DETAILED ACTION
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 amendment filed on 06/01/26.
Claims 1, 3, 13, 19, 21, 22, 25, 32, 44 have been amended and are hereby entered.
Claims 18 and 37 have been canceled.
Claims 1, 3, 4, 9, 10, 13, 14, 19, 21-23, 25, 32, 38-40, 42, and 44 are currently pending and have been examined.
This action is made final.
Continuity/Priority Date
Status of this application as a continuation of US Application 18/459,794, filed 09/01/23, which is a continuation of US Application 16/133,603, filed 09/17/18 is acknowledged. Accordingly, a priority date of 09/17/18 has been given to this application.
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, 3, 4, 9, 10, 13, 14, 19, 21-23, 25, 32, 38-40, 42, and 44 are rejected under 35 U.S.C.101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Step 1
Claims 1, 3, 4, 9, 10, 13, 14, 19, 21-23, 25, 32, 38-40, 42, and 44 are drawn to a method, which is within the four statutory categories. Claims 1, 3, 4, 9, 10, 13, 14, 19, 21-23, 25, 32, 38-40, 42, and 44 are further directed to an abstract idea on the grounds set out in detail below.
Step 2A Prong 1
Claim 1 recites implementing the steps of:
inputting data related to a pharmaceutical medication, wherein the inputted data are derived at least in part from documentation associated with the received pharmaceutical medication(s), and wherein the inputted data identify:
(1) name and quantity of at least a portion of the pharmaceutical medication, and
(2) a location for at least a portion of the pharmaceutical medication in an inventory, wherein the ordering of pharmaceutical medications in the inventory is not alphabetical by pharmaceutical medication name;
creating a record associated with at least a portion of the pharmaceutical medication, wherein the record identifies the name and quantity of the portion of the pharmaceutical medication and the location for the portion of the pharmaceutical medication in the inventory.
inputting data related to the pharmaceutical medication, wherein the data identify a medication identification code corresponding to the pharmaceutical medication and quantity of the pharmaceutical medication;
based on the inputted data, searching a plurality of records one or more record(s) associated with the pharmaceutical medication in the inventory;
based on the search: filtering, sorting, and/or grouping a plurality of search results associated with the pharmaceutical medication in the inventory, wherein the plurality of search results is filtered, sorted, and/or grouped based at least in part on expiration date and one or both of location identifier and quantity;
based on the filtering, sorting, and/or grouping: displaying a plurality of records associated with the pharmaceutical medication in the inventory, wherein each record of the plurality comprises a location identifier for the pharmaceutical medication, wherein the location identifier identifies a location of at least a portion of the pharmaceutical medication in the inventory;
updating a record associated with the pharmaceutical medication from the displayed plurality to indicate pending status, wherein the pending status reflects a quantity of the pharmaceutical medication that is or will be retrieved from the inventory;
These steps amount to managing personal behavior or relationships or interactions
between people and therefore recite certain methods of organizing human activity. Recording (“inputting”) information related to a pharmaceutical medication that is derived from associated documentation and includes data identifying the name, quantity, and an inventory storage location of the medication to create a record associated with the pharmaceutical medication which identifies the name, quantity and location in inventory, inputting data identifying a medication ID code and quantity, searching a plurality of records for the associated medication in inventory, filtering, sorting and/or grouping the results based on expiration date and location ID/quantity, and updating a record associated with the medication to indicate a pending status, are personal behavior that may be performed by pharmacy personnel.
