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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 



Maurice Ronan Goodman 



23910 7590 01/02/2009 

FLIESLER MEYER LLP 
650 CALIFORNIA STREET 
14TH FLOOR 

SAN FRANCISCO, CA 94108 



EXAMINER 



GOTTS CHALK, MARTIN A 



ART UNIT PAPER NUMBER 



MAIL DATE | DELIVERY MODE 

01/02/2009 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) 



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Application No. 

09/876,311 


Applicant(s) 

GOODMAN ET AL. 


Examiner 

MARTIN A. GOTTSCHALK 


Art Unit 

3696 





- 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 1 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. § 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 )□ Responsive to communication(s) filed on 1 5 October 2008 . 
2a )□ This action is FINAL. 2b)£3 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) ^3 Claim(s) 1-6 and 8-21 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4a) Of the above claim(s) 8-13 and 17-19 is/are withdrawn from consideration. 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) D Claim(s) is/are rejected. 

7) n Claim(s) is/are objected to. 

8) KI Claim(s) 1-6, 14-16, 20, and 21 are subject to restriction and/or election requirement. 

Application Papers 

9) L~H The specification is objected to by the Examiner. 

10)D The drawing(s) filed on is/are: a)^ accepted or b)^ 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). 
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. § 119(a)-(d) or (f). 
a)D All b)D Some * c)D None of: 

1 0 Certified copies of the priority documents have been received. 

20 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) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) 

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

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

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

PTOL-326 (Rev. 08-06) Office Action Summary Part of Paper No./Mail Date 20081229 



Application/Control Number: 09/876,31 1 Page 2 

Art Unit: 3696 

DETAILED ACTION 
Notice to Applicant 

1. Claims 1-6 and 8-21 are pending. Claim 7 is cancelled. Claims 20 and 12 
are new. Claims 8-13 and 17-19 were withdrawn in response to a previous 
restriction requirement. Claims 1-6, 14-16, and 20-21 are subject to the current 
restriction requirement. 

Election/Restriction 

2. Restriction to one of the following inventions is required under 35 U.S.C. 
121: 

I. Claims 1-6, and 14-16, drawn to a method for rewarding disease 
management programme participants based on their participation in 
health-related programmes, classified in class 705, subclass 14. 

II. Claims 20 and 21 , drawn to a method for rewarding disease 
management programme participants based on defined measurable 
performance parameters such as nicotine abstinence, classified in class 
514, subclass 813. 

3. The inventions are distinct, each from the other because of the following 
reasons: 



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

Art Unit: 3696 

Inventions I and II are related as subcombinations disclosed as usable 
together in a single combination. The subcombinations are distinct from each 
other if they are shown to be separately usable. In the instant case, invention I 
has separate utility as an incentive program and invention II has separate utility 
such as a method of treating tobacco addiction. See MPEP § 806.05(d). 

4. Because these inventions are distinct for the reasons given above and 
have acquired a separate status in the art as shown by their different 
classification and/or because of their recognized divergent subject matter, 
restriction for examination purposes as indicated is proper. 

5. Applicant is advised that the response to this requirement to be complete 
must include an election of the invention to be examined even though the 
requirement be traversed (37 CFR 1 .143). 

6. Applicant is reminded that upon the cancellation of claims to a non-elected 
invention, the inventorship must be amended in compliance with 37 CFR 1 .48(b) 
if one or more of the currently named inventors is no longer an inventor of at 
least one claim remaining in the application. Any amendment of inventorship 
must be accompanied by a diligently-filed petition under 37 CFR 1 .48(b) and by 
the fee required under 37 CFR 1.17(h). 

Conclusion 



Application/Control Number: 09/876,311 
Art Unit: 3696 



Page 4 



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, Thomas Dixon can be reached on (571) 272-6803. 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. 

/M. A. Q.I /Ella Colbert/ 

Examiner, Art Unit 3696 Primary Examiner, Art Unit 3696