Atty. Docket No. LMIC-019
`Control No. 90/011,252 (Patent)
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of this Notification has been served in its entirety on the patent
`
`owner as provided in 37 CFR l.33(c).
`
`The copy has been served on January 6, 2011 by depositing it in the United States Postal
`
`Service as first class mail postage pre-paid in an envelope addressed to:
`
`James A. Collins
`P.O. BOX 10395
`
`Chicago IL 60610
`
`Respectfully submitted,
`
`ROPES & GRAY LLP
`
`By (J. Steven Baughmang
`J. Steven Baughman
`Registration No. 47,414
`Customer No. 28120
`
`Page 002635
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`

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`Electronic Acknowledgement Receipt
`
`Application Number:
`
`90011252
`
`International Application Number:
`
`Confirmation Number:
`
`4116
`
`Title of Invention:
`
`MOTOR VEHICLE MONITORING SYSTEM FOR DETERMINING A COST OF
`INSURANCE
`
`James A. Collins
`
`P.O. BOX 10395
`
`- C
`
`hicago
`US
`
`Correspondence Address:
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`LMIC—019
`
`Payment information:
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`
`
`File Listing:
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`Page 002636
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`

`
`Document
`Number
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`.
`.
`Document Descrlptlon
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`.
`Flle Name
`
`File Size(Bytes)/
`Message Digest
`94616
`
`Part /.zip (if appl.)
`
`LM|C_019_Notification_of_Con
`current_Proceedings.pdf
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`324Ie5c0838a47I 31 bZ48698975cf03l247e
`aeefi
`
`Multipart Description/PDF files in .zip description
`
`Document Description
`
`Notlceofconcurrentproceeding“)
`
`Warnings:
`Information:
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`Warnings:
`Information:
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`Notice of concurrent proceeding(s)
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`_
`.
`LM|C_O19_Stay_DecIsIon_By_C
`ourt.pdf
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`55724
`
`I9f8d42f37b88&)58f3I af384495c234a7
`B5
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
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`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCTIRO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Page 002637
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`

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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CoMM|-:Rc1:
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box I450
`_
`Alexandria, Virginia 223 I 3-I450
`www.uspIu.gov
`
`APPLICATION NO.
`
`90/011,252
`
`FILING DATE
`
`09/22/2010
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`6,064,970
`
`LMlC—0I9
`
`4! I6
`
`759°
`James A. Collins
`P.O. BOX 10395
`
`Chicago, IL 60610
`
`WW0
`
`,
`
`PAPER NUMBER
`
`ARTUN”
`
`DATE MAILED: I 1/24/2010
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Page 002638
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`A
`United States Patent and Trademark Omce
`PO. Box 1450
`Alexandria, VA 22313-1450
`\Mrwvu:pto.gov
`
`' Do NOT use IN PALM PRINTER
`
`(THIRD PARTY REQUESTERS CORRESPONDENCE ADDRESS)
`
`ROPES & GRAY LLP
`IPRM - FLOOR 43
`
`PRUDENTIAL TOWER
`
`800 BOYLSTON STREET
`
`BOSTON, MA 02199-3600
`
`Nov 2 4 .2010
`
`CENTRAL REEXAMINATION UNIT
`'
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/011 252.
`
`PATENT NO. 6 064 970.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex partereexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07-04)
`
`Page 002639
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`

`
`Order Granting _/ Denying Request For
`Ex Parte Reexamination
`
`90/011,252
`' Examiner
`
`
`
`Karin M. Reichle
`
`6,064,970
`Art Unit
`
`3992
`
`Control No.
`
`‘
`
`Patent Under Reexamination
`
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`
`
`
`The request for ex parte reexamination filed 22 September 2010 has been considered and a determination
`has been made. An identification of the claims, the references relied upon, and the rationale supporting the
`
`determination are attached.
` Attachments: a)EI PTO-892,
`
`1. ix
`
`MEI PTO/SB/08,
`
`c)EI Other:
`
`
`
`The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`_
`
`
`
`For Requester's Reply (optional): 11NO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). .NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`2. l:] The request for ex parte reexamination is DENIED.
`
`
`
`
`
`
`
`‘ Thisdecision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`
`
`
`
`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`
`
`
`a) [:1 by Treasury check or,
`
`b) E] by credit to Deposit Account No.