Claim 19 recites implementing the steps of:
receiving an order for one or more pharmaceutical medications, wherein the order indicates a name and a quantity for each of the one or more pharmaceutical medications;
inputting data related to the one or more pharmaceutical medications, wherein the data identify a medication identification code corresponding to the one or more pharmaceutical medications and quantity of the one or more pharmaceutical medications;
based on the inputted data, searching a plurality of records for one or more record(s) associated with the one or more pharmaceutical medications in the inventory;
based on the search: filtering, sorting, and/or grouping a plurality of search results associated with the pharmaceutical medications in the inventory, wherein the plurality of search results is filtered, sorted, and/or grouped based at least in part on expiration date and one or both of location identifier and quantity;
based on the filtering, sorting, and/or grouping: displaying a plurality of records associated with the pharmaceutical medications in the inventory, wherein each record of the plurality comprises a location identifier for the one or more pharmaceutical medications, wherein the location identifier identifies a location of at least a portion of the one or more pharmaceutical medications in the inventory, and wherein the ordering of pharmaceutical medications in the inventory is not alphabetical by pharmaceutical medication name
These steps amount to managing personal behavior or relationships or interactions
between people and therefore recite certain methods of organizing human activity. Receiving an order for a pharmaceutical medication including a name and quantity of the medication, inputting data to identify a medication code corresponding to the medication, searching a plurality of records for records associated with the pharmaceutical medication stored in inventory; filtering, sorting and/or grouping the search results associated with the medications by expiration date and location identifier/quantity, and providing (“displaying”) a plurality of records based on the filtering, sorting and/or grouping to show a location identifier for the medications stored in inventory are personal behaviors that may be performed by pharmacy personnel.
Claim 25 recites implementing the steps of:
inputting data identifying related to one or more pharmaceutical medications, wherein the data identify a medication identification code corresponding to the one or more pharmaceutical medications
based on the inputted data, searching a plurality of records for one or more record(s) associated with the one or more pharmaceutical medications in the inventory;
based on the search: filtering, sorting, and/or grouping a plurality of search results associated with the pharmaceutical medications in the inventory, wherein the plurality of search results is filtered, sorted, and/or grouped based at least in part on expiration date and one or both of location identifier and quantity;
based on the filtering, sorting, and/or grouping: displaying a plurality of records associated with the pharmaceutical medications in the inventory, wherein each record of the plurality comprises a location identifier for the one or more pharmaceutical medications, wherein the location identifier identifies a location of at least a portion of the one or more pharmaceutical medications in the inventory, and wherein the ordering of pharmaceutical medications in the inventory is not alphabetical by pharmaceutical medication name;
These steps amount to managing personal behavior or relationships or interactions
between people and therefore recite certain methods of organizing human activity. Inputting data to identify a medication code corresponding to a pharmaceutical medication, searching a plurality of records for records associated with the pharmaceutical medication stored in inventory; filtering, sorting and/or grouping the search results associated with the medications by expiration date and location identifier/quantity, and providing (“displaying”) a plurality of records based on the filtering, sorting and/or grouping to show a location identifier for the medications stored in inventory are personal behaviors that may be performed by pharmacy personnel.
Claims 1, 19, 25 are therefore directed to an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application because the additional
elements within the claims only amount to:
A. Instructions to Implement the Judicial Exception. MPEP 2106.05(f)
The independent claims additionally recite:
an electronic device with a processor and memory as implementing steps of the abstract idea, including the steps of inputting data related to a pharmaceutical medication wherein the inputted data are derived at least in part from documentation associated with the received pharmaceutical medication(s) and inputting data related to the pharmaceutical medication, wherein the data identify a medication identification code corresponding to the pharmaceutical medication and quantity of the pharmaceutical medication; updating a record associated with the pharmaceutical medication from the displayed plurality to indicate pending status (Claim 1); as implementing the steps of inputting data related to a pharmaceutical medication and providing the location identifier for the pharmaceutical medication in inventory; searching a plurality of records (Claim 19); and as implementing the step of inputting data identifying an expiration date and/or a name of one or more pharmaceutical medications, searching a plurality of records and searching a plurality of records (Claim 25)
the memory of the electronic device as storing the created record (Claim 1, 19, 25)
The broad recitation of the above-mentioned general purpose computing elements at a high level of generality only amounts to mere instructions to implement the abstract idea using computing components as tools. Regarding the electronic device with a processor and memory, per paras. [0121]-[0122], these elements are all understood to be general purpose computing elements functioning in their ordinary capacities (e.g., para. [0121] “In some implementations, the device may include a processor and memory. As used herein, a processor may include any processor known in the art suitable for a computer-implemented system described herein. As used herein, memory may include high-speed random access memory and/or non-volatile memory, or any other suitable memory known in the art”; para. [0122]/Fig. 6 teaching on an exemplary computing system with general purpose components, e.g., “The main system 602 includes a motherboard 604 having an I/O section 606, one or more central processing units (CPU) 608, and a memory section 610, which may have a flash memory card 612 related to it. The I/O section 606 is connected to a display 624, a keyboard 614, a disk storage unit 616, and a media drive unit 618. The media drive unit 618 can read/write a computer-readable medium 620, which can contain programs 622 and/or data”). These components are therefore understood to be general purpose computing elements functioning in their ordinary capacities. This is not sufficient to integrate the judicial exception into a practical application.
