Ex Parte Ditto

Patent Trial and Appeal Board

Apr 10, 2014

12012836 (P.T.A.B. Apr. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte STEVEN C. DITTO 7 ___________ 8 9 Appeal 2011-013058 10 Application 12/012,836 11 Technology Center 3600 12 ___________ 13 14 15 Before ANTON W. FETTING, BIBHU R. MOHANTY, and 16 THOMAS F. SMEGAL, Administrative Patent Judges. 17 FETTING, Administrative Patent Judge. 18 DECISION ON APPEAL 19 20 Appeal 2011-013058 Application 12/012,836 2 STATEMENT OF THE CASE1 1 Steven C. Ditto (Appellant) seeks review under 35 U.S.C. § 134 of a 2 final rejection of claims 1-20, the only claims pending in the application on 3 appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 4 The Appellant invented a system and method for prescription refill 5 reminders (Spec. 1, para. [0001]). 6 An understanding of the invention can be derived from a reading of 7 exemplary claim 1, which is reproduced below [bracketed matter and some 8 paragraphing added]. 9 1. A method, executed by one or more processors, comprising: 10 [1] receiving, 11 from a plurality of customers, 12 prescription refill data; 13 [2] processing 14 the prescription refill data 15 according to business rules; 16 [3] sending, 17 to a subscriber, 18 a prescription refill reminder 19 according to 20 the prescription refill data and 21 the business rules; and 22 [4] sending, 23 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed June 6, 2011) and Reply Brief (“Reply Br.,” filed August 29, 2011), and the Examiner’s Answer (“Ans.,” mailed June 28, 2011). Appeal 2011-013058 Application 12/012,836 3 to the subscriber, 1 advertising and informational data corresponding to the 2 prescription refill reminder, 3 [4a] the customers comprising at least one entity 4 selected from the group consisting of 5 drug manufacturers, providers, payers, and 6 pharmacy benefit managers, 7 the subscriber different from any of the customers. 8 The Examiner relies upon the following prior art: 9 Mayaud US 5,845,255 Dec. 1, 1998 Claims 1-10 stand rejected under 35 U.S.C. § 101 as directed to non-10 statutory subject matter. 11 Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable 12 over Mayaud. 13 ISSUE 14 The issue of obviousness turns primarily on whether Mayaud discloses 15 or suggests the subject matter of independent claims 1, 11, and 20. 16 FACTS PERTINENT TO THE ISSUE 17 The following enumerated Findings of Fact (FF) are believed to be 18 supported by a preponderance of the evidence. 19 Appeal 2011-013058 Application 12/012,836 4 Facts Related to the Prior Art 1 Mayaud 2 01. Mayaud is directed to “a computer-implemented prescription 3 management system to assist physicians in prescribing and 4 reviewing drugs.” Mayaud 1:16-18. 5 02. Mayaud describes a prescription creation screen that enables a 6 physician to create a send prescription. Mayaud 19:4-62. 7 03. Mayaud discloses that its “system may alert a prescriber that the 8 intended expiration date of a critical prescription has passed 9 without the prescription having been filled. The prescriber thus 10 becomes aware that the patient has gone off the medication and 11 can take steps to contact the patient and alert them to the dangers 12 or problems that may arise” (emphasis added). Mayaud 28:38-43. 13 04. Mayaud describes that: 14 In the extreme case of withdrawal of a drug from the 15 market, that fact can immediately be communicated to 16 system users. Thus a drug can be withdrawn from the 17 market the same day by making a system entry preventing 18 completion of a prescription for the withdrawn drug. 19 Alternatively, a warning can be posted directly to the 20 prescription. Current users of the medication can be 21 identified from prescription history records, referencing not 22 only drugs prescribed, but also prescription expiration 23 dates. Both the patient and their doctor can be notified 24 immediately. In this case, electronic mail is a preferred 25 route for notifying the physician. 26 Mayaud 23:29-39 (emphasis added). 27 28 Appeal 2011-013058 Application 12/012,836 5 ANALYSIS 1 Claims 1-10 stand rejected under 35 U.S.C. § 101 as directed to non-2 statutory subject matter. 3 We summarily affirm the Examiner’s rejection. The rejection of claims 4 1-10 is based on findings that the claims are drawn to an abstract idea 5 because claim 1 fails to satisfy the machine or transformation test. Ans. 4. 6 The Appellant does not argue that this is error, but instead states that “an 7 agreement can be reached regarding the claim language without resorting to 8 appeal.” Reply Br. 1. Thus, Appellant has not provided any analysis or 9 findings as to why the rejection against claims 1-10 should be reversed. 