Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/30/2026 has been entered.
Notice to Applicant
This communication is in response to the amendment filed 01/30/2026. Claims 1, 9, 17 have been amended. Claims 1-20 are presented for examination.
Claim Objections
Claims 1, 17 are objected to because of the following informalities:
In claims 1, 17, line(s) 31-32 (claim 1), “identify similarities between the one or filled prescriptions obtained from the one or more pharmacies” seems to be a grammatical error. Examiner recommends amending it to read -- identify similarities between the one or more filled prescriptions obtained from the one or more pharmacies --.
In claims 1, 17, line(s) 37-38 (claim 1), “wherein, determining similarities between the one or more filled prescriptions” seems to be a grammatical error. Examiner recommends amending it to read -- wherein, identifying similarities between the one or more filled prescriptions --.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 9, 17 recites “determining similarities between the one or more filled prescriptions obtained from the one or more pharmacies and the one or more prescriptions stored in the EMR systems comprises employing, by the one or more hardware processors, prior mapping data created during at least one of: reconciliation efforts and the unique identifier linked to each medication” (lines 37-41 of claim 1). It is unclear how prior mapping data is created “during…the unique identifier linked to each medication.” For example, the specification describes: “the medication data comparing subsystem is configured to employ the prior mapping data created during reconciliation efforts or linked NDCs to enhance the matching accuracy. In other words, the medication data comparing subsystem is configured to optimize matching accuracy between the one or more first medication data associated with the one or more pharmacies and the one or more second medication data associated with the one or more electronic medical record (EMR) systems 116, based on at least one of: prior mapped medication data created during a compliance determination process and the national drug code (NDC) linked to each medication” (¶ 0080). Appropriate clarification is requested for the proper interpretation of the claim limitations, as the ambiguity renders the metes and bounds of the claim unclear. For examination purposes, Examiner interprets “determining similarities between the one or more filled prescriptions obtained from the one or more pharmacies and the one or more prescriptions stored in the EMR systems comprises employing, by the one or more hardware processors, prior mapping data created during at least one of: reconciliation efforts and the unique identifier linked to each medication” as: “determining similarities between the one or more filled prescriptions obtained from the one or more pharmacies and the one or more prescriptions stored in the EMR systems comprises employing, by the one or more hardware processors, at least one of: prior mapping data created during reconciliation efforts and the unique identifier linked to each medication.”
Claim(s) 2-8 is/are rejected as being dependent on claim 1.
Claim(s) 10-16 is/are rejected as being dependent on claim 9.
Claim(s) 18-20 is/are rejected as being dependent on claim 17.
Subject Matter Free of Prior Art
Claim(s) 1-20 are allowable over prior art because the prior art of record fail to expressly teach or suggest, either alone or in combination, the features found within the independent claims, in particular: “wherein the matching comprises: comparing, by the one or more hardware processors, a plurality of prescription-reconciliation parameters between the one or more filled prescriptions and the one or more prescriptions stored in the one or more EMR systems, using at least one of: one or more cognitive learning models and one or more machine learning models, wherein the at least one of: the one or more cognitive learning models and the one or more machine learning models are configured to analyze the plurality of prescription-reconciliation parameters to identify similarities between the one or more filled prescriptions obtained from the one or more pharmacies and the one or more prescriptions stored in the EMR systems, wherein the plurality of prescription-reconciliation parameters comprise at least one of: a medication description, a dosage, a quantity, and a unique identifier linked to each medication; wherein, determining similarities between the one or more filled prescriptions obtained from the one or more pharmacies and the one or more prescriptions stored in the EMR systems comprises employing, by the one or more hardware processors, prior mapping data created during at least one of: reconciliation efforts and the unique identifier linked to each medication; wherein, for one or more filled prescriptions obtained from the one or more pharmacies that are not matched with the one or more prescriptions stored in the EMR systems, the matching comprising: learning, by the one or more hardware processors, manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems; storing, by the one or more hardware processors, information associated with the manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems; and utilizing, by the one or more hardware processors, the stored information associated with the manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems.” Because the prior art does not teach or disclose the above features in the specific manner and combinations recited in independent claims 1, 9, 17, claims 1, 9, 17 are hereby deemed to be allowable over prior art. Originally numbered dependent claims 2-8, 10-16, 18-20 incorporate the allowable features of originally numbered independent claims 1, 9, 17, through dependency, respectively.
However, the claims are still rejected under 101.
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 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, the claims are directed to non-statutory subject matter which do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following analysis:
Claim 1 is drawn to a method which is within the four statutory categories (i.e., method). Claim 9 is drawn to a system which is within the four statutory categories (i.e., machine). Claim 17 is drawn to a non-transitory computer-readable storage medium having instructions stored therein which is within the four statutory categories (i.e., manufacture).
