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 .
Response to Amendment
In the amendment filed 06/15/2026, the following has occurred: claim 10 has been amended. Now, claims 1-20 remain pending.
The previous rejections under 35 U.S.C. 112(b) are withdrawn based on the amendments to the claims.
Terminal Disclaimer
The terminal disclaimer filed on 06/15/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,243,630 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The previous double patenting rejections are withdrawn based on the filing of the terminal disclaimer.
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 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A Prong One
Claim 1 recites identifies, in a first database, one or more covered alternative drugs based on a requested drug and a drug coverage plan associated with a patient identifier; identifies, in a second database, one or more additional alternative drugs based on at least one of the requested drug and at least one covered alternative drug of the one or more covered alternative drugs; determines, based on the covered drug plan associated with the patient identifier, whether the one or more additional alternative drugs includes at least one covered additional alternative drug; in response to a determination that the one or more additional alternative drugs includes at least one covered additional alternative drug, determines, for the at least one covered additional alternative drug and the one or more covered alternative drugs, an alternative drug value; identifies the at least one covered additional alternative drug and the one or more covered alternative drugs having a desired alternative drug value; rank the at least one covered additional alternative drug and the one or more covered alternative drugs having the desired alternative drug value based on number of times the at least one covered additional alternative drug and the one or more covered alternative drugs having the desired alternative drug value has been filled for an associated prescription; and generate a request response indicating at least the desired alternative drug of the at least one covered additional alternative drug and the one or more covered alternative drugs having the desired alternative drug value ordered according to the rank; communicate an order associated with a prescription request to fill the alternative drug to an automated pharmacy; fulfill the order; identifies a prescription container of the order.
Claim 10 recites identifying, in a first database, one or more covered alternative drugs based on a requested drug and a drug coverage plan associated with a patient identifier; identifying, in a second database, one or more additional alternative drugs based on at least one of the requested drug and at least one covered alternative drug of the one or more covered alternative drugs; determining, based on the covered drug plan associated with the patient identifier, whether the one or more additional alternative drugs includes at least one covered additional alternative drug; in response to a determination that the one or more additional alternative drugs includes at least one covered additional alternative drug, determining, for each of the at least one covered additional alternative drug and the one or more covered alternative drugs, an alternative drug value; identifying the at least one covered additional alternative drug and the one or more covered alternative drugs having a lowest alternative drug value; and rank the at least one covered additional alternative drug and the one or more covered alternative drugs having the lowest alternative drug value based on number of times each of the at least one covered additional alternative drug and the one or more covered alternative drugs having a desired alternative drug value has been filled for an associated prescription; and generating a request response indicating at least the alternative drug of the at least one covered additional alternative drug and the one or more covered alternative drugs having the lowest alternative drug value ordered according to the rank; communicating an order associated with a prescription request to fill the alternative drug to a high-volume pharmacy; receiving instructions to fulfill the order; identifying a prescription container for the order; controlling the prescription container.
These limitations, as drafted, given the broadest reasonable interpretation, but for the recitation of generic computer components, encompass managing interactions between people and fundamental economic practices, which are subgroupings of Certain Methods of Organizing Human Activity. For example, the claims encompass identifying covered and additional alternative drugs based on a requested drug associated with a patient, determining whether a drug plan associated with the patient covers an additional alternative drug, determining a drug value and identifying additional and covered alternative drugs having a lowest value, and generating a request response for alternative drugs having the lowest alternative value, ordering a prescription to fill the drug at a pharmacy and identifying a prescription container for the order. These manual steps could be carried out by individuals in the healthcare and pharmaceutical industry and represent fundamental economic practices in these industries.
Claims 2-9, 11-18, and 20 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, claims 2-4, 8, 10-12, and 16 include limitations already addressed above. Claims 5-7, 13-15, 18, and 20 further expand on processing prescription benefit requests and alternative drugs. For similar reasons as given above, these limitations also encompass managing interactions between people and fundamental economic practices, which are subgroupings of Certain Methods of Organizing Human Activity.
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 adding elements similar to adding the words “apply it” to the abstract idea, and generally linking the abstract idea to a particular technological environment, along with insignificant, extra-solution data gathering activity.
Claims 1-9, directly or indirectly, recite the following generic computer components: “a processor in communication with a memory including instructions that, when executed by the processor, cause the processor to execute a machine learning model.” Claims 10-18 and 20, , directly or indirectly, recite the following generic computer components: “running a machine learning model,” “controlling, a transport system, a location of the prescription container.”
The written description discloses that the recited computer components encompass generic components including “a general purpose computer to execute one or more particular functions embodied in computer programs” (see paragraph 0152). As set forth in the MPEP 2106.04(d) “merely including 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. Additionally, claims 9-16 do not recite any additional elements and, therefore, do not integrate the abstract idea into a practical application.