10 Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable 11 over Mayaud. 12 We are persuaded of error by Appellant’s argument that Mayaud does 13 not disclose receiving prescription refill data from a plurality of customers. 14 App. Br. 11; Reply Br. 1-2. 15 The Examiner directs us to column 19, lines 55-65 as disclosing this 16 language. Ans. 5. Although column 19, lines 55-65 discloses a prescription 17 creation screen which includes a prescribing zone that allows for the creation 18 and transmission of an electronic prescription (FF 02), we find this portion 19 of Mayaud describes functionality performed by a physician using Mayaud’s 20 system. While a fair reading of the “customer” of claim 1 includes a 21 physician, the Examiner does not rely on the physician in Mayaud to address 22 a customer, but rather relies on the pharmacies 210 disclosed in Mayaud 23 (Ans. 5). Based on this explicit construction, the Examiner erroneously 24 Appeal 2011-013058 Application 12/012,836 6 conflates the pharmacies 210 with the functionality performed by the 1 physicians in Mayaud, and as such, we agree with Appellant that Mayaud 2 fails to disclose receiving prescription refill data from a plurality of 3 customers. 4 Even if we were to ignore the Examiner’s construction, Mayaud still 5 fails to disclose or suggest sending a prescription refill reminder to a 6 subscriber because the alerts sent in Mayaud are not prescription refill 7 reminders and are not sent to a subscriber. That is, the alerts sent in Mayaud 8 are sent to the physician who in this case is the customer because he is 9 providing the data required in claim limitation [1] (FF 02, 03), and as such, 10 fails to satisfy claim limitation [4a] wherein “the subscriber [be] different 11 from any of the customers.” To the extent Mayaud does describe sending an 12 alert to a patient, the alert is not a reminder, but rather a notice that a drug is 13 being pulled off the market (FF 04), and even then, the notice appears to be 14 provided to the patient in some manner by the prescribing physician (FF 03). 15 We note that the Examiner does not substantively respond to Appellant’s 16 arguments in the Examiner’s Answer. The Examiner has not set forth a 17 prima facie case of obviousness because the cited claim language is not 18 disclosed by Mayaud as asserted. As a result, we reverse the rejection of 19 claim 1 and dependent claims 2-10. Independent claims 11 and 20 recite the 20 same or similar limitation as set forth above in claim 1, and so, we reverse 21 the rejection of claims 11 and 20, as well as their respective dependent 22 claims 12-19, for the same reasons set forth above at claim 1. 23 24 Appeal 2011-013058 Application 12/012,836 7 NEW GROUND OF REJECTION 1 The following new ground of rejection is entered pursuant to 37 2 C.F.R. § 41.50(b). 3 We additionally rely on the following prior art of record in the case: 4 Nadas US 2009/0043609 A1 Feb. 12, 20092 FACTS PERTINENT TO THE NEW GROUND OF REJECTION 5 The following enumerated Findings of Fact (FF) are believed to be 6 supported by a preponderance of the evidence. 7 Facts Related to the Prior Art 8 Nadas 9 05. Nadas is directed to a comprehensive medication management 10 system for delivering comprehensive medication management 11 services to patients. Nadas para. [0001]; See Provisional para. 12 [0001]. 13 06. Nadas describes that the central processing systems may pull 14 basic patient information, such as the patient name, address, phone 15 number, insurance group number, prescription fill history, and 16 data relating specifically to the patient’s medication management 17 program such as the services the patient is currently receiving, 18 messages to be conveyed to the patient, status and alert flags, and 19 2 Nadas claims benefit of priority under 35 U.S.C. § 119(e) to Provisional Application No. 60/963,871, filed August 7, 2007. Nadas is already of record, having been listed on the Notice of References Cited (Form 892) mailed with the Final Rejection on March 31, 2011. Appeal 2011-013058 Application 12/012,836 8 other data may from the medication management transactional 1 database. Nadas para. [0048]; See Provisional para. [0047]. 2 07. Nadas describes an intervention engine which “defines rules for 3 identifying patients to be blocked at the point of sale when they 4 have their prescriptions filled. Patients may be blocked at the 5 point of sale so that some action relating to their medication may 6 be taken before the transaction is complete. The action to be taken 7 may compromise delivering a message to the patient.” Nadas 8 para. [0046]; See Provisional par. [0045]. 