Independent claim 1 (which is representative of independent claims 9, 17) recites… obtaining…the one or more prescriptions comprising one or more information…, wherein the one or more prescriptions with the one or more information are generated by one or more healthcare providers and stored in the one or more databases, wherein the one or more information in the one or more prescriptions comprise at least one of: name of the one or more patients, date of birth of the one or more patients, one or more dates on which the one or more prescriptions are generated, name of the one or more healthcare providers, name of one or more medication, quantity of the one or more medication, number of refills, and one or more sites at which one or more prescriptions are generated; …; obtaining…one or more data comprising at least one of: information associated with the one or more patients whose prescriptions are filled, and one or more metadata of the one or more filled prescriptions, from one or more pharmacies; matching…the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems, wherein the matching comprises: comparing…a plurality of prescription- reconciliation parameters between the one or more filled prescriptions and the one or more prescriptions stored in the EMR systems, using at least one of: one or more…models…, wherein the at least one of: the one or more…models…are configured to analyze the plurality of prescription-reconciliation parameters to identify similarities between the one or filled prescriptions obtained from the one or more pharmacies and the one or more prescriptions stored in the EMR systems, wherein the plurality of prescription-reconciliation parameters comprise at least one of: a medication description, a dosage, a quantity, and a unique identifier linked to each medication; wherein, determining similarities between the one or more filled prescriptions obtained from the one or more pharmacies and the one or more prescriptions stored in the EMR systems comprises employing, by the one or more hardware processors, prior mapping data created during at least one of: reconciliation efforts and the unique identifier linked to each medication; wherein, for one or more filled prescriptions obtained from the one or more pharmacies that are not matched with the one or more prescriptions stored in the EMR systems, the matching comprising: learning…manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems; …; and utilizing…the stored information associated with the manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems, to generate a persistent mapping data link and to retroactively apply the persistent mapping data link to corresponding unmatched prescription records residing in a matching queue; validating…whether each data of the one or more data associated with the one or more filled prescriptions are compliant with a drug affordability and access initiative program, based on the matching of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems and one or more parameters prestored in the EMR systems.
Under its broadest reasonable interpretation, the limitations noted above, as drafted, covers certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people…following rules or instructions), but for the recitation of generic computer components. The claims encompass a series of rules or instructions for a person or persons to follow, with or without the aid of a computer, to collect data and analyze the collected data to maintain compliance of prescriptions (which is described in ¶ 004 of the specification as a human activity) in the manner described in the identified abstract idea, supra. The rules or instructions are the claimed steps indicated supra. Other than reciting generic computer components (discussed infra) (i.e., “one or more hardware processors”), the claimed invention amounts to managing personal behavior or interaction between people. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Claim 1 recites additional elements (i.e., computer to implement the method; one or more hardware processors; one or more databases; storing…the one or more prescriptions in one or more electronic medical record (EMR) systems; one or more cognitive learning models and one or more machine learning models; storing…information associated with the manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems). Claim 9 recites additional elements (i.e., A computer-implemented system comprising: one or more hardware processors; a memory coupled to the one or more hardware processors, wherein the memory comprises a plurality of subsystems in form of programmable instructions; wherein the plurality of subsystems comprises: a data obtaining subsystem, a storage subsystem configured to store the one or more prescriptions in one or more electronic medical record (EMR) systems, a prescription matching subsystem, a prescription validating subsystem; one or more databases; store information associated with the manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems). Claim 17 recites additional elements (i.e., A non-transitory computer-readable storage medium having instructions; one or more hardware processors; one or more databases; storing the one or more prescriptions in one or more electronic medical record (EMR) systems; one or more cognitive learning models and one or more machine learning models; storing, by the one or more hardware processors, information associated with the manually matched mappings of the one or more filled prescriptions obtained from the one or more pharmacies, with the one or more prescriptions stored in the EMR systems). Looking to the specifications, a computer having one or more hardware processors, one or more databases, a memory comprising a plurality of subsystems in form of programmable instructions, a non-transitory computer-readable storage medium having instructions is described at a high level of generality (¶ 0059-0061; ¶ 00110-00111), such that it amounts to no more than mere instructions to apply the exception using generic computer components. Also, the “storing” steps only provides the input data for the performance of the abstract idea, and as such, amounts to insignificant extrasolution activity (i.e., mere data gathering), which does not impose meaningful limits on the scope of the claim. See: MPEP § 2106.05(g). Also, “one or more electronic medical record (EMR) systems” are only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing, providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “cognitive learning models” and “machine learning models” are described at a high level of generality (i.e., no description of the mechanism for accomplishing the result), such that using learning models amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the use of a judicial exception to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea.
