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APPLICATION NO. 



09/876,311 



FILING DATE 



06/07/2001 



FIRST NAMED INVENTOR 



Maurice Ronan Goodman 



33771 7590 12/16/2009 

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 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. § 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 0 September 2009 . 
2a )£3 This action is FINAL. 2b)^ 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 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4a) Of the above claim(s) 8-13 and 17-19 is/are withdrawn from consideration. 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) |EI Claim(s) 1-6 and 14-16 is/are rejected. 

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

8) D Claim(s) 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 20091213 



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



Page 2 



DETAILED ACTION 
Notice to Applicant 

1 . This Office Action is responsive to the Election made on 09/10/2009 (see next 
section). This action will respond to the amendments and arguments made to claim 1 in 
Applicant's response received 05/28/2007, 

2. Claims 1-6 and 8-21 are pending. Claims 1-6 and 14-16 have been examined. 
Independent claim 1 is amended. Claims 4 and 14-16 are previously presented. 
Claims 2, 3, 5, and 6 are as per the original. Claims 8-13 and 17-21 are withdrawn. 
Claim 7 is cancelled. 

3. As a preliminary matter, the Examiner notes that in the previous Non-Final Office 
Action on the merits mailed 11/30/2007, the Examiner inadvertently referred to the 
rejections of claims 1-3 and 5-7 as being under 35 USC § 102, when clearly they should 
have been referred to as rejections under 35 USC § 103, since two references were 
applied. 

Election/Restrictions 

4. Applicant's election without traverse of claims 1-6 and 14-16 in the restriction 
requirement received 09/10/2009 is acknowledged. 



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



Page 3 



Claim Rejections - 35 (JSC § 103 

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

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 (1968), 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 1-6, 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, in view of Bro (US Pat# 
5,722418, hereinafter Bro), 



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: 



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

Art Unit: 3696 

(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. See also 
the Bro reference below which teaches other aspects of this step); 

(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); 

(d) 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 

(e) 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, and associated levels of performance as recited in amendments to 
claim 1 , however these features are well known as taught be Bro, who discloses 



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

Art Unit: 3696 

(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 (e.g. Bro: col 11, In 20, 

"exercise) 

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 (e.g. Bro: col 
12, Ins 47-53, i.e. "chronic diseases"); 

and 

(b) awarding points (e.g. Bro: col 40, Ins 31-33, reads on "credits"; col 41, Ins 34- 
38, i.e. "reinforcer"; col 38, Ins 50-84) to a member for each of the general 
programme areas in which the member participates , the points being allocated to 
members based on a multi-level system (Bro: col 60, Ins 52-62, muiti-ievei reads 
on 'graded") , including: 



a first level, wherein the member is awarded points for merely taking part 



in a programme area (Bro: col 40, Ins 34-49},. 



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



Page 6 



a second level, wherein the member is awarded a greater number of 
points for taking part in ail programme areas associated with a disease 
with which the member is afflicted (Bro: col 40, Sns 51-58^ 

and 

a third level, wherein the member is awarded points for attaining a 
minimum level for a measurable of a programme area associated with a 
disease with which the member is afflicted (Bro: col 40, Ins 34-49). 

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, "exercise) 
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 



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

Art Unit: 3696 

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). 

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.) 

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). 



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



Page 8 



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). 

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 



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

Art Unit: 3696 

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

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). 



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



Page 10 



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; 

(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 



Application/Control Number: 09/876,311 



Page 1 1 



Art Unit: 3696 

(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). 

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. 



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 



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

Art Unit: 3696 

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 1 5, and further in view of Sehr (US Pat# 6,085,976, 
hereinafter Sehr). 

As per claim 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 

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: 09/876,31 1 Page 1 3 

Art Unit: 3696 

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 has offered no arguments apart from the amendments provided. In 
response to Applicant's amendments, Applicant is referred to the recitations and 
citations provided above in the rejection of claim 1 (b) for the application of prior art for 
these features. 

Conclusion 

THIS ACTION IS MADE FINAL. 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 mailing date of this final action. 



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

Art Unit: 3696 

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 10:00 - 6:30. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, James A. Kramer can be reached on (571) 272-6783. 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. 

/Martin A. Gottschalk/ 
Examiner, Art Unit 3696 



/James A. Kramer/ 

Supervisory Patent Examiner, Art Unit 3693