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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 223 1 3- 1 450 
www.uspto.gov 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. 



CONFIRMATION NO. 



09/876,311 



06/07/200! 



7590 



10/23/2006 



MARSHALL & MELHORN, LLC 
Phillip S. Oberlin 
8th Floor 
Four SeaGate 
Toledo, OH 43604 



Maurice Ronan Goodman 



-15428 



8420 



EXAMINER 



GOTTSCHALK, MARTIN A 



ART UNIT 



PAPER NUMBER 



3694 



DATE MAILED: 10/23/2006 



Please find below and/or attached an Office communication conceming this application or proceeding. 



PTO-90C (Rev. 10/03) 



Off ICG Action Summarv 


Application No. 

09/876,311 


Applicant(s) 

GOODMAN ET AL. 


Examiner 

Martin A. Gottschatk 


Art Unit 

3694 





- The MAILING DATE of this communication appears on the cover sheet with the correspondence address 
Period for Reply 



A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS. 
WHICHEVER IS LONGER. FROM THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33). 
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1 .704(b). 

Status 

1 )□ Responsive to communication(s) filed on 19 July 2006 . 
2a)(Sl This action is FINAL. 2b)n This action is non-final. 

3) Q Since this application is in condition for allowance except for formal nnatters. prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213. 

Disposition of Claims 

4) ^ Claim(s) 1-19 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) 0 Claim(s) is/are allowed. 

6) IE1 Claim(s) 1-19 is/are rejected. 
?)□ Claim(s) is/are objected to. 

8) n Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) 13 The specification is objected to by the Examiner. 

10)0 The drawing(s) filed on is/are: ajD accepted or bjD objected to by the Examiner. 

Applicant may not request that any objection to the drawlng(s) be held in abeyance. See 37 CFR 1 .85(a). 

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d). 
11 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152. 

Priority under 35 U.S.C. § 119 

12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). 
a)n All b)n Some * c)^ None of: 

1. D Certified copies of the priority documents have been received. 

2. n Certified copies of the priority documents have been received in Application No. . 

3. n Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 



Attachment(s) 

1) S Notice of References Cited (PTO-892) 

2) CD Notice of Draftsperson's Patent Drawing Review (PTO-948) 

3) n Infomnation Disclosure Statennent(s) (PTO/SB/08) 

Paper No(s)/Mail Date . 



4) □ Interview Summary (PTO-413) 

Paper No(s)/Mail Date. . 

5) Q Notice of Informal Patent Application 

6) □ Other: . 



U.S. Patent and Trademark Office 
PTOL-326 (Rev. 08-06) 



Office Action Summary 



Part of Paper No./Mail Date 20061005 



Application/Control Number: 09/876,311 
Art Unit: 3694 



Page 2 



DETAILED ACTION 



Notice to Applicant 

1. Claims 1-19 have been examined. Claims 4 and 10 are amended. Claims 14-19 
are new. Claims 1-3. 5-9, and 1 1-13 are the original claims. 



Claim Rejections - 35 USC § 112 

2. The following is a quotation of the second paragraph of 35 U.S.C. 112: 

The specification shall conciude with one or more claims particularly pointing out and distinctly 
claiming the subject matter which the applicant regards as his invention. 

3. Claim 19 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite 
for failing to particularly point out and distinctly claim the subject matter which applicant 
regards as the invention. In the present case, claim 19 recites the same language as 
claim 16 from which it depends. From context and for the purpose of examination, the 
Examiner will consider a typographical error to have occurred in claim 19, and that the 
claim should recite "A method according to claim 18..." as opposed to "A method 
according to claim 16..." 



Claim Rejections - 35 USC § 102 

4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that 
form the basis for the rejections under this section made in this Office action: 
A person shall be entitled to a patent unless - 

(e) the invention was described in (1) an application for patent, published under section 122(b), by 
another filed in the United States before the invention by the applicant for patent or (2) a patent 
granted on an application for patent by another filed in the United States before the invention by the 



Application/Control Number: 09/876,311 
Art Unit: 3694 



Page 3 



applicant for patent, except that an international application filed under the treaty defined in section 
351 (a) shall have the effects for purposes of this subsection of an application filed in the United States 
only if the international application designated the United States and was published under Article 21(2) 
of such treaty in the English language. 