`
`, or
`
`
`
`c) [:1 by credit to a credit card account, "unless otherwise notified (35 U.S.C. 303(c)).
`
`US. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`‘
`
`V
`
`Office Action In Ex Parte Reexamination
`
`Part of Paper No. 20101102
`
`Page 002640
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`Decision
`
`1. A request for reexamination containing proposed substantial new questions of
`
`patentability affecting all claims 1-15 of U.S. Patent No. 6,064,970 is set forth in the
`
`request submitted September 22, 2010. A substantial new question of patentability
`
`affecting claims 1-15 of United States Patent Number 6,064,970 is raised by the request
`
`for ex parte reexamination.
`
`Extensions of Time
`
`2. Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not
`
`to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)).
`
`Extension of time in ex parte reexamination proceedings are provided for in 37 CFR
`
`1.550(0).
`
`Notification of Concurrent Proceedings
`
`3. The patent owner is reminded of the continuing responsibility under 37 CFR
`
`l.565(a), to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 6,064,970 throughout the course of this reexamination
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`Page 002641
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3 992
`
`Page 3
`
`the Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`Amendment in Reexamination Proceedings
`
`4. Patent owner is notified that any proposed amendment to the specification
`
`and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j),
`
`must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any
`
`fees required by 37 CFR 1.20(c).
`
`Submissions
`
`5. In order to insure fiill consideration of any amendments, affidavits or
`
`declarations or other documents as evidence of patentability, such documents must be
`
`submitted in response to the first Office action on the merits (which does not result in a
`
`close of prosecution). Submissions after the second Office action on the merits, which is
`intended to bela final action, willbe governed by the requirements of37 CFR 1.116,
`
`after final rejection and by 37 CFR 41.33 afier appeal, which will be strictly enforced.
`
`Waiver of Right to File Patent Owner Statement
`
`6. In a reexamination proceeding, Patent Owner may waive the right under 37
`
`C.F.R. 1.530 to file a Patent Owner Statement. The document needs to contain a
`
`statement that Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent
`
`Owner Statement and proof of service in the manner provided by 37 C.F.R. 1.248, if the
`
`request for reexamination was made by a third party requester, see 37 C.F.R 1.550(t).
`
`Page 002642
`
`

`
`_ Application/Control Number: 90/011,252
`An Unit: 3992
`
`Page 4
`
`The Patent Owner may consider using the following statementin a document waiving
`
`the right to file a Patent Owner Statement:
`
`WAIVER. OF RIGHT TO FILE PATENT OWNER STATEMENT
`
`Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement.
`
`Service of Papers
`
`7. After filing of a request for ex parte reexamination by a third party requester,
`
`any document filed by either the patent owner or the third party requester must be served
`on the other party (or parties where two or more third party requester proceedings are
`
`merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. The
`
`document must reflect service or the document may be refused consideration by the
`
`Office. See 37 CFR 1.550(f).
`
`References Asserted as Raising a Substantial New Question
`
`8. The substantial new question of patentability (SNQP) regarding claims 1-15 of
`
`the ‘970 Patent is based upon the following references:
`
`A. Japanese Patent Publication No. JP-A-4/ 182868, filed on November 19, 1990
`
`and published on June 30, 1992, to Kosaka(“Kosa1<a”) and Certified English-Language
`
`Translation.
`
`B. “An Interest in Black Magic - Motor Technology” published on January 1,
`
`1994 in Insurance Age magazine (“Black Magic”).
`
`C. U.S. Patent No. 5,570,087, filed on February 18, 1994 and issued on October
`
`29, 1996, to Lemelson. (“Lemelson”).
`
`Page 002643
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`’
`
`Page 5
`
`D. “Notes on Exposure and Premium Bases” by P. Dorweiler, on page 319 of a
`
`book published in 1930 by the Casualty Actuarial Society entitled “Proceedings of the
`
`Casualty Actuarial Society” (“Dorweiler”).
`
`E. U.S. Patent No. 5,465,079, filed on August 13, 1993 and issued on November
`
`7, 1995, to Bouchard et al. (“Bouchard”).
`
`F. WO 90/02388, filed on August 8, 1989 and published on March 8,
`
`1990, to Pettersen (“Pettersen”).
