Nimesh S. Jhaveri et al.

Patent Trials and Appeals Board

Aug 19, 2019

13443302 - (D) (P.T.A.B. Aug. 19, 2019)

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.
13/443,302 04/10/2012 Nimesh S. Jhaveri PTS-930 9008
52716 7590 08/19/2019
Walgreen Co. Law Department
104 WILMOT ROAD
M.S. #1425
DEERFIELD, IL 60015
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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):
cary.pumphrey@walgreens.com
mgbdocket@marshallip.com
pto@walgreens.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte NIMESH S. JHAVERI, LAURA J. TEBBE,
DEJAN KOZIC, and FULI E
________________

Appeal 2018-002147
Application 13/443,3021
Technology Center 3600
________________

Before JEAN R. HOMERE, JASON V. MORGAN, and
ADAM J. PYONIN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 2, 4, 7, 10–14, 17, 19–21, and 23–28. Final Act. 2.
Claims 3, 5, 6, 8, 9, 15, 16, 18, and 22 are canceled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify Walgreen Co. as the real party in interest. Appeal Br.
3.
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Summary of the disclosure
According to Appellants, the claimed subject matter relates to
“remotely verifying and processing pharmaceutical prescription orders”
through “a drug utilization review,” printing “a prescription order leaflet”
remotely, receiving “images of a filled prescription order and provid[ing] to
[a] user interface the images of the filled prescription order for verification
that the filled prescription order matches the prescription order,” and sending
“an indication of an acceptance or a denial of the filled prescription order
based on the verification.” Abstract. The Specification’s Figure 2, which
“illustrates a screenshot of an application for reviewing images of a filled
prescription” (Spec. ¶ 21), illustrates how pharmaceutical prescription orders
are remotely verified. The Specification’s Figure 2 is reproduced below.