B. Insignificant Extra-Solution Activity. MPEP 2106.05(g)
Claim 1 additionally recites:
receiving a pharmaceutical medication;
retrieving from the inventory a labeled bin, container, shelf, shelving unit, or section in a bin, container, shelf, or shelving unit corresponding to the location identifier;
storing the pharmaceutical medication in the labeled bin, container, shelf, or shelving unit at the location in the inventory corresponding to the location identifier
retrieving the pharmaceutical medication from the labeled bin, container, shelf, shelving unit, or section based on the corresponding location identifier(s); and
dispensing or dispositioning the pharmaceutical medication retrieved
The steps of “receiving a pharmaceutical medication” and “retrieving from the inventory, a labeled bin, container, shelf…” amounts to insignificant extra-solution activity. As explained above, Claim 1 is directed to an abstract idea in the form of creating a record associated with a pharmaceutical medication which includes the name, quantity and location where the medication will be stored and searching a plurality of records for the medication to display a filtered set of results for the medication. As stated in MPEP 2106.05(g), "[t]he term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim." In the present claim, the functions of receiving the pharmaceutical medication and retrieving a storage bin, container, etc. from inventory are only nominally or tangentially related to the process of inputting data for creating a record associated with the medication and searching a plurality of records to obtain a filtered list of results for location of the medication, and accordingly constitute insignificant extra-solution activity.
The step of “storing the portion of the pharmaceutical medication at the location in the inventory” amounts to insignificant application of the abstract idea, e.g., the step of actually storing the medication at the location is performed after the abstract idea has been performed to identify a location for storing the medication.
The steps of functions of retrieving the pharmaceutical medications from the inventory according to the location identifier and dispensing/dispositioning at least a portion of the retrieved one or more pharmaceutical medications only amount to insignificant application of the abstract idea (e.g., retrieving and dispensing the medication after the location has been determined.
Claim 19 additionally recites:
retrieving the one or more pharmaceutical medications from a labeled bin, container, shelf, shelving unit, or section in a bin, container, shelf, or shelving unit in the inventory based on the location identifier(s), wherein the labeled bin, container, shelf, shelving unit, or section is retrievable from the rest of the inventory; and
dispensing the one or more pharmaceutical medications retrieved based on the received order.
These elements amounts to insignificant extra-solution activity in the form of insignificant application. In the present claim, the functions of retrieving at least a portion of the one or more pharmaceutical medications from the inventory based on the location identifier(s) and dispensing a portion of the retrieved medication only amount to insignificant application of the abstract idea (e.g., after a location identifier for an ordered medication has been received).
Claim 25 additionally recites:
retrieving the one or more pharmaceutical medications from a labeled bin, container, shelf, shelving unit, or section in a bin, container, shelf, or shelving unit in the inventory based on the location identifier(s);
dispositioning at least a portion of the retrieved one or more pharmaceutical medications.
These elements amounts to insignificant extra-solution activity in the form of insignificant application. In the present claim, the functions of retrieving at least a portion of the one or more pharmaceutical medications from the inventory based on the location identifier and dispositioning at least a portion of the retrieved one or more pharmaceutical medications only amount to insignificant application of the abstract idea (e.g., after a location identifier for an ordered medication has been received).
