Ex Parte Dhavle et al

Patent Trial and Appeal Board

Sep 20, 2018

13344332 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/344,332 01/05/2012
68242 7590 09/24/2018
FIALA & WEA VER P.L.L.C.
C/0 CPA GLOBAL
900 Second A venue South
Suite 600
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
Ajit A. Dhavle
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
Hl4.00010000 5593
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/24/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJIT A. DHA VLE and DAVID Y AKIMISCHAK
Appeal2017-001513
Application 13/344,332
Technology Center 3600
Before JUSTIN BUSCH, JAMES W. DEJMEK, and JOHN D. HAMANN,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to using a computer to perform
quality control checking of electronic prescription renewal requests sent
from a pharmacy to a prescriber. Spec. ,r,r 1, 8, 51-52, 55-59. Claims 1, 16,
and 17 are independent claims. Claim 1 is reproduced below:
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Application 13/344,332
1. A method on a computer for quality control checking of
interactions received from a pharmacy and a prescriber via a
network, the method comprising:
determining, by the computer, an interaction between a
pharmacy and a prescriber, the interaction including an
electronic refill request originating from the pharmacy;
evaluating the interaction for each of a plurality of quality
issues; and
generating a quality report card to indicate the results of
evaluating the interaction for each of the plurality of quality
ISsues.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 3--4.
Claims 1-3, 6-8, 13, 14, 17, and 18 stand rejected under 35 U.S.C.
§ 103 as obvious in view of Douglas S. Bell et al., A Toolsetfor £-
Prescribing Implementation in Physician Offices, RAND Corp. (Sept. 2011)
(hereinafter, "Bell") and Hansell (US 2009/076850 Al; Mar. 19, 2009).
Final Act. 4--10.
Claims 4, 5, 9-12, 15, 19, and 20 stand rejected under 35 U.S.C. § 103
as obvious in view of Bell, Hansell, and Munoz (US 7,426,476 B2; Sept. 16,
2008). Final Act. 10-18.
Claim 16 stands rejected under 35 U.S.C. § 103 as obvious in view of
Bell, Hansell, and Chou (US 2009/0210708 Al; Aug. 20, 2009). Final
Act. 18-20.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
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Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
THE§ 101 REJECTION
The Examiner concludes claims 1-20 are directed to judicially
excepted subject matter. Final Act. 3--4; Ans. 2--4. Appellants argue the
§ 101 rejection of all claims as a group. See App. Br. 11-21. Accordingly,
we select independent claim 1 as representative and decide the appeal of the
§ 101 rejection based on claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Alice/Mayo Framework
The Patent Act defines patent-eligible subject matter broadly:
"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." 35 U.S.C. § 101. There is no dispute that claims
1-20 fall within one of these categories.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that§ 101
"contains an important implicit exception" for laws of nature, natural
phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185
(1981 ). In Mayo and Alice, the Court set forth a two-step analytical
framework for evaluating patent-eligible subject matter: (1) "determine
whether the claims at issue are directed to" a patent-ineligible concept, such
as an abstract idea; and, if so, (2) "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
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"significantly more" than a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an "inventive concept." Alice, 134 S. Ct. at 2355;
Elec. Power, 830 F.3d at 1353. For an inventive concept, "more is required
than 'well-understood, routine, conventional activity already engaged in"'
by the relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80).
Prima Facie Case
Appellants' contention that the Examiner failed to make a prima facie
case of ineligibility is unavailing. See App. Br. 11-13; Reply Br. 2-3.
Appellants assert the Examiner merely made conclusory statements and
failed to provide reasons the claims are directed to an abstract idea and do
not recite significantly more. App. Br. 11-13; Reply Br. 3. Much of
Appellants' argument, however, addresses whether the Examiner properly
identified the abstract idea rather than whether the Examiner met the initial
burden of demonstrating that Appellants' claims are ineligible. See App.
Br. 11-12 ( arguing the Examiner mischaracterized Appellants' claims
because Appellants' claims are directed to more than the concepts the
Examiner identified (i.e., determining an interaction, evaluating the
interaction, and generating a report)).