`
`Other Evidence:
`
`“Admitted Prior Art” identified by Requester as the arguments set forth in the 1
`
`response of July 19, 1999 on page 5, lines 10-13 during prosecution of the application
`
`(O9/ 135,034) that led to the issuance of the '97O patent.
`
`Availability of Asserted References as Prior Art
`
`9. The references to Kosaka (‘868) and Pettersen (‘388) include issue dates more
`
`than one year prior to the effective filing date (January 29, 1996) of the patent (‘970)
`
`requested for reexamination and thus are available as prior art under 35 USC l02(b) and
`
`35 USC 103.
`
`The references to Lemelson (‘087) and Bouchard (‘O79) include filing dates prior
`
`g to the effective filing date (January 29, 1996) of the patent (‘970) requested for
`
`reexamination and thus‘are available as prior art under 35 USC 102(e) and 35 USC 103.
`
`The reference copies of Black Magic and Dorweiler indicate a publication date
`
`more than one year prior to the effective filing date (January 29, 1996) of the patent
`
`Page 002644
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 6
`
`(‘970) requested for reexamination and thus are available as prior art under 35 USC
`
`102(b) and 35 USC 103.
`
`Summag of Prosecution Histogx
`
`10. U.S. Application 09/135,034 was filed on August 17, 1998 as a continuation
`
`of 08/592,958 filed January 29, 1996 which parent application issued August 18, 1998 as
`
`U.S. Patent No. 5,797,134. The application (‘034) included original claims 1-20.
`
`Transmittal papers filed by Applicant on.August 17, 1998 cancelled claims 1-27.
`
`A preliminary amendment was also filed by Applicant on August 17, 1998 adding claims
`
`28-34. Another preliminary amendment stamped December 28, 1998, with a certificate
`
`of mailing dated December 23, 1998, was filed adding claims 35-47.
`
`A non-final office action was mailed by USPTO on March 18, 1999. Original
`
`claims 1-20 were treated as cancelled and claims 28-47 were renumbered 21-40. Claims
`
`27, 35-36, and 39-40 were rejected under both 35 USC 112, first paragraph, and 35 USC
`
`112, second paragraph. A non-statutory double patenting rejection of claims 21-26, 28-
`
`34, 37 and 38 over claims 1-26 of the parent U.S. Patent No. 5,797,134 was set forth.
`
`Claims 21-24, 28-29, 33-34 were rejected under 35 USC 102(b) as being clearly
`
`anticipated by Camhi et al (U .S. Patent No. 5,430,432) or Ousboume (U .S. Patent No.
`
`5,499,182). The Pettersen reference, see section 8, F. supra, was cited but not applied
`
`against the claims nor specifically discussed. Note paragraph 10 and PTO-892 of such
`
`office action.
`
`Page 002645
`
`

`
`Application/Contro1Number: 90/011,252
`Art Unit: 3992
`
`Page 7
`
`Applicant filed a response with remarks stamped on July 19, 1999 with a
`
`certificate of mailing dated July 19, 1999. Claims 25, 27, 35, 36, 39 and 40 were
`
`cancelled and claim 24 was amended.
`
`A second non-final office action was mailed by USPTO on Augist 13, 1999. A
`
`non-statutory double patenting rejection of all the claims 21-24, 26, 28-34 and 37-38 was
`
`set forth. All of the claims, claims 21-24, 26, 28-34 and 37-38, were rejected under 35
`
`USC 102(b) as being clearly anticipated by Camhi et al (U Patent No. 5,430,432) or
`
`Ousboume (U.S. Patent No. 5,499,182).
`
`An interviewpwas conducted on November 12, 1999. The substance of such
`
`interview, i.e. “Representative Roche argued that the instant invention is directed to a
`
`system which adjusts the insurance premium for the current insurance premium period
`
`‘and not a future insurance premium period as in the applied prior art. The examiner
`
`agreed with this argument in regard to claims 21, 24 & 26 and withdrew the rejection
`
`under 35 USC sect 102(b) for these claims. Further it was agreed _that if independent
`
`claims 22 & 28 were to be amended to recite that the databases are generated with respect
`
`to the current insurance premium period, then the examiner agreed to withdraw the
`
`rejection under 35 USC sect 102(b) for these claims”, was set forth in the Interview
`Summary form mailed by the USPTO on November 19, 1999. The rejection of claims
`
`21, 24 and 26, and thereby claims 25 and 27 dependent therefrom, was withdrawn.
