Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status Of Claims
This action is in reply to the application filed on 12/02/2024.
Claims 1-18 are currently pending and have been examined.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6, 8-15 and 17-20 of U.S. Patent No. 11,749,392.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-18 of the instant pending application omits certain steps of claims 1-6, 8-15 and 17-20 in the 11,749,392 patent. Therefore, claims 1-18 are prima facie obvious of claims 1-6, 8-15 and 17-20 because it would have been obvious to omit certain steps with the motivation of providing methods and systems for providing a unique machine-readable code associated with a retrieval of one or more prescription products.
Claims 1-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,159,702.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-18 of the instant pending application omits certain steps of claims 1-18 in the 12,159,702 patent. Therefore, claims 1-18 are prima facie obvious of claims 1-18 because it would have been obvious to omit certain steps with the motivation of providing methods and systems for providing a unique machine-readable code associated with a retrieval of one or more prescription products.
Claim Rejections – 35 § 112(b)
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 1-18 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.
Claim 1, recites in part, “obtaining, via one or more processors, a code associated with a retrieval of one or more prescription products by an individual”. It is unclear from who, what or where a code associated with a retrieval of one or more prescription products by an individual, is being obtained via one or more processors. Is the code associated with a retrieval of one or more prescription products by an individual, being obtained from a person, a device, or a specific location? Claims 7 and 13 recite similar limitations. Claims 1, 7 and 13 are therefore found to be indefinite, because the resulting claims does not clearly set forth the metes and bounds of the patent protection desired. All dependent claims, namely claims 2-6, 8-12 and 14-18 are rejected for at least the same reason.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-18: Step 1
Claims 1-6 are drawn to a method to enable an individual to retrieve one or more prescription products from a self-service retrieval location, which is within the four statutory categories (i.e. process). Claims 7-12 are drawn to one or more non-transitory computer readable media storing instructions that, when executed via one or more processors, cause one or more computers to enable an individual to retrieve one or more prescription products from a self-service retrieval location, which is within the four statutory categories (i.e. machine). Claims 13-18 are drawn to a computing system to enable an individual to retrieve one or more prescription products from a self-service retrieval location, which is within the four statutory categories (i.e. machine).
Claims 1-18: Step 2A Prong One
Claim 1 recites obtaining, a code associated with a retrieval of one or more prescription products by an individual; identifying, one or more prerequisite tasks requiring completion by the individual prior to the retrieval; subsequent to obtaining the code, obtaining, an indication of the one or more prerequisite tasks being completed by the individual; subsequent to obtaining the indication, obtaining a second indication of a presenting of the code at a point of retrieval of the one or more prescription products; and based upon the presenting of the code and the obtaining of the second indication, facilitating a providing of the one or more prescription products via a system at the point of retrieval. Claims 7 and 13 recite similar limitations.
These limitations, as drafted, given the broadest reasonable interpretation, but for the recitation of generic computer components, encompass managing personal behavior by manually following rules or instructions, which is a subgrouping of Certain Methods of Organizing Human Activity. But for the recitation of generic computer components, these limitations encompass a user obtaining, a code associated with a retrieval of one or more prescription products by an individual; identifying, one or more prerequisite tasks requiring completion by the individual prior to the retrieval; subsequent to obtaining the code, obtaining, an indication of the one or more prerequisite tasks being completed by the individual; subsequent to obtaining the indication, obtaining a second indication of a presenting of the code at a point of retrieval of the one or more prescription products; and based upon the presenting of the code and the obtaining of the second indication, facilitating a providing of the one or more prescription products via a system at the point of retrieval. These steps could be carried out manually by a user following rules or instructions, which is a subgrouping of Certain Methods of Organizing Human Activity. Claims 7 and 13 recite similar limitations.
Claims 2-6, 8-12 and 14-18 incorporate the abstract idea identified above and recite additional limitations that expand on the abstract idea, but for the recitation of generic computer components. For example, but for the recitation of generic computer components, Claims 2, 8 and 14 further define selecting retrieval station(s) based upon indication of completion of prerequisite task(s). Claims 3, 9 and 15 further define the plurality of retrieval stations. Claims 4, 10 and 16 further define providing indication of a selected retrieval station. Claims 5, 6, 11, 12, 17 and 18 further define one or more prerequisite tasks. Therefore, these claims are similarly drawn to Certain Methods of Organizing Human Activity.
Claims 1-18: Step 2A Prong Two
This judicial exception is not integrated into a practical application because the remaining elements amount to no more than general purpose computer components programmed to perform the abstract ideas along with insignificant, extra-solution data gathering activity, and adding limitations similar to adding the words “apply it” to the abstract idea. Claim 1 recites the additional elements that the computer-implemented method steps are performed by one or more processors. Claim 7 recites additional elements of one or more non-transitory computer readable media storing instructions that are executed via one or more processors/computers. Claim 13 recites additional elements of a computing system comprising one or more processors and one or more non-transitory computer memories storing instructions for execution via the one or more processors.