The Federal Circuit has repeatedly noted that "the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
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production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the U.S. Patent and Trademark Office (USPTO) carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, all that is required of the Office is that it set forth the statutory basis of
the rejection, and the reference or references relied on, in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
The Examiner's rejection, as discussed further below, presents a
prima facie case by identifying that Appellants' claims are directed to
particular concepts, which the Examiner explains are similar to other
abstract ideas and further explains why the additional elements do not
amount to significantly more than the abstract idea (e.g., simply generic
computer elements implementing the idea). See Final Act. 3--4, 20-21;
Ans. 3--4. Accordingly, the Examiner has set forth the statutory basis for the
rejection, namely 35 U.S.C. § 101; concluded that the claimed invention is
directed to a judicial exception to § 101, namely an abstract idea; and,
contrary to Appellants' contention explained and analyzed the rejection in
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sufficient detail to permit Appellants to respond meaningfully. See Jung,
637 F.3d at 1362.
The Examiner, thus, notified Appellants of the reasons for the
rejection "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. In doing so, the Examiner set forth a prima facie case of
unpatentability.
Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner determines
the claims are directed to systems and methods for quality control checking
of interactions received from a pharmacy and a prescriber via a network,
which the Examiner concludes is an abstract idea (i.e., an idea of itself) of
comparing new and stored information and using rules to identify options.
Final Act. 3; Ans. 3. The Examiner compares Appellants' claims to claims
relating to collecting and analyzing information and displaying certain
results of the analysis, which our reviewing court determined were ineligible
because they were directed to no more than an abstract idea. Ans. 3 ( citing
Elec. Power, 830 F.3d 1350). The Examiner also determines Appellants'
claims are not directed to an improvement to computers, but merely use
computers as tools to implement the abstract idea. Ans. 3.
Appellants assert the Examiner mischaracterizes the claims and the
claims are not directed to merely abstract ideas. Final Act. 11, 13-16. Other
than generally contesting the Examiner's characterization and a conclusory
statement that claim 1 does not merely recite the determining, evaluating,
and generating a report steps, App. Br. 11, Appellants' main contention is
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that the claims "are directed to a computer system that acts as a network
intermediary between the pharmacy and the prescriber." Reply Br. 5.
Appellants' arguments under the heading "The Pending Claims are
not Directed to Abstract Ideas," see App. Br. 13-16, appear to address
whether the claims contain significantly more than the abstract idea itself
(i.e., Alice step two). Nevertheless, to the extent Appellants argue claim 1 is
not directed to an abstract idea because it solves problems arising from the
nascent field of electronic prescriptions, we disagree. See App. Br. 13-16.
Appellants contend claim 1 solves a problem related to the high
volume of electronic prescriptions transactions. App. Br. 13-14. Nothing in
claim 1 requires more than a single determination, evaluation, and report
regarding a single transaction. Appellants further assert electronic
prescriptions introduced opportunities for errors. App. Br. 14--15.
Appellants have not sufficiently demonstrated that entry errors did not exist
previously or that the nature of electronic prescriptions errors introduces a
unique or challenging aspect of identifying quality issues that did not exist
previously. Moreover, nothing in claim 1 addresses aspects unique to such
allegedly introduced errors.
Appellants also argue the high volume of prescription transactions
requires specific treatment for matching transactions. App. Br. 15. Once
again, Appellants have not clearly explained how the claims specifically
address this alleged concern or why this problem is unique to electronic
transactions. For example, Appellants have not explained why the ability to
use electronic transactions instead of conventional paper transactions would
increase the volume of transactions that need to be matched. Furthermore,
simply improving the speed at which a process can be done by automating
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that process does not render eligible subject matter that is otherwise
ineligible. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) ("[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.");
see also Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363,
1370 (Fed. Cir. 2015) ("[O]ur precedent is clear that merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.").
Representative claim 1 is a method that recites only three steps,
namely: (1) determining an interaction between a pharmacy and a
prescriber, the interaction including an electronic refill request from the
pharmacy to the prescriber; (2) evaluating the interaction for quality issues;
and (3) generating a report of the evaluation results. As discussed above,
Appellants have not persuaded us the Examiner's characterization of claim 1
is incorrect. Rather, we agree with the Examiner that claim 1 is directed to
determining an interaction, evaluating the interaction for quality issues, and
outputting results of the evaluation.