`
`Applicant filed a response with remarks and terminal disclaimer stamped
`
`November 18, 1999 with a certificate of mailing dated November 15, 1999. Claims 22
`
`and 28 were amended per the agreement reached during the November 12, 1999
`
`interview and claim 41 was added.
`
`Page 002646
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 8
`
`A notice of allowance was mailed by USPTO on December 28, 1999. Claims 21-
`
`24, 26, 28-34, 37-38 and 41 were indicated as allowed. The claims were re-numbered as
`
`1-15. U.S. Patent No. 6,064,970 was issued on May 16, 2000.
`
`Proposed Grounds of Rejection of claims 1-15.of the '970 Patent to
`
`McMillian et al.
`
`11. (A). A substantial new question is raised as to the patentability of claims 4-8,
`10, and 13 by Kosaka (JP-A-4/ 182868).
`
`(B) A substantial new question is raised as to the patentability of claims 1-3, 11-
`12, and 14-15 by Kosaka (JP-A-4/ 182868) in view of Black Magic.
`2
`
`(C) A substantial new question is raised as to the patentability of claim 9 by
`Kosaka (JP-A-4/182868) in view of the Admitted Prior Art.
`
`(D)A substantial new question is raised as to the patentability of claims 1-8 and
`10-15 by Lemelson (U.S. Patent No.,5,570,087) in view of Dorweiler.
`
`(E) A substantial new question is raised as to the patentability of claim 9 by
`Lemelson (U .S. Patent No. 5,570,087) in view of Dorweiler and the Admitted Prior Art.
`
`(F) A substantial new question is raised as to the patentability of claims 1-8 and
`10-15 by Bouchard (U.S. Patent No. 5,465,079) in view of Pettersen.
`
`(G) A substantial new question is raised as to the patentability of claim 9 by
`Bouchard (U .S. Patent No. 5,465,079) in view of Pettersen and the Admitted Prior Art.
`
`Analysis of the Prior Art Provided in the Reguest
`
`12. (A) Requester asserts a substantial new question of patentability as to claims
`
`4-8, 10 and 13 of the ‘97O patent in view of Kosaka (‘868).
`
`During prosecution of the application (09/135,034) that led to the issuance of the
`
`'970 patent, see paragraph 10 supra as well as the paragraph bridging pages 2-3 of the
`
`Request, independent claims including claims4 and 5 (application claims 24 and 26)
`
`were allowed in light of Applicant’s arguments presented during the November 12, 1999
`
`Page 002647
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`A
`
`i
`
`Page 9
`
`interview, i.e. “the instant invention is directed to a system which adjusts the insurance
`
`premium for the current insurance premium period and not a future insurance premium
`
`period”, and independent claims including claim 6 (application claim 28) were allowed
`
`due to amendments per the agreement reached during the November 12, 1999, i.e.
`
`“Further it was agreed that if independent claims 22 & 28 were to be amended to recite
`
`that the databases are generated with respect to the current insurance premium period,
`
`then the examiner agreed to withdraw the rejection under 35 USC sect 102(b) for these
`
`claims”. The argument/agreement was manifested by claim language, see, e.g., claim 4,
`
`i.e. “A method of insuring a vehicle operator for a selected period based upon operator
`
`driving characteristics during the period,.comprising steps of: generating an initial
`
`operator profile; monitoring operator driving characteristics during the selected period;
`
`and deciding a cost of vehicle insurance for the period based upon the operating
`
`characteristics monitored in that period”, and the paragraph bridging pages 2-3 of the
`
`Request. As pointed out in the request on page 3, the paragraph bridging pages 4-5, the
`
`second full paragraph of page 16, and pages 23-25 and 26-49, Kosaka ('868), teaches an
`
`insurance premium determination device, see translation of ‘868 at, e.g., page 421, col. 2,
`
`section (6), for use in the automobile/vehicle insurance environment which determines
`
`the premiums in real time, i.e. continually, based on collection of risk evaluation data also
`
`measured in such real time, i.e. same time period, see translation of ‘868 at, e.g., page
`
`422, col. 1, sections (9), (14), and (15) and col. 2, last full paragraph, page 424, col. 1,
`
`lines 4-8 and fifih full paragraph, page 427, paragraph bridging cols. 1-2, and page 429,
`
`col. 1, lines 27 et seq.
