DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/3/26 has been entered.
Status of the Claims
This office action is submitted in response to the RCE filed on 6/3/26.
Claims 1-2, 4-6, 8-16, and 19-21 have been amended.
Claim 3 has been canceled.
Therefore, claims 1-2 and 4-21 are currently pending and have been examined.
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 .
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 1-2 and 4-21 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.
Step 1: Claim 1 recites a computer-implemented method performed by a centralized computing system, which constitutes a process. Claim 6 recites a centralized computing system comprising one or more processors and memory, which constitutes a machine. Claim 14 recites a non-transitory computer-readable storage medium having stored thereon executable instructions, which constitutes an article of manufacture. As such, claims 1, 6, and 14, and the claims dependent therefrom, fall within the statutory categories of 35 U.S.C. § 101, i.e., a process, a machine, and a manufacture, respectively. See MPEP 2106.03.
Step 2A, Prong One: Independent claims 1, 6, and 14, in part, describe an invention comprising: generating a nexus identifier to couple the client to multiple other entities; parsing a set of conditions, based on the request and the nexus identifier, from stored documents representing arrangements between the client and the plurality of providers to provide the requestable perquisite; generating...a mapping that correlates the nexus identifier to multiple provider identifiers corresponding to a subset of providers, of the plurality of providers, able to meet the request in accordance with the set of conditions; retrieving...in real time, values from the subset of providers, each value associated with the requestable perquisite and a provider offering the requestable perquisite; inputting...the values into the mapping with other values retrieved from a database; us[ing] the mapping to compare between values in the one or more values provided in real time by the subset of providers and the other values retrieved from the database; and selecting a provider from the subset of providers based, at least in part, on one or more comparisons between the values in the mapping. As such, the invention is directed to the abstract idea of matching a client with a provider of a requested perquisite according to conditions defined by arrangements between the client and providers and comparisons of values offered by the providers, which, pursuant to MPEP 2106.04(a), is aptly categorized as a certain method of organizing human activity (i.e., commercial interactions, including sales activities and business relations). Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
Next, the aforementioned claims recite additional elements that are associated with the judicial exception, including: receiving, from a client, a request to access a requestable perquisite (data transmitted to the centralized computing system from the client); providing, over the network, the request and the set of conditions to the selected provider to obtain a response, from the selected provider, that is specific to the client associated with the nexus identifier; and providing the response from the selected provider as a result of processing the received request. Dependent claim 7 further describes submitting requests to the subset of providers for the values. Dependent claim 8 further describes a database storing the other values as fixed values. Dependent claim 17 further describes the request being provided to the centralized computing system by a provider of the requestable perquisite. Dependent claim 21 further describes providing the request and the set of conditions to the selected provider over the network and providing the response from the selected provider. Examiner understands these limitations to be insignificant extra-solution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) (“[I]nsignificant post-solution activity will not transform an unpatentable principle into a patentable process.”).
The aforementioned claims also recite additional elements including “one or more processors” and a “memory” including computer-executable instructions (claim 6); a “non-transitory computer-readable storage medium” and “one or more processors” (claim 14); a “network”; a “database”; and “run-time transaction logic.” These limitations are recited at a high level of generality, and appear to be nothing more than generic computer components. The recitation of “run-time transaction logic” is nothing more than software code executing on a generic processor at the time of a transaction, and is therefore a generic computer component recited at a high level of generality. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983.
Step 2A, Prong Two: Furthermore, looking at the elements individually and in combination, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP 2106.04(d). Rather, the claims merely use a computer as a tool to perform the abstract idea(s) (see MPEP 2106.05(f)), and/or add insignificant extra-solution activity to the judicial exception (see MPEP 2106.05(g)), and/or generally link the use of the judicial exception to a particular technological environment, e.g., generic computers connected to a network providing remote access to the plurality of providers (see MPEP 2106.05(h)).
