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 claims filed on 17 July 2025. Claims 1-20 are currently pending and have been examined.
Drawings
The drawings are objected to because Figs. 1 and 4-10 are difficult to read (small font and coarse resolution). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 8 is 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.
Regarding claim 8, the phrase "…supplier may be selected from a pharmacy…" renders the claim indefinite (specifically, the use of the word “may”) because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-20 are rejected under 35 USC § 101
Step 1: Is the claim to a process, machine, manufacture, or composition of matter?
Claims 1-20 fall within one or more statutory categories. Claims 1-8 fall within the category of a machine. Claims 9-14 fall within the category of a manufacture. Claims 15-20 fall within the category of a process.
Step 2A Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claims 1-20 recite an abstract idea. Representative claim 1 recites:
[receive] prescription data having a plurality of prescriptions…,
… transmit the prescription data for fulfillment … to a set of suppliers,
wherein at least two of the set of suppliers are … each selected to fill at least one prescription of the plurality of prescriptions; and
transmitting … a first prescription of the plurality of prescriptions to a first system of a first supplier of the set of suppliers for fulfillment, and a second prescription of the plurality of prescriptions to a second system of a second supplier of the set of suppliers for fulfillment, the first prescription and the second prescription identifying a patient and a prescribed treatment;
receiving …. status updates from the first system of the first supplier and the second system of the second supplier, wherein the status updates include at least one of prescription receipt confirmation, fulfillment confirmation, and shipment confirmation from each of the first supplier and the second supplier; and
Therefore, the claim as a whole is directed to “fulfilling prescriptions”, which is an abstract idea because it is a method of organizing human activity. “Fulfilling prescriptions” is considered to be a method of organizing human activity because it is an example of managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The broadest reasonable interpretation of the claims includes the interaction between a healthcare provider and a pharmacy in order to fulfill prescriptions for a patient. Also, suppliers filling prescriptions for a patient or user is a vendor supplying goods to a customer, which is commercial interaction involving sales activities. Therefore, the claims are abstract for this reason also.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
This judicial exception is not integrated into a practical application. In particular, claim 1 recites the following additional element(s):
a network interface communicatively coupled to a computer network, the network interface including a receiver and a transmitter,
the receiver configured to demodulate [the prescription data],
the prescription data being received over the computer network, and
the transmitter configured to transmit [the prescription data],
wherein at least two of the set of suppliers are communicatively coupled to the network interface … ; and
at least one processor communicatively coupled to the network interface,
the at least one processor configured to perform operations comprising:
[transmitting and receiving data] via the network interface,
generating via the network interface, a graphical mobile interface having a format through which the status updates from the first system of the first supplier and the second system of the second supplier are together viewable at a mobile user device,
the graphical mobile interface configured to display the status updates prior to a selection to interact with content related to the status updates from at least one of the first system of the first supplier or the second system of the second supplier,
the status updates being selectable and accessible to interact, via the generated graphical mobile interface, with the content stored at least one of the first system of the first supplier or the second system of the second supplier, the graphical mobile interface configured to facilitate access between the mobile user device and at least one of the first system of the first supplier or the second system of the second supplier.
The additional elements individually or in combination do not integrate the exception into a practical application. These additional elements merely recite the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes 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)). Further, the additional elements connected to sending and receiving data over a network are considered add insignificant extra-solution activity to the judicial exception (see MPEP 2106.05(g)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claim 1 is directed to an abstract idea.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Claim [ 16 ] does not include additional elements, considered individually or in combination, that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s), individually and in combination, merely recite the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes 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)). Further, the additional elements connected to sending and receiving data over a network are considered add insignificant extra-solution activity to the judicial exception (see MPEP 2106.05(g)).Further, sending and receiving data over a network is considered to be well-understood, routine, and conventional activity (see (see MPEP 2106.05(d)(II), example (i) “Receiving and transmitting data over a network)”). Accordingly, claim 1 is ineligible.