These elements in Sections A and B above are therefore not sufficient to integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
The above claims, as a whole, are therefore directed to an abstract idea.
Step 2B
The present claims do not include additional elements that are sufficient to amount to
more than the abstract idea because the additional elements or combination of elements amount to no more than a recitation of:
A. Instructions to Implement the Judicial Exception. MPEP 2106.05(f)
As explained above, claims 1, 19, 25 only recite the aforementioned computing elements as tools for performing the steps of the abstract idea, and mere instructions to perform the abstract idea using a computer is not sufficient to amount to significantly more than the abstract idea. MPEP 2106.05(f).
B. Insignificant Extra-Solution Activity. MPEP 2106.05(g)
Likewise, as explained above, the steps of: receiving a pharmaceutical medication; retrieving from the inventory a labeled bin, container, shelf, shelving unit, or section in a bin, container, shelf, or shelving unit corresponding to the location identifier; storing the pharmaceutical medication in the labeled bin, container, shelf, or shelving unit at the location in the inventory corresponding to the location identifier retrieving the pharmaceutical medication from the labeled bin, container, shelf, shelving unit, or section based on the corresponding location identifier(s); and dispensing or dispositioning the pharmaceutical medication retrieved, only amount to insignificant extra-solution activity.
C. Well-Understood, Routine and Conventional Activities. MPEP 2106.05(d)
In addition to amounting to insignificant extra-solution activity the elements in Section B above constitute well-understood, routine and conventional activity. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements identified in B. above were considered extra-solution activity.
These have been re-evaluated under the “significantly more” analysis and have been determined to be well-understood, routine, conventional activity in the field. As evidenced by the prior art of record, each of these elements is a well-understood, routine, and conventional element in the field of healthcare and more specifically, pharmacy inventory management:
Regarding “receiving a pharmaceutical medication”, see:
Holmes at [0084]
Chudy at [0055], [0105]
Adams at [0059]
Regarding “storing the portion of the pharmaceutical medication at the location in the inventory”, see:
Holmes at [0085]-[0086]
Chudy at [0020]-[0022]
Wingenter at [0062]
Regarding “retrieving at least a portion of the one or more pharmaceutical medications from the inventory based on the location identifier(s)”, see:
Holmes at [0088]-[0089], [0110]
Chudy at [0010], [0021], [0070]
Iantorno at [0102]-[0103]
Regarding retrieving from the inventory a labeled bin, container, shelf, shelving unit, or section in a bin, container, shelf, or shelving unit corresponding to the location identifier, see
Brazeau at [0021]/Fig. 1; [0033]; [0043]
Miller at [0031]
Vastola at [0004]
Regarding “dispensing at least a portion of the one or more pharmaceutical medications retrieved in based on the received order”, see:
Holmes at [0089], [0110]
Chudy at [0010], [0021], [0154]
Iantorno at [0113]-[0115]
Regarding “retrieving at least a portion of the one or more pharmaceutical medications from the inventory based on the location identifier”, see:
Holmes at [0088]-[0089], [0110]
Chudy at [0010], [0021], [0070]
Iantorno at [0102]-[0103]
Regarding “dispositioning at least a portion of the retrieved one or more pharmaceutical medications”; Examiner notes that per specification, “dispositioning” is understood to include “disposed, expired, recalled, returned”).
Holmes at [0121]
Chudy at [0055]
Wingenter at [0078]
Well-understood, routine, conventional activity cannot provide an inventive concept (“significantly more”). As such the claims are not patent eligible.
Thus, taken alone, the additional elements do not amount to significantly more than the
above-identified judicial exception. Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements taken individually. Their
collective functions merely provide conventional computer implementation.
Dependent Claims
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims or are also certain methods of organizing human activity. For example, Claims 4, 9, 10, 13, 14, 21, 22, 23 recite limitations which further narrow the scope of the independent claims.
