DETAILED ACTION
Notices to Applicant
This communication is a non-final rejection. Claims 1-20, as filed 06/11/2025, are currently pending and have been considered below.
Priority is generally acknowledged to 17/849,496 which was filed 06/24/2022.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
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 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 Long!, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. 12,354,735 B2. Although the claims at issue are not identical, they are not patentably distinct from each other the reasons set forth in the table below.
Pending Claim
Issued Claim
Notes
1
1
The pending claim is broader than the issued claim in that the pending claim omits the “access” steps and “supply the recommendation” step.
2-3, 5, 8, 9
2-3, 5, 8, 9
Identical
4, 6
4, 6
Analogous with minor differences because the pending claim 1 lacks the “supply” step.
5
5
Identical
7
7
The pending claim is broader than the issued claim.
10
20
Identical
11
10
Same relationship as in claim 1.
12
11
Analogous with minor differences because the pending claim 11 lacks the “supply” step.
13
12
Identical
14
13
Analogous with minor differences because the pending claim 11 lacks the “supply” step.
15
14
The pending claim is broader than the issued claim.
16-17
15-16
Identical
18
17
Same relationship as in claim 1.
19
18
Identical
20
19
Identical
Claim Objections
Claims 1, 11, and 18 are objected to because of the following informalities. The claims state “one of more of:” which the Examiner will interpret as “one or more of:”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 4-6, 10, 11, 18, and 20 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 pre-AIA the applicant regards as the invention.
Claims 1, 11, and 18 recite “the site data” but this term lacks antecedent basis.
Claim 10 recites “the API” and “the data indicative of the recommendation” but these terms lack antecedent basis.
Claim 20 recites “The at least one computer-readable non-transitory storage medium of claim 17” but claim 17 lacks a computer-readable non-transitory storage medium. The Examiner interprets claim 20 as depending instead from claim 18.
Claims 4-6 are rejected because the claims introduce method steps to the system of claim 1 which makes it unclear whether the claim requires the system alone or performance of acts. See MPEP 2173.05(p).
Subject Matter Free from Prior Art
Claims 1-20 are not anticipated or obvious in view of the prior art.
The closest prior art is Ptachcinski (USP App. Pub. No. 2014/0358578), Hagen ("Moving a 340B covered entity's pharmacy enterprise to an LLC may prove beneficial, but it requires a feasibility study"), and Creswell ("Generative Adversarial Networks: An Overview"). The Examiner notes that these references were provided in the IDS from 09/09/2025. Ptachcinski discloses techniques for analyzing pharmaceutical pricing and medical utilization and generating reports for reducing costs (e.g., [0091]) and segregating entities by class of trade "to improve contracting, purchasing, and utilization of pharmaceutical products" ([0028]). Ptachcinski does not disclose recommending that a healthcare site reconfigure itself according to a particular COT. Hagan discloses analyses for reconfiguring a healthcare entity to optimize drug purchasing costs but is not specific to COT reconfiguration. Creswell describes techniques for building generative adversarial networks to learn deep representations without extensively annotated training data (abstract; FIG. 2). None of these references disclose generating synthetic site operating data and drug pricing data via a GAN using an identified similar site’s ground truth and using it with dual COT fee schedules to recommend a class of trade with a transition time or condition.
Subject Matter Eligibility
Claims 1-20 are eligible under 35 U.S.C. 101.
The claimed invention recites an abstract idea in Step 2A Prong One because it recites various mental processes such as making determinations and recommending business decisions. However in Step 2A Prong Two, the claimed invention as a whole integrates the idea into a practical application by including a generative adversarial network and synthetic data to determine a performance metric. Integrating a GAN and synthetic data is not insignificant extra-solution activity because it imposes a meaningful limit on the claim by requiring a narrow type of AI analysis that is substantially related to the class of trade recommendation and does not monopolize the abstract idea by encompassing all data gathering and output. The class of trade determinations and recommendations could be practiced outside the scope of the pending claims by using other AI techniques or none at all, so these limitations are not mere field of use or generally linking to a technical field. The GAN limitations go beyond a generic computer implementation of the abstract idea and represents an improvement in technology by complimenting other analyses that are "based on machine-learned time-dependency of performance metrics for respective COTs." See the instant Specification [0039].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA BLANCHETTE whose telephone number is (571)272-2299. The examiner can normally be reached on Monday - Thursday 7:30AM - 6:00PM, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shahid Merchant, can be reached on (571) 270-1360. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA B BLANCHETTE/Primary Examiner, Art Unit 3624
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