Dependent claim 2 recites the system of claim 1, wherein:
the first supplier and the second supplier are selected to fulfill the plurality of prescriptions in a most effective manner with respect to at least one of costs, quality, and fulfillment speed.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 2 is considered to be ineligible.
Dependent claim 3 recites the method of claim 1, wherein:
the operations further comprise: calculating a copayment price owed for each of the plurality of prescriptions;
accessing, via the network interface, account information for a financial account from a database;
deducting, via the network interface, the copayment price from the financial account; and
transmitting, via the network interface, a payment to the first supplier and the second supplier.
The additional elements present in this claim merely recite the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes 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)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 3 is ineligible.
Dependent claim 4 recites the system of claim 1, wherein:
the operations further comprise: searching, via the network interface, a first database to identify a prescription plan to which the patient belongs; and
searching, via the network interface, a second database to identify the set of suppliers associated with the prescription plan.
The additional elements present in this claim merely recite the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes 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)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 4 is ineligible.
Dependent claim 5 recites the system of claim 1, wherein:
the operations further comprise: evaluating the set of suppliers and selecting the first supplier and the second supplier based on total price of adjudication.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 5 is considered to be ineligible.
Dependent claim 6 recites the system of claim 1, wherein:
the operations further comprise: evaluating the set of suppliers and selecting the first supplier and the second supplier based on a combination of total price of adjudication, performance rating, and ancillary service offerings.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 6 is considered to be ineligible.
Dependent claim 7 recites the system of claim 1, wherein:
the set of suppliers includes suppliers that meet a minimum level of service requirements and have integrated into a healthcare needs fulfillment system.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 7 is considered to be ineligible.
Dependent claim 8 recites the system of claim 1, wherein:
the first supplier and the second supplier may be selected from a pharmacy, a provider of vitamins and nutritional supplements, a provider of durable medical equipment, or a provider of disposable medical supplies.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 8 is considered to be ineligible.
Claims 9-14 are parallel in nature to claims 1-4 and 6-7. Accordingly claims 9-14 are rejected as being directed towards ineligible subject matter based upon the same analysis above.
Claims 15-20 are parallel in nature to claims 1-6. Accordingly claims 15-20 are rejected as being directed towards ineligible subject matter based upon the same analysis above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kalies (U.S. 2013/0144649), hereinafter “Kalies,” in view of Green et al. (U.S. 2011/0202370), hereinafter “Green.”
Regarding Claim 1, Kalies discloses a system comprising:
a network interface communicatively coupled to a computer network, the network interface including a receiver and a transmitter (See Kalies [0028] information can be transmitted using an electronic network, such as an intranet or the Internet.),
the receiver configured to demodulate prescription data having a plurality of prescriptions, the prescription data being received over the computer network, and the transmitter configured to transmit the prescription data for fulfillment over the computer network to a set of suppliers (See Kalies Fig. 1B and [0031] the user can submit multiple prescriptions to the system. [0160] the system also includes input/output devices such as computer terminals, email devices and/or Internet access devices for communication.),
wherein at least two of the set of suppliers are communicatively coupled to the network interface and are each selected to fill at least one prescription of the plurality of prescriptions (See Kalies Fig. 3 and [0160] the system can include a plurality of prescription fulfillment providers.); and
at least one processor communicatively coupled to the network interface (See Kalies Fig. 3 and [0160] system includes the use of a processing unit.), the at least one processor configured to perform operations comprising:
transmitting, via the network interface, a first prescription of the plurality of prescriptions to a first system of a first supplier of the set of suppliers for fulfillment, and a second prescription of the plurality of prescriptions to a second system of a second supplier of the set of suppliers for fulfillment (See Kalies [0023] the system provides prescription and patient information to a participating bidding service provider/administrator. Fig. 3 and [0160] the system can include a plurality of prescription fulfillment providers.), the first prescription and the second prescription identifying a patient and a prescribed treatment (See Kalies [0023] the system provides prescription and patient information to a participating bidding service provider/administrator.);
receiving, via the network interface, status updates from the first system of the first supplier and the second system of the second supplier (See Kalies [0023] Immediately and continuously the customer is provided information pertaining to the bids of the responding pharmacies until either the customer selects a bid or the pre-selected bidding period ends (at which time, the customer can select their preferred bid or decline all bids).),
the graphical … interface configured to display the status updates prior to a selection to interact with content related to the status updates from at least one of the first system of the first supplier or the second system of the second supplier (See Kalies [0023] the system immediately and continuously provides information pertaining to the bids of the responding pharmacies until the customer selects a bid. Therefore, these updates are provided prior to the customer selecting a bid (i.e. “a selection to interact.”).),
the status updates being selectable and accessible to interact, via the generated graphical … interface, with the content stored at least one of the first system of the first supplier or the second system of the second supplier (See Kalies [0023] Immediately and continuously the customer is provided information pertaining to the bids of the responding pharmacies until either the customer selects a bid or the pre-selected bidding period ends (at which time, the customer can select their preferred bid or decline all bids).), the graphical mobile interface configured to facilitate access between the … user device and at least one of the first system of the first supplier or the second system of the second supplier (Examiner notes that this language is considered to be intended use and is not given patentable weight.