Examiner further notes that the recitation of “run-time transaction logic” does not integrate the abstract idea into a practical application. This limitation merely describes software code executing on a generic processor at the time of a transaction, and does not recite any improvement to the computer itself, to the software architecture, or to any underlying technology. The claims do not recite what the logic is, what rules it applies, or how it is structured; the logic is invoked purely as the means by which the mapping is generated and populated. Applying an abstract idea via software executing at runtime is the paradigmatic “apply it” scenario and does not render the claims eligible. See MPEP 2106.05(f); Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983.
Step 2B: Next, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions are merely facilitated by generic computer implementation.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
• Storing and retrieving information in memory. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
• Receiving or transmitting data over a network. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 U.S.C. § 101.
Claims 2, 4-5, 7-13, and 15-21 are dependent on the aforementioned independent claims, and include all the limitations contained therein. Beyond the extra-solution activity addressed above, these claims do not recite any additional technical elements, and simply disclose additional limitations that further limit the abstract idea with details regarding:
determining the other values retrieved from the database from the stored documents (claim 2); components of a profile mapping system at which the mappings are generated (claims 4-5), which are generic computer components recited at a high level of generality; applying the set of conditions to the values to update the values (claim 9); identifying a value that satisfies preset instructions (claim 10); persistence of the nexus identifier across changes to the mapping and to the arrangements (claims 11-12); parameters affecting an amount of an expendable resource (claim 13); assigning the nexus identifier and using it to identify the subset of providers (claim 15); linking additional nexus identifiers to the nexus identifier (claim 16); entities that moderate how the requestable perquisite is to be provided (claim 18); generating the mapping in response to receiving the request and identifying which providers are able to generate a response (claim 19); and the arrangements indicating how the requestable perquisite is to be distributed (claim 20). Thus, the dependent claims merely provide additional non-structural (and predominantly non-functional) details that fail to meaningfully limit the claims or the abstract idea(s).
Therefore, claims 1-2 and 4-21 are not drawn to eligible subject matter, as they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
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 and 4-21 are rejected under 35 U.S.C. § 103 as being unpatentable over Greenblatt (20240153013) in view of Carlson (8615426).
Claims 1, 6, and 14: Greenblatt discloses one or more processors and memory including computer-executable instructions (Paragraphs 0041-0043. The APBM system comprises processor 201 and memory 203 storing software modules including instructions executed by the processor.);
providing remote access to a plurality of providers over a network (Paragraphs 0035, 0125-0126. The alternative pharmacy benefit manager (APBM) system is communicatively linked, via a network, to a plurality of pharmacy benefit manager (PBM) systems, pharmacy systems, and pharmacy benefit plan provider systems, the PBM systems constituting the plurality of providers accessible over the network.);
receiving, from a client, a request to access a requestable perquisite (Paragraphs 0065, 0137. A request for prescription fulfillment is received from a consumer via the APBM interface, and a prescription claim request is received from a pharmacy on behalf of the consumer via the eRx Network, the prescription fulfillment constituting the requestable perquisite. As to claim 14, the request is received on behalf of a client in that the pharmacy transmits the data packet defining the consumer’s prescription claim to the APBM system.);
generating a nexus identifier to couple the client to multiple other entities (Paragraphs 0069, 0114, 0124. The consumer is assigned, upon registration, a member identification number, and the system generates a static electronic prescription card bearing a BIN/PCN identifier and member identifier that uniquely identifies the consumer to the APBM, through which the consumer is coupled to the plurality of third party PBMs whose pricing contracts the APBM selects among for fulfillment of the consumer’s prescriptions.);
parsing a set of conditions, based on the request and the nexus identifier, from stored documents representing arrangements between the client and the plurality of providers to provide the requestable perquisite (Paragraphs 0030, 0046, 0071-0072, 0137. Under the broadest reasonable interpretation, “parsing” encompasses analyzing stored documents and extracting information therefrom. Upon receiving the claim request, the APBM accesses the consumer’s stored records based on the consumer’s identifier and analyzes the stored pharmacy benefit plan and pricing data, extracting the applicable co-pay amounts, deductible status, formulary, and pricing terms used to adjudicate the request, the stored plan information and the schedules of PBM prices provided per each plan provider’s agreement with its PBM constituting stored documents representing arrangements between the client and the providers under which the perquisite is provided.);
generating, via run-time transaction logic, a mapping that correlates the nexus identifier to multiple provider identifiers corresponding to a subset of providers, of the plurality of providers, able to meet the request in accordance with the set of conditions (Paragraphs 0102, 0124, 0138-0139. At the time of each transaction, the APBM’s pre-adjudication and PBM Switchboard logic associates the consumer’s static identifier with the BIN/PCN identifiers of the PBM pricing contracts applicable to the requested drug under the consumer’s plan, constituting a run-time-generated mapping of the nexus identifier to multiple provider identifiers for providers able to meet the request.);
inputting, via the run-time transaction logic, the values into the mapping with other values retrieved from a database (Paragraphs 0091, 0102-0103. PBM Prices are retrieved from the drug pricing data of the APBM database and evaluated against the Pharmacy Reimbursement Amounts of the candidate pricing contracts within the transaction-time pricing analysis, the database-retrieved amounts constituting the other values considered together with the obtained provider values.
