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APPLICATION NO. 



09/876,311 



FILING DATE 



06/07/2001 



FIRST NAMED INVENTOR 



Maurice Ronan Goodman 



33771 7590 08/10/2009 

PAUL D. BIANCO 

Fleit Gibbons Gutman Bongini & Bianco PL 
21355 EAST DIXIE HIGHWAY 
SUITE 115 
MIAMI, FL 33180 



ATTORNEY DOCKET NO. CONFIRMATION NO. 



7802-A08-002 



GOTTS CHALK, MARTIN A 



PAPER NUMBER 



DELIVERY MODE 



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) 



l/ffflrC? nVrliUli Otfff Iff ids y 


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 28 May 2009 . 
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4a) Of the above claim(s) 8-13 and 17-19 is/are withdrawn from consideration. 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) D 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 20090804A 



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



Page 2 



DETAILED ACTION 
Notice to Applicant 

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 Claims 8-13 and 17-19 were withdrawn in response to a previous restriction 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

2. Claims 1-6, 14-16, and 20-21 were subject to a second restriction requirement 
mailed 01/16/2009. Applicant subsequently elected claims 1-6 and 14-16 (Group I) with 
traverse. The reasons for traversal are most recently presented in Applicant's response 
received 05/28/2009, to which this Office Action is responsive. 

Election/Restriction 

3. In the traversal, Applicant has made several arguments that the Examiner finds 
non-persuasive. Applicant first asserts that restriction, on the basis that the inventions 
in Groups I and II are subcombinations usable together, is not proper apparently 
because the inventions recite overlapping claimed material. One example provided 
states that claim 1 of Group I recites "defining a plurality of... programme areas," while 
claim 20 of Group II recites "defining a measurable," which Applicant apparently feels 
are substantially the same. The Examiner respectfully disagrees, and responds that 
prima facie, a broad yet reasonable interpretation of these two terms could indicate to 
one of ordinary skill in the art materially different features. 



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

Art Unit: 3696 

Applicant further asserts that both inventions include the feature of "allocating 
rewards." In response, the Examiner points out that in fact, claim 1 of Group I is the 
only invention that explicitly requires this feature. 

Applicant correctly notes that both inventions involve "rewarding points," but the 
Examiner considers that in view of the scope of the inventions in toto, this commonality 
is not enough to demonstrate that the inventions are improperly restricted. 

Furthermore, the Examiner notes that the invention of Group I could serve as a 
general program for collecting points and administering rewards based on unspecified 
parameters, the ultimate objective being to incentivize behavior that promotes 
compliance with a treatment regimen for a disease. This invention could be used in 
combination with the invention taught by claim 21 of Group II, where a smoker's cotinine 
level is monitored to determine program compliance, so as to help motivate an 
individual addicted to cigarette smoking to quit. Likewise however, the latter could be 
used alone to gather information based on a patient's smoking behavior. 

Applicant notes that neither invention explicitly refers to addiction treatment. The 
Examiner concedes this point, but points out that this is only a suggested use of the 
claimed invention that would be understood by one of ordinary skill in the art, and is not 
required for restriction. 

Applicant appears further to object to the suggested classification of the Group II 
invention into class 514, subclass 813 by noting that this classification refers to 
compositions for treating addiction, but fails to provide an alternative classification which 
Applicant feels to be more appropriate. The Examiner finds this point persuasive 



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

Art Unit: 3696 

because the invention is not drawn strictly to a composition. An alternative classification 
is offered in this Office Action, and Applicant is afforded another opportunity to elect an 
invention based on this reclassification. The new classification will be in class 705, 
subclass 2. If Applicant cares to suggest an alternative deemed to be more appropriate, 
the Examiner would respectfully entertain such a suggestion. 

Finally, with the next election, should Applicant traverse on the ground that the 
inventions are not patentably distinct because they are obvious variants, Applicant 
should submit additional evidence or identify such evidence now of record showing the 
inventions to be obvious variants, or clearly admit on the record that this is the case. 
In either instance, if the Examiner finds one of the inventions unpatentable over the prior 
art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the 
other invention. 

4. 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 



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



Page 5 



such as nicotine abstinence, classified in class 705, subclass 2. 

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

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). 

6. 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). 

7. Restriction for examination purposes as indicated is proper because all these 
inventions listed in this action are independent or distinct for the reasons given above 
and there would be a serious search and examination burden if restriction were not 
required because one or more of the following reasons apply: 

(a) the inventions have acquired a separate status in the art in view of their 
different classification; 



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

Art Unit: 3696 

(b) the inventions have acquired a separate status in the art due to their 

recognized divergent subject matter; 

(c) the inventions require a different field of search (for example, searching 

different classes/subclasses or electronic resources, or employing different 
search queries); 

(d) the prior art applicable to one invention would not likely be applicable to 

another invention; 

(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 

101 and/or 35 U.S.C. 112, first paragraph. 

Applicant is advised that the reply to this requirement to be complete must 
include (i) an election of a invention to be examined even though the requirement 
may be traversed (37 CFR 1 .143) and (ii) identification of the claims encompassing 
the elected invention. 

The election of an invention may be made with or without traverse. To reserve a 
right to petition, the election must be made with traverse. If the reply does not distinctly 
and specifically point out supposed errors in the restriction requirement, the election 
shall be treated as an election without traverse. Traversal must be presented at the time 
of election in order to be considered timely. Failure to timely traverse the requirement 
will result in the loss of right to petition under 37 CFR 1 .144. If claims are added after 
the election, applicant must indicate which of these claims are readable on the elected 
invention. 



Conclusion 



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



Page 7 



8. 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