Claims 1-18 and 20, directly or indirectly, recite the following additional elements at a high level of generality, involving no more that extra-solution data gathering and transmitting activity: “transmits a control signal to a transport system,” “transmits a dispensing control signal to the automated dispensing device,” communicating an order “to an order processing device,” “receiving instructions “at a pharmacy fulfillment device from the order processing device.” These additional elements are recited at a high degree of generality and are merely involved in insignificant extra solution data gathering and transmitting of data over a generic computer network. As set forth in MPEP 2106.05(g) insignificant, extra-solution activity, such as insignificant acquisition and data transmission, is an example of when an abstract idea has not been integrated into a practical application.
Claims 8, 10, and 20, recite the following additional elements at a high level of generality, generally linking the abstract idea to a particular technological environment: “the processor is part of an artificial intelligence engine,” “controlling a drug dispenser to insert the alternative drug into the prescription container,” “activating the automated dispensing device with the prescription container beneath the automated dispensing device.” The “artificial intelligence engine,” does not include any specific features or operations. Additionally, the controlling and activating are recited at a broad level that encompasses simply pressing a button by a user to begin an activation process. Such broad recitations merely linking the abstract idea to a particular technological environment.
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.”).
Insignificant, extra solution, data gathering activity (e.g. transmitting and receiving data) 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)).
Generally linking the abstract idea to a particular technological environment (e.g. generic artificial intelligence and activating a control) does not amount to significantly more than the abstract idea (see MPEP 2016.05(h) and Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016)).
Additionally, the aforementioned additional elements, considered in combination, do not provide an improvement to a technical field or provide a technical improvement to a technical problem. Therefore, whether considered alone or in combination, the additional elements do not amount to significantly more than the abstract idea.
Claim 19
Claim 19 further requires the controlling the prescription container to include identifying a puck having dimensions corresponding to the prescription container of the order, controlling a robotic arm to position the puck on a pallet, and controlling a loading device to load the prescription container into the puck. These additional steps require the operation of a particular machine, integrating the abstract idea into a practical application.
Distinguishing Subject Matter
The following is a statement of reasons for the indication of distinguishing subject matter: The primary reason that claims 1-20 distinguish over the prior art is the inclusion of the combination of limitations of the series of steps for identifying covered alternative drugs and additional alternative drugs, based on a drug coverage plan, ranking covered additional alternative drugs and covered alternative drugs based on desired drug value and number of times being filled for an associated prescription, and using the results to fill a drug order using the series of controlled functions. The closest prior art (Kaye and Joplin) describes processing a prescription benefit request to identify covered alternative drugs and alternative drugs for a covered drug plan and fulfilling a drug resulting drug order using a robotically controlled puck and pallet system. Additionally, Greenblatt describes ranking generic equivalent and alternative drugs to select a highest ranked generic or alternative. Szela describes ranking brand drugs according to the number of times previously prescribed. However, there is no description of combining these rankings to achieve the recited ranking and there is no suggestion to combine the disparate rankings with the drug order and filling process of Kaye and Joplin. Therefore, the claim limitations, considered in combination, distinguish over the prior art.
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
In the remarks filed 06/15/2026, Applicant argues (1) claim 1 recites physical devices that receive control signals and dispense prescriptions which is not Methods of Organizing Human Activity or any other judicial exception; (2) claim 10 is not directed to a judicial exception for similar reasons to claim 1.
In response to argument (1), claim 1 recites two steps of transmitting a signal. First, the claim recites transmitting a “control signal” to a transport system. Second, the claim recites transmitting a “dispensing control signal” to a device “to fill the prescription container…with the alternative drug to fulfill the order.” While these signal transmitting steps are related to “a transport system” and “an automated dispensing device,” these are broadly recited elements and are only recited as recipients of the transmitted signals. The rejections acknowledge that these elements are not directed to a judicial exception, but because of their high level of generality and recited as related to signal transmitting, do not integrate the abstract idea into a practical application as being directed to insignificant extra-solution activity.
In response to argument (2), the “controlling” steps similarly recite the additional elements “transport system” and “drug dispenser” at a high level of generality that generally links the abstract idea to a particular technological environment. As noted in the rejections, the controlling and activating are recited at a broad level that encompasses simply pressing a button by a user to begin an activation process. Such broad recitations merely linking the abstract idea to a particular technological environment and do not integrate the abstract idea into a practical application.
Note that the above remarks do not apply to claim 19 where the controlling of the robotic arm to position the puck on a pallet and controlling a loading device to load the prescription container into the puck integrating the abstract idea into a practical application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Wilkinson, US Patent Application Publication No. 2019/0326003, discloses ranking alternatives based on cost and formulary status.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. Luke Gilligan whose telephone number is (571)272-6770. The examiner can normally be reached Monday through Friday 9:00 - 5:00.
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C. Luke Gilligan
Primary Examiner
Art Unit 3683
/CHRISTOPHER L GILLIGAN/ Primary Examiner, Art Unit 3683
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