5. Claims 1-3, 5-9, and 11-13 are rejected under 35 U.S.C. 102(e) as being 
anticipated by Brown (US Pat# 6,151,586). 

A. As per claim 1 Brown discloses a method of incentivising members of a disease 
management programme to comply with the programme (Brown: col 5, Ins 14-16), the 
method comprising the steps of: 

(a) defining a plurality of general programme (Brown: col 12, Ins 18-23) areas 
and a plurality of specific programme areas (Brown: col 12, Ins 23-25); 

(b) associating each of the plurality of general programme areas with each of the 
diseases managed by the programme (Brown: col 12, Ins 18-23); 

(c) associating each of the plurality of specific programme areas only with those 
diseases managed by the programme to which the specific programme area is 
determined to be of particular benefit to a member afflicted with the disease 
(Brown: col 12, Ins 23-25); 



Application/Control Number: 09/876,31 1 Page 4 

Art Unit: 3694 

(d) awarding points to a member of each of the programme areas in which the 
member participates, only if the member is afflicted with a disease which is 
associated with that particular programme area (Brown: col 8, Ins 37-53); and 

(e) allocating a reward to the member if the points awarded to the member 
accumulate to a predetermined amount (Brown: col 23, Ins 45-57). 

B. As per claim 2, Brown discloses a method according to claim 1, wherein 

points are only awarded to the member if the member participates in all of the 
programme areas which are associated with the disease or diseases with which 
the member is afflicted (Brown: Fig. 15A and 15B; col 13, In 19 to col 14, In 37; 
Figs. 10 and 11. Note that both criteria of questions being answered and 
measurements being within limits must be met if the coupon is to be given.) 

C. As per claim 3, Brown discloses a method according to claim 1 wherein 

additional points are awarded to the member if the member participates in all of 
the programme areas which are associated with the disease or diseases with 
which the member is afflicted (The Examiner notes the rejection provided for 
claim 2 above and further notes that a repetition of this process would result in 
additional coupons being given. Repetition of the process would be expected for 



Application/Control Number: 09/876,31 1 Page 5 

Art Unit: 3694 

patients involved in disease managenrient programs associated with chronic 
diseases such as the examples of diabetes and asthma cited in the Brown 
reference). 



D. As per claim 5, Brown discloses a method according to claim 1 wherein 

the specific programme areas are one or more of 
blood pressure, 

flow volume loop measurement, 
influenza vaccine, 
pneumococcal vaccine, 
cholesterol and 

long term glucose control (Brown: Fig. 5A; Fig 5B, item 124; Fig. 6A). 

E. As per claim 6, Brown discloses a method according claim 1 further including the 
steps of: 



(a) defining a measurable within at least one of 

the general (Brown: col 23, Ins 45-57; Figs. 15A and 15B, the Examiner 
notes that the overall evaluation criteria involves both the compliance questions 



Application/Control Number: 09/876,31 1 Page 6 

Art Unit: 3694 

of Fig 15A, item 412, and the physiological measurements of Fig. 15B, items 
420-424) or 

specific programme areas (Brown: col 5, In 66 to col 6, In 15, i.e. data from 
one of the monitoring devices) 

so that a members performance within said programme area can be ascertained; 

(b) defining a minimum level of the measurable, which minimum level indicates a 
minimum required level of member performance within the at least one 
programme area (Brown: col 8, 48-53); and 

(c) awarding points to a member if the member obtains the defined minimum 
level of a measurable for the at least one programme area only if the member is 
afflicted with a disease which is associated with that particular programme area 
(Brown: col 8, Ins 37-53). 

F. As per claim 7, Brown discloses a method according to claim 6 further 
comprising the step of 

awarding additional points to the member if the member obtains the minimum 
level of a measurable for all of the programme areas which are associated with 



Application/Control Number: 09/876,31 1 Page 7 

Art Unit: 3694 

the disease with which the member is afflicted (The Examiner notes the rejection 
provided for claim 6 above and further notes that a repetition of this process 
would result in additional coupons being given. Repetition of the process would 
be expected for patients involved in disease management programs associated 
with chronic diseases such as the examples of diabetes and asthma cited in the 
Brown reference). 

