Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Claim 29
`
`Page 39
`
`Patent Owner on pages 62-63 of the 4-6-1 1 response argues “[t]he proposed combination
`
`does not teach or suggest determining speed data associated with a location of the vehicle,
`
`extracting speed limit data associated with the location of the vehicle from a database, comparing
`
`the speed data to the speed limit data to determine whether the speed data indicates an
`
`occurrence of an excessive speed event above the speed limit data, and recording the speed data
`
`in the first memory in response to determining that the speed data indicates an occurrence of an
`
`excessive speed event above the speed limit data.” Specifically, Patent Owner first argues
`
`“[b]ecause the Office Action does not specify which portions of the cited references allegedly-
`
`correspond to the specific features of claim 29, the Office Action has not established a prima
`
`facie case of obviousness against claim 29.” Examiner does not agree. See pages 179-180 of
`
`the non-final Office Action.
`
`On pages 63-64 of the 4-6-11 response, Patent Owner further argues:
`
`Claim 29 compares speed data associated with a location of the vehicle with a
`speed limit associated with that location. As one example, the method of claim 29
`may determine that the vehicle was traveling at 68 mph at specific location
`coordinates, and that a 55 mph speed limit is associated with the road that
`corresponds to the specific location coordinates. As another example, the method
`of claim 27 may determine that the vehicle was traveling at 68 mph in the state of
`Illinois, and that a 55 mph speed limit is associated with the state of Illinois. The
`method will then determine whether the speed data indicates an occurrence of an
`excessive speed event by knowing the speed, the location of the vehicle when the
`speed event occurred, and a speed limit associated with that location. Neither the
`Office Action nor the references themselves teach or suggest this claimed feature.
`
`Bouchard discloses tracking the speed of a vehicle, but does not determine the
`location of a speed event, does not identifl a speed limit associated with the
`location corresponding to the speed event, and does not compare the speed data to
`the speed limit associated with the location corresponding to the speed event. The
`Office Action cites to the speed ranges at column 30, lines 7-1 8 of Bouchard for
`this claim. However, Bouchard's speed ranges and associated driving environment
`
`Page 000298
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 40
`
`guess do not indicate any |ocation—based speed limits. As discussed above in
`connection with claim 17, Bouchard's algorithm tells the system nothing about the
`actual location of the vehicle. The driving environment guess could not even tell
`the system what city, state, or country the vehicle was located in when specific
`driving events occurred. Bouchard's system would treat 68 mph on a rural Texas
`highway the same as 68 mph in the heart of New York City. However, the "speed
`limit" associated with a rural Texas highway is likely different than a busy street
`in the heart of New York City. Bouchard's system would not determine this
`location-based difference. Therefore, Applicants respectfully request the
`withdrawal of this rejection. (Emphasis added.)
`
`Note the Patent Owner’s similar arguments with regard to claims 1, 17-18 and 27 discussed
`
`supra.
`
`Similarly, the Examiner does not agree. See discussion of MPEP 2258, 1., G, and claim
`
`construction set forth supra in the discussion of claim 4 again.
`
`First, Patent Owner’s remarks are narrower than the language or words of the claim
`
`which do not require monitoring and recording the location in any specific manner with any
`
`specific accuracy/preciseness, e.g., does not require monitoring and recording the actual or.
`
`determined location and/or with a particular sensor and/or with a certain specificity, i.e.
`
`coordinates, the city, state or country, or the speed limit be a legally imposed speed limit.
`
`However, attention is invited to ‘079 at, e.g., col. 6, lines 1-3, col. 8, lines 7-10, col. 9, lines 27-
`
`28 and fl, col. 10, lines 22-23, col. 11, lines Q and 19-22, col. 26, line 49-001. 27, line 7, col.
`
`27, lines 38-42 and 63-64, col. 28, line 49, col. 29, line 23, and cols. 30-32, Figures 18-19, esp.
`
`col. 30, lines 1-18 and 29-35, esp. 17-18, col. 31, lines 5-8 and 24-45, and claim 2. Second, ‘079
`
`does teach or suggest grouping in memory a selected data element in combination with a location
`
`associated with the selected data element as claimed, see the portions of ‘079 cited supra and the
`
`portions cited in the rejection of this claim infra, i.e. teaches determining speed data associated
`
`with a location of the vehicle, see, e.g., col. 9, lines 27-28 and fl, col. 10, lines 22-23, col. 11,
`
`Page 000299
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 41
`
`lines £2 and 19-22, col. 31, lines 5-8, extracting speed limit data associated with the location of
`
`the vehicle from a database, col. 29, line 66- col. 30, line 18 and col. 3], lines 5-8, e.g., more
`
`than 45 mph, and comparing the speed data to the speed limit data to determine whether the
`
`speed data indicates an occurrence of an excessive speed event above the speed limit data, col.
