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 .
DETAILED ACTION
Status of the Application
Claims 2-21 are currently pending in this case and have been examined and addressed below. This communication is a Non-Final Rejection in response to the Amendment to the Claims filed on 03/13/2025.
Claim 1 is canceled and not considered at this time.
Priority
The instant application claims the benefit of priority under 35 U.S.C 119(e) or under 35 U.S.C. § 120, 120, or 365(c). Accordingly, the effective filing date for the instant application is 01/21/2014 granting benefit to application 14/160,203.
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 2-21 are rejected because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 2-11 fall within the statutory category of a process. Claims 12-21 fall within the statutory category of a system or apparatus.
Step 2A, Prong One
As per Claims 2 and 12, the limitations of performing mock adjudication of drug prices from at least a first pharmacy benefit manager and a second pharmacy benefit manager to create cached drug prices; receiving information identifying a first drug; obtaining at least a first price for the first drug that is associated with a first pharmacy benefit manager determined by an agreement between the first PBM and a pharmacy; obtaining at least a second price for the first drug that is associated with a second pharmacy benefit manager determined by an agreement between the second PBM and the pharmacy; ranking at least the first and second prices for the first drug in an order that is different from lowest to highest; generating a discount coupon that includes a rotating member ID assigned to the user and a PBM identifier; and access the selected price for purchase of the first drug, under its broadest reasonable interpretation, covers commercial interactions including agreements, marketing or sales activities or behaviors, and business relations. The steps of performing mock adjudication of drug prices, identifying a first drug, obtaining a price for the first drug from pharmacy benefit managers that are determined based on an agreement between the PBM and pharmacy; ranking prices, generating a discount coupon, and accessing the selected price for purchase of the first drug are concepts of business relations, advertising, marketing and sales activities. If a claim limitation, under its broadest reasonable interpretation, covers the performance of business relations, advertising, marketing and sales activities, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application because the additional elements and combination of additional elements do not impose meaningful limits on the judicial exception. In particular, the claims recite the additional element – a system comprising a first and second module executing on one or more computer processors. The first and second modules in these steps are recited at a high-level of generality, such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims also recite the additional elements of providing a user interface using a computer processor, where the user interface using a computer processor is a general purpose computing component which applies the abstract idea and therefore amounts to mere instructions to apply the exception. The claims also recite the additional element of using an application programming interface to access the price for purchase of the drug, where the application programming interface is a general purpose computer component recited at a high-level of generality as software for carrying out the function of accessing the price for purchase of a drug. The courts have found that a method of using advertising as an exchange or currency being applied or implements on the Internet does no more than merely invoke computers as a tool to perform an existing process and therefore amounts to mere instructions to apply the exception. The accessing of drug prices for purchase through use of an API amounts to use of computers for advertising as an exchange or currency similar to that in MPEP 2106.05(f)(2). The claims also recite the additional elements of caching the drug prices in a database, which equates to storing data. MPEP 2106.05(f)(2) has found that invoking computer in its ordinary capacity for tasks including receiving, storing, and transmitting data amounts to mere instructions to apply the exception. The claims also recite the additional elements of obtaining a price for the first drug from the cached drug prices in the database, displaying in the user interface the first and second prices according to the ranking, receiving a selection of one of the first and second prices from the user interface, presenting the electronic discount coupon to a computer at the pharmacy. These elements amount to insignificant extra-solution activity, as in MPEP 2106.05(g), because they are mere data gathering and mere data outputting in conjunction with the abstract idea, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering). Because the additional elements do not impose meaningful limitations on the judicial exception, the claim is directed to an abstract idea.