Claims 1-18, directly or indirectly, recite the following generic computer components: “one or more processors,” “non-transitory computer readable media storing instructions that are executed via one or more processors/computers,” and “computing system comprising one or more processors and one or more non-transitory computer memories storing instructions for execution via the one or more processors” which are similar to adding the words “apply it” to the abstract idea. The written description discloses that the recited computer components encompass generic components including “The electronic device 114 may be for example, a smartphone, a tablet, a laptop computer, a desktop computer, a smart wearable device, or another suitable computing device“ (see at least Paragraph [0029]), “the electronic device 114 may include one or more memories 202 (e.g., RAM, ROM, EPROM, EEPROM, removable memory, etc.). The one or more memories 202 may include an operating system 204 capable of facilitating the functions of the electronic device 114 described herein. The one or more memories 202 may further include one or more applications 206, one or more of which may be executed via one or more processors 208 to perform the functions described“ and “one or more computer systems (e.g., a standalone, client or server computer system) or one or more hardware modules of a computer system (e.g., a processor or a group of processors) may be configured by software (e.g., an application or application portion) as a hardware module that operates to perform certain operations“ (see at least Paragraph [0139]). See MPEP 2106.05 (h). As set forth in the 2019 Eligibility Guidance, 84 Fed. Reg. at 55 “merely include[ing] instructions to implement an abstract idea on a computer” is an example of when an abstract idea has not been integrated into a practical application.
Claims 1-18: Step 2B
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above with respect to integration into a practical application, the additional elements are recited at a high level of generality, and the written description indicates that these elements are generic computer components. Using generic computer components to perform abstract ideas does not provide a necessary inventive concept. See Alice, 573 U.S. at 223 (“mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). As explained above, the generic computer components are at best the equivalent of merely adding the words “apply it” to the judicial exception.
Receiving and transmitting data over a network (i.e. receiving and communicating data or signals) has been recognized as well-understood, routine, and conventional activity of a general-purpose computer (see MPEP 2106.05(d) and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014)).
Gathering and analyzing information using conventional techniques and displaying the result has also been found to be insufficient to show an improvement to technology, (see MPEP 2106.05(a) and TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48).
Insignificant, extra solution, data gathering activity has been found to not amount to significantly more than an abstract idea (see MPEP 2106.05(g) and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)). Therefore, the high-level recitation of an output of results also fails to include additional elements that are sufficient to amount to significantly more than the judicial exception.
Therefore, whether considered alone or in combination, the additional elements do not amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-11 and 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ackerman (WIPO Publication WO 2015/048496 A1).
Claim 1:
Ackerman discloses the following limitations as shown below:
obtaining, via one or more processors, a code associated with a retrieval of one or more prescription products by an individual (see at least Claim 1; Fig. 2; Paragraph 33, The generated code may be unique to the transaction, consumer, kiosk, and/or item; Paragraph 54; Paragraph 96; Paragraph 160, kiosk management system may be extended and application to any suitable item, such as prescription drugs and health/beauty products);
identifying, via the one or more processors, one or more prerequisite tasks requiring completion by the individual prior to the retrieval (see at least Paragraphs 32-33, the consumer may be prompted by the designated kiosk to log in with his or her pre-registered account information associated with the kiosk management system; Paragraph 43, the consumer 112 may pre-register account information and payment information with the kiosk management system 102. Payment information can include a credit card identifier, bank account identifier, rewards account identifier, billing address, or any other suitable information needed; Paragraph 55-57; Paragraphs 93-94; Paragraph 126);
subsequent to obtaining the code, obtaining, via the one or more processors, an indication of the one or more prerequisite tasks being completed by the individual via a mobile computing device associated with the individual (see at least Claim 1; Paragraphs 32-33; Paragraph 43, the consumer 112 may pre-register account information and payment information with the kiosk management system 102. Payment information can include a credit card identifier, bank account identifier, rewards account identifier, billing address, or any other suitable information needed; Paragraph 114; Paragraph 130, FIG. 17 shows an example user interface of a mobile application presented on a mobile device via which a consumer can select a kiosk from which to retrieve an item; Paragraph 135; Paragraph 138);
subsequent to obtaining the indication, obtaining a second indication of a presenting of the code at a point of retrieval of the one or more prescription products (see at least Paragraph 33, when the consumer is notified that the requested item is available, the notification may also include a generated code. The generated code may be unique to the transaction, consumer, kiosk, and/or item. In other embodiments, the generated code may be associated with the kiosk, consumer, transaction, and/or item for identification purposes. To initiate retrieval of the requested item from the designated kiosk, the consumer may be prompted to enter the generated code; Paragraph 54; Paragraph 96; Paragraph 160, kiosk management system may be extended and application to any suitable item, such as prescription drugs and health/beauty products); and
based upon the presenting of the code and the obtaining of the second indication, facilitating a providing of the one or more prescription products via a system at the point of retrieval (see at least Paragraph 33, To initiate retrieval of the requested item from the designated kiosk, the consumer may be prompted to enter the generated code; Paragraph 54; Paragraph 96; Paragraph 160, kiosk management system may be extended and application to any suitable item, such as prescription drugs and health/beauty products; Paragraph 94, When the payment processing is complete, finally, at 816, the kiosk 600 can release the requested item to the consumer).
