Hanz, Ezra et al.

Patent Trials and Appeals Board

Mar 20, 2020

13198103 - (D) (P.T.A.B. Mar. 20, 2020)

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.
13/198,103 08/04/2011 Ezra Hanz 9797.001US1-SD 7118
39564 7590 03/20/2020
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30326
EXAMINER
NGUYEN, HIEP VAN
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
03/20/2020 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):
docketing@fisherbroyles.com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EZRA HANZ, JEFFREY ARTHUR STAHL, and
LEWIS ARNOLD STAHL
____________

Appeal 2018-008212
Application 13/198,103
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 and 15. An oral hearing was held on March 4,
2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Feb. 27, 2018), and Reply Brief (“Reply Br.,” filed Aug. 13, 2018), and
the Examiner’s Answer (“Ans.,” mailed June 12, 2018), and Final Office
Action (“Final Act.,” mailed June 27, 2017). Appellant identifies Nextgen
Management LLC as the real party in interest. Appeal Br. 2.
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CLAIMED INVENTION
Independent claims 1 and 15 are the only claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of interfacing with an electronic prescription
system to transmit a customized message to a prescriber device
responsive to entry of prescription information into said
electronic prescription system from said prescriber device, said
prescriber device having a display, the method comprising:
[(a)] receiving from said electronic prescription system
electronic prescription information pertaining to a prescription,
the electronic prescription information including at least patient
identity, prescriber identity, and medication being prescribed;
[(b)] parsing, using a digital processing apparatus, the
electronic prescription information to extract at least one of the
patient identity and the prescriber identity;
[(c)] accessing electronic personal data of said electronic
prescription system using the prescriber identity, said electronic
personal data including at least past prescribing habits of the
prescriber; and
[(d)] prior to the prescriber completing a prescription for
the medication being prescribed, automatically generating and
transmitting a message to said electronic prescription system for
display on said display said message containing information
based on at least the past prescribing habits of the prescriber and
said medicine being prescribed.

REJECTIONS
Claims 1 and 15 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mayaud (US 2002/0042726 A1, pub. Apr. 11, 2002) and Enos
(US 2002/0138303 A1, pub. Sept. 26, 2002).
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ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues independent claims 1 and 15 as a group. Appeal
Br. 5–10;2 see also Reply Br. 2.3 We select independent claim 1 as
representative. Claim 15 stands or falls with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements

2 Appellant’s Appeal Brief mistakenly numbers each page after page nine of
the Appeal Brief as page one. To correct this error and avoid confusion, we
treat the page numbers as increasing consecutively after page nine.
3 Appellant’s Reply Brief lacks page numbers. To remedy this oversight, we
treat the Reply Brief’s first page, having a header, as page one, and
consecutively increase the page number for the remaining pages.
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of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that claims 1 and 15 are directed to a method of “electronically
transmitting a customized message,” and a computer program product for
doing the same. Final Act. 2–3. The Examiner determined that the claims
are similar to concepts involving collecting information, analyzing the
information, and displaying the results, which the courts have identified as
an abstract idea. Id. at 3 (citing Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas), 12; Ans. 12–13. The Examiner further determined that claims 1 and
15 do not include additional elements that are sufficient to amount to
significantly more than the judicial exception. Id. at 3–4.
The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on January 7, 2019 for use by USPTO personnel in evaluating
subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019)
(“Revised Guidance”). That guidance revised the USPTO’s examination
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procedure with respect to the first step of the Mayo/Alice framework by (1)
“[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.4
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A, Prong
One)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the Revised Guidance (i.e., Step 2A), is a two-prong test; in
Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. Revised Guidance, 84 Fed.
Reg. at 54; see also id. at 52 (identifying the three groupings). If so, we next
consider whether the claim includes additional elements, beyond the judicial
exception, that “integrate the [judicial] exception into a practical
application,” i.e., that apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that