`
`Page 002648
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 10
`
`Given the teachings of Kosaka (‘868), a reasonableexaminer would consider
`
`these teachings important in evaluating the patentability of all of the independent claims
`
`of record, and thus the patentability of claims 4-8, 10 and 13 of the '970 patent. This art
`
`was not cited during the prosecution of US Patent No. 6,064,970. The teachings of
`Kosaka are new and non-cumulative and the claim. at issue is not the subject of a final
`
`holding by a Federal Court. Accordingly, the reference to Kosaka (‘868) raises a
`
`substantial new question of patentability with respect to claims 4-8, 10 and 13 of the ‘97O
`
`patent.
`
`(B) Requester asserts a substantial new question of patentability as to claims 1-3,
`
`11-12 and 14-15 of the ‘970 patent in view of Kosaka (‘868) and Black Magic.
`
`In Issue (A) supra, the reference to Kosaka was found to raise a substantial new
`
`question of patentability with respect to claims 4-8, 10 and 13. During prosecution of the
`
`application (09/ 135,034) that led to the issuance of the '970 patent, see paragraph 10
`
`supra as well as the paragraph bridging pages 2-3 of the Request, the independent claims
`
`1 and 2 (application claims 21 and 22) were allowed in light of similar arguments and
`amendments as discussed in such issue (A) with regard to claims 4-5 and claim .6,
`_
`
`respectively. Claims 1-2 additionally require a data base/data collection including data
`
`elements representing time and location of vehicle operation. As pointed out in the
`
`request on page 5, lines 2-3 and pages 25-26 and 48-67, Black Magic contemplates usage
`
`of vehicle GPS technology/continuous tracking technology for data collection to
`
`accurately determine insurance rate premiums.
`
`Page 002649
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 1 1
`
`The proposed combination includes at least one reference (Kosaka) that does raise
`
`a substantial new question of patentability for all the ‘claims asserted by the requester in
`
`this particular issue. Furthermore, given the teachings of Black Magic, a reasonable
`
`examiner would consider the combined teachings of Kosaka and Black Magic important
`
`in evaluating the patentability of all ofthe independent claims ofrecord, and thus the
`
`patentability of claims 1-3, 11-12 and 14-15 of the ‘970 patent. This art combination was
`
`not cited during the prosecution of US Patent No. 6,064,970. The teachings of Kosaka
`
`and Black Magic are new and non-cumulative and the claims at issue are not the subject
`
`of a final holding by a Federal Court. Accordingly, the combination of Kosaka and Black K
`
`Magic raises a substantial new question of patentability with respect to claims 1-3, 11-12
`
`and 14-15 of the ‘970 patent.
`
`(C) Requester asserts a substantial new question of patentability as to claim 9 of
`
`the ‘970 patent by Kosaka (‘868) in view of “Admitted Prior Art”.
`
`On pages 67-68 of the Request, the “Admitted Prior Art” is identified by
`
`Requester as the arguments set forth in the response of July 19, 1999 on page 5, lines 10-
`
`13 during prosecution of the application (09/135,034) that led to the issuance of the ‘970
`
`patent. Not only is such not an accurate/complete citation of such arguments but such
`
`response amounts to mere argument with regard to applied prior art, i.e. Camhi et al (U.S.
`
`Patent No. 5,430,432) or Ousboume (U.S. Patent No. 5,499,182), and thereby, do not
`
`constitute an “admission” as “prior art” as set forth in MPEP 2129, I. and thus 2217, III.