Claim 3 recites limitations that parallel those recited by independent claim 1, except pertaining to a “second shipment” and utilizing a second location and second record. The discussion above with respect to Claim 1 is equally applicable to Claim 3. Claim 3 under its broadest reasonable interpretation includes limitations that are certain methods of organizing human activity including managing personal behavior; Claim 3 recites additional elements that amount to mere instructions to apply the abstract idea (MPEP 2106.05(f)) or are insignificant extra-solution activity as discussed above with respect to Claim 1 (See Berkheimer analysis above for steps for receiving a shipment, storing the medication in inventory). Claim 3 does not contain additional elements sufficient to integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Claim 32 recites limitations pertaining to after inputting the data related to the one or more pharmaceutical medications, receiving: (1) two or more location identifiers of at least a portion of one or more pharmaceutical medications, wherein each of the two or more location identifiers identifies the location of at least a portion of one or more pharmaceutical medications in the inventory, and (2) a suggested path for retrieving at least a portion of the one or more pharmaceutical medications from the inventory based on the two or more location identifiers, which are also certain methods of organizing human activity including managing personal behavior, as these are personal behaviors that may be performed by pharmacy personnel. Claim 32 also recites limitations pertaining to wherein the one or more pharmaceutical medications are retrieved from the inventory according to the suggested path, wherein the retrieving is performed manually or by a robot, conveyor, or other automated device; and dispensing or dispositioning the retrieved portion of the one or more pharmaceutical medications, which amount to insignificant application of the abstract idea. See discussion with respect to independent claims and Berkheimer analysis for the retrieving steps; above discussion is equally applicable to Claim 32. Claim 32 does not contain additional elements sufficient to integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Claim 38 recites limitations pertaining to after inputting the data: updating a record of the portion of the one or more pharmaceutical medications to indicate pending or received status, which is also certain methods of organizing human activity including managing personal behavior, as pharmacy personnel may update medication records. Claim 38 also recites “memory of the electronic device”. As discussed above with respect to parent claim, recitation of “memory of the electronic device” only amounts to mere instructions to apply the abstract idea. This is not sufficient to integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Claim 39 recites limitations pertaining to receiving data identifying total quantity, count, cost, price, or value of at least a portion of the one of the pharmaceutical medications which are stored, pending, or retrieved, which is also certain methods of organizing human activity including managing personal behavior, as pharmacy personnel could receive data pertaining to a stored/pending/retrieved medication identifying cost, quantity, price, etc. Claim 39 also recites “the electronic device”. As discussed above with respect to parent claim, recitation of “the electronic device” only amounts to mere instructions to apply the abstract idea. This is not sufficient to integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Claim 40 recites limitations pertaining to further comprising: updating a record of at least a portion of the one or more pharmaceutical medications to (a) subtract the pending or retrieved portion; and/or (b) indicate the pending or retrieved portion as pending or retrieved, which is also certain methods of organizing human activity including managing personal behavior, as pharmacy personnel may update medication records by subtracting a quantity of medication that is pending or retrieved. Claim 40 also recites “memory of the electronic device”. As discussed above with respect to parent claim, recitation of “memory of the electronic device” only amounts to mere instructions to apply the abstract idea. This is not sufficient to integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Claim 42 recites limitations pertaining to updating a record of at least a portion of the one or more pharmaceutical medications to indicate a status of the portion of the one or more pharmaceutical medications as available; wherein the record is updated automatically, which is also certain methods of organizing human activity including managing personal behavior, as pharmacy personnel may update medication records to indicate a status of available. Claim 40 also recites “memory of the electronic device”. As discussed above with respect to parent claim, recitation of “memory of the electronic device” only amounts to mere instructions to apply the abstract idea. This is not sufficient to integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Claim 44 recites limitations pertaining to wherein retrieving the pharmaceutical medication from the inventory in (d) comprises scanning one or more codes associated with one or both of the pharmaceutical medication and the location; wherein the one or more codes comprise an optical barcode or radio frequency identification (RFID) code, which only amounts to mere instructions to apply the abstract idea using general purpose computing elements, e.g., using a barcode scanner functioning in its ordinary capacity to electronically retrieve information about a medication in inventory. MPEP 2106.05(f). This is not sufficient to integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