Kalies does not disclose:
wherein the status updates include at least one of prescription receipt confirmation, fulfillment confirmation, and shipment confirmation from each of the first supplier and the second supplier; and
generating via the network interface, a graphical mobile interface having a format through which the status updates from the first system of the first supplier and the second system of the second supplier are together viewable at a mobile user device,
[the graphical interface is a] graphical mobile interface and the [user device] is a mobile user device.
Green teaches:
wherein the status updates include at least one of prescription receipt confirmation, fulfillment confirmation, and shipment confirmation from each of the first supplier and the second supplier (See Green [0319] order status updates based on when fulfilled as well as each step in the fulfillment process.); and
generating via the network interface, a graphical mobile interface having a format through which the status updates from the first system of the first supplier and the second system of the second supplier are together viewable at a mobile user device (See Green [0074] system can be implemented on a mobile or smart phone. [0319] system can receive status updates.),
[the graphical interface is a] graphical mobile interface and the [user device] is a mobile user device (See Green [0074] system can be implemented on a mobile or smart phone.).
The system of Green is applicable to the disclosure of Kalies as they both share characteristics and capabilities, namely, they are directed to prescription fulfillment. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kalies to include order fulfillment status updates and mobile interface functionality as taught by green. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Kalies in order to that fulfillment is documented and failure to fulfill is investigated and remedied, and to facilitate remote access to all of the applications and data maintained by the various servers (see Green [0074] and [0319]).
Regarding claim 2, Kalies in view of Green discloses the system of claim 1 as discussed above. Kalies further discloses a method, wherein:
the first supplier and the second supplier are selected to fulfill the plurality of prescriptions in a most effective manner with respect to at least one of costs, quality, and fulfillment speed (See Kalies [0023] registry pharmacies which respond to the invitation to bid (i.e., in registry, service area, provide product and service requested, etc.) (called "responding pharmacies" herein), each interact iteratively with the bidding service provider, attempting to provide a better fit for the patient/customer than competing pharmacies in the registry with a lower price and/or additional ancillary services in a "reverse auction." The customer selects from the responding pharmacies based on idiosyncratic criteria such as: preferred pharmacies (all information related to the pharmacy is included in the bid as well as an optional pharmacy web site link), cost, ancillary services offered, proximity of the responding pharmacies to the customer, and so on. See also [0103].).
Regarding claim 3, Kalies in view of Green discloses the system of claim 1 as discussed above. Kalies further discloses a method, wherein:
the operations further comprise: calculating a copayment price owed for each of the plurality of prescriptions (See Kalies Table 1 and [0032] the system can calculate costs including copay amounts. See also [0111].);
accessing, via the network interface, account information for a financial account from a database (See Kalies [0104]-[0109] the system can ask customer to enter financial account information and access a database to confirm/execute the payment.);
deducting, via the network interface, the copayment price from the financial account (See Kalies [0174] price can be deducted from a prescription card.); and
transmitting, via the network interface, a payment to the first supplier and the second supplier (See Kalies [0174] system may adjudicate the claim with the pharmacy at and pay the pharmacy a predetermined amount at that is equal to the bid.).