Claims 7 and 13 recite substantially similar non-transitory computer readable media and system limitations to those of method claim 1 and, as such, are rejected for similar reasons as given above.
Claim 2:
Ackerman discloses the limitations as shown in the rejections above. Ackerman further discloses the following limitations:
further comprising selecting, via the one or more processors and based upon the indication of the one or more prerequisite tasks being completed, and from among a plurality of retrieval stations located at point of retrieval, a particular retrieval station to be used for the providing of the one or more prescription products (see at least Paragraph 30, the consumer may choose a designated kiosk to pick up the item(s); Paragraph 31).
Claims 8 and 14 recite substantially similar non-transitory computer readable media and system limitations to those of method claim 2 and, as such, are rejected for similar reasons as given above.
Claim 3:
Ackerman discloses the limitations as shown in the rejections above. Ackerman further discloses the following limitations:
wherein the plurality of retrieval stations from which the selection is made comprise (i) one or more standard retrieval stations to be used for the providing of the one or more prescription products when the one or more prerequisite tasks have not been completed prior to the presenting of the unique machine-readable code (see at least Paragraph 33, the designated kiosk may verify the generated code locally when the consumer enters the code to release the requested item(s). A payment process to authorize payment of the transaction may begin when the consumer initiates retrieval of the requested items from the kiosk. Paragraph 54, The generated code may be unique to the transaction, consumer, kiosk, and/or item), and (ii) one or more express retrieval stations to be used for the providing of the one or more prescription products when the one or more prerequisite tasks have been completed prior to the presenting of the unique machine-readable code (see at least Paragraph 32, To release the requested item, the consumer may be prompted by the designated kiosk to log in with his or her pre-registered account information associated with the kiosk management system; Paragraph 43, the consumer 112 may pre-register account information and payment information with the kiosk management system 102. Payment information can include a credit card identifier, bank account identifier, rewards account identifier, billing address, or any other suitable information needed; Paragraph 54, The generated code may be unique to the transaction, consumer, kiosk, and/or item).
Claims 9 and 15 recite substantially similar non-transitory computer readable media and system limitations to those of method claim 3 and, as such, are rejected for similar reasons as given above.
Claim 4:
Ackerman discloses the limitations as shown in the rejections above. Ackerman further discloses the following limitations:
further comprising providing, to the mobile computing device of the individual, an indication of a selected retrieval station from among the plurality of retrieval stations (see at least Claim 1, indicates that the item is reserved at a kiosk selected from a plurality kiosks by the consumer; Fig. 2; Paragraphs 32-33; Paragraph 54; Paragraph 94; Paragraph 96; Paragraph 160).
Claims 10 and 16 recite substantially similar non-transitory computer readable media and system limitations to those of method claim 4 and, as such, are rejected for similar reasons as given above.
Claim 5:
Ackerman discloses the limitations as shown in the rejections above. Ackerman further discloses the following limitations:
wherein the one or more prerequisite tasks comprise a payment for the one or more prescription products (see at least Fig. 8; Paragraph 33, A payment process to authorize payment of the transaction may begin when the consumer initiates retrieval of the requested items from the kiosk; Paragraphs 55-56; Paragraph 160).
Claims 11 and 17 recite substantially similar non-transitory computer readable media and system limitations to those of method claim 5 and, as such, are rejected for similar reasons as given above.
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 of this title, if the differences between the claimed invention and the prior art axe 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 6, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over WIPO Publication WO 2015/048496 A1 to Ackerman in view of U.S. Patent Application Publication US 2017/0032092 A1 to Mink et al.
Claim 6:
Ackerman discloses the limitations as shown in the rejections above. Ackerman may not specifically disclose the following limitations, but Mink as shown does:
wherein the one or more prerequisite tasks comprise a pharmacist consultation (see at least Paragraph 20, The medication adherence application can also include the ability to refer the patient to the pharmacist onsite (or tele pharmacist if pharmacy supported location) to answer any questions and/or for additional consultation. The medication adherence application of the present invention can be designed to generate a screen that includes one or more main buttons (e.g., 1) Consult with a tele pharmacist 2) speak with the onsite pharmacist now. The medication adherence application of the present invention can be used to allow the patient to more easily obtain and understand the correct use of their prescriptions. In summary, the medication adherence software application allows a patient user/patient to 1) speak to a pharmacist).
At the time of the filing of the application it would have been obvious to one of ordinary skill in the art to combine the teaching of the prescription products retrieval system of Ackerman with the feature of Mink with the motivation of providing the benefit of “… provide medical services in a more convenient, desirable, timely and cost effective manner with better patient outcomes and access” (Mink, see at least Paragraph 6).
Claims 12 and 18 recite substantially similar non-transitory computer readable media and system limitations to those of method claim 6 and, as such, are rejected for similar reasons as given above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joy Chng whose telephone number is 571.270.7897. The examiner can normally be reached on Monday-Friday, 9:00am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, JASON DUNHAM can be reached on 571.272.8109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Joy Chng/
Primary Examiner, Art Unit 3686
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