Ex Parte Fralic

Board of Patent Appeals and Interferences

Nov 22, 2010

10121472 (B.P.A.I. Nov. 22, 2010)

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.
10/121,472 04/11/2002 Donald R. Fralic 3633-020645 1802
7590 11/23/2010
Webb Ziesenheim Logsdon Orkin & Hanson, P.C.
Suite 700
436 Seventh Avenue
Pittsburgh, PA 15219
EXAMINER
KOPPIKAR, VIVEK D
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
11/23/2010 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)
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD R. FRALIC
____________

Appeal 2010-007328
Application 10/121,472
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-07328
Application 10/121,472

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-4 and 6-15. Claim 5 is allowed. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for distributing savings related
to the distribution of a prescription drug. (Specification 1, ¶ [0005]).
Claim 10, reproduced below, is representative of the subject matter on
appeal.

10. (Currently Amended)1 A computer-implemented method of
distributing cost savings realized from the distribution of a
prescription drug:
(a) receiving via a computer network for storage in a computer
storage data regarding participants at different levels of a prescription
drug distribution and payment chain in a voluntary plan for
distributing cost savings realized from the selection of a first form of a
prescription drug over a second, more costly form of the prescription
drug;
(b) receiving via the computer network data that a patient
participant received the first form of the prescription drug;
(c) a processor determining a cost difference between the first
and second forms of the prescription drug; and

1 Claims on appeal are taken from the paper entered by the Examiner dated 11/23/09.
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(d) the processor allocating a percentage of the cost difference
to at least two of the enrolled participants.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hardesty US 2001/0032134 A1 Oct. 18, 2001
Sloane US 6,434,30 B1 Aug. 13, 2002

“Whither Medicare?” published in Intelligencer Journal of Lancaster,
PA; March 5, 2001 – Page A6.
“United Healthcare’s Prescription Drug Management Company
Addresses Three Blue Cross and Blue Shield Contracts,” PR
Newswire, July 18, 1991, Dialog ID Number 0177346; Supplier
Number: 42227723.
The following rejection is before us for review2.
The Examiner rejected claims 1-4 and 6-15 under 35 U.S.C. 103(a) as
being unpatentable over "United Healthcare's Prescription Drug
Management Company Add Three Blue Cross and Blue Shields Contracts"
(hereinafter referred to as United Healthcare) in view of Sloane and in
further view of Hardesty and "Whither Medicare".
ISSUE
Did the Examiner err in rejecting claims 1-4 and 6-15 on appeal
as being unpatentable under 35 U.S.C. § 103(a) over United
Healthcare in view of Sloane and in further view of Hardesty and

2 The Examiner withdrew the rejection under 35 U.S.C. § 101 in paper dated 4/20/2010.
Appeal 2010-007328
Application 10/121,472

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"Whither Medicare" on the grounds that a person with ordinary skill
in the art would understand that an item can be purchased over the
counter and still require a prescription to be reimbursed by a
healthcare plan.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. We adopt the Examiner’s findings as set forth on pages 4-10 of the
Answer as our own.
2. United Health Care discloses that DPS is one of the nation’s
leading managers of prescription drug benefits. (Page 3, ¶ 1)
3. Hardesty discloses:
Because of the substantial savings realized in the chain of
distribution, the system may provide various incentives to
customers in the form of rebates. These rebates may be created
directly to a customer, but preferably are credited to an
investment account…. Rebates may also, at the election of the
consumer, be directed to other purposes such as charities,
brokerage account or into checking or savings accounts.

(Hardesty ¶ [0010]).
4. Whither Medicare discloses offering subsidized prescription drug
coverage and financial incentives for those who choose cheaper plans.
(Page 1)
ANALYSIS
We affirm the rejection of claims 1-4 and 6-15.
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Initially, we note that the Appellant argues independent claims 1 and
10 together as a group. Correspondingly, we select representative claim 10
to decide the appeal of these claims, remaining claim 1 standing or falling
with claim 10.
Appellant argues that “… the United Healthcare article does not meet
the limitation of claims 1 and 10 that the participants voluntarily participate
in the plan. By mandating the use of a generic drug program, there is simply
no reason or motivation to allocate any cost savings realized thereby.”
(Appeal Br. 4)
However, this argument is not well taken because the Appellant is
attacking the United Healthcare article individually when the rejection is
based on a combination of references, and the Examiner found that Sloane,
and not United Healthcare, “teaches finding a comparable product (i.e.
prescription) at a lower price (or at a different price) and this step necessarily
determines a cost difference between two forms of a similar product).”
(Answer 5). See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young,
403 F.2d 754, 757-58 (CCPA 1968).
Appellant nevertheless challenges Sloane’s teaching on this point
asserting that because:
…prescription drugs are sold in a highly regulated
environment with required participation of medical
doctors, pharmacists, and possibly, insuring
entities….the mobile apparatus disclosed in the
Sloane et al. document, which is used in an
unregulated retail shopping environment (not a
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Application 10/121,472