The dependent claims have been given the full two-part analysis including analyzing the additional limitations both individually and in combination. The dependent claims, when analyzed individually, and in combination, are also held to be patent ineligible under 35 U.S.C. 101 as they include all of the limitations of claim 1 or claim 19 respectively. The additional recited limitations of the dependent claims fail to establish that the claims do not recite an abstract idea because the additional recited limitations of the dependent claims merely further narrow the abstract idea. Beyond the limitations which recite the abstract idea, the claims recite additional elements consistent with those identified above with respect to the independent claims which encompass adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f), or are insignificant extra-solution activity. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claims 3, 4, 9, 10, 13, 14, 21-23, 32, 38-40, 42, and 44 recite additional subject matter which amounts to additional elements consistent with those identified in the analysis of the independent claims above. As discussed above with respect to Claims 1, 19 and 25 and integration of the abstract idea into a practical application, recitation of these additional elements only amounts to invoking computers as a tool to perform the abstract idea or insignificant extra-solution activity. 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 a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent claims 3, 4, 9, 10, 13, 14, 21-23, 32, 38-40, 42, and 44, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea without significantly more. These claims fail to remedy the deficiencies of their parent claims above, and are therefore rejected for at least the same rationale as applied to their parent claims above, and incorporated herein.
For the reasons stated, Claims 1, 3, 4, 9, 10, 13, 14, 19, 21-23, 25, 32, 38-40, 42, and 44 fail the Subject Matter Eligibility Test and are consequently rejected under 35 U.S.C. 101.
Response to Applicant’s Remarks/Arguments
Please note: When referencing page numbers of Applicant’s response, references are to page numbers as printed.
Drawing Objections
The objections are withdrawn in view of Applicant’s submission of revised Figure 3.
USC 101 Rejections
Applicant’s remarks have been fully considered but are not persuasive. Regarding remarks to Step 2A Prong 1 at page 11, the Examiner respectfully disagrees. Regarding MPEP 2106.04(a)(2)(II)(C) and the abstract idea of “managing personal behavior or relationships or interactions between people” includes “social activities, teaching and following rules or instructions”, Examiner submits that “includes” means that social activities, teaching and following rules or instructions are included within the grouping of managing personal behavior or relationships or interactions between people; this grouping is not limited to social activities, teaching and following rules or instructions. Examiner submits that the database only amounts to mere instructions to implement the abstract idea, e.g., maintaining records, searching records, filtering/sorting/grouping records to display medications with location identifiers and quantities. Filtering, sorting and/or grouping search results based on expiration date and location identifier and/or quantity falls within the scope of the abstract idea; a pharmacist could filter, sort or group medications based on expiration date and location ID/quantity. This argument is not persuasive.
Regarding remarks directed to Step 2A Prong 2 beginning at bottom of page 12, Examiner respectfully disagrees that the claims recite a combination of elements to integrate the judicial exception into a practical application. Regarding remarks at page 13 pertaining to MPEP 2106.04(d)(I) and Applicant’s submission that “the claimed methods improve the functioning of the recited electronic devices by specifying use of a specific type of database allowing the user to filter, sort and/or group a plurality of search results, then display a plurality of records of interest along with relevant inventory information”, Examiner submits that MPEP 2106.04(d)(1) states that a practical application may be present where the claimed invention improves the functioning of a computer. See also MPEP 2106.05(a)(I). The technological environment of Applicant’s claim is a general-purpose computer (see Spec. Paras [0121]-[0122], [0124]). Applicant has not identified nor can the Examiner locate any physical improvement to the functioning of the electronic device itself that results from the implementation of Applicant’s claim. There is no indication that the computer is made to run faster, more efficiently, or utilize less power. Because there is no improvement to the function of the computer, a practical application is not present.
