DETAILED ACTION
This rejection is in response to application filed 04/29/2025.
Claims 1-20 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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 1-7, 13, and 19 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.
There is insufficient antecedent basis for the following limitations in:
Claim 1 recites: the method comprising:
Claims 6, 13, and 19 recite: the established metadata.
Appropriate correction or clarification is required.
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.
SIGNALS PER SE REJECTION
Claims 8-14 are rejected under 35 U.S.C. 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 8-14 are purported to be a "computer-readable storage medium." It is within the scope of the disclosure (see original specification paragraph [0024]) that the " computer-readable storage medium" is a transitory form of signal transmission. Thus, claims 8-14 are directed to merely a signal per se, which is non-statutory. (In re Nuijten).
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more.
Under Step 1 of the Subject Matter Eligibility Test, it must be considered whether the claims are directed to one of the four statutory classes of invention. See MPEP § 2106. In the instant case, claims 1-7 are directed to a computer-implemented method, claims 8-14 are directed to a computer-readable storage medium ( in the spirit of compact prosecution, the claims will be interpreted in the alternative “transitory or non-transitory, e.g. assuming that the claims are directed to a non-transitory computer-readable storage medium), and claims 15-20 are directed to a computing device which falls within one of the four statutory categories of invention(process/apparatus). Accordingly, the claims will be further analyzed under revised step 2:
Under step 2A (prong 1) of the Subject Matter Eligibility Test, it must be considered whether the claims recite a judicial exception if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. If the claim recites a judicial exception (i.e., an abstract idea), the claim requires further analysis in Prong Two. One of the enumerated groupings of abstract ideas is defined as certain methods of organizing human activity that includes fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See MPEP § 2106.04(a)(2).
Regarding representative independent claim 1, recites the abstract idea of:
method for establishing a proof of witness for a controlled substance transaction, the method comprising:
establishing, …, …communications…, wherein the …communications are established in response to a generation of a controlled substance transaction entry;
generating, as a function of the established …communications and a controlled substance associated with the controlled substance transaction entry, a proof of witness between … of the controlled substance transaction entry;
associating the proof of witness with the controlled substance transaction entry; and
transmitting the controlled substance transaction entry and the proof of witness to …for verification and storage.
The above-recited limitations amounts to certain methods of organizing human activity associated with sales activities and commercial interaction by reciting limitations regarding establishing a proof of witness for controlled substance transaction such as establishing communications in response to the transaction entry, generating a proof of witness, associating the proof of witness with the transaction entry, and transmitting the transaction entry for verification and storage. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts. See MPEP § 2106.
The Step 2A (prong 2) of the Subject Matter Eligibility Test, is the next step in the eligibility analyses and looks at whether the abstract idea is integrated into a practical application. This requires an additional element or combination of additional elements in the claims to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.
In this instance, the claims recite the additional elements such as:
Claim 1: A computer-implemented …:
Claims 1, 8, and 15: …, by a first computing device, device communications with a second computing device, wherein the first computing device executes an application associated with a software platform server, wherein the device communications …;…., as a function of the established device communications …, …the first computing device and the second computing device…; …to the software platform server …
Claims 2, 9, and 16: … a digital logbook managed by the software platform server.
Claims 3, 10, and 17: …the first computing device…the second computing device.
Claims 4, 11, and 18: …the first computing device and the second computing device.
Claims 5 and 12: …the established device communications …
Claim 8: A computer-readable storage medium storing a plurality of instructions, which, when executed by one or more processors, causes a first computing device executing an application associated with a software platform server to:…
Claim 15: A computing device, comprising: one or more processors; and a storage comprising a plurality of instructions, which, when executed on the one or more processors, causes the computing device to: ...
Claim 19: …the established device communications…
However, these elements do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Independent claims and dependent claims also fail to recite elements which amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. For example, independent claims and dependent claims are directed to the abstract idea itself and do not amount to an integration according to any one of the considerations above.
Step 2B is the next step in the eligibility analyses and evaluates whether the claims recite additional elements that amount to an inventive concept (i.e., “significantly more”) than the recited judicial exception. According to Office procedure, revised Step 2A overlaps with Step 2B, and thus, many of the considerations need not be re-evaluated in Step 2B because the answer will be the same. See MPEP § 2106.
In Step 2A, several additional elements were identified as additional limitations:
Claim 1: A computer-implemented …:
Claims 1, 8, and 15: …, by a first computing device, device communications with a second computing device, wherein the first computing device executes an application associated with a software platform server, wherein the device communications …;…., as a function of the established device communications …, …the first computing device and the second computing device…; …to the software platform server …
Claims 2, 9, and 16: … a digital logbook managed by the software platform server.
Claims 3, 10, and 17: …the first computing device…the second computing device.
Claims 4, 11, and 18: …the first computing device and the second computing device.
Claims 5 and 12: …the established device communications …
Claim 8: A computer-readable storage medium storing a plurality of instructions, which, when executed by one or more processors, causes a first computing device executing an application associated with a software platform server to:…
Claim 15: A computing device, comprising: one or more processors; and a storage comprising a plurality of instructions, which, when executed on the one or more processors, causes the computing device to: ...