`
`3], lines 5-8, and recording the speed data in the first memory in response to determining that the
`
`speed data indicates an occurrence of an excessive speed event above the speed limit data, see
`
`col. 31 line 5-8 and 24-38 and Table in Figure 19.
`
`Claim 34
`
`Patent Owner argues on page 64 of the 4-6-1 1 response “[t]he proposed combination
`
`does not teach or suggest monitoring driving route data associated with a location of the vehicle,
`
`determining that the driving route data indicates an occurrence of a high risk driving location
`
`event, and computing the insurance rating for the vehicle based on the occurrence of the high
`
`risk driving location event. Specifically, Patent Owner first argues “[b]ecause the Office Action
`
`does not specify which portions of the cited references allegedly correspond to the specific
`
`features of claim 34, the Office Action has not established a primafacie case of obviousness
`against claim 34.” Examiner does not agree. See page 183 ofthe non-final Office Action‘.
`
`On pages 65-66 of the 4-6-11 response, Patent Owner further argues:
`
`Claim 34 determines whether monitored driving route data indicates an
`. occurrence of a high risk driving location event. As one example, the method of
`claim 34 may determine (by tracking vehicle driving route data) that the vehicle
`often drives along a road or through a busy intersection known for a relative high
`accident rate. The method uses this information to determine the occurrence a
`
`high risk driving location event, which may be used to compute the insurance
`rating. Neither the Office Action nor the references teach or suggest this claimed
`feature.
`
`Page 000300
`
`

`
`Application/Control Number: 90/O1 1,252
`Art Unit: 3992
`
`Page 42
`
`Bouchard discloses a classification of the current driving environment by
`determining whether the vehicle is either (1) stopped, (2) in an urban
`environment, (3) in a suburban environment, or (4) on an open highway. Ih_is .
`
`classification is not based on a determined location of the vehicle but rather is a .
`
`mere guess made by looking’ at the speed of the vehicle. Specifically, if the speed
`is 0 mph, then the system assumes the vehicle is stopped. If the speed is within the
`range of 0-35 mph, then the system assumes the vehicle is in an urban
`environment. If the vehicle speed is in the range of 35-45 mph, then the system
`assumes the vehicle is in a suburban environment. If the speed exceeds 45 mph,
`then the system assumes the vehicle is in a highway environment.
`
`Bouchard's algorithm for the driving environment guess tells the system nothing
`about the actual location of the vehicle or the driving route of the vehicle. The
`driving environment guess could not even tell the system what city, state, or
`country the vehicle was located in when specific driving events occurred, Q
`alone what driving route the vehicle traveled. Bouchard's systemtwould treat 68
`mph on a rural Texas highway the.same as 68 mph in the heart of New York City.
`Bouchard's system would not know whether the vehicle was in Texas or New
`York City when the 68 mph speed event occurred. Therefore, Bouchard's driving
`environment guess does not provide the location or driving route of the vehicle.
`However, the amount of risk (e.g., high/low accident areas) associated with a
`traveling down a rural Texas highway is likely different than the amount of risk
`associated with traveling down a busy street in the heart of New York City.
`Bouchard's system would not determine this route-based difference. Therefore,
`Applicants respectfully request the withdrawal of this rejection. (Emphasis
`added.)
`
`Note the Patent Owner’s similar arguments with regard to claims 1, 17-18, 27 and 29 discussed
`
`supra.
`
`Similarly, the Examiner does not agree. See discussion of MPEP 2258, 1., G, and claim
`
`construction set forth supra in the discussion of claim 4 again.
`
`First, Patent Owner’s remarks are narrower than the language or words of the claim
`
`I which do not require monitoring and recording the location nor driving route traveled in any
`
`specific manner with any specific accuracy/preciseness, e.g., does not require monitoring and
`
`recording the actual or determined location or route traveled (note the claim requires “driving
`
`Page 000301
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 43
`
`route data” (emphasis added) and/or with a particular sensor and/or with a certain specificity, i.e.
`
`coordinates, the city, state or country, specific road. However, attention is invited to ‘079 at‘,
`
`e.g., col. 6, lines 1-3, col. 8, lines 7-10, col. 9, lines 21-26 and 34-39 and 46-48, col. 10, lines 18-
`
`20 and 44-47 54-59, 65-67, col.