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The Specification’s Figure 2 illustrates a user interface depicting drug
information and images of a drug prescription being fulfilled (specifically, a
picture of the product in a vial, a label on the vial, and a leaflet for the
prescription). See also Spec. ¶ 52, Figs. 14–15. The Specification’s Figure
2 further illustrates buttons for performing actions (e.g., “Accept” button
2004 and “Reject” button 2002).
Representative claim
1. A method of processing a pharmaceutical drug prescription
order comprising:
receiving a prescription order associated with a customer,
wherein in response to receiving the prescription order,
prescription data associated with the prescription order is
caused to be stored for retrieval by a pharmacist via a
communications network;
receiving an indication of approval over the communications
network in response to the pharmacist reviewing the
prescription data and approving the prescription order;
causing a prescription order leaflet to be printed in response to
the indication of the approval received over the
communications network, wherein the prescription order leaflet
includes an indicium encoding information related to the
prescription order;
scanning, using a pharmacy apparatus, the indicium on the
prescription order leaflet and an indicium on a bulk
pharmaceutical product container;
causing one or more processors to compare the indicium on the
prescription order leaflet to the indicium on the bulk
pharmaceutical product container;
causing the one or more processors to determine a match
between at least a portion of the indicium on the prescription
order leaflet and at least a portion of the indicium on the bulk
pharmaceutical product container;
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receiving, at the pharmacy apparatus and from the bulk
pharmaceutical product container, a quantity of pharmaceutical
product to be counted;
counting, from the quantity of pharmaceutical product to be
counted, a quantity of pharmaceutical product specified on the
prescription order leaflet to verify a quantity of pharmaceutical
product to be dispensed;
printing a prescription vial label for placement on a prescription
vial;
placing into the prescription vial the quantity of pharmaceutical
product to be dispensed;
capturing, using one or more image capturing devices, images
of the pharmaceutical product in the prescription vial and the
prescription order leaflet, wherein the prescription vial label has
been placed on the prescription vial;
receiving, from within a secured pharmacy area, a confirmation
that the captured image of the prescription vial with the
prescription vial label is acceptable for retrieval by a pharmacist
via the communications network or to be sent over the
communications network to a computing system accessible by
the pharmacist, wherein the prescription vial and the
prescription order leaflet are physically located within the
secured pharmacy area and the pharmacist is physically located
out of the secured pharmacy area;
causing, in response to receiving the confirmation that the
captured image of the prescription vial with the prescription
vial label is acceptable, the images of the pharmaceutical
product in the prescription vial and the prescription order leaflet
to be stored in a database or memory for retrieval by the
pharmacist via the communications network or to be sent over
the communications network to the computing system
accessible by the pharmacist;
transmitting, over the communications network, an indication,
originating from the pharmacist based on review by the
pharmacist of the images stored in the database or memory or
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sent over the communications network, of whether the
prescription vial may be given to the customer; and
changing a status displayed on a prescription pickup monitor to
include a visual representation of the indication originating
from the pharmacist.
Rejection
The Examiner rejects claims 1, 2, 4, 7, 10–14, 17, 19–21, and 23–28
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Final Act. 2–4.
ANALYSIS
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in § 101, including: (1) laws of nature; (2) natural phenomena; and
(3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217–18.
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“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Pat. Litig., 823
F.3d 607, 611 (Fed. Cir. 2016)). We, therefore, look to whether: (1) the
claims focus on a specific means or method that improves the relevant
technology or (2) the claims are instead directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36
(Fed. Cir. 2016). That is, we look to whether the claims are “specifically
designed to achieve an improved technological result in conventional
industry practice.” McRO, 837 F.3d at 1316 (citing Alice, 573 U.S. at 222–
24) (emphasis added).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Memorandum”). Under that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (see id. at 54 (step 2A, prong
one)); and
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(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Memorandum, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
Memorandum step 2A, prong one
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines claim 1 defines “collecting information
(i.e., prescription orders information, prescription images, etc.), analyzing
the collected information (i.e., comparing the indicium on the prescription
order leaflet, confirming correct prescription using images, etc.), and
displaying certain results (i.e., confirmation of correct prescription).” Ans.
3; see also Final Act. 2. The Examiner further determines that claim 1 is
“not directed to solving a technological problem per se,” but rather attempts
“to solve a problem rooted in a business process (i.e., processing
prescription orders) by using well-known general purpose computers to
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perform routine and conventional functions (e.g., receiving information,
transmitting information, processing information, etc.).” Ans. 3–4.
Appellants disagree, contending that claim 1, “when properly
considered as a whole[,] provides a particular solution to a problem and is
not directed to an abstract idea.” Appeal Br. 17. Specifically, Appellants
argue, “claim 1 provides a particular solution to the problem of a pharmacist
being physically located outside of a secured pharmacy area but needing to
indicate whether a prescription vial located within the secured pharmacy
area may be given to a customer.” Id. at 16–17; see also Reply Br. 3.
Claim 1 recites: (1) “receiving a prescription order” and “an
indication of approval [of] the prescription order” from a pharmacist; (2)
printing “a prescription order leaflet”; (3) using an “indicium on the
prescription order leaflet and an indicium on a bulk pharmaceutical product
container” to determine that a match between at least a portion of each
indicium; (4) receiving from “from the bulk pharmaceutical product
container” and counting “a quantity of pharmaceutical product”; (5)