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regulated prescription drug distribution
environment), is not suitable, and would not be
utilized, for buying prescription drugs.”
(Appeal Br. 4).
We disagree with Appellant first because the United Healthcare article
provides the teaching for sale of prescription drug benefits (FF 2), and not
Sloane. Second, Appellant’s argument that regulation and prescription drugs
go hand and glove with each other is not necessarily true for all items which
are sold using a prescription. For instance, under some medical insurance
plans, an over-the-counter medication, e.g., TUMS®, is subject to a
prescription in order for the plan to pay for it. Such items are not thus
regulated in that they still can be purchased without a prescription if one
chooses to pay with their own money.
Appellant next argues that the “…the cost savings/difference
distributed in the Hardesty publication has nothing to do with the cost
savings/difference relating to a participant picking between two different
products.” (Appeal Br. 5).
This argument is not well taken because Appellant again is attacking
the reference individually when the rejection is based on a combination of
references, and the Examiner found that Sloane, and not Hardesty, discloses
cost savings/difference relating to a customer picking between two different
products (Answer 5). See In re Keller, 642 F.2d 413 (CCPA 1981); In re
Young, 403 F.2d 754, 757-58 (CCPA 1968).
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With that said, the Examiner nevertheless found that allotting a cost
difference between at least two participants is taught by Hardesty at ¶
[0010]. (Answer 5). A review of Hardesty at this section shows that
according to Hardesty, a cost savings in the form of rebates can be
distributed to other persons, such as charities. (FF 3). Thus, we agree with
the Examiner and find that a person with ordinary skill in the art would
know to use the rebate distribution feature of Hardesty in the context of a
heath care plan to pass on savings to another participant, particularly in the
context of, e.g., family flexible spending accounts (FSA). With such FSA
plans, savings can be earned and distributed against a family limit which
would result in other family member participants receiving additional care
without surpassing the prescribed limit. Thus, in such scenarios, cost
savings would be realized among participant family members.
We further find with the Examiner, at least with respect to the heath
laws governing at the time the application was filed, that participants
participate voluntarily in a plan. (Answer 6). We further find that Whither
Medicare discloses offering subsidized prescription drug coverage and
financial incentives for those who choose cheaper plans. (FF 4). We thus
find that a person with ordinary skill in the art would understand at the time
this application was filed, that a provider would know to offer a plan in
which a participant voluntarily chooses a lesser known brand drug in
exchange for savings, just as they would voluntarily choose a lesser plan in
favor of drug coverage and financial incentives.
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Appellant argues that “[t]here is no disclosure, teaching or suggesting
in the Sloane et al. and Hardesty documents of the applicability of their
respective teachings to the distribution of savings related to the distribution
of one form of a prescription drug versus the distribution of a different, but
formulary equivalent, form of the prescription drug.” (Appeal Br. 7). To the
extent Appellant seeks an explicit suggestion or motivation in the reference
itself, this is no longer the law in view of the Supreme Court’s recent
holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Since
the Examiner has provided some articulated reasoning with some rational
underpinning for why a person with ordinary skill in the art would modify
United Healthcare as proposed (Answer 5, 6), Appellant’s argument is not
persuasive as to error in the rejection.
The remain arguments directed to dependent claims 2-4, 6-9, and 11-
15 merely recite language in the claims with general assertions that the prior
art fail to disclose the recited claim elements. Such statements fail because
any statement(s) which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See,
37 C.F.R. § 41.37 (c)(1)(vii) (2004)

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claim 1-4 and 6-15.

Appeal 2010-007328
Application 10/121,472

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DECISION
The decision of the Examiner to reject claims 1-4 and 6-15 is AFFIRMED.

AFFIRMED

MP

Webb Ziesenheim Logsdon Orkin & Hanson, P.C.
Suite 700
436 Seventh Avenue
Pittsburgh PA 15219