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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 22313-1450 
www.uspto.gov 



APPLICATION NO. 


FILING DATE 


FIRST NAMED INVENTOR 


ATTORNEY DOCKET NO. 


CONFIRMATION NO. 


09/876,311 


06/07/2001 


Maurice Ronan Goodman 


1-15428 


8420 



7590 11/30/2007 

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



EXAMINER 



GOTTSCHALK, MARTIN A 



ART UNIT 



PAPER NUMBER 



3694 



MAIL DATE 



DELIVERY MODE 



11/30/2007 PAPER 

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. 



PTOL-90A (Rev. 04/07) 



Office Action Summarv 


Application No. 

09/876,311 


Applicant(s) 

GOODMAN ET AL. 


Examiner 

Martin A. Gottschalk 


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 daie 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. § 133). 
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)13 Responsive to communication(s) filed on 17 July 2007 . 
2a)D This action is FINAL. 2b)Kl This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, 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) Ex] Claim(s) 1-7 and 14-16 is/are pending in the application. 

4a) Of the above claim(s) 8-13 and 17-19 is/are withdrawn from consideration. 

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

6) [X] Ciaim(s) 1-7 and 14-16 is/are rejected. 
?)□ Claim(s) is/are objected to. 

8) D Ciaim(s) are subject to restriction and/or election requirement. 

Application Papers 

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

10) Q The drawing(s) filed on is/are: a)Q accepted or b)D objected to by the Examiner. 

Applicant may not request that any objection to the drawing(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). 

1 1) D 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) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 
a)D All b)Q Some * c)Q None of; 

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

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

3.Q 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) Q Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413) 

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date, . 

3) □ Information Disclosure Statement(s) (PTO/SB/08) 5 ) D Notice of Informal Patent Application 

Paper No(s)/Mail Date . 6) Q Other: . 



U.S. Patent and Trademark Office 

PTOL-326 (Rev. 08-06) 



Office Action Summary 



Part of Paper No./Mail Date 20071001 



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



Page 2 



DETAILED ACTION 



Notice to Applicant 

1 . Claims 1 -1 9 are pending. Applicant's election without traverse of claims 1 -7 and 
14-16 in the restriction requirement mailed 05/18/2007 is acknowledged. 

Claim Rejections - 35 USC §112 

2. These rejections are hereby withdrawn. 



Claim Rejections - 35 USC § 102 

3. 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 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. 



4, Claims 1-3, and 5-7 are rejected under 35 U.S.C. 102(e) as being anticipated by 
Brown (US Pat# 6,151,586). 



Application/Control Number: 09/876,31 1 Page 3 

Art Unit: 3694 

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); 

(c) awarding points to a member of each of the specific programme areas in 
which the member participates, only if the member is afflicted with a disease, to 
which the specific programme area in which the member participates has been 
determined to be of particular benefit (Brown: col 8, Ins 37-53; col 23, Ins 45-57); 

(e) calculating the total number of points awarded to the member (Brown: col 11, 
Ins 33-36, reads on "fulfilled the evaluation criteria"; col 23, Ins 45-57); 

and 



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

Brown fails to explicitly teach awarding points separately to general and specific 
program areas as recited in amendments to claim 1: 



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



Page 4 



(a) wherein the plurality of general programme areas are programme areas that 
if complied with will be of benefit to a member stricken with any disease 
managed by the disease management programme and wherein the plurality of 
specific programme areas are programme areas that are determined to be of 
particular benefit to a member afflicted with some but not all of the diseases 
managed by the disease management programme : 

(b) awarding points to a member for each of the general programme areas in 
which the member participates; 

However, Bro teaches a method and system of behavioral modification which 
uses rewards to reinforce desired behavior (e.g. Bro: col 41, Ins 34-38). The teachings 
include applying the method to both 1) general (e.g. Bro: col 11, In 20, "exercis.e) 
program areas, where participation would be valuable to a patient regardless of the 
patient's disease state, and 2) specific areas, such as programs relating to specific 
chronic diseases (e.g. Bro: col 12, Ins 47-53). 

It would have been obvious to incorporate the teachings of Bro allowing for 
reward programs applicable to general and specific areas, with the health care 
compliance system of Brown with the motivation of leveraging the ability of an expert to 
affect behavioral change using telecommunications systems (Bro: col 5, Ins 48-52). 



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

Art Unit: 3694 

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 1 1 . 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 
patients involved in disease management 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 



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

Art Unit: 3694 

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 
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; 



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

Art Unit: 3694 

(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 
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). 



Claim Rejections - 35 USC § 103 



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



Page 8 



5. 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. 

6. 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. 

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

7. Claims 4, 14, and 15 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 claim 4, Brown discloses a method according to claim 1 wherein 



the general programme areas is 



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



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

Art Unit: 3694 

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

B. As per claims 14 and 15, 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) 



the amount of the reward is related to the amount of points 
accumulated by the member. 



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



Page 10 



and 

(claims 15) 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 
motivation of implementing and reinforcing a patient's medical regimens (Bro col 40, Ins 
25-27). 

8. Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable over Brown in 
view of Bro as applied to claims 15, and further in view of Sehr (US Pat# 6,085,976, 
hereinafter Sehr). 

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

wherein the services are one or more of 



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



Page 11 



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). 

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 

9. Applicant's arguments in the response filed 02/23/2007 have been fully 
considered but they are not persuasive. Applicant essentially argues differences in the 
conception of "general areas" between Applicant's invention and the Brown reference. 
The Examiner does not concede that substantive differences exist. Nor has Applicant 
pointed to passages in the specification which show the definition alluded to in the 
second paragraph on -page 14 of the response. Nonetheless the Bro reference has 
been brought in to show that the prior art contains reward systems relating to both 



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

Art Unit: 3694 

general and specific areas more closely resembling the description Applicant provides 
of the current invention on page 14 of the response (i.e. the disease-related programs 
are the specific programs, and programs such as "exercise" are the general programs). 
See the citations provided above for claim 1 . 

Conclusion 

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 
supervisor, James P. Trammell 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. 

Information regarding the status of an application may be obtained from the 
Patent Application Information Retrieval (PAIR) system. Status information for 
published applications may be obtained from either Private PAIR or Public PAIR. 
Status information for unpublished applications is available through Private PAIR only. 
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should 
you have questions on access to the Private PAIR system, contact the Electronic 
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a 
USPTO Customer Service Representative or access to the automated information 
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. 



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

MG 

10/01/2007