Regarding remarks pertaining to specification describing it is “highly difficult to maintain a live pharmacy inventory” and that existing methods would require “extensive and frequent efforts to go through the inventory shelves and count individual medications” and that “requiring pharmacists or pharmacy technicians to update inventory each time medications are stored, dispensed or dispositioned would impose a huge burden in time and labor”) (para. [0004]), Examiner submits that the problems with maintaining a live inventory and imposing a time and labor burden on pharmacy personnel to update inventories are not problems caused by the technological environment of the claim – the electronic device. The problem of pharmacy personnel being burdened with time and labor of maintaining inventories was not a problem cause by the electronic device, is it a problem that existed and/or exists regardless of whether a computer/electronic device is involved in the process. At best, Applicant’s identified problem is a management/business problem. Because no technological problem is present, the claims do not provide an improvement to a technical field, nor do the claims provide a practical application. Examiner respectfully submits that any purported improvements may be improvements to the abstract idea (e.g., an improved way of maintaining pharmacy inventories). Per MPEP 2106.05(a), “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.” Applicant has not provided, nor can Examiner find evidence of, how any of the additional elements identified above in main 101 analysis section are providing an improvement over prior art systems. The additional elements identified above are understood to be computing components functioning in their normal operating capacity, which is not sufficient to integrate the judicial exception into a practical application. Therefore, this argument is not persuasive.
Regarding remarks at page 14 pertaining to the claims reciting a “particular electronic device”, Examiner respectfully disagrees. The electronic device is understood to be a general purpose computing device (see at least paras. [0121]-[0122], [0124]), which is used to apply the steps of the abstract idea. Using a computer with a database to “filter, sort, and/or group a plurality of search results” only amounts to mere instructions to apply the abstract idea. While a computer may automate and speed up the process of filtering, sorting and/or grouping, Examiner notes that that mere automation of automation of a manual process is not enough to overcome a subject matter eligibility rejection (MPEP § 2106.05(a)(I) Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality no. (iii) mere automation of manual processes). Regarding a physical inventory, Examiner notes that using a pharmacy physical inventory made up of removable storage bins has been identified as well understood, routine and conventional activity in the field of pharmacy inventory management. Regarding storing medications in non-alphabetical order, Examiner submits that this falls within the scope of the4 abstract idea. Examiner respectfully disagrees that either of the electronic device or the shelving unit can be classified as particular machines. Regarding the “particular machine” consideration, please see MPEP 2106.05(b):
The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). One example of applying a judicial exception with a particular machine is Mackay Radio & Tel. Co. v. Radio Corp. of America, 306 U.S. 86, 40 USPQ 199 (1939). In this case, a mathematical formula was employed to use standing wave phenomena in an antenna system. The claim recited the particular type of antenna and included details as to the shape of the antenna and the conductors, particularly the length and angle at which they were arranged. 306 U.S. at 95-96; 40 USPQ at 203. Another example is Eibel Process, in which gravity (a law of nature or natural phenomenon) was applied by a Fourdrinier machine (which was understood in the art to have a specific structure comprising a headbox, a paper-making wire, and a series of rolls) arranged in a particular way to optimize the speed of the machine while maintaining quality of the formed paper web. Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 64-65 (1923).
MPEP 2106.05(b) further states “It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine.” As explained above, there is no indication that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components as tools operating in their ordinary capacity.
Regarding remarks directed to removable bins, containers, shelves, etc. in an inventory management system, please reference WURC references above. Examiner respectfully disagrees that this constitutes a ‘particular machine’; as an initial matter, no physical structure of the physical storage itself is positively recited. Examiner further notes that using storage containers such as bins, containers, etc. that may be retrieved/removed from an inventory was well understood, routine and convention at the time the invention was effectively filed, e.g., removable storage bins were a known element in inventory management; see references provided at Step 2B above. Examiner maintains the position that any purported improvements are directed to improving the capability of the pharmacy user to filter, group and/or sort search results to display a list of medication inventory that could be used to fill an order. These remarks are not persuasive.