`
`1 1, lines l_-2 and 19-22, col. 27, lines 63-64, col. 29, lines 65-67
`
`A and cols. 30-32, Figures 18-19, esp. col. 30, lines 7-61, esp. 44-46, col. 31, lines 5-8 and 24-45,
`
`and claim 2. Second, ‘O79 does teach or suggest monitoring driving route data associated with a
`
`location of the vehicle, determining that the driving route data indicates an occurrence of a high
`
`risk driving location event, and computing the insurance rating for the vehicle based on the
`
`occurrence of the high risk driving location event as-claimed, see the portions of ‘079 cited supra
`
`and the portions cited in the rejection of this claim infra, i.e. monitoring driving route data
`
`associated with a location of the vehicle, see, e.g., col. 30, lines 44-46, detennining that the
`
`driving route data indicates an occurrence of a high risk driving location event, see, e.g., col. 30,
`
`lines 7-29 and 59-61 and col. 31, lines 24-45 and claims 1-2, and computing the insurance rating
`
`for the vehicle based on the occurrence of the high risk driving location event, see again, e.g.,
`
`col. 30, lines 7-29 and 59-61 and col. 31, lines 24-45 and claims 1-2, and the discussion ofclaim
`
`6 infra.
`
`Claim 41
`
`Patent Owner on pages 66-67 of the 4-6-11 response, relying on RJM, see, e.g.,
`
`paragraphs 32-35 thereof, and BV, see, e.g., paragraphs 33-39 thereof, first argues that:
`
`The proposed combination does not teach or suggest using one or more of the data
`elements to determine an insurance actuarial class associated with the vehicle, and
`using one or more of the data elements to determine a surcharge or discount to be
`applied to a base cost of insurance associated with the vehicle. Claim 41 uses the
`
`Page 000302
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 44
`
`monitored data elements for two different determinations. As one example,
`the method ofclaim -'/I may use at least some ofthe monitored data to assign the
`vehicle to an insurance actuarial class. An insurance company may use an
`insurance actuarial class to group together individuals/vehicles with the same or
`similar risk characteristics. See (Vecchioli Dec. 1] 37); (McMillan Dec. 1] 35). For
`example, all individuals/vehicles assigned to the same insurance actuarial class
`may in some systems have the same base cost of insurance. Vehicles assigned to
`a different actuarial class may have a different base cost of insurance. The method
`also uses at least some ofthe monitored data to determine Jthe driving data ofan
`individual vehicle warrants a deviation from the base cost ofinsurance associated
`with the members ofthat actuarial class, in which case a surcharge or discount
`would result._Therefore, in this example, the method of claim 41 includes a two-
`step analysis for the vehicle data: one step determines which insurance
`actuarial class is appropriate in view of the data and a second step to fine-
`tune (e.g., individualize) the cost by surcharge or discount. Neither the Office
`Action nor the references themselves teach or suggest this claimed feature.
`(Italics and bold emphasis added.)
`
`The Examiner does not agree for several reasons. See discussion of MPEP 2258, 1., G,
`
`and claim construction set forth supra in the discussion of claim 4 again.
`
`First, the words of the claim themselves do not expressly require the two step analysis as
`
`claimed, e.g. the claim does not require the class detennined have/be assigned th_e base cost to
`
`which the surcharge or discount is applied.
`
`‘
`
`Second, the Patent Owner address the analysis of the claim terminology “actuarial class”
`
`which was set forth. Attention is invited to the full paragraph bridging pages 188-189 of such
`
`action. BV, see paragraph 38, merely concludes that the Office Action interpretation is
`
`inconsistent. It is further noted that the definition of “actuarial class” i.e. “a grouping of
`
`individuals or vehicles having similar risk characteristics based on, in whole or in part, the actual
`
`monitored characteristics of the vehicle or driver”, advanced by the declarations, i.e. extrinsic
`
`evidence, and Patent Owner, see paragraphs 35 and 37 and Glossary, respectively, is not the
`
`same as that set forth iri the specification, i.e. the intrinsic record, relied upon by Patent Owner
`
`Page 000303
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`_
`
`Page 45
`
`and the declarations, see paragraphs 33 and 35 respectively, nor that set forth in respective
`
`paragraphs 32 and 34 and 33 and 36.
`
`It is further noted that the tenns “actuarial” and “class”,
`
`i.e. as used in “actuarial class”, discussed in such declarations/extrinsic evidence, see paragraphs
`
`34 and 36, respectively thereof, referring to other dictionaries (see Attachment 4 filed 4-6-11),
`
`are already set forth in the intrinsic record, see ‘97O at col. 1., lines 28 et seq. Note again the
`
`discussion of extrinsic evidence and Phillips v. AWH Corp., 415 F.3d 1303, 1330-1331 (Fed. Cir.
