MCKESSON CORPORATIONDownload PDFPatent Trials and Appeals BoardJun 28, 20212020006581 (P.T.A.B. Jun. 28, 2021) Copy Citation 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. 14/453,397 08/06/2014 Andrew Maurer 050704/502916 6580 99434 7590 06/28/2021 McKesson Corporation and Alston & Bird LLP c/o Alston & Bird LLP One South at The Plaza 101 South Tryon St., Suite 4000 Charlotte, NC 28280-4000 EXAMINER COLEMAN, CHARLES P. ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 06/28/2021 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW MAURER, RICHARD K. SELBY, AMANDA R. GADDY, CHUCK NELSON, SAM THOMPSON, and JON COX Appeal 2020-006581 Application 14/453,397 Technology Center 3600 ____________ Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and MICHAEL A. VALEK, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1, 2, and 5–20 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as McKesson Corporation. Appeal Br. 2. Appeal 2020-006581 Application 14/453,397 2 STATEMENT OF THE CASE The Examiner rejected claims 1, 2, and 5–20 in the Final Office Action (“Final Act”) under 35 U.S.C. § 101 “because the claimed invention is directed to an abstract idea without significantly more.” Final Act. 3. Claim 1 is representative and reproduced below (the claim is annotated with bracketed numbers for reference to the limitations in the claim): 1. A computer-implemented method for automatically generating, with a service provider system, respective orders allocated to a contract pharmacy and a covered entity covered under a 340B program, to reduce inventory swell otherwise caused by a perpetual inventory system of the pharmacy system and a 340B replenishment service, the computer-implemented method comprising: [1] receiving, by the service provider system comprising one or more computers from a pharmacy system, a prescription drug order auto-generated by the perpetual inventory system of the pharmacy system, the prescription drug order comprising an order for a plurality of stock keeping units (SKUs) of the prescription drug and a pharmacy identifier; [2] determining, by the service provider system, that the pharmacy identifier included in the prescription drug order matches a stored identifier of the contract pharmacy; [3] receiving, by the service provider system from the pharmacy system, a data feed that comprises dispensing data for the contract pharmacy, wherein the dispensing data comprises a plurality of dispensing data records, each dispensing data record corresponding to a particular dispensing of the prescription drug to a particular patient; [4] receiving, by the service provider system, patient encounter data comprising a description of patient encounters with the covered entity, wherein the patient encounter data comprises a plurality of patient encounter data records, each patient Appeal 2020-006581 Application 14/453,397 3 encounter data record corresponding to a particular patient encounter with the covered entity; [5] processing the received patient encounter data to identify, by the service provider system, a subset of the plurality of dispensing data records, [5a] wherein each dispensing data record in the subset comprises one or more identifiers that match one or more identifiers in a corresponding patient encounter data record, and [5b] wherein each dispensing data record in the subset corresponds to dispensing to a respective 340B eligible patient of the covered entity; [6] determining, by the service provider system, a number of units of the prescription drug dispensed by the contract pharmacy to 340B eligible patients on behalf of the covered entity from data included in the subset of the plurality of dispensing data records; [7] incrementing, in a database, by the service provider system, a counter of 340B accumulations by the number of units of the prescription drug dispensed by the contract pharmacy to 340B eligible patients; [8] maintaining on the database, by the service provider system and over an electronic data exchange responsive to prescription orders received from a plurality of pharmacy computers, the counter of 340B accumulation data as consolidated 340B accumulation data from across the plurality of pharmacy computers; [9] determining, by the service provider system, a number of the plurality of SKUs purchasable at a 340B price of the prescription drug based on a comparison of the counter of 340B accumulations to a minimum 340B replenishment threshold; [10] partitioning, by the service provider system, the prescription drug order auto-generated by the perpetual inventory system of the pharmacy system to generate in the database a first order for the number of the plurality of SKUs purchasable at the 340B price and a second order for a remainder of the plurality of SKUs; Appeal 2020-006581 Application 14/453,397 4 [11] placing, by the service provider system, a hold in the database on a portion of the 340B accumulations corresponding to the number of SKUs of the prescription drug included in the first order until a confirmation is received that the order for