Ex Parte DiMaggio

Patent Trial and Appeal Board

Mar 26, 2013

10610681 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/610,681 07/02/2003 John DiMaggio 10.011.045 2933
7590 03/26/2013
Louis C. Dujmich
Ostrolenk, Faber, Gerb & Soffen, LLP
1180 Avenue of the Americas
New York, NY 10036-8403
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
03/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN DiMAGGIO
____________________

Appeal 2010-011350
Application 10/610,681
Technology Center 3600
____________________

Before: STEFAN STAICOVICI, CHARLES N. GREENHUT, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011350
Application 10/610,681

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
6-16. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
The claims are directed to methods for electronically assisting in
refilling prescriptions. In particular, a system is used to check for clinical or
financial warnings before refilling the prescriptions. Claim 6, reproduced
below, is illustrative of the claimed subject matter:
6. A method for electronically assisting in
dispensing a refill of a prescription comprising the
steps of:
entering a prescription number of a
prescription refill order into a system;
performing checks on said prescription refill
order and determining if any clinical warnings and
financial warnings exist, and if any interventions
are required;
determining with the assistance of the
system if there are no said clinical warnings and no
said financial warnings, and no said interventions
are required in response to the checks;
implementing a course of action, including
to cause an investigation related to any of said
warnings and said interventions with the assistance
of the system; and
refilling said prescription refill order, and
storing information pertaining to said prescription
refill order into said system, and adjusting a
number of fills field in said system if no said
clinical warnings exist and no said financial
warnings exist, and if no said interventions are
required, wherein the number of fills field
represents the remaining number of refills
available for the prescription refill order.

Appeal 2010-011350
Application 10/610,681

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Halvorson
O’Brien
Fiedotin
US 4,847,764
US 6,150,942
US 7,286,996 B1
Jul. 11, 1989
Nov. 21, 2000
Oct. 23, 2007

REJECTIONS
Claims 6-9, 11-13 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Halvorson and Fiedotin. Ans. 3.
Claims 6-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Halvorson and O’Brien. Ans. 6.

OPINION
A. 35 U.S.C. § 103 rejection of Claims 6-9, 11-13 and 15 as being
unpatentable over Halvorson and Fiedotin
Appellant argues the claims subject to this rejection as a group. App.
Br. 5-9. We select claim 6 as representative. However, Appellant’s
arguments specifically concerning claims 8 and 12 are discussed below.
Appellant does not contest the Examiner’s rationale for combining the
teachings of the two references, arguing instead that neither reference
describes the features required by claim 6. App. Br. 6.
Appellant argues that the references do not describe determining, with
the assistance of an electronic system, that no interventions are required, and
implementing a course of action when interventions are required due to
existing clinical and financial warnings. App. Br. 6, 8. However, as
correctly found by the Examiner, Halvorson interrupts filling of the
Appeal 2010-011350
Application 10/610,681

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prescription and provides the user of the system with a warning about the
prescription that must be addressed by the user in order to continue.
Halvorson col. 4, ll. 47-55; Ans. 3. This is understood to be a break in
filling the prescription, corresponding to the “hold” of claim 12. See Reply
Br. 5, first paragraph. As the system alerts the user to the warning, a “course
of action” is implemented with the assistance of the system in response to
the warning, namely, the user must decide whether to dispense the drug (“to
cause an investigation”). Specification, 13.
Appellant further argues that neither Halvorson nor Fiedotin describes
determination of a financial warning. App. Br. 7. In particular, Appellant
argues that Fiedotin simply checks whether a drug is on the formulary. Id.
However, Appellant’s Specification identifies similar checks as examples of
financial warnings.
“The billing/coverage checks are as follows: 1) formulary checks,
including inclusions and exclusions, and prior authorization
requirements; 2) formulary coverage code restrictions; 3) capitation
limits; 4) resident account information (check to see if the account is
on hold or if it is a cash on delivery (COD) account); 5) on-line
eligibility checks for resident or product coverage; and 6) resident
order limits (order over number of prescriptions allowed, and order
over dollar amount allowed).

Specification at 18. Therefore, the Examiner correctly determined that a
check of the insurance aspects of a patient’s healthcare plan is a financial
warning. Ans. 10.
Appellant also argues that Fiedotin is directed to renewing
prescriptions as opposed to refilling prescriptions, and that when Fiedotin
does refill a prescription and adjusts the number of refills remaining,
Fiedotin does not check for clinical and financial warnings. App. Br. 8.
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We note that Appellant has divided prescriptions into new
prescriptions and refills. “If the order is not new, it is a refill, and the system
analyzes the order for clinical and financial warnings (step 306).” Spec. 13.
In light of this description, the Examiner correctly found that Figure 5 of
Fiedotin describes renewals as a subset of refills. Ans. 10. In addition, we
note that the Examiner is not proposing a bodily incorporation of the entire
refill/renewal method of Fiedotin with the method of Halvorson; rather, the
Examiner proposes incorporating Fiedotin’s financial warning check into the
method of Halvorson. Ans. 5.
Lastly, Appellant argues that Halvorson does not show allowing
refilling of a prescription close to the stop date by “defaulting the days
supply to the number of days remaining until said prescription refill order is
due to stop,” as required by claim 8. Reply Br. 3-4. The Examiner identifies
Halvorson, column 10, lines 15-20 and column 15, lines 16-30 as describing
this feature. Ans. 4. While the cited portion of Halvorson does disclose
stopping refills of a prescription if the date is past a stop date, or the patient
has reached a specified number of doses, we cannot agree with the Examiner
that Halvorson refills the prescription while defaulting the days of supply to
the number of days remaining until the stop date. Accordingly, we reverse
the rejection of claim 8.
Therefore, we affirm the rejection of claims 6, 7, 9, 11-13 and 15 as
being unpatentable over Halvorson and Fiedotin. We reverse the rejection
of claim 8 as being unpatentable over Halvorson and Fiedotin.

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B. 35 U.S.C. § 103 rejection of Claims 6-16 as being unpatentable
over Halvorson and O’Brien
Appellant argues that neither Halvorson nor O’Brien describe
financial warnings, as called for by independent claims 6, 12, and 16. App.
Br. 9. While the Examiner identifies column 12, lines 25-50 of O’Brien as
describing “insurance alarm and compliance” (Ans. 11), we cannot agree
that this portion of O’Brien, read in context, is describing a review of a
prescription to determine if it is covered by an insurance policy. The portion
of O’Brien cited by the Examiner describes separate pieces of information at
the service center for “Compliance – Insurance – Alarm – and Service
providers.” The Examiner has not explained how this disclosure meets the
specific limitations recited. All words in a claim must be considered in
judging the obviousness of the claimed subject matter. See In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970). In determining obviousness, there is no
legally recognizable essential gist or heart of the invention. W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983).
Therefore, we reverse the rejection of claims 6-16 as being unpatentable
over Halvorson and O’Brien. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988).
DECISION
We affirm the rejection of claims 6, 7, 9, 11-13 and 15 as being
unpatentable over Halvorson and Fiedotin. We reverse the rejection of
claim 8 as being unpatentable over Halvorson and Fiedotin. We reverse the
rejection of claims 6-16 as being unpatentable over Halvorson and O’Brien.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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