`
`In any case, regardless of whether such argument/response is an “admission” of “prior
`
`art”, such response by Applicant is merely cumulative to the teachings of Camhi et al
`
`Page 002650
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 12
`
`(US. Patent 5,430,432) or Ousbourne (U.S. Patent 5,499,182), i.e. arguments with regard
`
`to the teachings, and does not raise any questions of patentability that have not already
`
`been raised and/or addressed during prosecution of the earlier examination of the ('790)
`
`patent. However, in issue (A) supra, a determination was made that Kosaka (‘868) raises
`
`a substantial new question of patentability with respect to claims 4-8, 10 and 13 and
`
`claim 9 depends directly from claim 6, and thus incorporates the subject matter of claim 6
`
`by reference. Therefore, the proposed combination includes at least one reference
`
`(Kosaka) that does raise a substantial new question of patentability for the dependent
`
`claim asserted by the requester in this particular issue. Accordingly, based on the
`
`teachings of Kosaka (‘868) alone, the proposed combination of Kosaka and the
`
`“Admitted Prior Art” include teachings which raise a substantial new question of
`
`patentability with respect to claim 9.
`
`(D) Requester asserts a substantial new question of patentability as to claim 9 of
`
`the 979 patent by Lemelson ("0s7) in view ofDorweiler.
`
`During prosecution of the application (09/ 135,034) that led to the issuance of the
`
`'970 patent, see paragraph 10 supra as well as the paragraph bridging pages 2-3 of the
`
`Request, independent claims including claims independent claims including claims 1, 4
`
`and 5 (application claims 21, 24, 26) were allowed in light of Applicant’s arguments
`
`presented during the November 12, 1999 interview, i.e. “the instant invention is directed
`to a system which adjusts the insurance premium for the current insurance premium
`
`period and not a future insurance premium period”, and independent claims including
`
`claims 2 and 6 (application claims 22 and 28) were allowed due to amendments per the
`
`Page 002651
`
`

`
`Application/Control Number: ‘90/01 1,252
`Art Unit: 3992
`
`A
`
`Page 13
`
`'
`
`agreement reached during the November 12, 1999, i.e. “Further it was agreed that if
`
`independent claims 22 & 28 were to be amended to recite that the databases are generated
`
`with respect to the current insurance premium period, then the examiner agreed to
`
`withdraw the rejection under 35 USC sect 102(b) for these claims”. The
`
`argument/agreement was manifested by claim language, see, e.g., claim 4, i.e. “A method
`
`of insuring a vehicle operator for a selected period based upon operator driving
`
`characteristics‘during the period, comprising steps of: generating an initial operator
`
`profile; monitoring operator driving characteristics during the selected period; and
`
`deciding a cost of vehicle insurance for the period based upon the operating
`
`characteristics monitored in that period”, and the paragraph bridging pages 2-3 of the
`
`Request. As pointed out in the request on page 3, page 4, and pages 69-117, Lemelson,
`
`issued_in 1996, teaches the creation of evaluation codes/ a data base based on the real
`
`time monitoring of driver performance and sensing instrumentation of physical variables
`
`indicating the condition of the vehicle, see, e.g., col. 3, lines 20-38. As also. pointed in
`
`the request at pages 3-4, 15 and 69-117 of the Request, Dorweiler contemplated
`
`retrospective insurance rate adjustment based upon monitored data representing physical
`
`variables indicating the condition of the vehicle although such monitoring/monitors were
`
`considered impractical at such time (the Dorweiler reference was published in 1930), see
`
`pages 338 and 339 thereof.
`
`Given the combined teachings of Lemelson and Dorweiler, a reasonable examiner
`
`would consider these combined teachings important in evaluating the patentability of all
`
`of the independent claims of record, and thus the patentability of claims 1-8 and 10-15 of
`
`the ‘97O patent. This particular combination of prior art was not cited during the
`
`Page 002652
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 14
`
`prosecution of US Patent No. 6.064,970. The teachings of Dorweiler are new and non-
`
`cumulative and the claims at issue are not the subject of a final holding by a Federal
`
`Court. Accordingly, the combination of Lemelson and Dorweiler raise a substantial new
`
`question of patentability with respect to claim 1-8 and 10-15.
`
`(E) Requester asserts a substantial new question of patentability as to claim 9 of
`
`the ‘970 patent by Lemelson (‘O87) in view of Dorweiler and “Admitted Prior Art”.
`
`On pages 117-118 of the Request, the “Admitted Prior Art” is identified by
`
`Requester as the arguments set forth in the response of July 19, 1999 on page 5, lines 10-
`
`13 during prosecution of the application (09/135,034) that led to the issuance of the ‘970
`
`patent. Not only is such not an accurate/complete citation of such arguments but such
`
`response amounts to mere argument with regard to applied prior art, i.e. Camhi et al (U.S.