The Federal Circuit has concluded similar concepts were directed to
abstract ideas. Specifically, in Electric Power, the Federal Circuit concluded
claims reciting a method of collecting data from various sources, "detecting
and analyzing events" by identifying information in the received data,
reporting the event analysis results and visualizations of measurements,
aggregating the event analysis information, and providing a composite
indicator were directed to an abstract idea because the claims were directed
to "collecting information, analyzing it, and displaying certain results of the
collection and analysis." Elec. Power, 830 F.3d at 1351-53. Appellants'
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claims are similarly directed to collecting information (interactions including
electronic refill requests and responses/prescriptions), analyzing the
information ( evaluating the interaction for quality issues), and displaying
results (generating a report card). See Ans. 3.
Similarly, the Federal Circuit concluded claims directed to collecting
and analyzing information and presenting the results were ineligible as
claiming no more than an abstract idea. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea"); SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("merely
presenting the results of abstract processes of collecting and analyzing
information ... is abstract as an ancillary part of such collection and
analysis") ( quotations omitted).
Finally, to the extent Appellants contend claim 1 is not directed to an
abstract idea because it does not pre-empt all ways of determining and
evaluating interactions, and generating a report of the evaluation, we
disagree. Claim 1 limits the identified abstract idea only by limiting the type
of interaction (i.e., electronic refill request from a pharmacy) and that the
evaluation relates to quality issues. Moreover, although "preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility .... vv11ere a patent's claims are
deemed only to disclose patent ineligible subject matter under the A1ayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
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1371, 1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at 1362---63
("And [ the fact] that the claims do not preempt all price optimization or may
be limited to price optimization in the e-commerce setting do [es] not make
them any less abstract.").
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. Therefore, we tum to step 2 of the Alice analysis.
Step Two of Alice Framework
Next, we tum to step two of Alice to determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58.
The Examiner concludes Appellants' claims include no additional
elements, alone or in combination, other than well-understood, routine, and
conventional computer functions implemented in a general purpose
computer to execute the claimed abstract idea of collecting, analyzing, and
reporting information. Final Act. 3--4, 21; Ans. 3--4. In particular, the
Examiner points to Appellants' Specification, which discloses using
conventional general purpose processors. Final Act. 3--4 ( quoting
Spec. ,r 188); Ans. 3--4.
Appellants argue the claims recite significantly more than the abstract
idea itself. App. Br. 17-20; Reply Br. 4---6; see also App. Br. 13-16
( arguing Appellants' claims are not directed to mere abstract ideas because
the claims solve new problems arising as a result of using electronic means
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to conduct pharmacy to prescriber transactions). 1 In particular, Appellants
assert the claims recite significantly more than an abstract idea because the
claims: (1) improve the performance of a computing system; (2) improve
another technical field; and (3) are confined to a particular useful application
by reciting limitations that are not well-understood, routine, and
conventional. App. Br. 17-20 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)); Reply Br. 4---6 (citing BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016)).
In particular, Appellants first argue the claims improve a pharmacy
and/or prescriber's computing system/device because the claimed system
acts as a network intermediary between the pharmacy and prescriber and
offloads the quality control checking from the pharmacy and/or provider's
computers. App. Br. 17-18. Appellants contend this frees up the pharmacy
and/or prescriber's system resources to perform operations, thereby
improving the performance of those computers. App. Br. 18.
Appellants' argument is not persuasive for at least two reasons. First,
as we noted above, claim 1 does not recite an intermediary computer.
Rather, claim 1 's method may be performed by the pharmacy and/or
prescriber's computers; the computer performing the method simply needs
access to the relevant interaction. Second, Appellants do not argue the
claims are directed to improving a claimed system or computer; rather,
1 To the extent Appellants contend the claims recite significantly more than
the abstract idea because of the high volume of electronic transactions, the
introduction of opportunities for entry error, or identifying matching
transactions, see App. Br. 13-16, we are not persuaded for the reasons
discussed above.
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Appellants contend the recited method improves an unclaimed system
because that other system no longer needs to perform the claimed method.