Reevaluated under step 2B, the additional elements noted above do not provide “significantly more” when taken either individually or as an ordered combination. The use of a general purpose computer or computers (i.e., a computer having one or more hardware processors, one or more databases, a memory comprising a plurality of subsystems in form of programmable instructions, a non-transitory computer-readable storage medium having instructions) amounts to no more than mere instructions to apply the exception using generic computer components and does not impose any meaningful limitation on the computer implementation of the abstract idea, so it does not amount to significantly more than the abstract idea. Furthermore, receiving or transmitting data over a network, electronic recordkeeping, and storing and retrieving information in memory has been recognized by the courts as well-understood, routine, and conventional elements/functions. See: MPEP § 2106.05(d)(II). Also, “one or more electronic medical record (EMR) systems” are only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing, providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Also, “cognitive learning models” and “machine learning models” are described at a high level of generality (i.e., no description of the mechanism for accomplishing the result), such that using learning models amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the use of a judicial exception to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology and their collective functions merely provide a conventional computer implementation of the abstract idea. Furthermore, the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generally linking the abstract idea to a particular technological environment or field of use, as the courts have found in Parker v. Flook; similarly, the current invention merely limits the claimed calculations to the healthcare industry which does not impose meaningful limits on the scope of the claim. Therefore, there are no limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception.
Dependent claims 2-8, 10-16, 18-20 include all the limitations of the parent claims and further elaborate on the abstract idea discussed above and incorporated herein.
Claims 2, 4-8, 10, 12-16, 18, 20 further define the analysis and organization of data for the performance of the abstract idea and do not recite any additional elements. Thus, the claims do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Claims 3, 11, 19 further recites the additional elements of “storing…one or more information,” which only provides the input data for the performance of the abstract idea, and as such, amounts to insignificant extrasolution activity (i.e., mere data gathering), which does not impose meaningful limits on the scope of the claim. See: MPEP § 2106.05(g). Also, functional limitations further define the analysis and organization of data for the performance of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims as a whole do not integrate the abstract idea into a practical application. Reevaluated under step 2B, receiving or transmitting data over a network, electronic recordkeeping, and storing and retrieving information in memory has been recognized by the courts as well-understood, routine, and conventional elements/functions. See: MPEP § 2106.05(d)(II). Also, functional limitations further define the analysis and organization of data for the performance of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims as a whole do not provide “significantly more.”
Although the dependent claims add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. These information characteristics do not change the fundamental analogy to the identified abstract idea grouping, supra, and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as the independent claims.
Response to Arguments
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed 01/30/2026.
In the remarks, Applicant argues in substance that:
Regarding the 101 rejections,
“the claims are not directed to an abstract idea, but to a specific, machine-executed data reconciliation process that solves a technical problem arising from incompatible and inconsistent prescription data formats across distributed systems. As amended, independent claim 1 recites concrete technical operations including: Parameter-Driven Matching Using Defined Data Attributes…Use of Prior Mapping Data in Similarity Determination…Adaptive Learning and Persistent Mapping Links…Retroactive Queue Processing…These limitations define how the system performs reconciliation, not merely what result is achieved”;
“the claims touch upon an abstract idea, the amended claims integrate that idea into a practical application through a specific, ordered combination of technical steps. Concrete Hardware-Executed Data Processing…Resolution of a Technical Interoperability Problem…System-Level Consistency Through Retroactive Updates…Adaptive, State-Changing Behavior”; and
“The amended claims also recite significantly more than any alleged abstract idea. Inventive technical aspects include: Multi-Attribute Matching Mechanism…Persistent Mapping Data Links…Retroactive Matching Queue Processing…Ordered Combination Producing Technical Synergy…These elements are not well-understood, routine, or conventional, either individually or as an ordered combination.”