G. As per steps a, b, and c (i.e. the first three steps) of claims 8, 12. and 13, they 
are rejected for the same reasons as provided above for the corresponding steps of 
claim 1. 

H. As per the steps d of claims 8 and 13, they are rejected for the same reasons 
provided above for claim 6a. 

I. As per the steps e of claims 8 and 1 3, they are rejected for the same reasons 
provided above for claim 6b. 

J. As per step f of claims 8 and 13, they are rejected for the same reasons provided 
above for claim 6c. Note that the Examiner considers an individual afflicted with a 
disease to be someone predisposed to the disease. 



Application/Control Number: 09/876,31 1 Page 8 

Art Unit: 3694 

K. As per step d of claim 12, it is rejected for the same reason provided above for 
claim Id. Note that the Examiner considers an individual afflicted with a disease to be 
someone predisposed to the disease, 

L As per steps g of claims 8, and 1 3, and claim 1 2e, they are rejected for the same 
reasons as provided above for 1e (the "allocating" step). 

M. As per claim 9, it is rejected for the same reasons as provided above for claim 
6c. 

N. Claim 1 1 is rejected for the same reasons as provided above for claim 5. 

Claim Rejections - 35 (JSC § 103 

6. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 

obviousness rejections set forth in this Office action: 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 102 of this title, if the differences between the subject matter sought to be patented and 
the prior art are such that the subject matter as a whole would have been obvious at the time the 
invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made. 

7. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1 , 148 
USPQ 459 (1966), that are applied for establishing a background for determining 
obviousness under 35 U.S.C. 103(a) are summarized as follows: 

1 . Determining the scope and contents of the prior art. 

2. Ascertaining the differences between the prior art and the claims at issue. 

3. Resolving the level of ordinary skill in the pertinent art. 



Application/Control Number: 09/876,31 1 Page 9 

Art Unit: 3694 

4. Considering objective evidence present in the application indicating 
obviousness or nonobviousness. 

8. Claims 4, 10, 14, 15, 17, and 18 are rejected under 35 U.S.C. 103(a) as being 

unpatentable over Brown as applied to claims 1 and 8 above, and further in view of Bro 

(US Pat# 5,722418, hereinafter Bro). 

A. As per claims 4 and 10, Brown discloses a method according to claim 1 wherein 

the general programme areas is 

education (Brown col 16, Ins 26-35). 

but fails to to disclose the remaining features of the claim which is well known in 
the art as evidenced by the teachings of Bro who teaches 

the general programme areas are some of 
diet, 

exercise, 
and 

smoking (Bro: col 11, Ins 12-24). 

It would have been obvious to one of ordinary skill in the art at the time of the 
invention to incorporate the teachings of Bro within the method of Brown with the 



Application/Control Number: 09/876,311 



Page 10 



Art Unit: 3694 

motivation of implementing and reinforcing a patient's medical regimens (Bro col 40, Ins 
25-27). 

B. As per claims 14, 15, 17, and 18 Brown fails to explicitly disclose the features of 
these claims, however, they are well known in the art as evidenced by the teachings of 
Bro who teaches 



a method according to claim 1 wherein 



(claims 14 and 17) 



the amount of the reward is related to the amount of points 



accumulated by the member. 



and 



(claims 15 and 18) 



the reward is a cash payout or special options on services 



(for both claims, see Bro: col 38, In 5, to col 39, In 10; col 34, 



Ins 3-18 and 31-56). 



It would have been obvious to one of ordinary skill in the art at the time of the 
invention to incorporate the teachings of Bro within the method of Brown with the 



Application/Control Number: 09/876,31 1 Page 1 1 

Art Unit: 3694 

motivation of implementing and reinforcing a patient's medical regimens (Bro col 40. Ins 
25-27). 