Appellants next assert the claims improve another technology, namely
"Internet services, e.g., for verifying electronic prescription quality and for
improving prescription filling services." App. Br. 19. This argument is also
unpersuasive. Improving one particular Internet service, by itself, does not
improve another technology. Unlike the claims in DDR, Appellants have
not demonstrated, nor do Appellants' claims address, changing a
conventional way in which the Internet functions. See DDR, 773 F.3d 1245.
Appellants' characterization of the claims as improving "services" is telling
because, even accepting this characterization, improving a service, without
identifying particular improvements to how such a service is implemented,
suggests that the claims improve a process, not a technology.
Appellants' final argument reiterates many of the arguments raised
with respect to whether Appellants' claims are directed to an abstract idea.
App. Br. 20; see App. Br. 13-16. In particular, Appellants contend neither
the volume of transactions nor the need to verify the source of a prescription
was present with paper prescriptions and the present claims solve these
issues. App. Br. 20. This argument also fails to persuade us Appellants'
claims recite significantly more than the abstract idea at least for similar
reasons as discussed above----claim 1 does not recite the features upon which
Appellants' arguments are based. Moreover, verifying the source of a
prescription is a part of the abstract idea of evaluating an interaction for
quality issues and is not a limitation in addition to the abstract idea.
Appellants' argument that BASCOM is applicable is unavailing.
Reply Br. 4--6. Notably, unlike the claims in BASCOM, claim 1 does not
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require any particular configuration of components. In fact, the only
computer components recited in claim 1 is "a computer" that performs the
method. Appellants do not provide a persuasive explanation of how or why
the particular arrangement ( or the recited ordered combination) of the
generic computer amounts to "significantly more," rendering the claimed
abstract idea patent-eligible subject matter.
We do not agree with Appellants that claim 1 's additional limitations
"must amount to more than what is 'well-understood, routine and
conventional in the field." However, an inventive concept "cannot be
furnished by the ... abstract idea ... itself." Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Alice, 134 S. Ct. at
2355 (explaining that, after determining a claim is directed to a judicial
exception, "we then ask, '[w]hat else is there in the claims before us?"')
(emphasis added, brackets in original) (quoting Mayo, 566 U.S. at 78)).
Instead, an "inventive concept" is furnished by an element or combination of
elements that is recited in the claim in addition to the judicial exception and
sufficient to ensure the claim as a whole amounts to significantly more than
the judicial exception itself. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S.
at 72-73); see BSG Tech, 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining
that the Supreme Court in Alice "only assessed whether the claim limitations
other than the invention's use of the ineligible concept to which it was
directed were well-understood, routine and conventional" ( emphasis
added)).
The only aspect recited in claim 1 that is more than the abstract idea is
that the recited method is performed on a computer. Claim 1 's involvement
of a computer, however, is not "an improvement in computers as tools," like
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those claims found patent-eligible. Elec. Power, 830 F.3d at 1354. Rather,
claim 1 invokes computers merely as a tool to implement an abstract idea for
analyzing and presenting information in a particular way. See BSG Tech,
899 F.3d at 1286.
Even to the extent Appellants intend the claim to be capable of
processing a high volume of transactions, simply using a generic computer
to speed up or automate a process does not confer eligibility onto an
otherwise abstract idea because it does not improve a computer or
technology, but rather improves the process itself. See Gottschalk v. Benson,
409 U.S. 63, 66 (1972) (explaining that the claimed steps could easily "be
carried out in existing computers long in use, no new machinery being
necessary"); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5-7 6 (Fed. Cir. 2011) ( explaining that "purely mental processes can be
unpatentable, even when performed by a computer"); see also Intellectual
Ventures, 792 F.3d at 1370 ("[O]ur precedent is clear that merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.").
Accordingly, the claimed limitations, considered both individually
and together, do not add significantly more to the abstract idea and,
therefore, do not render the subject matter patent eligible.
Summary
For the above reasons, Appellants have not persuaded us the
Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101 as being
directed to an abstract idea, without reciting significantly more than the
abstract idea, rendering the claimed subject matter ineligible.