“printing a prescription vial label for placement on a prescription vial”; and
(6) “placing into the prescription vial the quantity of pharmaceutical product
to be dispensed”; (7) providing “images of the pharmaceutical product in the
prescription vial and the prescription order leaflet, wherein the prescription
vial label has been placed on the prescription vial” to the pharmacist; and (8)
displaying an indication from the pharmacist “whether the prescription vial
may be given to the customer.” The recited steps describe a basic procedure
for fulfilling a prescription under the supervision of a pharmacist. The
pharmacist approves the prescription order and verifies that it was properly
fulfilled (i.e., may be given to the customer), but the pharmacist does not
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perform the steps of physically preparing the prescription (printing
indiciums and a leaflet, counting the pharmaceutical product, etc.). In the
recited process, the steps are divided between steps that are performed
locally (i.e., the steps of preparing the prescription) and those that are
performed remotely (i.e., the supervisory steps).
Division of a procedure for providing a product into local and remote
steps has long been in widespread use and represents a fundamental
economic practice. See, e.g., Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (“The idea that a
customer may pay for items ordered from a remote seller at a third-party’s
local establishment is the type of fundamental business practice that, when
implemented using generic computer technology, is not patent-eligible”); see
also Memorandum, 84 Fed. Reg. at 52. Thus, by itself, such division is
insufficient to make a claimed process non-abstract. Therefore, we agree
with the Examiner that claim 1 recites an abstract idea (i.e., a fundamental
economic practice). See Final Act. 2–3.
Memorandum step 2A, prong two
Claim 1 does not integrate the recited abstract idea into a practical
application. See Memorandum, 84 Fed. Reg. at 54–55. Although claim 1
recites technologies and technological processes such as a communications
network, scanning, processors, printing, image capturing devices, and a
monitor, the additional elements to not reflect an improvement in any of
these technologies. Cf. Enfish, 822 F.3d at 1336 (“[T]he plain focus of
[patent-eligible] claims [was] on an improvement to computer functionality
itself, not on economic or other tasks for which a computer is used in its
ordinary capacity”). No “particular treatment or prophylaxis for a disease
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or medical condition” or “particular machine or manufacture . . . integral to
the claim” is recited. Memorandum, 84 Fed. Reg. at 55 (emphases added).
The claimed process does not transform or reduce “a particular article to a
different state or thing.” Id. (emphasis added). And we discern no
additional elements that apply or use the recited abstract idea (i.e., the
fundamental economic practice of dividing a procedure for providing a
product into local and remote steps) “in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” Id.
Because claim 1 does not integrate the underlying abstract idea into a
practical application, claim 1 is directed to the abstract idea.
Memorandum step 2B
Appellants contend the even if claim 1 is directed to an abstract idea,
claim 1 nonetheless recites “a non-conventional and non-generic
combination of claim elements that allows a pharmacist physically located
outside of a secured pharmacy area to indicate whether a prescription vial
located within the secured pharmacy area may be given to a customer.”
Appeal Br. 19. Specifically, Appellants emphasize that “a prescription vial
and a prescription order leaflet are physically located within a secured
pharmacy area” while “the pharmacist has a connection via the
communications network to the secured pharmacy area but is physically
located out of the secured pharmacy area.” Id. at 20; see also Reply Br. 5.
Appellants highlight that this avoids having to staff “each of multiple
pharmacy locations with a separate pharmacist.” Appeal Br. 21.
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The Examiner, in contrast, determines that:
the claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements or combination of elements in
the claims, other than the abstract idea per se, amount to no
more than a recitation of (A) a generic computer structure(s)
(e.g., a processor, etc.) that serves to perform generic computer
functions that serve to merely link the abstract idea to a
particular technological environment (i.e., computers); and/or
(B) functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry (e.g., receiving data, storing data, transmitting data,
etc.).
Final Act. 3; see also Ans. 4–5.
We agree with the Examiner that claim 1 does not recite additional
elements that render the claim patent-eligible. See Memorandum, 84 Fed.
Reg. at 56. As discussed above, the claimed locations are part of the recited
abstract idea of dividing a procedure for providing a product into local and
remote steps, and thus these limitations do not constitute “additional
elements” that provide an inventive concept for the claim. Memorandum, 84
Fed. Reg. at 55 n.24, 56. The use of technologies such as a
“communications network” to communicate information, such as images and
indications of approval, have long been well-understood, routine, and
conventional. Using these technologies to divide a prescription fulfillment
processes into steps that occur at separate locations does not improve the
technologies themselves. Compare with BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) (making a
prior art, one-size-fits-all filter service more dynamic and efficient by
providing individualized filtering at a server improved the performance of
the computer system itself).
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Furthermore, the Specification provides broad, generic disclosures for
the technological elements recited in claim 1. See, e.g., Spec. ¶ 28, Fig. 1
(data network), ¶¶ 32, 35 (processor), ¶ 43 (scanner, product container), ¶ 47
(printer), ¶¶ 50, 52, 53, Fig. 9 (camera), ¶¶ 54, 61, Fig. 22 (monitor). These
disclosures further evince that the additional elements of claim 1, even in
combination, do not make claim 1 amount to more than the underlying
abstract idea.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1, and claims 2, 4, 7, 10–14, 17, 19–21, and 23–28, which Appellants
do not argue separately. Appeal Br. 22–23.
DECISION2
We affirm the Examiner’s decision rejecting claims 1, 2, 4, 7, 10–14,
17, 19–21, and 23–28.
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.
§ 41.50(f).
AFFIRMED

2 We note that Figures 1–5 of the Specification are obfuscated by artifacts
(related to Figure 22 of the Specification) that are plainly misplaced.
Because of these artifacts, Figures 1–5 are unclear and do not conform to the
applicable requirements for patent drawings. See generally 37 C.F.R.
§§ 1.81–1.84. We did not find any corrections to these figures in the record.
Thus, in the event of further prosecution, Appellants should submit
appropriate corrections under 37 C.F.R. § 1.85.