As to claim 14, Greenblatt further discloses us[ing] the mapping to compare between values, in that the Baseline Price retrieved from the database is compared against the reimbursement amounts corresponding to each candidate provider (Paragraphs 0103, 0106).);
selecting a provider from the subset of providers based, at least in part, on one or more comparisons between the values in the mapping (Paragraphs 0103, 0106, 0124, 0138. The APBM compares the values corresponding to each candidate pricing contract and selects the PBM whose contract offers the best price for the requested drug.);
providing, over the network, the request and the set of conditions to the selected provider to obtain a response, from the selected provider, that is specific to the client associated with the nexus identifier (Paragraphs 0139-0141. The APBM modifies the data packet to include the consumer identifier, the transaction identifier, the pre-adjudication results, and the Consumer Price, replaces the APBM BIN/PCN with the BIN/PCN of the selected PBM, and transmits the modified data packet to the selected PBM over the eRx Network, and the selected PBM returns a response for the consumer’s claim.); and
providing the response from the selected provider as a result of processing the received request (Paragraphs 0134, 0141-0142. The response, including the approval and the indication of the Consumer Price, is returned to the pharmacy and the consumer as the output of processing the claim request.).
Greenblatt does not appear to explicitly disclose retrieving, over the network and in real time, values from the subset of providers.
Carlson, however, discloses retrieving, over the network and in real time, values from the subset of providers, each value associated with the requestable perquisite and a provider offering the requestable perquisite (Col. 1, ll. 54-56: “Such offers may be generated in real time or during the transaction”; Col. 3, ll. 50-53: “The access device or the server computer could communicate with each of these entities during a payment transaction to determine which offers are valid”; Col. 7, ll. 43-47: “the offer and the consumer identifier are forwarded to the corresponding issuer via the server computer to determine the validity of the offer.” The centralized server computer communicates with each entity in the subset during the transaction to retrieve validated offer values in real time, each value corresponding to the requestable perquisite and the entity offering it.).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to incorporate the real-time provider value retrieval of Carlson into the system of Greenblatt. One would have been motivated to do this in order to ensure that the values input into the mapping and compared against the stored database values reflect current, live values obtained from each provider at the time of the transaction, rather than estimated or inferred amounts, resulting in a more accurate and responsive provider selection outcome.
Claim 2: Greenblatt further discloses the other values retrieved from the database are determined from the stored documents (Paragraphs 0046, 0091. The PBM Prices retrieved from the drug pricing data are provided by each plan provider per the schedule of PBM prices defined in its agreement with its PBM and stored in the database, such that the database-retrieved values are determined from the stored documents representing the arrangements.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 4: Greenblatt further discloses the mapping is generated at a first component of a profile mapping system, wherein the first component performs operations to identify the other values in the database based, at least in part, on the mapping (Paragraphs 0056-0059, 0091, 0102. The pricing module and offer assembly module of the APBM system constitute a first component that generates the correlation of the consumer to the candidate pricing contracts and retrieves the corresponding PBM Prices and contract amounts from the database in accordance with that correlation.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 5: Greenblatt further discloses generating an additional mapping at a second component of a profile mapping system, wherein the second component performs operations to map the request to information corresponding to the stored documents, and wherein the information is provided to the selected provider with the request (Paragraphs 0056, 0123, 0139-0140. The PBM Switchboard module constitutes a second component that maps the claim request to the pre-adjudication information derived from the consumer’s plan and contract data, including the authorization indication, transaction identifier, and Consumer Price, and includes that information in the modified data packet transmitted to the selected PBM with the request.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 7: Greenblatt discloses retrieving provider pricing information from stored pricing contracts and claims data (Paragraphs 0101-0102).