9. Claims 16 and 19 are rejected under 35 U:S.C. 103(a) as being unpatentable 
over Brown in view of Bro as applied to claims 15 and 18 above, and further in view of 
Sehr (US Pat# 6,085,976, hereinafter Sehr), 

A. As per claims 16 and 19, Brown and Bro fail to teach the features of these 
claims, however, these features are well known in the art as evidenced by the teachings 
of Sehr who teaches a method according to claim 15 (and 18 respectively) 

wherein the services are one or more of 

airplane tickets, 

hotel accommodations, 

and 

car rentals (Sehr: col 32, In 64 to col 33, In 48, note the use of "frequent 
mileage points" as rewards). 



Application/Control Number: 09/876,311 Page 12 

Art Unit: 3694 

It would have been obvious to one of ordinary skill in the art at the time of the 
invention to incorporate the teachings of Sehr with the combined teachings of Brown 
and Bro with the motivation of reducing the administrative costs associated with non- 
computerized systems (Sehr: col 2, Ins 7-26). 

Response to Arguments 

10. Applicant's arguments in the response filed 07/19/2006 have been fully 
considered but they are not persuasive. 

A. On pages 9 and 10, Applicant argues that Brown does not distinguish between 
"general" and "specific" program areas. The Examiner respectfully disagrees and notes 
from the cited passages that the exemplary program areas of diabetes and asthma are 
general areas, and that customization of these programs to individual patients 
represents types of specific program areas. 

B. At the top of page 1 1 , Applicant appears to argue that the claimed "awarding 
points" recited in claim 1, step d is not taught by Brown. The Examiner respectfully 
disagrees. In addition to the provided passage above, note Brown: Fig 5B which is 
referenced in the passage. Note that the plurality of monitoring devices correspond to 
different diseases (e.g. diabetes, hypertension, asthma, obesity). As disclosed in the 
passage, a patient participating in say, the diabetes program area, clearly would be 



Application/Control Number: 09/876,31 1 Page 13 

Art Unit: 3694 

afflicted with diabetes, and is rewarded for connplying with the "EVALUATION 
CRITERIA" associated only with that disease. 

C. In the last paragraph of page 1 1 , Applicant appears to argue that Brown does not 
teach the features of annended claims 4, and 10. These arguments are moot in view of 
the new grounds of rejection provided by the Bro reference. 

D. On pages 12 and 13, Applicant argues that Brown does not teach certain 
features of claim 8 pertaining to what is necessary for the awarding of points - i.e. 
Brown is based on "overall compliance" versus compliance in separate program areas. 
It is not clear from this argument as to which feature of claim 8 is being referenced. The 
Examiner will presume that Applicant is referring to the step which awards points based 
on obtainment of a "minimum level of a measurable," and notes that FIG 5B and col 8, 
Ins )f 27-53 clearly teaches a minimum level of measurable (FIG 5B, item 126). The 
passage further teaches that by checking a criteria box (or leaving it unchecked), the 
user can specify various criteria. Note that if only the "MINIMUM MEASUREMENT 
VALUE" is checked, then that would meet the claimed limitation. 

Conclusion 

1 1 . Applicant's amendment necessitated the new ground(s) of rejection presented in 
this Office action. Accordingly. THIS ACTION IS MADE FINAL. See MPEP 



Application/Control Number: 09/876,31 1 Page 14 

Art Unit: 3694 

§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 
CFR 1.136(a). 

A shortened statutory period for reply to this final action is set to expire THREE 
MONTHS from the mailing date of this action. In the event a first reply is filed within 
TWO MONTHS of the mailing date of this final action and the advisory action is not 
mailed until after the end of the THREE-MONTH shortened statutory period, then the 
shortened statutory period will expire on the date the advisory action is mailed, and any 
extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of 
the advisory action. In no event, however, will the statutory period for reply expire later 
than SIX MONTHS from the date of this final action. 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Martin A. Gottschalk whose telephone number is (571) 

272- 7030. The examiner can normally be reached on Mon - Fri 8:30 - 5:00. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supen/isor, James P. Trammel! can be reached on (571) 272-6712. The fax phone 
number for the organization where this application or proceeding is assigned is 571- 

273- 8300. 



Application/Control Number: 09/876,311 



Page 15 



Art Unit: 3694 

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MG 

10/12/2006