Skip to main content

Full text of "USPTO Patents Application 09876311"

See other formats


PATENT COOPERATION TREATY 



PCT 



INTERNATIONAL PRELIMINARY REPORT ON PATENTABILITY 

(Chapter I of the Patent Cooperation Treaty) 



(PCT Rule 44bis) 


Applicant's or agent's file reference 


FOR FURTHER ACTION 


See item 4 below 


PA141957/PCT 






International application No. 


International filing date (day/month/year) 


Priority date (day/month/year) 


PCT/IB2007/051948 


23 May 2007 (23.05.2007) 


06 June 2006 (06.06.2006) 


International Patent Classification (8th edition unless older edition indicated) 




See relevant information in Form PCT/ISA/237 




Applicant 






DISCOVERY HOLDINGS LIMITED 





1. This international preliminary report on patentability (Chapter I) is issued by the International Bureau on behalf of the 
International Searching Authority under Rule 44 bis. 1(a). 

2. This REPORT consists of a total of 4 sheets, including this cover sheet. 

In the attached sheets, any reference to the written opinion of the International Searching Authority should be read as a reference 
to the international preliminary report on patentability (Chapter I) instead. 



3. This report contains indications relating to the following items: 





Box No. 


I 


Basis of the report 


□ 


Box No. 


II 


Priority 


□ 


Box No. 


III 


Non-establishment of opinion with regard to novelty, inventive step and industrial 
applicability 


□ 


Box No. 


IV 


Lack of unity of invention 




Box No. 


V 


Reasoned statement under Article 35(2) with regard to novelty, inventive step or industrial 
applicability; citations and explanations supporting such statement 


□ 


Box No. 


VI 


Certain documents cited 


□ 


Box No. 


VII 


Certain defects in the international application 


□ 


Box No. 


VIII 


Certain observations on the international application 



4. The International Bureau will communicate this report to designated Offices in accordance with Rules AAbis. 3(c) and 93bis.l but 
not, except where the applicant makes an express request under Article 23(2), before the expiration of 30 months from the priority 
date (Rule 44bis .2). 





Date of issuance of this report 
17 March 2009 (17.03.2009) 


The International Bureau of WIPO 
34, chemin des Colombettes 
1211 Geneva 20, Switzerland 

Facsimile No. +41 22 338 82 70 


Authorized officer 

Cecile Chatel 

e-mail: ro.ib@wipo.int 



Form PCT/IB/373 (January 2004) 



PCT/IB2007/051948 17.06.2008 



PATENT COOPERATION TREATY 

From the 

INTERNATIONAL SEARCHING AUTHORITY 



To: 

HEATHER JUNE DONALD 
SPOOR & FISHER 
P.O. BOX 454 

PRETORIA, SOUTH AFRICA 0001 


PCT 

WRITTEN OPINION OF THE 
INTERNATIONAL SEARCHING AUTHORITY 

(PC 1 Rule 43ois. I) 


Dateofmailing JUN 2008 

(day/month/year) 


Applicant's or agent's file reference 
PA141957/PCT 


FOR FURTHER ACTION 

See paragraph 2 below 


International application No. 
PCT/1B07/51948 


International filing date (day/month/year) 
23 May 2007 (23.05.2007) 


Priority date (day/month/year) 
06 June 2006 (06.06.2006) 


International Patent Classification (IPC) or both national classification and IPC 

IPC: G06Q 40/00(2006.01) 
USPC: 705/4 


Applicant 

DISCOVERY HOLDINGS LIMITED. 



1. This opinion contains indications relating to the following items: 



I2SI 


Box No. 


I 


Basis of the opinion 


□ 


Box No. 


II 


Priority 


□ 


Box No. 


III 


Non-establishment of opinion with regard to novelty, inventive step and industrial applicability 


□ 


Box No. 


IV 


Lack of unity of invention 




Box No. 


V 


Reasoned statement under Rule 43bis. l(a)(i) with regard to novelty, inventive step or industrial 
applicability; citations and explanations supporting such statement 


□ 


Box No. 


VI 


Certain documents cited 


□ 


Box No. 


VII 


Certain defects in the international application 


□ 


Box No. 


VIII 


Certain observations on the international application 



2 FURTHER ACTION 

If a demand for international preliminary examination is made, this opinion will be considered to be a written opinion of the 
International Preliminary Examining Authority ("IPEA") except that this does not apply where the applicant chooses an 
Authority other than this one to be the IPEA and the chosen IPEA has notified the International Bureau under Rule 66. \bis(b) 
that written opinions of this International Searching Authority will not be so considered. 

If this opinion is, as provided above, considered to be a written opinion of the IPEA, the applicant is invited to submit to the 
IPEA a written reply together, where appropriate, with amendments, before the expiration of 3 months from the date of mailing 
of Form PCT/IS A/220 or before the expiration of 22 months from the priority date, whichever expires later. 
For further options, see Form PCT/ISA/220. 