4 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf), clarifying the Revised
Guidance in response to comments solicited from the public.
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the claim is more than a drafting effort designed to monopolize the judicial
exception (“Step 2A, Prong Two”). Id. at 54–55. Only if the claim
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application do we conclude that the claim is “directed to” the
judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s arguments that the Examiner
oversimplified the claim language or otherwise erred in determining that
claim 1 is directed to an abstract idea. See Appeal Br. 9–10. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification (including the claim language) that
the claims focus on an abstract idea, and not on any improvement to
technology and/or a technical field.
Appellant’s Specification is titled “ELECTRONIC PRESCRIPTION
DELIVERY SYSTEM AND METHOD,” and describes that the invention
relates to a method and system for “providing electronic messaging,
including advertising and promotional messages and educational or
informational messages about a given drug.” Spec. ¶ 2. The Specification
describes that physicians write approximately 2.5 billion prescriptions each
year. Id. ¶ 4. Before the advent of electronic medical record systems,
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prescriptions were handwritten by physician on pre-printed prescription
pads. Id. ¶ 5. Pre-printed prescription pads include text identifying the
document as a prescription, the name and address of a prescribing provider,
and other required information. Id. Prescription pads also include
advertisements by the pharmaceutical industry to the physician to increase
brand awareness and improve recall. Id. ¶ 6 The physician hands the
prescription to a patient, and the patient delivers the prescription to a
pharmacist for fulfillment. Id. Prescription pads allow the pharmaceutical
industry to advertise to the physician and increase brand awareness.
The Background further describes that electronic prescription
dispensing systems allow patient information to be electronically entered
into an electronic medical record (“EMR”) system. Id. ¶ 7; see also id. ¶ 14
(“Eprescribing is known.”). The prescriber enters patient information and
prescription information into the EMR system using an electronic interface,
such as a graphic user interface (“GUI”). Id. ¶¶ 7, 14. Pharmaceutical
companies also can message medical providers using the electronic
interfaces of electronic medical systems. Id. ¶ 7.
Appellant’s invention seeks to provide real-time delivery of
information (i.e., a message) to the prescriber at the time the prescriber
prepares the prescription and prior to completion. Id. ¶ 17. Exemplary
messages include an advertisement, such as one paid for by a pharmaceutical
company, for an alternative drug to the drug that the prescriber prescribed.
Id. Because the information is provided before the prescription is complete,
the prescriber can analyze the alternative drug and choose it instead of the
original medication identified in the prescription. Id. In another example,
the invention generates a message to the provider regarding a
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contraindication, and offer alternative drug(s). Id. The message can
beneficial to the patient and prescriber, as well as the advertising entity (e.g.,
a pharmaceutical company). Id. ¶ 19. Because some of the messages
delivered to the prescriber comprise advertising, the system also provides
mechanisms for tracking the efficacy of such advertising, and delivering
reports regarding the same. Id. ¶ 20.
Consistent with this disclosure, claim 1 recites a method for
transmitting a customized message to a prescriber in response to the
prescriber’s entry of prescription information comprising the following
steps: “receiving . . . prescription information pertaining to a prescription,
the . . . prescription information including at least patient identity, prescriber
identity, and medication being prescribed” (limitation (a)); “parsing . . .
the . . . prescription information to extract at least one of the patient identity
and the prescriber identity” (limitation (b)); “accessing electronic personal
data of said . . . prescription system using the prescriber identity, said . . .
personal data including at least past prescribing habits of the prescriber”
(limitation (c)); and “prior to the prescriber completing a prescription for the
medication being prescribed, automatically generating and transmitting a
message . . . for display . . . said message containing information based on at
least the past prescribing habits of the prescriber and said medicine being
prescribed” (limitation (d)). These limitations, when given their broadest
reasonable interpretation, recite steps for transmitting a customized message
to a prescriber in response to entry, and prior to completion, of a
prescription. The underlying steps recited in claim 1 are acts that could be
performed by a human mentally or manually, using pen and paper, without
the use of a computer or any other machine. For example, a person could
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receive information pertaining to a prescription. The person could parse that
prescription information mentally to extract an identity of the patient and
prescriber. Using the prescriber identity, the person could access prescribing
habits of the prescriber (stored electronically or on paper). Finally, the
person could generate and transmit (verbally, electronically, or using pen
and paper) a message to the prescriber containing information based on the
past prescribing habits of the prescriber and the medicine being prescribed.
Claim 1 recites steps, including an observation, evaluation, and/or judgment,
that can be performed in the human mind, which is a mental process and,
therefore, an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52. See
also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
Cir. 2011) (holding that method steps that can be performed in the human
mind, or by a human using a pen and paper, are unpatentable mental
processes).
The Federal Circuit has held similar concepts to be abstract. For
example, the Federal Circuit has held that claims directed collecting data,
analyzing the data, and reporting the results of the collection and analysis,
including when limited to particular content, to be directed to excepted
subject matter. See, e.g., Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of
collecting, displaying, and manipulating data); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas).
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The steps, broadly construed, also relate to a commercial interaction
(e.g., including advertising or marketing, and business relations), which is a
certain method of organizing human activity, and thus, an abstract idea. See
Revised Guidance, 84 Fed. Reg. at 52.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong Two)
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). See Revised Guidance,
84 Fed. Reg. at 54.
Beyond the abstract idea, claim 1 additionally recites a “prescriber
device” (preamble), an “electronic prescription system” (preamble,
limitation (a)); a “digital processing apparatus” (limitation (b)); a “display”
(limitations (c), (d)(1)); and that the prescription information is “electronic”
(limitations (a), (b)). However, Appellant’s Specification describes these
elements at a high degree of generality, i.e., as generic computer
components. See, e.g., Spec. ¶¶ 32 (“all of the functionality described herein
may be provided by or in combination with other forms of circuitry,
including, but not limited to, state machines, combinational logic circuits,
FPGAs, digital circuits, Application Specific Integrated Circuits (ASICs),
analog circuits, processors, microprocessors, digital signal processors
(DSPs), computers, software running on any of the above, and/or any
combinations of the above”); 33 (the invention is adapted to interface with
“commercially available EMR systems, EHR systems, eprescription
applications, patient management systems”). See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
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can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
Appellant argues that claim 1 is drawn to solving a technological
problem facing e-prescription systems. Appeal Br. 5–10. In particular,
Appellant contends that it is “difficult to build an electronic prescription
system which [sic] is able to comply with the disparate regulatory policies to
the messaging component.” Id. at 7. Appellant contends that compliance
issues can be avoided by disseminated “plain vanilla,” “benign or even
insipid” information. Id. But “it is unlikely that any company [would] be
interested in paying a fee for such information to be disseminated.” Id.
Appellant concludes that there, therefore, is a need to separate the messaging
function and e-prescription function of e-prescription systems “so that third
parties, and not the e-prescription system provider, can focus on compliance
issues and on providing content [that] is both interesting and compliant.” Id.
However, we are not persuaded that a need for providing “interesting and
compliant” information that doesn’t run afoul of regulations is a
technological improvement as opposed to a business concern.
Appellant argues that claim 1 is “directed to an overlay for an e-
prescription system that improves the performance of the e-prescription
system to improve the overall delivery of services to patients.” Id. In this
regard, Appellant contends that the claimed invention “allows a single
messaging service to interface with multiple[,] different electronic
prescription systems, providing a central service at which multi-state, multi-
national regulations can be collated and applied.” Id. at 8. Appellant’s
argument is unpersuasive, at least because claim 1 does not recite multiple,
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different electronic prescription systems, or collating and applying multi-
state, multi-national regulations.
Further, even if Appellant’s arguments were commensurate in scope
with the claim language, claim 1 does not recite any technological details
regarding how a single messaging service interfaces with multiple, different
electronic prescriptions and/or collates and applies multi-state, multi-
national regulations. Instead, the claim covers any manner of solution that
achieves the result-focused, functional limitations. See, e.g., Elec. Power
Grp., 830 F.3d at 1356 (cautioning against claims “so result-focused, so
functional, as to effectively cover any solution to an identified problem”);
Intellectual Ventures I, 850 F.3d at 1342 (“[T]he claim language here
provides only a result-oriented solution with insufficient detail for how a
computer accomplishes it. Our law demands more.”).
Appellant further argues that “the claims ensure that relevant, yet
compliant, information is delivered to the prescriber” before the prescription
is completed. Appeal Br. 8. Appellant’s claimed invention may well
improve a process for transmitting a customized message to a prescriber
device. However, we are not persuaded that this improvement is an
improvement to technology, as opposed to an improvement to a process that
is the abstract idea itself.
Appellant argues that the Examiner’s articulation of the abstract idea
fails to address the purported technological problem involving “segregating
the e-prescription system from the messaging system, or presenting relevant
yet compliant information based on the prescriber’s prescription history.”
Appeal Br. 9–10. However, as set forth above, the Examiner’s
characterization of claim 1 is fully consistent with the claim language as
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understood in light of the Specification under a broad, but reasonable,
interpretation. That the Examiner articulates the abstract idea at a higher
level of abstraction than would Appellant is an insufficient basis to argue
that the Examiner mischaracterized the claimed subject matter. See Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”).
We also are not persuaded of Examiner error by Appellant’s argument
regarding preemption. See Appeal Br. 10 (“claimed invention does not
preclude an e-prescription system with messaging”). Although the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent-eligible subject matter] as one of pre-emption,” Alice Corp.,
573 U.S. at 216, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
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We do not find anything of record indicating that the claims recite an
additional element or combination of elements beyond the abstract idea that
reflects an improvement in the functioning of a computer, or an
improvement to other technology; implements the abstract idea with a
particular machine; effects a transformation of a particular article to a
different state or thing; or that otherwise indicates that the claimed invention
integrates the abstract idea into a “practical application,” as that phrase is
used in the Revised Guidance.5
We conclude, for the reasons outlined above, that claim 1 recites a
mental process and/or a method of organizing human activities, i.e., an
abstract idea, and that the additional elements recited in the claims do no
more than generally link the abstract idea to a particular technological
environment (i.e., an electronic prescription system) or field of use (i.e.,
electronic prescriptions). Therefore, the additional elements do not integrate
the abstract idea into a practical application. Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Revised Guidance, Step 2B)
Having determined that claim 1 is directed to an abstract idea (Step
2A), we next consider whether claim 1 includes additional elements or a
combination of elements that provides an “inventive concept,” i.e., whether