the plurality of SKUs can be filled; [12] allocating, by the service provider system, the first order to a first account maintained on behalf of the covered entity and the second order to a second account maintained on behalf of the contract pharmacy; [13] modifying, by the service provider system, an invoice for the prescription drug order to generate a modified invoice that reflects a wholesale acquisition cost price for each item included in the second order; [14] transmitting, by the service provider system, the modified invoice to the pharmacy computer; [15] routing, by the service provider system, an order for the plurality of SKUs requested by the pharmacy system to a distribution center system; [16] causing shipment of the plurality of SKUs, by at least the distribution center system, to the contract pharmacy; [17] receiving the confirmation, wherein the confirmation is in the form of an invoice or computer-executable instructions and indicates at least that the first order has been filled; [18] in response to the confirmation, decrementing the counter of 340B accumulations by the number of SKUs of the prescription drug included in the first order; and causing remittance of funds associated with the first order to a first account associated with the covered entity. PATENT ELIGIBILITY Principles of Law 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.” However, not every discovery is eligible for patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme Appeal 2020-006581 Application 14/453,397 5 Court articulated a two-step analysis to determine whether a claim falls within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012). In the first step, it is determined “whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If it is determined that the claims are directed to an ineligible concept, then the second step of the two-part analysis is applied in which it is asked “[w]hat else is there in the claims before us?” Id. (alteration in original) (citation and quotation marks omitted). The Court explained that this step involves 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.” Alice, 573 U.S. at 217–18 (alteration in original) (citing Mayo, 566 U.S. at 75–77). Alice, relying on the analysis in Mayo of a claim directed to a law of nature, stated that in the second part of the analysis, “the elements of each claim both individually and ‘as an ordered combination’” must be considered “to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (citation omitted). The PTO published revised guidance on the application of 35 U.S.C. § 101, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Eligibility Guidance”) (throughout this decision, we cite to the Federal Register where the Eligibility Guidance is published). Appeal 2020-006581 Application 14/453,397 6 This guidance provides additional direction on how to implement the two- part analysis of Mayo and Alice. Step 2A, Prong One, of the Eligibility Guidance, looks at the specific limitations in the claim to determine whether the claim recites a judicial exception to patent eligibility. In Step 2A, Prong Two, the claims are examined to identify whether there are additional elements in the claims that integrate the exception in a practical application, namely, is there a “meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. 54 (Prong Two). If the claim recites a judicial exception that is not integrated into a practical application, then as in the Mayo/Alice framework, Step 2B of the Eligibility Guidance instructs us to determine whether there is a claimed “inventive concept” to ensure that the claims define an invention that is significantly more than the ineligible concept itself. 84 Fed. Reg. 56. With these guiding principles in mind, we proceed to determine whether the claimed subject matter in this appeal is eligible for patent protection under 35 U.S.C. § 101. Discussion Claim 1 is directed to a computer-implemented method. A method is also a “process,” one of the broad statutory categories of patent-eligible subject matter under 35 U.S.C. § 101. Therefore, we find that the claim is Appeal 2020-006581 Application 14/453,397 7 directed to a statutory class of invention, and proceed to Step 2A, Prong One, of the Eligibility Guidance. Step 2A, Prong One In Step 2A, Prong One, of the Eligibility Guidance, the specific limitations in the claim are examined to determine whether the claim recites a judicial exception to patent eligibility, namely, whether the claim recites an abstract idea, law of nature, or natural phenomenon. Each limitation in the claim must be searched to determine whether it recites a judicial exception. Eligibility Guidance, 84 Fed. Reg. at 54. The Examiner found that the claim recites a series of steps involving prescription drug orders, including invoicing, shipping, and remittance of funds associated with the drug orders, which the Examiner determined to be a fundamental economic principle and commercial interaction that falls within the grouping of abstract ideas of “certain methods of organizing human