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THE§ 103 REJECTION
Rejection of Claims 1, 13, 14, and 17
The Examiner finds the combination of Bell and Hansell teaches or
suggests every limitation recited in independent claims 1 and 17. Final
Act. 5---6, 10. Of particular note, the Examiner finds Bell teaches or suggests
"evaluating the interaction for each of a plurality of quality issues," as
recited in claim 1 and commensurately recited in claim 17. Final Act. 5
(citing Bell 45: 17-25, 77:30-42, 78), 10.
Appellants summarize Bell's cited passages and contend Bell fails to
teach or suggest the evaluating limitations because none of Bell's cited
passages relate to determining quality issues with respect to electronic refill
requests. App. Br. 22-24, 33-34. Specifically, Appellants acknowledge
Bell's page 45 discloses data mismatches when exporting and integrating
one e-prescribing system with another, but contend that identifying such data
mismatches is not related to evaluating quality issues ( or fields to be echoed
back) in electronic refill request. App. Br. 23, 33. Further, Appellants argue
Bell's cited portions of pages 77 and 78 disclose the possibility of missing e-
prescriptions, a checklist to perform if such an issue occurs, and a caution to
not re-send the prescription to avoid generating a drug alert. App. Br. 23-
24, 33. Finally, Appellants argue Bell's cited portion of page 67 simply
describes how to use free-text and structured data fields, but does not
disclose evaluating whether a prescription echoes back fields from an
electronic refill request. App. Br. 33-34.
We agree with Appellants' characterization of Bell's cited portions.
To the extent Appellants argue a duplicate prescription cannot be one of the
recited plurality of quality issues, however, we disagree. See App. Br. 24.
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Specifically, Appellants assert Bell's disclosed interaction involves a
prescriber re-sending the same prescription resulting in detecting a duplicate
prescription and generating a drug alert. App Br. 24; Reply Br. 9--10.
Appellants contend this interaction, initiated by a prescriber, "cannot
possibly be a refill request, as refill requests are initiated by a pharmacy."
App. Br. 24; Reply Br. 10.
Appellants' argument is not persuasive because Bell discloses a
duplicate prescription would be sent in response to a pharmacy reporting that
a prescription is missing. Bell 77 :30-40. Moreover, the claim merely
recites that the interaction includes a refill request and does not preclude the
interaction including the prescriber's re-transmission of the prescription. In
fact, dependent claim 9 recites that "the interaction further comprises an
electronic refill response." In such a scenario, the interaction would include
both the refill response that results in a duplicate prescription and the
pharmacy's refill request. Thus, Bell teaches an interaction that includes
both a refill request and multiple refill responses to that refill request.
Additionally, the claims recite evaluating the interaction, not the refill
request, for a plurality of quality issues. Bell explains that re-sending a
prescription could cause a drug alert indicating a duplicate prescription. Bell
77:39--40. Bell further explains that e-prescribing systems should keep drug
alerts updated to improve safety and the quality of care. Bell, Table 6.1.
Appellants do not persuasively explain why identifying a duplicate
prescription ( and generating a drug alert) in response to a single refill
request fails to teach or suggest evaluating the interaction (i.e., the refill
request and the duplicate prescriptions) for a plurality of quality issues.
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Appellants also argue Hansell does not teach or suggest the generating
a report card step, as recited in claims 1 and 17. App. Br. 25. Specifically,
Appellants contend Hansell "simply discloses that a report informing a
prescriber of problems associated with a prescription is provided to the
prescriber for correction," but Hansell fails to teach or suggest "that the
interactions for which the report are generated involve refill requests of any
kind." App. Br. 25.
The Examiner relies on Bell for evaluating transactions and relies on
Hansell only for generating a report regarding e-prescription issues. Final
Act. 5. The Examiner finds it would have been obvious to combine the cited
teachings in order to manage and provide reports on the entire e-prescription
process because the combination would have yielded predictable results with
each cited teaching performing the same functions in combination as it did
separately. Final Act. 5---6. We see no error in the Examiner's limited
reliance on Hansell and, accordingly, we are not persuaded the Examiner
erred in rejecting independent claims 1 and 17.