`
`Patent No. 5,430,432) or Ousboume (U.S. Patent No. 5,499,182), and thereby, do not
`
`constitute an “admission” as “prior art” as set forth in IVIPEP 2129, I. and thus 2217, III.
`
`In any case, regardless of whether such argument/response is an “admission” of “prior
`
`art”, such response by Applicant is merely cumulative to the teachings of Camhi et al
`
`(U .S. Patent 5,430,432) or Ousboume (U.S. Patent 5,499,182), i.e. arguments with regard
`
`to the teachings, and does not raise any questions of patentability that have not already
`been raised and/or addressed during prosecution ofthe earlier examination ofthe ('790)
`
`patent. However, in issue (D) supra, a determination was made that the combination of
`
`Lemelson (‘O87) and Dorweiler raises a substantial new question of patentability with
`respect to claim 6 and claim 9 depends directly from claim 6, and thus incorporates the
`
`subject matter of claim 6 by reference. Therefore, the proposed combination includes at
`
`Page 002653
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 15
`
`least one reference (Dorweiler) that does raise a substantial new question of patentability
`
`for the dependent claim 9 asserted by the requester in this particular issue. Accordingly,
`based on the teachings of Lemelson (‘087) and Dorweiler alone, the proposed
`
`combination of such and the “Admitted Prior Art” include teachings which raise a
`
`substantial new question of patentability with respect to claim 9.
`
`(F) Requester asserts a substantial new question of patentability as to claims 1-8
`
`and 10-15 of the ‘970 patent by Bouchard (‘079) in view of Pettersen (‘388). The
`
`prosecution history indicates that Pettersen was cited by the examiner in the final office
`
`action ofApril 2, 2001.
`
`Accordingly, this reference is "old art". However, MPEP 2242 states:
`
`”For example, a substantial new question ofpatentability may be based solely on old art
`where the old art is being presented viewed in a new light, or in a different way, as
`compared with its use in the earlier examination(s), in view ofa material new argument
`or interpretation presented in the request."
`
`In this instance, Requester asserts the combination of Bouchard and Pettersen, a
`
`combination which was not considered during prosecution since the reference to
`
`Bouchard was not cited during prosecution. Accordingly, such combination is not
`
`precluded from raising a substantial new question of patentability.
`
`During prosecution of the application (09/135,034) that led to the issuance of the
`
`‘970 patent, see paragraph 10 supra as well as the paragraph bridging pages 2-3 of the
`
`Request, independent claims including claims independent claims including claims 1, 4
`
`and 5 (application claims 21, 24, 26) were allowed in light of Applicant’s arguments
`
`Page 002654
`
`

`
`Application/Control Number: 90/O1 1,252
`Art Unit: 3992
`
`Page 16
`
`presented during the November 12, 1999 interview, i.e. “the instant invention is directed
`
`to a system which adjusts the insurance premium for the current insurance premium
`
`period and not a filture insurance premium period”, and independent claims including
`
`claims 2 and 6 (application claims 22 and 28) were allowed due to amendments per the
`
`agreement reached during the November 12, 1999, i.e. “Further it was agreed that if
`
`independent claims 22 & 28 were to be amended to recite that the databases are generated
`
`with respect to the current insurance premium period, then the examiner agreed to
`
`withdraw the rejection under 35 USC sect 102(b) for these claims”. The
`
`argument/agreement was manifested by claim language, see, e.g., claim 4, i.e. “A method
`
`of insuring a vehicle operator for a selected period based upon operator driving
`
`characteristics during the period, comprising steps of: generating an initial operator
`
`profile; monitoring operator driving characteristics during the selected period; and
`
`deciding a cost of vehicle insurance for the period based upon the operating
`
`characteristics monitored in that period”, and the paragraph bridging pages 2-3 of the
`
`Request. As pointed out in the request at page 4, page 16 and pages 118-168, Bouchard
`
`and Pettersen teach systems to monitor/compile data representing a drivers performance
`
`during a time period. As set forth at col. 9, lines 62 et sea, Bo