activity.” Final Act. 3. Appellant argues that the claim is not directed to “human activity,” because the orders are “auto-generated by the perpetual inventory system.” Reply Br. 3 (emphasis omitted). We first turn to the language in the claim to determine whether it recites an abstract idea, specifically whether it is directed to a method of organizing human activity. The Examiner summarized the steps in the claim as follows (for clarity, indentations have been added; bracketed numbers have also been added, corresponding to the numbering in claim 1 reproduced above): Appeal 2020-006581 Application 14/453,397 8 [1] receiving a prescription drug order, [2] determining that the pharmacy identifier matches a stored identifier, [3] receiving a data feed, [4] receiving patient encounter data, [5] identifying a subset of the dispensing data, [6] determining a number of units of the prescription drug, [7] incrementing a counter of 340B accumulations, [8] maintaining counters of 340B accumulation data, [9] determining a number of the plurality of SKUs purchasable, [10] partitioning the prescription drug order, [11] placing holds, [12] allocating the first order, [13] modifying an invoice, [14] transmitting invoices, [14] routing orders, [15] causing shipments, [16] receiving confirmations, [17] decrementing 340B accumulation counters, [18] causing remittance of funds. Final Act. 3. The steps of the claim, as listed above, indicate that the drugs in the pharmacy are distributed to patients based on prescription drug orders (steps [1]–[3]), the remaining drugs in the pharmacy are inventoried to determine what drugs need to be replaced in the pharmacy inventory (steps [4]–[12]), specifically distinguishing between 340B and non-340B prescription orders (step [10]–[12]), and then invoicing, shipping, and remitting funds for the prescription drugs which need to be replaced in pharmacy’s inventory (steps [13]–[18]). 340B is a reference to Section 340B of the Public Health Service Act which “requires drug manufacturers to provide outpatient drugs to eligible healthcare centers, clinics, and hospitals (referred to as ‘covered entities’) at a reduced price.” Spec. ¶ 3. The Specification explains what “covered entities” are: Appeal 2020-006581 Application 14/453,397 9 Covered entities eligible to participate in the 340B program generally include entities that serve indigent or historically disenfranchised populations or that focus on treating particular disease conditions such as, for example, federally-qualified health centers, hospitals that treat indigent patients through a disproportionate share hospital (DSH) program, children's hospitals, free standing cancer clinics, family planning projects, state-operated AIDS Drug Assistance Programs (ADAPs), black lung clinics receiving federal funds, and so forth. Spec. ¶ 4. The steps in the claim are therefore each directed to some aspect of managing and maintaining the inventory of prescription drugs in a pharmacy. Consistent with this conclusion, the Specification describes the “technical field” of the invention as relating “generally to the replenishment of prescription product inventory.” Spec. ¶ 1. We agree with the Examiner that these steps relate to organizing human activity because they involve at least “commercial . . . interactions” (Eligibility Guidance, 84 Fed. Reg. at 52) in which the pharmacy is filling prescription drug orders and replenishing the inventory of prescription drugs by sending payment invoices to distribution centers (see steps [13]–[16], [18]). These steps are “commercial” because “commerce”2 involves the buying and selling of goods, and in claim 1, prescription drugs (goods) are being distributed to patients (e.g., selling) and then replenished from distributions centers (e.g., buying). The activity of managing an inventory of different types of goods (the “prescription drugs” recited throughout in claim 1) in a pharmacy is clearly the same type of activity characterized in Alice and Bilski as “a fundamental 2 https://www.thefreedictionary.com/commerce (last accessed June 7, 2021). Appeal 2020-006581 Application 14/453,397 10 economic practice long prevalent in our system of commerce.” Alice Corp. v. CLS Bank Int’l, 573 U.S. at 218; Bilski v. Kappos, 561 U.S. 593. In other words, merchants have always had to keep track of inventory in their store to know when goods run out so that the goods may be purchased from wholesalers (e.g., step [13] referencing “wholesale acquisition cost price”) to replenish the goods for subsequent sale to their customers. In fact, the steps of the claim in which the inventory is counted and partitioned (e.g., steps [6]–[10], [12] of claim 1) are steps that, before computers, would be done manually in a merchant’s ledger using pen and paper. Appellant’s complaint that the steps are not human activity because they are auto-generated is not persuasive. Appeal Br. 24; Reply Br. 3. There is no indication from either precedent or the Eligibility Guidance that an actual human actor must participate in the claim for it be classified as a method of organizing human activity. Rather, a claim recites a method of organizing human activity when the claim is performed to accomplish an activity that a human ordinarily performs or for the benefit of a human. For example, in BASCOM Glob. Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the claim were directed to a content filtering system for filtering content retrieve from the internet. The court concluded that “that filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.” BASCOM, 827 F.3d at 1348. Yet, in BASCOM, no human actor was recited in the claims. See also In re Abel, 838 Fed.Appx. 558 (Fed. Cir. 2021) where the court found a claim to generating mailer to be “a method of organizing human activity” (“The purported advance recited . . . is to communicate information electronically while Appeal 2020-006581 Application 14/453,397 11 protecting the recipient’s address from involuntary disclosure to the sender. . . The focus is on using a generic computer as a tool to perform a communication practice—giving a message to an intermediary who, unlike the sender, knows the intended recipient’s location—that is familiar in the economic sphere and elsewhere. Carrying out such a method of organizing human activity is an abstract idea.”) We recognize that the steps of the claim are “computer-implemented” and comprise “auto-generated” steps (preamble, steps [1], [10]). However, “[s]teps that do nothing more than spell out what it means to ‘apply it on a computer’ cannot confer patent-eligibility.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370–71 (Fed. Cir. 2015). Furthermore, “merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.” Id. at 1370. Consequently, the fact that the method is computer-implemented with auto-generated steps does not withdraw the claim from the realm of abstract ideas. Because we conclude that the Examiner did not err in determining that claim 1 recites a judicial exception to patent eligibility, we proceed to Step 2A, Prong Two of the analysis. Step 2A, Prong Two Prong Two of Step 2A under the Eligibility Guidance asks whether there are additional elements that integrate the exception into a practical application. We must look at the claim elements individually and “as an ordered combination” to determine whether the additional elements integrate the recited abstract idea into a practical application. As explained in the Appeal 2020-006581 Application 14/453,397 12 Eligibility Guidance, integration may be found when an additional element “reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” or “applies or uses the judicial exception 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.” Eligibility Guidance, 84 Fed. Reg. at 55. The PEG Update3 further explains that “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” PEG Update 12. Appellant’s principal argument is the claims integrate any abstract idea into a practical application by providing an improvement to perpetual inventory systems. Appeal Br. 15. As noted by Appellant, this improvement is described in the Specification. We therefore first turn to the Specification. The Specification describes the problem with existing “perpetual inventory systems.” A “perpetual inventory system” is a prescription drug inventory system used by pharmacies to monitor and replenish prescription drug inventory. Spec. ¶ 17. The Specification discloses: 340B eligible dispenses of a drug are typically replenished in fixed incremental amounts and because a contract pharmacy’s replenishment of 340B eligible dispenses of a drug are billed to a covered entity account that is separate and distinct from the pharmacy account to which replenishments for non-340B dispenses are billed, a phenomenon known as “inventory swell” may occur. 3 Available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df (last accessed Dec. 31, 2020) (“PEG Update”). Appeal 2020-006581 Application 14/453,397 13 Id. The Specification discloses that “pharmacies typically utilize a prescription fulfillment system that monitors existing inventory and automatically generates prescription fulfillment orders to replenish the inventory,” which are “referred to as ‘perpetual inventory systems.’” Id. The Specification explain that if a pharmacy is also a “contract pharmacy” for 340B drug orders, these orders “may be replenished separately from an auto- generated prescription drug order” because “prescription drug orders purchased at the 340B price may be billed to a separate account maintained on behalf of the covered entity, whereas auto-generated prescription drug orders may be billed to a retail account maintained on behalf of the contract pharmacy.” Id. “As a result, pharmacies may end up with more inventory than they need or desire,” which is called “inventory swell.” Id. In simple terms, 340B prescription drug orders are counted twice when the drugs in the pharmacy inventory are counted; the perpetual inventory system counts all the drugs that require replenishment, including the 340B drugs, while the 340B drugs are