Greenblatt does not appear to explicitly disclose submitting requests to the subset of providers for the values.
Carlson, however, discloses submit requests to the subset of providers for the values (Col. 3, ll. 50-53; Col. 7, ll. 43-47. The server computer communicates with each of the entities during the transaction, forwarding the consumer identifier to the corresponding entity to obtain the validated offer values, constituting submitting requests to the subset of providers for the values.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 8: Greenblatt further discloses the database stores the other values as fixed values (Paragraphs 0050, 0102. The drug pricing data stores the contracted amounts, including the MAC list price for each drug per agreement and the actual amounts listed in each stored pricing contract, constituting fixed values stored in the database.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 9: Greenblatt further discloses apply the set of conditions to the values to update the values (Paragraphs 0103, 0108, 0115. The terms of the consumer’s pharmacy benefit plan, including the co-pay and deductible conditions, and the penalty determined from the pricing comparison are applied to the retrieved values to update the Consumer Price assigned to the offer.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 10: Greenblatt further discloses identify at least one of the values input into the mapping that satisfies preset instructions (Paragraphs 0102, 0106; Claim 11. The system determines which pricing contract offers the lowest price and selects the provider corresponding to a price satisfying at least one criteria, the programmed selection criteria constituting preset instructions satisfied by an identified value in the mapping.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 11: Greenblatt further discloses the nexus identifier is to remain assigned to the client despite changes to the mapping (Paragraphs 0124, 0129. The consumer’s prescription benefit indicator, including the BIN/PCN and member identifier, remains the same across multiple prescriptions while the APBM dynamically selects different PBM pricing contracts on the backend for each transaction.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 12: Claim 12 recites the conditions in the alternative, such that the claim is met by a teaching of either alternative. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (a claim reciting limitations in the alternative is met by a reference teaching any one of the alternatives).
Greenblatt further discloses the nexus identifier is to remain active and unchanged when: a document that represents a new arrangement between the client and the plurality of providers is stored (Paragraphs 0070, 0092, 0124, 0129. The APBM periodically receives and stores updated pharmacy benefit plan information for the consumer, and negotiates and stores its own new pricing contracts and leased contracts with additional PBMs, while the consumer’s static prescription benefit indicator remains the same across multiple prescriptions as the backend contract sourcing changes, constituting the identifier remaining active and unchanged when a document representing a new arrangement is stored.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 13: Greenblatt further discloses the values input into the mapping comprise one or more parameters affecting an amount of an expendable resource associated with acquiring the requestable perquisite (Paragraphs 0026, 0103, 0108. The PBM Prices, Pharmacy Reimbursement Amounts, co-pay amounts, and penalty values directly affect the out-of-pocket cost the consumer expends to acquire the prescription.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 15: Greenblatt further discloses assign the nexus identifier to the client (Paragraphs 0069, 0114. The consumer is assigned a member identification number upon registration and is provided the static electronic prescription card bearing the identifier.); and
use the nexus identifier to identify the subset of providers (Paragraphs 0124, 0137-0138. The identifier received with the claim request allows the APBM to retrieve the consumer’s records and identify the PBM pricing contracts applicable to fulfillment of the request.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 16: Greenblatt further discloses link additional nexus identifiers to the nexus identifier, the additional nexus identifiers corresponding to additional clients requesting access to requestable perquisites moderated by the plurality of providers (Paragraphs 0045, 0120, 0122. Family members covered under the consumer’s pharmacy benefit plan are registered in association with the consumer’s account, and the consumer may view and manage prescriptions and pending rewards for such other covered persons, the covered persons constituting additional clients whose identifiers are linked to the consumer’s identifier and whose prescriptions are moderated by the plurality of providers.