It is respectfully submitted that Examiner has considered Applicant’s arguments and does not find them persuasive. Examiner has attempted to address all of the arguments presented by Applicant; however, any arguments inadvertently not addressed are not persuasive for at least the following reasons:
In response to Applicant’s argument that (a) regarding the 101 rejections,
“the claims are not directed to an abstract idea, but to a specific, machine-executed data reconciliation process that solves a technical problem arising from incompatible and inconsistent prescription data formats across distributed systems. As amended, independent claim 1 recites concrete technical operations including: Parameter-Driven Matching Using Defined Data Attributes…Use of Prior Mapping Data in Similarity Determination…Adaptive Learning and Persistent Mapping Links…Retroactive Queue Processing…These limitations define how the system performs reconciliation, not merely what result is achieved”:
It is respectfully submitted that per broadest reasonable interpretation of the claim in light of the specification, the claims of the present invention encompass the activity of (to paraphrase) rules or instructions to collect data and analyze the collected data to maintain compliance of prescriptions, which covers the sub-grouping of managing personal behavior or relationships or interactions between people in the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and not the ”Mental Processes” grouping, as Applicant now argues. Put another way, the claimed invention amounts to a series of rules or steps that a user (i.e., healthcare facility worker) would follow to collect and reconcile data about patient prescriptions to maintain compliance of prescriptions per regulations. This is an abstract idea.
Applicant argues “a specific, machine-executed data reconciliation process that solves a technical problem arising from incompatible and inconsistent prescription data formats across distributed systems.” However, the computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. While the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement or any physical improvement to the computer. See MPEP § 2106.04(d)(1) and 2106.05(a). For example, with regards to “incompatible and inconsistent prescription data formats across distributed systems,” the specification only describes: “Human involvement in the manual reconciliation processes increases the likelihood of the errors such as data entry mistakes, mismatches, and inconsistencies” (¶ 006) and “If the patient data comparing subsystem initially fails to find a match, the patient data comparing subsystem flags the one or more patient data for manual review within a matching queue, where a workforce manually reviews the one or more patient data to confirm the correct patient match, ensuring an accuracy and a consistency in the one or more patient data across the computer-implemented system 102. Once the match is validated, mapping data is created to link the one or more patient data from the one or more pharmacy records to the one or more EMR systems 116 associated with the healthcare facilities. The created mapping data enables the automatic comparison for future records of the same patient from the same pharmacy. Additionally, the established match is retroactively applied to all corresponding records in the matching queue, ensuring the consistency across the one or more patient data and minimizing a manual intervention” (¶ 077). However, the courts have indicated that “Mere automation of manual processes” may not be sufficient to show an improvement in computer functionality. See: MPEP § 2106.05(a)(I). Even if the claims provide the alleged solutions, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions followed to collect data and analyze the collected data to maintain compliance of prescriptions. However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Applicant argues “concrete technical operations including: Parameter-Driven Matching Using Defined Data Attributes…Use of Prior Mapping Data in Similarity Determination…Adaptive Learning and Persistent Mapping Links…Retroactive Queue Processing…These limitations define how the system performs reconciliation, not merely what result is achieved.” However, the claim limitations to which Applicant seem to refer are interpreted as rules or instructions to collect data and analyze the collected data to maintain compliance of prescriptions, but for the recitation of generic computer components, which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “The claimed retroactive queue processing modifies stored data structures in memory, thereby changing the operational state of the computing system.” However, Applicant fails to specify how “the operational state of the computing system” is changed. Regardless, as stated previously above, the claim limitations to which Applicant seem to refer are interpreted as rules or instructions to collect data and analyze the collected data to maintain compliance of prescriptions, but for the recitation of generic computer components, which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Furthermore, the computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. While the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement or any physical improvement to the computer. See MPEP § 2106.04(d)(1) and 2106.05(a).
Thus, the claims are directed to an abstract idea.