counted and replenished separately, resulting in double- counting and more inventory being purchased than needed. Id. ¶ 18. Appellant’s Specification purports to address this problem by “partitioning” the 340B orders from the non-340B orders. The Specification explains the prescription product order partitioning module(s) 220 may partition the prescription product order and may allocate, at block 322, the number of prescription drug items eligible for replenishment at the 340B price to a billing account that is maintained on behalf of the covered entity and for which the covered entity is responsible for payment, and may further allocate, at block 324, the remaining order prescription drug items to a retail billing account maintained on behalf of the Appeal 2020-006581 Application 14/453,397 14 contract pharmacy and for which the contract pharmacy is responsible for payment. Spec. ¶ 82 (emphasis added). The orders requiring replenishment are thus allocated to two different accounts to avoid counting the 340B drug order twice. Steps [10] and [12] of claim 1 reflect this approach. Steps [10] and [12] of claim 1 recite: [10] partitioning, by the service provider system, the prescription drug order auto-generated by the perpetual inventory system of the pharmacy system to generate in the database a first order for the number of the plurality of SKUs purchasable at the 340B price and a second order for a remainder of the plurality of SKUs; [12] allocating, by the service provider system, the first order to a first account maintained on behalf of the covered entity and the second order to a second account maintained on behalf of the contract pharmacy. The SKUs are the “stock keeping units . . . of the prescription drug.” Claim 1, step [1]. The SKUs represent the total drug orders. In step [10], the drug orders (measured as SKUs), which are auto-generated by the perpetual system, are “partion[ed]” into drugs which are purchased at the 340B price and the remaining drugs which are not purchased at the 340B price. The orders are subsequently allocated to different accounts in step [12]. Appellant contends that the “partitioning” and “allocating” steps provide a technical improvement that “integrate[s] the alleged judicial exception (e.g., certain method of organizing human interactions), into the overall prescription inventory management scheme by correcting order allocation and enabling the reduction or prevention of inventory swell.” Appeal Br 15 (emphasis omitted.) Appeal 2020-006581 Application 14/453,397 15 We do not agree. All steps [10] and [12] of claim 1 are doing is putting orders for 340B drugs in one column of a ledger book and orders for all other drugs in another column, to avoid inventory swell by counting the 340B drugs twice. This data is then used determine what drugs in the prescription drug inventory need to replaced. These steps are part of the fundamental economic practice “long prevalent” in commerce where a merchant keeps separate track in a ledger book of the quantities of different goods which have been sold and need to be replenished. The claim does not recite how the partitioning or allocating is done and thus does not provide a patent-eligible improvement in the implementation of these steps. As explained in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016), we must “look to whether the claims . . . focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” Dropbox, Inc. et al. v. Synchronoss Technologies, Inc., 815 Fed.Appx. 529, 533 (Fed. Cir. 2020) (nonprecedential), further summarized: The patent has to describe how to solve the problem in a manner that encompasses something more than the “principle in the abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019)] (explaining that an invention may not be patent eligible if the “claims ‘were drafted in such a result-oriented way that they amounted to encompassing the ‘principle in the abstract’ no matter how implemented’” (quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018))). Dropbox, 815 Fed.Appx. at 533. Appeal 2020-006581 Application 14/453,397 16 The steps for performing the partitioning and allocating are recited in a “result-oriented way” and therefore do not provide a specific technological solution to the claim beyond the judicial exception. Appellant asserts that the improvement is in reducing inventory swell caused by perpetual inventory systems. Appeal Br. 23. But the claim only states the desired result, and not how the result is achieved. We simply do not agree that the idea of keeping books that separate 340B and non-340 prescription drug orders is a patent-eligible technical improvement, especially when such steps could be done with pen and paper by writing down the different orders in different columns of a ledger book, and when there is no limitation in the claim on how the partitioning and allocating are implemented. We appreciate the fact that the asserted steps provide an improvement to the existing perpetual inventory system. But not all improvements confer eligibility on a claim. The