`
`2005) (en banc), supra in the discussion of claim 4.
`
`Finally, the definition of “insurance actuarial class” advanced by the Patent Owner and
`
`declarations when viewed in the context of the entire claim section, i.e. using one or more ofthe .
`
`one or more data elements to determine an insurance actuarial class (i.e. “a grouping of
`
`individuals or vehicles having similar risk characteristics based on, in whole or in part, the
`
`actual monitored characteristics of the vehicle or driver”) (emphasis added) associated with
`
`the vehicle is unclear/redundant/circular, i.e. sets using one or more of the one or more @
`
`elements to determine a grouping of individuals or vehicles having similar risk characteristics
`
`based on, in whole or in part, the actual monitored characteristics of the vehicle or driver or
`
`associated with the vehicle.
`
`Patent Owner finally argues on page 67 of the 4-6-11 response:
`
`Bouchard discloses monitoring driving data to determine a driver's fitness to
`operate a vehicle. To determine the driver's current fitness to operate a vehicle,
`Bouchard compares the driver's performance over a recent and relatively short
`period of time to the personalized performance standard based on past driving
`data of the driver. Bouchard does not teach or suggest a two-steg QI'0C€SS where
`some at the monitored data is used to determine an insurance actuarial class and
`other monitored data is used to determine a surcharge or discount. The other
`cited references carmot overcome the shortcomings of Bouchard because they do
`not disclose the claimed two-step use of the monitored data either. For example,
`Kosaka uses the monitored data to debit an amount of money from a prepaid
`
`-
`
`Page 000304
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`i
`
`Page 46
`
`. balance, but Kosaka does not disclose both (1) determining an insurance actuarial
`class through use of some of the monitored driving data, and (2) determining a
`surcharge or discount through use of some of the monitored driving data. Kosaka
`does not disclose how its system sets the amount of money placed into the prepaid
`balance monetary file. It could just be selected by the user, and not based on any
`insurance actuarial class system that considers monitored driving data. All three
`cited references‘ are silent on the issue of determining an insurance actuarial class
`based on monitored driving data. Therefore, Applicants respectfully request the
`withdrawal of this rejection. (Italics and bold emphasis added.)
`
`See also paragraphs 38-39 of BV.
`
`However, in light of the discussion of this claim supra neither the Patent Owner’s
`
`arguments nor BV at paragraphs 38-39 are persuasive with regard to the teachings of the prior art
`
`since, e.g. they do not analyze the actual words of the claim, see “First...” supra, nor the words
`
`of the claim “insurance actuarial class” as interpreted in light of the specification, i.e. the
`
`interpretations set forth on pages 188-189 of the non-final Office Action. Attention is again
`
`invited to the rejection of such claim infra.
`
`Claim 42
`
`Patent Owner on pages 67-68 of the 4-6-11 response also argues that “[t]he proposed
`
`combination does not teach or suggest grouping speed data of the vehicle in combination with a
`
`location associated with the speed data in a log of vehicle speed for that location.” Specifically,
`
`Patent Owner first argues “[b]ecause the Office Action has not addressed each of the specific
`
`language of claim 42, the Office Action has not established a primafacie case of obviousness
`37
`
`against the claim.
`
`Examiner does not agree. See page 190 of the non—final Office Action.
`
`On pages 68-70 of the 4-6-1 1 response, Patent Owner further argues:
`
`Page 000305
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 47
`
`'
`
`Claim 42 groups a speed data in combination with a location ofthe vehicle
`associated with the speed data....Neither the Office Action nor the references
`themselves teach or suggest this claimed feature. _
`
`The Office Action relies on step 180] of Figure 18 and the associated portion of
`the specification (column 30, lines 7-18) as showing an alleged "location of the
`vehicle." ...This classification is not based on a determined location ofthe
`
`vehicle, but rather is a mere guess made by looking at the speed of the vehicle. . ..
`(Emphasis added.)
`
`Second, not only is Bouchard's guess inaccurate, it tells the system nothing about
`the actual location of the vehicle. The driving environment guess could not even
`tell the system what city, state, or country the vehicle was located in when
`specific driving events occurred.
`Therefore, Bouchard's driving environment
`guess does not provide the location of the vehicle. (Emphasis added.)
`
`Even if the Office Action views Bouchard's driving environment guess (or any
`other alleged location-based disclosure in Bouchard or the other references) as
`being the claimed location of the vehicle, the proposed combination still does not
`teach or suggest gouging in a log of vehicle sgeed {or the location a speed data
`in combination with the driving environment associated with that sgeed data.