“the claims touch upon an abstract idea, the amended claims integrate that idea into a practical application through a specific, ordered combination of technical steps. Concrete Hardware-Executed Data Processing…Resolution of a Technical Interoperability Problem…System-Level Consistency Through Retroactive Updates…Adaptive, State-Changing Behavior”:
Applicant argues “Concrete Hardware-Executed Data Processing: All operations are explicitly tied to one or more hardware processors executing defined comparison, learning, storage, and queue-processing operations. This is not a mere field-of- use limitation.” However, as stated previously above, the claim limitations to which Applicant seem to refer as “operations” are interpreted as rules or instructions to collect data and analyze the collected data to maintain compliance of prescriptions, but for the recitation of generic computer components, which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Furthermore, the one or more hardware processors is described at a high level of generality (¶ 0059), such that it amounts to no more than mere instructions to apply the exception using generic computer components. Also, the “storing” steps only provides the input data for the performance of the abstract idea, and as such, amounts to insignificant extrasolution activity (i.e., mere data gathering), which does not impose meaningful limits on the scope of the claim. See: MPEP § 2106.05(g). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “a technical failure of automated systems caused by inconsistent identifiers, dosage formats, and quantities across pharmacy and EMR platforms. The claimed solution-parameterized matching combined with historical mapping data-improves interoperability between heterogeneous computer systems.” However, as stated previously above, the computing system did not cause the argued problem and thus it is not a technical problem caused by the technological environment to which the claims are confined. While the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement or any physical improvement to the computer. See MPEP § 2106.04(d)(1) and 2106.05(a). For example, the specification only describes: “Human involvement in the manual reconciliation processes increases the likelihood of the errors such as data entry mistakes, mismatches, and inconsistencies” (¶ 006) and “If the patient data comparing subsystem initially fails to find a match, the patient data comparing subsystem flags the one or more patient data for manual review within a matching queue, where a workforce manually reviews the one or more patient data to confirm the correct patient match, ensuring an accuracy and a consistency in the one or more patient data across the computer-implemented system 102. Once the match is validated, mapping data is created to link the one or more patient data from the one or more pharmacy records to the one or more EMR systems 116 associated with the healthcare facilities. The created mapping data enables the automatic comparison for future records of the same patient from the same pharmacy. Additionally, the established match is retroactively applied to all corresponding records in the matching queue, ensuring the consistency across the one or more patient data and minimizing a manual intervention” (¶ 077). However, the courts have indicated that “Mere automation of manual processes” may not be sufficient to show an improvement in computer functionality. See: MPEP § 2106.05(a)(I). Even if the claims provide the alleged solutions, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions followed to collect data and analyze the collected data to maintain compliance of prescriptions. However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Applicant argues “Retroactively applying mappings to queued records is a technical control mechanism that improves processing efficiency, eliminates redundant manual review, and ensures consistent system state across datasets.” However, the claim limitations to which Applicant seem to refer as “Retroactively applying mappings to queued records” are interpreted as rules or instructions to collect data and analyze the collected data to maintain compliance of prescriptions, but for the recitation of generic computer components, which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Further, as stated previously above, the courts have indicated that “Mere automation of manual processes” may not be sufficient to show an improvement in computer functionality. See: MPEP § 2106.05(a)(I). Even if the claims provide the alleged solutions, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions followed to collect data and analyze the collected data to maintain compliance of prescriptions. However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Applicant argues “The persistent mapping data link changes how the system behaves on future inputs, enabling autonomous improvement of matching accuracy over time. This goes well beyond "apply it on a computer."” However, the claim limitations to which Applicant seem to refer as “The persistent mapping data link” are interpreted as rules or instructions to collect data and analyze the collected data to maintain compliance of prescriptions, but for the recitation of generic computer components, which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Further, as stated previously above, the courts have indicated that “Mere automation of manual processes” may not be sufficient to show an improvement in computer functionality. See: MPEP § 2106.05(a)(I). Even if the claims provide the alleged solutions, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions followed to collect data and analyze the collected data to maintain compliance of prescriptions. However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Thus, the claim as a whole does not integrate the recited judicial exception into a practical application.
“The amended claims also recite significantly more than any alleged abstract idea. Inventive technical aspects include: Multi-Attribute Matching Mechanism…Persistent Mapping Data Links…Retroactive Matching Queue Processing…Ordered Combination Producing Technical Synergy…These elements are not well-understood, routine, or conventional, either individually or as an ordered combination”:
Applicant argues “Multi-Attribute Matching Mechanism…Persistent Mapping Data Links…Retroactive Matching Queue Processing.” However, the claim limitations to which Applicant seem to refer are interpreted as rules or instructions to collect data and analyze the collected data to maintain compliance of prescriptions, but for the recitation of generic computer components, which is the abstract idea, and not additional elements to be interpreted in Step 2B.
Applicant argues “Ordered Combination Producing Technical Synergy.” However, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “These elements are not well-understood, routine, or conventional, either individually or as an ordered combination.” However, per MPEP § 2106.05(I)(A), evaluating whether a claim limitation is “well-understood, routine, conventional activity” is not a standalone test for determining eligibility, but only one consideration “For Evaluating Whether Additional Elements Amount To An Inventive Concept.” Furthermore, per MPEP § 2106.05(I): “the search for an inventive concept should not be confused with a novelty or non-obviousness determination…As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter…a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty…Because [novelty and obviousness] are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.”
Thus, the claim as a whole does not amount to significantly more than the judicial exception.
Thus, Examiner maintains the 101 rejections of claims 1-20, which have been updated to address Applicant’s remarks and to comply with the 2019 Revised Patent Subject Matter Eligibility Guidance and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence in the above Office Action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emily Huynh whose telephone number is (571)272-8317. The examiner can normally be reached on M-Th 8-5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Morgan can be reached on (571) 272-6773.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EMILY HUYNH/Primary Examiner, Art Unit 3683