Claim 19: …the established device communications…
These additional limitations, including the limitations in the independent claims and dependent claims, do not amount to an inventive concept because the recitations above do not amount to an improvement in the functioning of a computer or any other technology or technical field, apply the judicial exception with, or by use of, a particular machine, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. In addition, they were already analyzed under Step 2A and did not amount to a practical application of the abstract idea.
For these reasons, the claims are rejected under 35 U.S.C. 101.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-2, 4-9, 11-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brunner (US Pub. No. 20190156938 A1, hereinafter “Brunner”).
Regarding claims 1, 8, and 15
Brunner discloses a computer-implemented method for establishing a proof of witness for a controlled substance transaction, the method comprising (Brunner, [0008]: a computer implemented method for securely managing prescription records; [0147]: Controlled Drug prescriptions):
establishing, by a first computing device, device communications with a second computing device, wherein the first computing device executes an application associated with a software platform server, wherein the device communications are established in response to a generation of a controlled substance transaction entry (Brunner, FIG. 1, [0019]: Physicians, pharmacies, and patients can securely access the system. Physician communicate with RX server of system through platform with one or more client computing devices where physicians will have the ability to issue new prescriptions; [0023]: Pharmacies communicate with RX server 100 through pharmacy platform 130 including one or more computing devices; [0025] Patients communicate with RX Server 100 through patient platform 120 which includes one or more computing devices executing a D-app to pharmacy; [0008]: receiving, from a prescriber computing platform, a prescription request, wherein the prescription request includes prescription data describing a prescription and receiving, from a pharmacy computing platform, an acceptance message indicating that the pharmacy platform is willing to fill the prescription; [0147]: Controlled Drug prescriptions);
generating, as a function of the established device communications and a controlled substance associated with the controlled substance transaction entry, a proof of witness between the first computing device and the second computing device of the controlled substance transaction entry; associating the proof of witness with the controlled substance transaction entry (Brunner, [0008]: receiving, from a prescriber computing platform, a prescription request that includes prescription data and creating a cryptographic hash of at least some of the prescription data and auxiliary information to create a unique identifier for the prescription; recording the hash as an issue transaction corresponding to the prescription; [0147]: Controlled Drug prescriptions; [0031]: these hashes can be associated with the address of the physician that issued it, the pharmacy that is allowed to accept it, and a confidential patient ID; [0033] Auditors can be permitted to view all prescription data on RX server 100 corresponding to the prescription hashes on the blockchain and verify identity of pharmacies);
and transmitting the controlled substance transaction entry and the proof of witness to the software platform server for verification and storage (Brunner, [0020]: When a prescription is issued by a physician, it is in a “pending” state, waiting for signature by RX Server 100 to verify the prescription is valid and physician issuing prescription is authenticated. Once RX Server 100 digitally signs the prescription the signed prescription transaction is recorded on a blockchain; [0030]: only cryptographic hashes of this data will be stored on blockchain 160, alongside some limited information that pseudo-anonymously identifies physicians, patients and pharmacies, the token amounts, and the prescription status; [0008]: recording the hash as an issue transaction corresponding to the prescription; and recording an accept transaction on a blockchain corresponding to the prescription, the accept transaction including the hash; [0147]: Controlled Drug prescriptions; [0031] Cryptographic hashes allow someone with the prescription data to verify the validity, state, and version of the prescription; [0086] Auditors can also be provided with the digital signatures of the prescription data made by authentication devices and oversee the physician using the device to provide proof that the device can sign for a particular public key).
Regarding claims 2, 9 and 16
Brunner discloses the computer-implemented method of claim 1, wherein the controlled substance transaction entry is entered into a digital logbook managed by the software platform server (Brunner, [0056] Upon successful approval, the prescription hash will be stored on blockchain 160, as RX issue transaction 161, and the prescription hash will be mapped to the off-chain prescription data stored in database 121 of RX server 100. The hash will be stored in a list of mapped RX data in database 121 and will be added to the end of the following lists in DB 121; [0147]: Controlled Drug prescriptions).
Regarding claims 4, 11, and 18
Brunner discloses the computer-implemented method of claim 1, wherein the proof of witness is generated further as a function of metadata associated with the first computing device and the second computing device (Brunner, [0019]: prescriber computing platform 110 includes one or more computing devices to issue prescription; [0023]: pharmacy platform 130 includes one or more computing devices and the pharmacy will be given the prescription information; [0025]: patients communicate with one or more computing devices the transaction ID; [0147]: Controlled Drug prescriptions; [0031]: these hashes can be associated with the address of the physician that issued it, the pharmacy that is allowed to accept it, and a confidential patient ID; [0008]: creating a cryptographic hash of at least some of the prescription data and auxiliary information; [0037]: prescriber provides all prescription details that are hashed; [0101]: prescription data and can include the elements {address pharmacy; address physician; status; bytes32 patientID; uint256 mdxValue; timeIssued; timeAccepted; deadline}; [0033] Auditors can be permitted to view all prescription data on RX server 100 corresponding to the prescription hashes on the blockchain).