3. For further details, see notes to Form PCT/ISA/220. 



Name and mailing address of the ISA/ US 
Mail Stop PCT, Attn: ISA/US 
Commissioner for Patents 
P.O. Box 1450 

Alexandria, Virginia 22313-1450 
Facsimile No. (571) 273-3201 



Date of completion of this opinion 
12 May 2008 (12.05.2008) 




Authorized officer 
Joseph Thomas 

Telephone No. 703-5 18-4462 



Form PCT/IS A/23 7 (cover sheet) (April 2007) 



PCT/IB2007/051948 17.06.2008 



WRITTEN OPINION OF THE 
INTERNATIONAL SEARCHING AUTHORITY 


International application No. 
PCT/IB07/51948 


Box No. I Basis of this opinion 


1. With regard to the language, this opinion has been established on the basis of: 




^ the international application in the language in which it was filed 




| | a translation of the international application into , which is the language of a translation furnished for the purposes of 
international search (Rules 12.3(a) and 23.1(b)). 

2. Q This opinion has been established taking into account the rectification of an obvious mistake authorized by or notified to this 

Authority under Rule 91 (Rule 43bisA(a)) 

3. With regard to any nucleotide and/or amino acid sequence disclosed in the international application, this opinion has been 
established on the basis of: 


a. type of material 




I | a sequence listing 




I | table(s) related to the sequence listing 




b. format of material 




| | on paper 




| | in electronic form 




c. time of filing/furnishing 




| | contained in the international application as filed. 




| | filed together with the international application in electronic form. 




| | furnished subsequently to this Authority for the purposes of search. 


4. Q In addition, in the case that more than one version or copy of a sequence listing and/or table(s) relating thereto has been filed 
or furnished, the required statements that the information in the subsequent or additional copies is identical to that in the 
application as filed or does not go beyond the application as filed, as appropriate, were furnished. 


5. Additional comments: 





Form PCT/lSA/237(Box No. I) (April 2007) 



PCT/IB2007/051948 17.06.2008 



WRITTEN OPINION OF THE 
INTERNATIONAL SEARCHING AUTHORITY 



International application No. 
PCTAB07/51948 



Box No. V Reasoned statement under Rule 43 bisA(a)(i) with regard to novelty, inventive step or industrial 
applicability; citations and explanations supporting such statement 



l. Statement 



Novelty (N) 



Inventive step (IS) 



Industrial applicability (IA) 



Claims 1-4 



Claims NONE 



Claims NONE 



Claims 1-4 



Claims 1-4 



Claims NONE 



_YES 
_NO 

_YES 
_NO 

_YES 
NO 



2. Citations and explanations: 

Claims 1-4 an inventive step under PCT Article 33(3) as being obvious over Kodama et al., Publication No. US 2002/0143585, in view 
of Hardesty, U.S. Patent No. 6,105,865. 

As per claim 1, Kodama et al. teaches a method of managing an insurance plan (see abstract of Kodama et al.), the method including: 
calculating a premium payable by the member, wherein the premium is reduced by a percentage (see page 1, paragraphs 0015-0016 of 
Kodama et al.). However, Kodama et al. does not explicitly teach calculating expenditures and a reduction percentage of the premium. 
Hardesty, however, does teach a method including: calculating an amount of expenditure of a member using a credit or debit card issued 
to the member (see column 1, lines 25-67 through column 2, lines 1-10 of Hardesty); and using the calculated amount of expenditure to 
reduce the premium by a percentage of the amount of expenditure of the member using the credit or debit card issued to the member 
(see column 1, lines 25-67 through column 2, lines 1-10 of Hardesty). It would have been obvious to one of ordinary skill in the art at 
the time of the invention to incorporate this feature into the method of Kodama et al. One of ordinary skill in the art would have been 
motivated to combine these features in order to promote use of a particular credit and to induce merchants to participate (see column 1, 
lines 28-30 of Hardesty). 

As per claim 2, Kodama et al. and Hardesty teach the method of claim 1 as described above. Hardesty further teaches a method further 
including calculating a number of points earned by the member in an incentive program operated by the insurer or a third party, wherein 
the percentage used to reduce the premium amount is determined based on the number of points earned in the incentive program (see 
column 1, lines 25-67 through column 2, lines 1-10 of Hardesty). 

System claims 3-4, repeat the subject matter of claims 1-2 as a set of "means-plus- function" elements rather than a series of steps. As 
the underlying process has been shown to be fully disclosed by the teachings of Kodama et al. and Hardesty in the above rejection of 
claims 1-2, it is readily apparent that the Kodama et al. and Hardesty reference includes a system to perform the recited functions. As 
such, these limitations are rejected for the same reasons provided in the rejection of claims 1-2 and incorporated herein. 



Form PCT/ISA/237 (Box No. V) (April 2007)