Appellants further argue the combination of Bell and Hansell fails to
teach or suggest the recited "computer" that acts as a network intermediary
and receives "both interactions from a pharmacy and a prescriber are
received by the computer over the network." App. Br. 25-26; see Reply
Br. 10-11. Appellants assert no computer in either Bell or Hansell performs
these functions. App. Br. 25; Reply Br. 10. This argument is also
unpersuasive.
Claim 1 does not require the recited computer to act as a network
intermediary. Moreover, claim 1 does not recite that the computer receives
interactions from the pharmacy and prescriber over a network. Rather, claim
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1 's computer merely performs the recited method "for quality control
checking of interactions received from a pharmacy and a prescriber." The
method does not indicate what entity receives the interactions. With respect
to the relevant limitations, claim 1 recites that the computer determines "an
interaction between a pharmacy and a prescriber," evaluates the interaction,
and generates a report indicating the evaluation results. Claim 1 's computer
may perform these functions by reviewing records stored in a database
without serving as an intermediary and without receiving the specific
transactions from either the pharmacy or the prescriber. Accordingly, the
recited computer could be any computer (at a pharmacy, a prescriber, or
anywhere else) as long as the computer has access to the information
necessary to determine and evaluate the interactions. Moreover, even if
claim 1 requires a computer acting as an intermediary, both Bell and Hansell
disclose such computers. See Hansell, Fig. 1; Bell, Fig. 2.1.
Bell discloses that e-prescribing includes "two-way transmissions
between the point of care and the dispenser." Bell 1. Similarly, Hansell
discloses bi-directional electronic transmission of information between a
pharmacy and prescriber. Hansell ,r 4 ("It would be desirable to have an
electronic communication system whereby the pharmacy and the prescribing
physician can resolve problems electronically."). Accordingly, the
combination of Bell and Hansell teaches or suggests interactions involving
electronic transactions between the pharmacy and prescriber.
Furthermore, Bell discloses a health information network that acts as
an intermediary between the pharmacy and prescriber. Bell 7-8; see Final
Act. 5. Bell further discloses a pharmacy initiates electronic refill requests,
which are "transmitted via the health information network to the prescriber's
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software system," and a prescriber may send back a prescription to the
pharmacy "via the health information network." Bell 8: 12-19. Bell at least
suggests the health information network includes a computer in order to
receive and re-transmit the disclosed electronic transactions. Accordingly,
we agree with the Examiner that the combination of Bell and Hansell
teaches, or at least suggests, a computer performing the recited method. To
the extent different computers may be used to perform different method
steps, Appellants have not demonstrated why such a disclosure would not at
least suggest claim 1 's method or performing the steps on a single computer.
For the above reasons, we are not persuaded the combination of Bell
and Hansell fails to teach or suggest the recited "computer."
Appellants do not argue dependent claims 3, 8, 13, and 14 separately
with particularity. Therefore, we are not persuaded the Examiner erred in
rejecting these claims for the same reasons.
Rejection of Claims 2, 3, and 18
The Examiner finds the combination of Bell and Hansell teaches or
suggest every limitation recited in claims 2, 3, and 18. Final Act. 6-7, 10.
Claim 2 depends from claim 1 and claim 18 depends from claim 1 7. Claim
3 depends from claim 2. Claims 2 and 18 recite, in relevant part, "searching
for an electronic response originating from a prescriber that matches the
selected electronic refill request." The Examiner finds Bell teaches or
suggests the searching limitation recited in claims 2 and 18. Final Act. 6
(citing Bell 8:1-19, 59:8-14, Fig. 2.1, Table 5.1).
Appellants argue Bell's cited portions merely disclose that pharmacies
and prescribers can electronically transmit refill requests and prescriptions
and that a system can verify a patient's identity with a health information
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network to check a patient's eligibility for prescriptions. App. Br. 28; Reply
Br. 11. Appellants argue none of Bell's cited sections relate to searching for
an electronic response from the prescriber that matches the refill request.
App. Br. 28; Reply Br. 11.
We agree with Appellants' characterization of Bell's cited portions.
Moreover, although it is possible that pharmacists using Bell's disclosed
system may search for a refill response that matches a refill request, we do
not see anything in Bell's cited portions that teaches or suggests such a step.