5 The Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Revised Guidance, 84 Fed. Reg. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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the additional elements amount to “significantly more” than the judicial
exception itself (Step 2B). Revised Guidance, 84 Fed. Reg. at 56.
Appellant contends that the claims recite “significant and non-obvious
features.” Appeal Br. 8. However, the features to which Appellant refers
relate to the abstract idea itself and, thus, cannot supply an inventive concept
under step two of the Mayo/Alice framework. See BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[i]t has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept”) (internal citation omitted);
see also Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)
(holding that claims lacked an inventive concept where they amount to no
more than performing the abstract idea with conventional computer
components), cert. denied, 2020 WL 129532 (U.S. Jan. 13, 2020).
As described above, the only additional elements recited in claim 1
beyond the abstract idea are: a “prescriber device”; an “electronic
prescription system”; a “digital processing apparatus”; a “display”; and that
the prescription information is “electronic” — elements set forth in the
Specification as generic computer components. See, e.g., Spec. ¶¶ 32–33.
Appellant cannot reasonably contend, nor does Appellant, that the evidence
of record adequately indicates that the claimed invention is implemented
using other than generic computer components to perform generic computer
functions, e.g., receiving, parsing, accessing, generating, and transmitting
information. See BSG Tech., 899 F.3d at 1290–91 (“If a claim's only
‘inventive concept’ is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
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patent-eligible application of an abstract idea.); see also Berkheimer, 881
F.3d at 1370 (holding claims lacked an inventive concept because they
“amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components”).
Here, Appellant has not identified, and we do not find, any additional
elements recited in claim 1 that, individually or in combination, provide
significantly more than the abstract idea. We are not persuaded, on the
present record, that the Examiner erred in rejecting independent claim 1
under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection of claim 1, and claim
15, which falls with claim 1, under 35 U.S.C. § 101.