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 17: Greenblatt discloses the request on behalf of the client to access the requestable perquisite is provided to the centralized computing system by a provider of the requestable perquisite (Paragraphs 0133, 0137. The pharmacy, the entity that dispenses the prescription to the consumer, transmits the data packet comprising the claim request to the APBM system on behalf of the consumer.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 18: Greenblatt further discloses the subset of providers comprise entities that moderate how the requestable perquisite is to be provided to the client (Paragraphs 0131, 0134, 0140. The PBMs adjudicate the prescription claims, determine eligibility and drug coverage, and control the Consumer Price and reimbursement terms governing how the prescription is provided to the consumer.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 19: Greenblatt further discloses generate the mapping in response to receiving the request on behalf of the client to access the requestable perquisite (Paragraphs 0137-0138. Upon receiving the data packet from the pharmacy, the APBM dynamically adjudicates the claim and determines the applicable pricing contracts in response to the incoming request.); and
identify which of the subset of providers is able to generate a response to the request (Paragraphs 0124, 0138. The APBM determines which PBM, via its pricing contract, is able to fulfill the prescription and generate the claim response.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 20: Greenblatt further discloses the arrangements are determined from documents stored at a database and the arrangements indicate how the requestable perquisite is to be distributed based, at least in part, on the documents (Paragraphs 0046, 0102, 0132. The pricing contracts and plan agreements are stored at the database, and the Pharmacy Participation Agreements and pricing schedules define the rates, coverage terms, and reimbursement structure governing how the prescription is to be filled and reimbursed.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Claim 21: Greenblatt discloses provide, over the network, the request and the set of conditions to the selected provider to obtain a response, from the selected provider, that is specific to the client associated with the nexus identifier (Paragraphs 0139-0141. The modified data packet, including the consumer identifier and the pre-adjudication results derived from the consumer’s plan conditions, is transmitted to the selected PBM, which returns a response for that consumer’s claim.); and
provide the response from the selected provider as a result of processing the request (Paragraphs 0134, 0142. The approval and Consumer Price are returned to the pharmacy and consumer as the output of processing the claim.).
The rationale for combining Carlson with Greenblatt is articulated above and reincorporated herein by reference.
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 1-2 and 4-21 under 35 U.S.C. § 103 are moot in view of the new grounds of rejection presented herein, which were necessitated by Applicant’s amendment.
Applicant’s arguments with respect to the rejection of claims 1-2 and 4-21 under 35 U.S.C. § 101 have been fully considered but are not persuasive.
Applicant first argues that the amended claims recite subject matter that “expands beyond the enumerated sub-groupings” of certain methods of organizing human activity and instead captures an improvement expressly tied to a computing environment. Examiner respectfully disagrees. The amended claims recite matching a client with a provider of a requested perquisite according to conditions defined by arrangements between the client and the providers, and selecting the provider based on comparisons of the values each provider offers. This is a commercial interaction, including sales activities and business relations, squarely within the enumerated sub-groupings of MPEP 2106.04(a)(2)(II). The amendments reinforce, rather than diminish, this characterization: the newly recited nexus identifier is an account identifier assigned to a client and correlated to the client’s contracted counterparties, the newly recited stored documents represent the parties’ commercial arrangements, and the newly recited comparison between provider-supplied values and database values describes evaluating competing commercial terms. Assigning an account number to a customer, consulting the customer’s contracts, and selecting the counterparty offering the best terms are longstanding commercial practices. That the claims tie these practices to a computing environment does not remove them from the abstract idea; it merely invokes generic computer implementation, which is addressed under Prong Two and Step 2B.
