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Full text of "USPTO Patents Application 09876311"

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Applicant: Marice Ronan Goodman et al. 

Application No.: 09/876,311 
Examiner: Martin A. Gottschalk 


Claims 1-6, 8-9, 12-16, 19-21, and 24-27 are presented for the Examiner's review and 
consideration. Claims 8-9, 12-13, and 19-22 are withdrawn. In this Response, claims 8 and 19 
are amended, claims 17-18 and 22-23 are cancelled, and claims 24-27 are added. Applicant 
believes the claim amendments and the accompanying remarks herein serve to clarify the present 
invention and are independent of patentability. No new matter has been added. 


Newly submitted claims 22 and 23 were withdrawn, as provided for in 37 CFR 1.142(b) 
and MPEP §821.03. Applicant notes that claims 22-23 are cancelled herein, rendering the 
requirement for withdrawal moot. Applicant further notes that claim 8 has been amended to 
depend from claim 1 . Accordingly, Applicant respectfully requests rejoinder of claim 8 and 
dependent claim 9 upon the allowance of claim 1 . 

35U.S.C. §103 Rejections 

Claims 1-6, 14, and 15 were rejected under 35 U.S.C. § 103(a) as being unpatentable over 
U.S. Patent No. 6,151,586 to Brown ("Brown") in view of U.S. Patent No. 5,722,418 to Bro 
("Bro"). Claim 16 was rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown in 
view of Bro as applied to claim 15 and further in view of U.S. Patent No. 6,085,976 to Sehr 
("Sehr"). For reasons set forth below, Applicant respectfully submits that this rejection should be 

As an initial matter, it is noted that the references are described separately only to clarify the 
teachings of each reference. Thus, the presentation of references separately is not and should not be 
construed as an attempt to "argue references separately." It is further noted that to establish prima 
facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by 
the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). However, a simple 
teaching of elements is insufficient. In order to establish a proper prima facie case of 
obviousness, the prior art must also suggest the desirability of the claimed invention and/or give 


Applicant: Marice Ronan Goodman et al. 

Application No.: 09/876,311 
Examiner: Martin A. Gottschalk 

some reason for references to be combined. Therefore, in order to properly establish a prima 
facie case of obviousness, a rejection must not only show that all elements of the claimed 
invention are known or suggested in the prior art, but must also show that one of ordinary skill in 
the art would have some reason or motivation to put all the elements together to achieve the 
claimed invention. 

As indicated in the rejection, Brown discloses a program for a specific disease, but does not 
define general program areas that relate to specific program areas, and fails to teach awarding 
points separately to general and specific program areas, and associating levels of performance. 


As cited in the rejection, Bro teaches general activities, including nutrition and exercise 
(CI 1L18-22). The rejection cites Bro C12L47-53, for relating general and specific diseases: 
"Another object of the invention is that the use of an expert and the patient program may be 
directed to the field of chronic disease detection. More particularly, the patient program will 
provide periodic behavioral cues to aid the expert in the early diagnosis and cure of such chronic 
diseases as glaucoma, dental and periodontal disease, cancer, heart disease, and diabetes." 

Applicant respectfully submits the foregoing pertains to treating chronic diseases, 
specifically, and makes no mention of how such treatment would relate to treatment for a general 
disease. The mere mention of exercise or weight loss in the same reference does not relate the 
activities as recited in the claims of the instant invention. More particularly, claim 1 recites, inter 
alia, "general programme areas. . .of benefit to a member stricken with any disease" and "specific 
programme areas. . .of particular benefit to a member afflicted with some but not all of the 
diseases", and "a second level, wherein the member is awarded a bonus set of points. . .in 
response to participating in all programme areas associated with a disease with which the 
member is afflicted". Thus, there are two sets of programme areas which together constitute all 
programme areas, and it is only after participating in all programme areas associated with a 

Thus, as Brown does not, at least, disclose general programs, and as Bro does not connect 
general activities and specific activities in any particular way, and further does not suggest or 


Applicant: Marice Ronan Goodman et al. 

Application No.: 09/876,311 
Examiner: Martin A. Gottschalk 

teach only awarding points after a particular set of all activities associated with a disease have 
been participated in, no combination of the references could produce the invention of claim 1 . 

New claim 24 recites, inter alia, associating at least one general set of activities to at least 
one specific set of activities to form a combined set of activities. It is only after a participant has 
engaged in all activities of this combined set, that points may be awarded in a second set of 
points. Brown and Bro are silent not only to this specific combination, but also to the temporal 
aspect of a points award based on completion of participation in all elements of the combined 
set. Claim 27 contains similar recitations. 

The combined set of two program activities types leverages a program of general activities, 
which may be highly developed, with targeted programs directed to a specific disease. The 
combination recognizes the pivotal importance of certain general activities in addressing specific 
diseases, and exploits both the synergy of the general and specific programs, as well as a 
member's desire to not only obtain better health, but to enjoy the benefits and challenges offered 
by a points reward program. Further, a particular points award is delayed until a comprehensive 
effort has been demonstrated with respect to an entire combined set. 

Accordingly, Applicant respectfully submits that claims 1, 24, and 27 are patentable over a 
combination of Bro and Brown. As claims 2-6, 8-9, and 14-16 depend from claim 1, and claims 19 
and 25-26 depend from claim 24, these dependent claims necessarily include all the elements of their 
base claim. Accordingly, Applicant respectfully submits that the dependent claims are allowable 
over the cited references for at least the same reasons. 

In light of the foregoing, Applicant respectfully requests reconsideration and withdrawal of 
the §103 rejection. 


In light of the foregoing remarks, this application is now in condition for allowance and 
early passage of this case to issue is respectfully requested. If any questions remain regarding 
this amendment or the application in general, a telephone call to the undersigned would be 
appreciated since this should expedite the prosecution of the application for all concerned. 


Applicant: Marice Ronan Goodman et al. 

Application No.: 09/876,311 
Examiner: Martin A. Gottschalk 

No fee is believed to be due for this submission. However, please charge any required fee 
(or credit overpayments) to the Deposit Account of the undersigned, Account No. 500601 
(Docket No. 7802-A08-002) 

Respectfully submitted, 

/ Paul D. Bianco / 

Paul D. Bianco, Reg. 43,500 

Customer Number: 33771 

21355 East Dixie Highway, Suite 115 
Miami, Florida 33180 

305-830-2600, fax 305-830-2605,