Obviousness
The Examiner finds that Enos teaches
prior to the prescriber completing a prescription for the
medication being prescribed, automatically generating and
transmitting a message to said electronic prescription system for
display on said display, said message containing information[]
based on at least the past prescribing habits of the prescriber and
said medicine being prescribed[,]
as recited in claim 1, limitation (d), and similarly recited in claim 15. Final
Act. 7 (citing Enos ¶ 101, Fig. 17); see also Ans. 16–17. We are persuaded
by Appellant’s argument that the Examiner erred in making this finding. See
Appeal Br. 12; see also Reply Br. 3–4.
Enos relates to facilitating physician prescription and formulary
compliance. Enos ¶ 4. Enos describes that a physician chooses drugs to be
placed on a preprinted, eScriptPad prescription pad. Id. ¶ 101. Enos’s
ScriptIQ system receives alert-trigging information that impacts the
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physician’s eScriptPad prescription pad. Id. Alert-triggering information
includes information relevant to prescriptions on the physician’s eScriptPad
prescription pad, such as a drug in the pad is no longer available as an
approved medication, or has been recalled. Id. And a prescription alert
service “ultimately inform[s]” a physician regarding the alert-triggering
information. Id. As a result of receiving an alert that a drug on the
physician’s eScriptPad prescription pad has been recalled, the physician
knows to stop prescribing this drug, and to order a new set of prescription
pads. Id.
The Examiner finds that Enos’s art teaches automatically generating
and transmitting a message, as recited in claim 1, limitation (d), and
similarly recited in claim 15. The difficulty with the Examiner’s analysis,
however, is that claim 1 requires that the message is generated after the
electronic prescription information (including the patient identity, prescriber
identify, and medication) being prescribed has been received (limitation (a))
and processed (limitations (b) and (c)); and prior to the prescriber
completing the prescription (limitation (d)). Claim 15 recites similar
language. Enos describes a physician receiving alerts regarding medication
associated with the physician’s prescription pad. But, contrary to the
Examiner’s finding (Final Act. 7), Enos does not describe or suggest that the
message is generated and transmitted prior to the prescriber completing the
prescription (limitation (d)), and responsive to entry of prescription
information (preamble, limitations (a)–(c)).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 15 under 35 U.S.C. § 103(a).

Appeal 2018-008212
Application 13/198,103

18
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 15 101 Eligibility 1, 15
1, 15 103(a) Mayaud, Enos 1, 15
Overall Outcome 1, 15
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