Applicant next argues that the Office has admitted that the claimed run-time transaction logic constitutes a technical rule set producing a specific technical result as in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), quoting the prior Office action’s description of routing rules “retrieved and applied dynamically at transaction time.” Examiner respectfully disagrees for two independent reasons. First, the quoted language described the teachings of a prior art reference. A description of what the prior art already discloses is not a concession that the claims recite an improvement to technology; to the contrary, a rule set that the art already possessed cannot supply the asserted technological improvement, and an alleged improvement residing in the abstract idea itself is not an improvement to technology. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). Second, and more fundamentally, the claims in McRO were held eligible because they recited the content of specific claimed rules, namely rules defining morph weight sets and transition parameters with articulated characteristics, whose incorporation improved an existing technological process of computer animation. See MPEP 2106.05(a)(II). The instant claims recite “run-time transaction logic” purely functionally. The claims do not recite what the logic is, what any rule provides, or how the logic is structured; the logic is invoked only as the vehicle by which the mapping is generated and populated. A functionally claimed, content-free rule set that produces an allegedly better commercial outcome, here the identification of the provider offering the most favorable terms, is not analogous to the specific technical rules of McRO, and the result achieved, a commercial matching result, is not a technical result.
Applicant further analogizes the claims to Subject Matter Eligibility Example 42, arguing that the nexus identifier and associated mapping capture terms and conditions of agreements and are robust to updates to the client’s benefit profile, citing Paragraphs 0012 and 0014 of Applicant’s specification. Examiner respectfully disagrees. The claim in Example 42 was found eligible because the additional elements converted patient information received in non-standardized formats from disparate sources into a standardized format, an actual data transformation that solved a technical interoperability problem and allowed remote users to share information in real time regardless of input format. The instant claims perform no conversion and no transformation of data from one format to another. Values retrieved from providers and values retrieved from a database are gathered, placed into a mapping, and compared. Data gathering and comparison is not a data transformation, and the benefit Applicant identifies, capturing agreement terms and reducing the client’s effort to access benefits across profile updates, is a benefit to the commercial arrangement administration itself, not a solution to a technical interoperability problem. The persistence of the nexus identifier across changes to the mapping likewise describes a business convenience, a permanent account number, rather than a technical improvement to any computing functionality.
Finally, Applicant argues under Step 2B that the combination of elements amounts to significantly more under BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and that the Office has conceded efficiency gains, quoting Applicant’s specification at Paragraph 0014 regarding “improving the efficiency of computing systems by performing identification of all agreements relevant to a payor request and comparison of attributes of the agreements in real time.” Examiner respectfully disagrees. In BASCOM, the inventive concept resided in the non-conventional and non-generic arrangement of components, specifically the installation of a filtering tool at a particular network location with customizable filtering features. Applicant has not identified any comparably non-conventional arrangement here. The claims employ a centralized computing system, processors, memory, a network, and a database arranged in a conventional client-server architecture, with the abstract matching process running on top. As to the asserted efficiency gains, performing the identification and comparison of agreements more quickly, in real time, on generic computing hardware is precisely the type of improvement that does not confer eligibility: the claims merely use computers as a tool to perform the abstract idea faster and more efficiently, and any gain in speed or accuracy flows from the abstract matching process itself rather than from any improvement to the functioning of a computer. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015); BSG Tech, 899 F.3d at 1288. Whatever characterization appeared in the prior advisory action, the efficiency described in Applicant’s specification is an efficiency of the commercial matching task, and an improved abstract idea is still an abstract idea.
For at least the foregoing reasons, the rejection of claims 1-2 and 4-21 under 35 U.S.C. § 101 is maintained.
Other Relevant Prior Art
Though note relied upon in the aforementioned rejections, the following references are nevertheless deemed to be relevant to Applicant’s disclosures:
Postrel et al. (20160098741), directed to a method for generating a dynamic purchase incentive.
Alvin et al. (20120150593), directed to a method for sending targeted product offerings based on personal information.
Chang et al. (20160048885), directed to a method for offer matching for a user segment.
Augspurger et al. (20050261939), directed to a pharmacy benefits calculator.
Apps et al. (20160071083), directed to a method for dynamically configurable payment routing and responses based on payment types.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER BUSCH whose telephone number is (571)270-7953. The examiner can normally be reached M-F 10-7.
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, Waseem Ashraf can be reached at 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER C BUSCH/Examiner, Art Unit 3621
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