Step 2B
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. As discussed above with the respect to integration of the abstract idea into a practical application, the additional element of a system comprising a first and second module executing on one or more computer processors to perform the method of the invention amounts to no more than mere instructions to apply the exception using a generic computing component. The system including the modules are recited at a high level of generality and are recited as generic computer components by reciting the modules are illustrated as logic or code (Specification [0135]) executed by a machine such as a computer, processor, etc. (Specification, [0136]), which do not add meaningful limitations to the abstract idea beyond mere instructions to apply an exception. The claims also recite use of a user interface using a computer processor and use of an application programming interface to carry out steps of the abstract idea. The user interface is described as a web user interface (Specification [0126]) and the application programming interface is not further described beyond being used for communication between the system and systems of PBMs (specification [0053]). These are merely general purpose computing components, which amounts to mere instructions to apply the exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims also include the additional elements of obtaining a price for the first drug from the cached drug prices in the database, displaying in the user interface the first and second prices according to the ranking, receiving a selection of one of the first and second prices from the user interface, presenting the electronic discount coupon to a computer at the pharmacy, which are elements that are well-understood, routine and conventional computer functions in the field of data management because they are claimed at a high level of generality and include receiving or transmitting data, storing and retrieving information from memory, and displaying data which have been found to be well-understood, routine and conventional computer functions by the Court (MPEP 2106.05(d)(II)(i) Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added); (iv) 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); and Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93. 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 the computer or improves another technology. The claims do not amount to significantly more than the underlying abstract idea.
Dependent Claims
Dependent Claims 3-11 and 13-21 add further limitations which are also directed to an abstract idea. For example, Claims 3 and 13 include creating a two-dimensional index which stores drug prices with 2D geospatial points which can be performed using human mental evaluation, observation, judgment, and opinion and therefore falls into the abstract grouping of a mental process.
Claims 4 and 14 include creating a 3D geospatial index which has spatial coordinates as on an x-axis, y-axis, and a drug price on a z-axis, which falls into the abstract grouping of a mental process for the same reasons as Claims 3 and 13.
Claims 5-6 and 15-16 include caching a price for a specific drug at a first time of day and using cached prices for the specific drug the rest of the day. The caching of a price for a drug amounts to storing data and is an additional element which amounts to mere instructions to apply the exception for the same reasons as the independent claims. The use of the cached prices for particular times further specifies the elements of the independent claims and is therefore directed to the same abstract idea.
Claims 7-8, 10-11, 17-18, and 20-21 further specify or limit the elements of the independent claims and therefore are directed to the same abstract idea as the independent claims.
Claims 9 and 19 include determining a preferred order for ranking prices from the first PBM and prices from the second PBM, the preferred order indicating that prices from the first PBM are to be ranked higher than prices from the second PBM which can be performed using human mental evaluation, observation, judgment, and opinion and therefore falls into the abstract grouping of a mental process. This also describes the business and sales activities of purchase of drugs and can fall into the abstract grouping of certain methods of organizing human activity.
Because the elements of the dependent claims do not impose meaningful limitations on the judicial exception and the additional elements are well-understood, routine and conventional functionalities in the art, the claims are directed to an abstract idea and are not patent eligible.
Subject Matter Free of the Prior Art
The following is an examiner’s statement of subject matter free of the prior art: The limitations in Claims 2 and 12 stating: ranking at least the first and second prices for the first drug in an order that is different from lowest to highest and displaying in the user interface the first and second prices according to the ranking in combination with presenting the electronic discount coupon to a computer at the pharmacy, the computer using the rotating member ID and the PBM identifier on the electronic discount coupon and using an application programming interface with the rotating member ID and the PBM identifier to access the selected price for purchase of the first drug is free of the prior art. The broadest reasonable interpretation of the claim language requires ranking of multiple prices adjudicated from multiple PBMs for a drug in an order different from lowest to highest and displaying the ranks and also generating a discount coupon for the drug and using a rotating member ID and PBM identifier to access the price for the drug. The most remarkable prior arts of record are as follows: Howe et al. (US 2007/0250341 A1) and Park et al. (US 2012/0096023 A1).
Neither Howe or Park teach on ranking the prices in order different from lowest to highest and generating a discount coupon for the drug and using a rotating member ID and PBM identifier to access the price for the drug. Therefore, claims 2-21 are free of the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Howe et al. (US 2007/0250341 A1) teaches providing member prices for medications at different pharmacies to select a location for prescription fulfillment for the member.
Park et al. (US 2012/0096023 A1) teaches providing location of multiple pharmacies to select from on a map with location and price of a prescription medication.
Geraci (US 2014/0006966 A1) teaches a display of a 3D geographic display with descriptive information including price in the z-axis for shopping.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Evangeline Barr whose telephone number is (571)272-0369. The examiner can normally be reached Monday to Friday 8:00 am to 4:00 pm.
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/EVANGELINE BARR/Primary Examiner, Art Unit 3682