Regarding claims 5 and 12
Brunner discloses the computer-implemented method of claim 1, wherein the established device communications comprises a media communication, and wherein the proof of witness is generated further as a function of metadata associated with the media communication (Brunner, FIG. 1, [0019]: Physician communicate with RX server of system through platform with one or more client computing devices where physicians will have the ability to issue new prescriptions to a specific pharmacy; [0023]: [0023] Pharmacies communicate with RX server 100 through pharmacy platform 130 including one or more computing devices; [0025] Patients communicate with RX Server 100 through patient platform 120 which includes one or more computing devices executing a D-app to pharmacy; [0008]: hash is created based on prescription data received from prescriber; [0147]: Controlled Drug prescriptions; [0033] Auditors can be permitted to view all prescription data on RX server 100 corresponding to the prescription hashes on the blockchain).
Regarding claims 6 and 13
Brenner discloses the computer-implemented method of claim 5, wherein the established metadata associated with the media communication comprises geolocation data, timestamp data, and recording device data (Brenner, [0038] an Issue function issues a new prescription based on the physician requests. The physician corresponding to the Physician ID in the Rx data structure will be the sender. The issue time will be set to the current block timestamp on blockchain 160. The status will be set to Pending by RX server 100. In one example, when a prescription is issued by a physician, the physician must provide the following information: [0039] Full patient name, [0041] Patient home address, [0042] Date that the prescription is written and [0049] Physician address;
[0050] The function will fail if the address does not map to a valid prescriber address; [0018]: The status of the prescription is managed by the system and recorded on a blockchain to securely mange the lifecycle of each prescription).
Regarding claims 7, 14, and 20
Brenner discloses the computer-implemented method of claim 1, wherein the proof of witness is generated using a hash function (Brunner, [0126]: prescription information is encoded and then hashed into a prescription hash; [0063] prescriber physician transmits a prescription to the system. At 301, the prescription record is hashed, and the hash is recorded on a blockchain; [0033] Auditors can be permitted to view all prescription data on RX server 100 corresponding to the prescription hashes on the blockchain).
Regarding claim 19
Brunner discloses the computer-readable storage medium of claim 8, wherein the established device communications comprises a media communication, and wherein the proof of witness is generated further as a function of metadata associated with the media communication, and wherein the established metadata associated with the media communication comprises geolocation data, timestamp data, and recording device data (Brunner, FIG. 1, [0019]: Physician communicate with RX server of system through platform with one or more client computing devices where physicians will have the ability to issue new prescriptions to a specific pharmacy; [0023]: [0023] Pharmacies communicate with RX server 100 through pharmacy platform 130 including one or more computing devices; [0025] Patients communicate with RX Server 100 through patient platform 120 which includes one or more computing devices executing a D-app to pharmacy; [0008]: hash is created based on prescription data received from prescriber; [0147]: Controlled Drug prescriptions; [0033] Auditors can be permitted to view all prescription data on RX server 100 corresponding to the prescription hashes on the blockchain).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 3, 10, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Brunner as applied to claim 1 above, and further in view of Mortimer (US Patent No. 11396447 B1).
Regarding claims 3, 10, and 17
Brunner discloses the computer-implemented method of claim 1, wherein the first computing device …the second computing device (Brunner, [0019]: prescriber computing platform 110 includes one or more computing devices; [0023]: pharmacy platform 130 includes one or more computing devices; [0025]: patients communicate with one or more computing devices).
Brunner does not teach:
the first computing device is in a different geographical location from the second computing device (emphasis added).
However, Mortimer teaches:
the first computing device is in a different geographical location from the second computing device (Mortimer, FIG. 2, C13, L45-55: multiple devices may be located in different locations).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the first and second computing devices of Brunner with the first device in a different geographical location from the second computing device as taught by Mortimer because the results of such a modification would be predictable. Specifically, Brunner would continue to teach the first and second computing devices except that now the first device being in a different geographical location from the second computing device is taught according to the teachings of Mortimer in order to operate multiple devices in different locations. This is a predictable result of the combination. (Mortimer, C13, L45-55).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is cited as Irwin et al. (US Pub No. 20210280289 A1) related authenticating a transaction of a controlled substance, Erwin et al. (US Pub. No. 20170286965 A1) related to a protection system for tracking and securing the purchase and sale of a controlled substance, and non-patent literature, Pharmaceutical uses of Blockchain Technology, related to a prescription drug monitoring program utilizing smart contracts and blockchain technology.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATASHA DEVI RAMPHAL whose telephone number is (571)272-2644. The examiner can normally be reached 11 AM - 7:30 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey A. Smith can be reached at 5712726763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LATASHA D RAMPHAL/Examiner, Art Unit 3688
/KELLY S. CAMPEN/Primary Examiner, Art Unit 3691
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