improvement must be accomplished by an additional element that is “beyond” the abstract idea itself. Eligibility Guidance, 84 Fed. Reg. at 52–53. Here, the improvement is part of the abstract idea of organizing human activity and the fundamental practice of inventory management, which includes keeping separate track of the inventory for different goods (e.g., drugs with a 340B price versus drugs with a regular price). Appellant argues that these improvements are like those in Example 46, claim 2, of the October 2019 Subject Matter Eligibility Examples (Oct. Appeal 2020-006581 Application 14/453,397 17 2019) (“SMEE”)4 in which patent-eligibility was found. Appeal Br. 25. This example, as quoted in Appellant’s Appeal Brief, used the judicial exception to determine when to operate a dispenser to dispense a therapeutically effective amount of a feed supplement to an animal exhibiting an aberrant behavior. Id. The claim was determined to be patent-eligible because the monitoring component, which sends signal to actually dispense the feed supplement “does not merely link the judicial exceptions to a technical field, but instead adds a meaningful limitation in that it can employ the information provided by the judicial exception (the mental analysis of whether the animal is exhibiting an aberrant behavioral pattern indicative of grass tetany) to operate the feed dispenser.” SMEE 37. Likewise in Diehr, the claim recited a mathematical formula which was determined to be an abstract idea. The formula was used to determine when a rubber compound was cured and then to automatically open the press upon completion of the curing process. Diehr, 450 U.S. at 192–93. In both Example 46 and Diehr, the abstract idea was used in subsequent steps to accomplish a physical process. Here, the steps subsequent to the partitioning and allocating steps [10] and [12] of claim 1, are part of the abstract idea because generating invoices (step [13]), transmitting invoices (step [14]), routing orders (step [15]), shipping (step [16]), receiving confirmations (step [17]), and causing remittance after decrementing the count of prescriptions (step [18]) are the steps necessary to accomplish inventory management. For this reason, we do not agree that the 4 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_app1.pdf (last accessed Jun. 11, 2021). Appeal 2020-006581 Application 14/453,397 18 steps of routing and shipment of orders, without more, is sufficient to confer patent eligibility. Appeal Br. 30. See BOOM! PAYMENTS, Inc. v. Stripe, Inc., 839 Fed.Appx. 528, 532–533 (Fed. Cir. 2021) (“[W]e agree with Stripe that these steps only explicate the necessary steps of an escrow arrangement and do not change the direction of the claims. Accordingly, we conclude that the claims are directed to an abstract idea at step one.”). Because we find that the abstract idea is not integrated into a practical application under Step 2, Prong Two, we proceed to Step 2B of the analysis. Step 2B Step 2B of the Eligibility Guidance asks whether there is an inventive concept. In making this Step 2B determination, we must consider whether there are specific limitations or elements recited in the claim “that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present,” or whether the claim “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” 84 Fed. Reg. 56 (footnote omitted). The Examiner found that no “inventive concept” was embodied in the claim because generic computer components were used to carry out the claimed method without any improvement to computer technology. Final Act. 4. The Examiner’s finding is supported by the evidence in the record (see, e.g., Spec. ¶¶ 58, 108) describing implementing the claimed process Appeal 2020-006581 Application 14/453,397 19 with generic computer processors and parts. There is no finding, as alleged by Appellant, by the Examiner that using a computer processor somehow “dooms the claims” as being patent- ineligible. Reply Br. 5. The Examiner was merely finding that steps in the claim utilized generic computer technology to carry out the claimed process without providing an inventive step. The Examiner searched for an inventive concept and did not find it. The improvement described in the Specification is partitioning drug orders into 340B and non-340B orders and then allocating them into different accounts, a process which we conclude is an abstract idea. All other steps in the claim are conventionally used in drug inventory and replenishment, and therefore do not provide an inventive concept to the claim as a whole. Appellant did not provide arguments or evidence to rebut this determination. For the foregoing reasons, the rejection of claim 1 is affirmed. Claims 2 and 5–20 fall with claim 1 because separate reason for their patent ability were not provided. 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5–20 101 Eligibility 1, 2, 5–20 Appeal 2020-006581 Application 14/453,397 20 TIME PERIOD 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). AFFIRMED Copy with citationCopy as parenthetical citation