Ex Parte Kalies

Board of Patent Appeals and Interferences

Aug 27, 2012

10756608 (B.P.A.I. Aug. 27, 2012)

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.
10/756,608 01/13/2004 Ralph F. Kalies 036806.00442 1637
7590 08/27/2012
Louis C. Dujmich
Ostrolenk, Faber, Gerb & Soffen, LLP
1180 Avenue of the Americas
New York, NY 10036-8403
EXAMINER
RAJ, RAJIV J
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
08/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte RALPH F. KALIES
____________________

Appeal 2011-000216
Application 10/756,608
Technology Center 3600
____________________

Before: HUBERT C. LORIN, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000216
Application 10/756,608

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3, 4, and 10. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

BACKGROUND
Appellant’s invention is directed to a method for processing pharmacy
data using an electronic network as a communication medium (Specification
[0001]).
Claim 1 is illustrative:
1. A method of using a computer to provide consistent
drug pricing and medication prescription review for a plurality
of pharmacies within a pharmacy network that have a
contractual relationship with a managed care organization, the
method comprising the steps of:
transmitting a first medication prescription order over a
communication network by a healthcare facility computer to a
first pharmacy computer of a first of the plurality of
pharmacies, wherein the healthcare facility is affiliated with a
managed care organization ("MCO");
transmitting a second medication prescription order over
the communication network by the healthcare facility computer
to a second pharmacy computer of a second of the plurality of
pharmacies;
transmitting a first claim relating to the first medication
prescription order over the communication network by the first
pharmacy computer to a processing center computer of a
prescription benefits manager contracted with the MCO;
Appeal 2011-000216
Application 10/756,608

3
transmitting a second claim relating to the second
medication prescription order over the communication network
by the second pharmacy computer to the processing center
computer;
reviewing the first and second claims by the processing
center computer according to predetermined claim review
criteria for the drug pricing and the respective medication
prescriptions;
if either of the claims conform to the predetermined
claim review criteria:
transmitting over the communication network an
approval notification for the respective claim by the processing
center computer to the respective pharmacy computer,
fulfilling the order for the respective prescription
at the respective pharmacy,
sending the fulfilled order from the respective
pharmacy to the healthcare facility, and
otherwise:
transmitting a rejection notification and at least
one basis for the rejection of the nonconforming claim over the
communication network by the processing center computer to
the respective pharmacy computer,
correcting the non-conforming portion of the non-
conforming claim at the respective pharmacy,
transmitting the corrected claim over the
communication network by the respective pharmacy
computer to the processing center computer,
repeating the step of reviewing the claim until the
claim conforms to the predetermined claim criteria, and
sending a filled respective prescription from the
respective pharmacy to the healthcare facility;
aggregating by the processing center computer a plurality
of approved claims for each of the filled respective
prescriptions, wherein the plurality of approved claims are
aggregated for the healthcare facility; and
transmitting an invoice for the aggregated claims over the
computer network by the processing center computer to the
healthcare facility computer.

Appeal 2011-000216
Application 10/756,608

4
Appellants appeal the following rejection: claims 1, 3, 4, and 10 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Portwood (US
5,950,630, iss. Sep. 14, 1999), Kleinfelter (US 7,069,226 B1, iss. Jun. 27,
2006), Edelson (US 5,737,539, iss. Apr. 7, 1998), and Applicant's Admitted
Prior Art.

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
Additional facts may be in the analysis.
1. Portwood discloses a system to facilitate compliance with a prescribed
medical regimen that compares patient data, prescription data, and
pharmaceutical data to determine if the prescription data is within an
acceptable medication dosage range. (Col. 2, l. 57 to Col. 3, l. 4).
2. Portwood discloses that “[i]f the payor is to be an insurance company,
HMO, other health maintenance provider, or government agency, the
invoice generated by the prescription delivery system D will be
delivered, preferably modemed, to the payor system E for payment.”
(Col. 17, ll. 52-56).
3. Kleinfelter discloses a system for “comparison to distinguish between a
new therapy and a continuation therapy [that] provides the identification
of newly prescribed drugs.” (Col. 3, ll. 25-29).
4. Edelson discloses a prescription management system for electronic
prescription creation. (Col. 4, ll. 25-38).
5. Edelson discloses there may be insurance coverage under a benefits plan
(col. 15, ll. 35-38) and that some drugs are not covered under some
benefits plans (col. 35, ll. 34-38).
Appeal 2011-000216
Application 10/756,608

5
ANALYSIS
We are persuaded the Examiner erred in asserting that Portwood,
Kleinfelter, and Edelson disclose transmission and review of “claims
relating to medication prescriptions” (App. Br. 5-6). The Examiner cites to
several sections of Portwood1, Kleinfelter2, and Edelson3 as disclosing the
multiple limitations in independent claim 1 related to payment claims
processing, but relies on AAPA only to disclose a Managed Care
Organization (Ans. 9). Portwood is a system for determining compliance
with a prescribed medical regimen that compares patient data, prescription
data, and pharmaceutical data (FF 1). Portwood discloses that a third-party
payor may be involved (FF 2), but does not disclose the specifics of the
recited payment claims processing steps at the cited sections. Kleinfelter
discloses a system to identify drugs that are prescribed for new therapy (FF
3), but does not disclose the specifics of the recited payment claims
processing steps at the cited sections. Edelson discloses a prescription
management system for electronic prescription creation (FF 4) and that there
may be coverage for some drugs under a benefits plan (FF 5), but does not
disclose the specifics of the recited payment claims processing steps at the
cited sections. Although not relied upon by the Examiner except to disclose
a managed care organization, AAPA discloses that “claims are reviewed by
the [Prescription Benefits Manager] for compliance with the plan’s terms”

1 Portwood, figure 2, col. 3, ll. 46-53; col. 5, ll. 61-64; col. 7, ll. 11-14 and
27-32; col. 10, ll. 45-67; col. 11, ll. 1-25; col. 11, l. 67 to col. 12, l. 2; col 15,
ll. 56-60; col. 17, ll. 53-57; and claim 19 (Ans. 4-6).
2 Kleinfelter, col. 3, ll. 47-51; and col. 4, ll. 40-41 and 53-54 (Ans. 6-7).
3 Edelson, figures 3 and 16 and “related text” (Ans. 7-8).
Appeal 2011-000216
Application 10/756,608

6
(Spec. [0005]) but does not further disclose the review process steps at the
cited paragraphs.
The Examiner does not direct us to portions of the references of
record that disclose the transmitting and reviewing of claims related to
prescription orders as claimed (Ans. 4-9), or articulate reasoning that the
disclosed prescription processing makes obvious payment claims processing
steps, and therefore has failed to establish a prima facie case of obviousness.
For this reason, we reverse the rejection of claims 1, 3, 4, and 10 under 35
U.S.C. § 103(a).

DECISION
We reverse the rejection of claims 1, 3, 4, and 10 under 35 U.S.C. §
103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED

mls