
Applicant argues the analysis of Step 2B should include determining whether the claim recites additional elements that amount to significantly more than the judicial exception. Examiners should first identify whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluate those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)). Accordingly, the claims satisfy the requirements of Step 2B and are patent-eligible subject matter under 35 U.S.C. § 101 (p. 17).
Regarding (h), Examiner respectfully disagrees. The claims do not provide significantly more under Step 2B analysis. The claims are directed toward generically receiving information, determining information that matches, and presenting said identified information. The courts have decided that storing and retrieving information in memory as well-understood, routine, conventional activity as a computer function when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (MPEP § 2106.05(d)(II)).
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Regarding rejections under 35 USC 103 to Claims 1-20, Applicant’s arguments have been considered and are persuasive in light of the amendments. Therefore the rejection has been withdrawn. However, upon further consideration, a new rejection has been made, rejecting Claim 1 over Vishnubhatla in view of Ghouri and Grady. Applicant’s arguments are moot in light of the updated rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 OLIVIA R GEDRA whose telephone number is (571)270-0944. The examiner can normally be reached Monday - Friday 8:00am-5:00pm.
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/OLIVIA R. GEDRA/Examiner, Art Unit 3681
/PETER H CHOI/Supervisory Patent Examiner, Art Unit 3681