9 08. Nadas’s system provides a prescription ready and refill reminder 10 alert service for informing patients when their prescriptions are 11 ready and when their prescriptions are due to be refilled 12 (prescription refill reminder and prescription ready messages may 13 include text messages, email messages, personal calls from a 14 registered pharmacist, automated calls, or calls from a central call 15 center). Nadas para. [0050]; See Provisional para. [0049]. 16 09. Nadas describes processing refill reminders using a batch process 17 on a regular basis to identify patients who have prescriptions that 18 are due to be refilled during an upcoming period. The reminders 19 may be sent to the identified patients for any number of different 20 occasions over designated communications channels proactively 21 or retroactively. Nadas para. [0052]; See Provisional para.[0051]. 22 Appeal 2011-013058 Application 12/012,836 9 The following new ground of rejection is entered pursuant to 37 C.F.R. 1 § 41.50(b). Independent claims 1, 11, and 20 are rejected under 35 U.S.C. 2 § 103(a) as unpatentable over Nadas and Mayaud. 3 Nadas is directed to a medication management system for delivering 4 prescription refill reminders to patients. FF 05 and 08. Nadas describes 5 receiving patient information including prescription refill data from a 6 plurality of customers (i.e., pharmacies) at a central processing system. 7 FF06. Nadas’s system processes these data according to business rules (FF 8 07 and 09) and sends a prescription refill reminder to a subscriber (i.e., 9 patient) according to the prescription refill data and business rules, which 10 would include data corresponding to the refill reminder. FF 08. 11 We find the type of data sent in the prescription refill reminder provide 12 information discernible only to the human mind, and do not alter or, in any 13 way, affect the structure or function of the underlying system. As such, they 14 cannot be relied on to distinguish over the prior art in terms of patentability. 15 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 16 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not 17 functionally related to the substrate, the descriptive material will not 18 distinguish the invention from the prior art in terms of patentability). “The 19 rationale behind this line of cases is preventing the indefinite patenting of 20 known products by the simple inclusion of novel, yet functionally unrelated 21 limitations.” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 22 1279 (Fed Cir 2010). (The relevant inquiry here is whether the additional 23 instructional limitation has a “new and unobvious functional relationship” 24 with the method, that is, whether the limitation in no way depends on the 25 method, and the method does not depend on the limitation). 26 Appeal 2011-013058 Application 12/012,836 10 And, it would be predictable to one of ordinary skill to look at Mayaud’s 1 system interface (see Fig. 16) for connecting the users of Nadas’s 2 prescription management system in order to provide data and processing 3 resources. 4 CONCLUSIONS OF LAW 5 The rejection of claims 1-10 under 35 U.S.C. § 101 as directed to non-6 statutory subject matter is uncontested. 7 The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable 8 over Mayaud is improper. 9 The following new ground of rejection is entered pursuant to 10 37 C.F.R. § 41.50(b). Claims 1, 11, and 20 are rejected under 35 U.S.C. 11 § 103(a) as unpatentable over Nadas and Mayaud. 12 DECISION 13 The rejection of claims 1-10 under 35 U.S.C. § 101 is affirmed. 14 The rejection of claims 1-20 under 35 U.S.C. § 103(a) is reversed. 15 The following new ground of rejection is entered pursuant to 37 C.F.R. 16 § 41.50(b). Claims 1, 11, and 20 are rejected under 35 U.S.C. § 103(a) as 17 unpatentable over Nadas. 18 This Decision contains a new rejection within the meaning of 37 C.F.R. 19 § 41.50(b) (2011). 20 Our decision is not a final agency action. 21 37 C.F.R. § 41.50(b) provides that Appellant, WITHIN TWO MONTHS 22 FROM THE DATE OF THE DECISION: 23 Appeal 2011-013058 Application 12/012,836 11 must exercise one of the following two options with respect to 1 the new rejection: 2 (1) Reopen prosecution. Submit an appropriate amendment of 3 the claims so rejected or new evidence relating to the claims 4 so rejected, or both, and have the matter reconsidered by the 5 Examiner, in which event the proceeding will be remanded 6 to the Examiner . . . . 7 (2) Request rehearing. Request that the proceeding be reheard 8 under § 41.52 by the Board upon the same record . . . . 9 No time period for taking any subsequent action in connection with this 10 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 11 § 1.136(a)(1)(iv) (2011). 12 13 AFFIRM-IN-PART; 41.50(b) 14 15 llw 16