Accordingly, on this record, we are constrained to reverse the Examiner's
rejection under 35 U.S.C. § 103 of claims 2 and 18, and claim 3, which
depends from claim 2 and incorporates the limitations therein.
Rejection of Claims 6-8
The Examiner finds the combination of Bell and Hansell teaches or
suggest every limitation recited in claims 6-8. Final Act. 7-8. Claims 6 and
7 depend from claim 1, and claim 8 depends from claim 7. Claim 6 recites,
in relevant part, "a refill response that comprises the sender message
identification" and claim 7 similarly recites "an electronic refill response
comprising the sender message identification," The Examiner finds Bell
teaches or suggests the refill response comprising a sender message ID as
recited in claims 6 and 7. Final Act. 7-8 (citing Bell 8:1-19, Fig. 2.1,
Table 5.1).
Appellants argue Bell's cited portions merely disclose that pharmacies
and prescribers can electronically transmit refill requests and prescriptions
but do not teach or suggest a refill response with a sender message ID that is
the same as the sender message ID in the refill request, as required by claims
6 and 7. App. Br. 29-31; Reply Br. 11-12. We agree with Appellants'
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characterization of Bell's cited portions. Accordingly, on this record, we are
constrained to reverse the Examiner's rejection under 35 U.S.C. § 103 of
claims 6 and 7, and claim 8, which depends from claim 7 and incorporates
the limitations therein.
Rejection of Claims 4, 5, 9--12, 15, 19, and 20
The Examiner finds the combination of Bell, Hansell, and Munoz
teaches or suggest every limitation recited in claims 4, 5, 9-12, 15, 19, and
20, which depend from one of claims 1 and 17. Final Act. 10-18.
Appellants do not argue dependent claims 4, 5, 9-12, 15, 19, and 20
separately with particularity. Therefore, we are not persuaded the Examiner
erred in rejecting these claims for the same reasons discussed with respect to
claims 1 and 1 7.
Rejection of Claim 16
The Examiner finds the combination of Bell, Hansell, and Chou
teaches or suggest every limitation recited in independent claim 16. Final
Act. 18-20. The Examiner finds Bell teaches or suggests "evaluating, by the
processor, whether or not the electronic refill response echoes back the one
or more fields that must be echoed back, wherein the one or more fields to
be echoed back are computer-generated at the pharmacy," as recited in claim
16. Final Act. 19 (citing Bell 45:17-25, 67:1-11, 77:30-42, 78).
Appellants summarize Bell's cited passages and contend Bell fails to
teach or suggest the evaluating limitation recited in claim 16 because none
of Bell's cited passages relate to the disputed limitation. App. Br. 33-34;
see also App. Br. 22-24. Specifically, Appellants contend Bell's page 45
discloses data mismatches when exporting and integrating one e-prescribing
system with another, but identifying such data mismatches is not related to
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evaluating quality issues ( or fields to be echoed back) in electronic refill
request. App. Br. 23, 33. Appellants argue Bell's cited portions of pages 77
and 78 disclose the possibility of missing e-prescriptions, a checklist to
perform if such an issue occurs, and a caution to not re-send the prescription
to avoid generating a drug alert. App. Br. 23-24, 33. Finally, Appellants
argue Bell's cited portion of page 67 simply describes how to use free-text
and structured data fields, but does not disclose evaluating whether a
prescription echoes back fields from an electronic refill request. App.
Br. 33-34.
We agree with Appellants' characterization of Bell's cited portions.
Moreover, we agree with Appellants in that we see nothing in Bell that
teaches or suggests evaluating whether an electronic refill response echoes
back fields generated at the pharmacy. The Examiner does not rely on
Hansell or Chau to cure this deficiency. Accordingly, on this record, we are
constrained to reverse the rejection of claim 16 under 35 U.S.C. § 103
because the Examiner has not sufficiently demonstrated that Bell's cited
portions teach or suggest the specific evaluating limitations recited therein.
DECISION
We affirm the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 101.
We affirm the Examiner's decision to reject claims 1, 4, 5, 9-15 and
17-20 under 35 U.S.C. § 103.
We reverse the Examiner's decision to reject claims 2, 3, 6-8, and 16
under 35 U.S.C. § 103.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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