Regarding remarks pertaining to “specific database”, Examiner respectfully disagrees. Applicant has not cited to, nor can Examiner find evidence of, any evidence that the database invokes any inventive concepts that provide improvements over prior art systems. The database is recited at a high level and is understood to be one of various types of database, e.g., see specification [0127] “Similarly, the database system described can be implemented as a single database, a distributed database, a collection of distributed databases, a database with redundant online or offline backups or other redundancies, or the like, and can include a distributed database or storage network and associated processing intelligence.” Examiner submits the features sorted here (filtering, sorting, grouping search results, displaying search results with particular information, and inventory not organized alphabetically) all fall within the scope of the abstract idea. This is not sufficient to integrate the judicial exception into a practical application.
Regarding remarks to BASCOM, Examiner respectfully disagrees that the instant claims are analogous. The claims in BASCOM were found to be eligible because they presented a technology-based improvement to methods in which web filtering was performed which overcame disadvantages with prior art systems disclosed in the specification by using a non-conventional arrangement of web filters (e.g., additional elements). Unlike BASCOM, Applicant has not provided evidence in the specification as originally filed to demonstrate how the claimed invention provides a non-conventional arrangement of additional elements. Furthermore, the instant claims do not appear to positively recite any instances of a “database”. The “functionalities” of filtering, grouping and sorting a list of inventory to display fall within the scope of the abstract idea. As discussed above, improvements to the abstract idea are not sufficient to integrate the judicial exception into a practical application. These remarks are not persuasive.
Regarding remarks directed to Step 2B, Examiner respectfully disagrees (page 15). Regarding “specific database functionalities combined with a specific type of physical inventory”, this has been addressed in preceding paragraphs, please see above.
Regarding remarks to MPEP 2106.05(g) at bottom of page 15, Examiner reiterates the position that the “database functionalities” of filtering, grouping and sorting a list of inventory amounts to mere instructions to apply the abstract idea using a general purpose electronic device. Examiner has provided Berkheimer references to show that the additional elements are well understood, routine and conventional at the time the invention was effectively filed.
Examiner respectfully disagrees with Applicant’s position pertaining to additional elements in combination. Applicant has not cited to, nor can Examiner find, evidence in specification that provides evidence of how Applicant is using the additional elements in a non-conventional manner. Further, Examiner submits that Applicant’s remarks at page 16 pertaining to allowing a user to “virtually and dynamically reorganize inventory on the fly, because the user, not the system, is able to choose what to retrieve from inventory” based on searching by parameter of interest, represents an intended use of the claimed invention. Applicant has not cited to evidence in specification, nor can Examiner find, evidence of how any of the identified additional elements amount to significantly more than the judicial exception. Examiner respectfully submits Applicant’s words at bottom of page 16, “these functionalities allow the user to efficiently search…”. Examiner submits that this amounts to improving the capability of the user to locate a particular medication in inventory, rather than improvement to the technological environment of the claim. Using the electronic device and database to search for inventory and return a list that is sorted by expiration date and quantity and/or location identifier may be an improvement to the abstract idea itself, e.g., an improved means of identifying storage locations of medications that can be used to fill an order. This is not sufficient to integrate the judicial exception into a practical application or amount to significantly more. These remarks are not persuasive.
35 USC 103 Rejections
Applicant’s remarks have been considered and are persuasive in view of amendments to the independent claims. A search of publicly available prior art fails to yield a reference or combination of references that would make the specific claimed combination obvious when considered as a whole. The rejections under 35 USC 103 are withdrawn.
Conclusion
Examiner respectfully requests that Applicant provides citations to relevant paragraphs of specification for support for amendments in future correspondence.
The following relevant prior art not cited is made of record:
US Publication 20060058918 A1, teaching on a medicament inventory system and method
US Publication 20120209619 A1, teaching on system and method for managing tracking and dispensing of prescription medications
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNE-MARIE K ALDERSON whose telephone number is (571)272-3370. The examiner can normally be reached on Mon-Fri 9:00am-5:00pm EST, and generally schedules interviews in the timeframe of 2:00-5:00pm EST.
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/ANNE-MARIE K ALDERSON/Primary Examiner, Art Unit 3682
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