Regarding claim 4, Kalies in view of Green discloses the system of claim 1 as discussed above. Kalies further discloses a method, wherein:
the operations further comprise: searching, via the network interface, a first database to identify a prescription plan to which the patient belongs (See Kalies [0104]-[0109] the system can access a database connected to patient prescription drug plan.); and
searching, via the network interface, a second database to identify the set of suppliers associated with the prescription plan (See Kalies [0023] system includes a registry of pharmacies that have been previously qualified by the bidding service provider to participate in a bidding process to fill that specific customer's unfilled prescription within a defined service area and/or selected or defined registry and/or via mail order. [0045] system can determine which pharmacies have joined the bidding service provider registry through a qualification process and are within the customer's service area.).
Regarding claim 5, Kalies in view of Green discloses the system of claim 1 as discussed above. Kalies further discloses a method, wherein:
the operations further comprise: evaluating the set of suppliers and selecting the first supplier and the second supplier based on total price of adjudication (See Kalies [0054]-[0060] the system can evaluate and display the bids from pharmacies based on combined price of products/services.).
Regarding claim 6, Kalies in view of Green discloses the system of claim 1 as discussed above. Kalies further discloses a method, wherein:
the operations further comprise: evaluating the set of suppliers and selecting the first supplier and the second supplier based on a combination of total price of adjudication, performance rating, and ancillary service offerings (See Kalies [0023] system used for determining a best match between a pharmacy and a customer using at least lowest price and additional ancillary services. [0066]-[0071] the system compiles statistics such as percentage of successful bids by pharmacy in the specified period. This is understood to be a performance rating.).
Regarding claim 7, Kalies in view of Green discloses the system of claim 1 as discussed above. Kalies further discloses a method, wherein:
the set of suppliers includes suppliers that meet a minimum level of service requirements and have integrated into a healthcare needs fulfillment system (See Kalies [0023] system includes a registry of pharmacies that have been previously qualified by the bidding service provider to participate in a bidding process to fill that specific customer's unfilled prescription within a defined service area and/or selected or defined registry and/or via mail order. [0045] system can determine which pharmacies have joined the bidding service provider registry through a qualification process and are within the customer's service area. See also Fig. 1A, element 14).
Regarding claim 8, Kalies in view of Green discloses the system of claim 1 as discussed above. Kalies further discloses a method, wherein:
the first supplier and the second supplier may be selected from a pharmacy, a provider of vitamins and nutritional supplements, a provider of durable medical equipment, or a provider of disposable medical supplies (See Kalies [0021] the prescriptions are filled by the appropriate pre-qualified prescription providers (i.e., dispensers of products or services, e.g., pharmacies, physicians, optical shops, etc.).
Regarding claims 9-14, Kalies in view of Green discloses the system of claims 1-4 and 6-7 as discussed above. Claims 9-14 recite a non-transitory machine-readable medium storing instructions to perform a method that is substantially similar to the method performed by the system of claims 1-4 and 6-7. Accordingly, claims 9-14 are rejected based on the same analysis.
Regarding claims 15-20, Kalies in view of Green discloses the system of claims 1-6 as discussed above. Claims 15-20 recite a method that is substantially similar to the method performed by the system of claims 1-6. Accordingly, claims 15-20 are rejected based on the same analysis.
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 Longi, 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,340,329. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are a more broadly recited form of the claims in the ‘329 patent, and therefore the ‘329 claims would anticipate the present claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Utech et al. (U.S. 2012/0205441) teaches a system and method for monitoring progress of delivery of patient medication in a healthcare facility.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN L HANKS whose telephone number is (571)270-5080. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shahid Merchant can be reached at (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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/B.L.H./Examiner, Art Unit 3684
/Shahid Merchant/Supervisory Patent Examiner, Art Unit 3684