`Bouchard does not teach such a grouping. Specifically, Bouchard does not teach
`or suggest any connection or link between a recorded speed event and the
`recorded location of the vehicle in a corresponding log such that the system would
`know the location where the speed event occurred.
`(Italics emphasis added.)
`I
`
`Note the claim language of claim 42 with regard to that of claim 1 last section. Note also the
`
`Patent Owner’s arguments are substantially the same as those set forth with regard to claim 1
`
`supra. Note also the discussion of claims 17-18, 27, 29 and 34 supra
`
`Therefore, and for the same reasons as set forth supra with respect to at least claim 1, the
`
`Examiner does not agree.
`
`Page 000306
`
`

`
`Application/Control Number: 90/Ol 1,252
`Art Unit: 3992
`
`Claims 44-50
`
`Page 48
`
`Patent Owner argues on pages 70-71 of the 4-6-1 1 response, relying on RJM, see, e.g.,
`
`paragraphs 32-35, and BV, see, eg, paragraphs 33-39, that:
`
`The proposed combination does not teach or suggest determining an insurance
`actuarial class based on the monitored driving data. An insurance company may
`use an insurance actuarial class to group together individuals/vehicles with the
`same or similar risk characteristics. See (Vecchioli Dec. 1] 37); (McMillan Dec. 11
`35). For example, all individuals/vehicles assigned to the same insurance actuarial
`class may in some systems have the same base cost of insurance. Vehicles
`assigned to a different actuarial class may have a different base cost of insurance.
`
`Bouchard does not disclose determining an insurance actuarial class. Bouchard is
`silent on insurance features. Rather, Bouchard compares the current performance
`of a driver to the past performance of that driver to determine whether the driver's
`performance has deteriorated enough to warrant a driver notification or vehicle
`shutdown. The Office Action has not shown how Kosaka or Black Magic could
`overcome the deficiencies of Bouchard on the issue of determining an insurance
`actuarial class based on monitored driving data. None of the cited references
`disclose determining an insurance actuarial class based on the monitored driving
`data generally, or specific driving data such as a measured driving time of the
`vehicle in high risk locations (claim 45) or speed limit observation data associated
`with a location of the vehicle (claim 48). Therefore, Applicants respectfully
`request the withdrawal of this rejection.
`
`Note Patent Owner’s similar arguments with regard to claim 41 supra.
`
`Therefore, and for the same reasons as set forth supra with respect to at least claim 41,
`
`the Examiner does not agree.
`
`Claims 71-73
`
`Patent Owner argues on page 71 of the 4-6-1 1 response that:
`
`With respect to claims 71-73, none of the cited references disclose or suggest
`generating insurance actuarial classes based on the monitored driving data or
`consolidating group data values with insurance actuarial classes. See (Vecchioli
`Dec. 1] 37); (McMillan Dec. 1] 35). For example, claim 73 is allowable because the
`proposed combination does not teach or suggest generating a plurality of
`
`Page 000307
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`~
`
`«
`
`-
`
`Page 49
`
`insurance actuarial classes based at least in part on an aggregation of data
`elements representing actual driving characteristics of vehicles and human actions
`that were previously extracted and stored from a plurality of in-vehicle sensors.
`The Office Action rejects this feature by pointing to its rejections of claims 71 and
`72. However, none of those claims include the same limitations as claim 73.
`
`Because the Office Action has not addressed the recited limitations of claim 73
`
`the Office Action has not established a Qrima tacie case of obviousness against
`claim 73. (Emphasis added.)
`
`The Examiner does not agree for several reasons. With respect to claims 71-72, such
`
`arguments are narrower than the claim language, e.g., “insurance actuarial class”, and/or the
`
`prior art rejections addressing such claim language, see, e.g., not only the prior art rejections of
`
`claims 71-72 infra but also the discussion of claims 41 and 44-50 both infra and supra. With
`
`regard to claim 73, such remarks are narrower than the claim language addressed in the non-final
`
`Office Action which language was amended in the 4-6-11 response. With regard to claim 73 as
`
`amended 4-6-11, see not only the prior art rejection of such claim infra addressing such amended
`
`claim language but also the discussion of the claim language “insurance actuarial class” and
`
`claims 41, 44-50 and 71-72 both infra and supra.
`
`Secondm Considerations:
`
`Patent Owner’s arguments on pages 133-134, including Attachment 5 also filed 4-6-1 1,
`
`i.e. EMB “Usage-based Insurance”, have been considered but are deemed not persuasive.
`
`Initially it is noted that the arguments by Patent Owner’s representative of secondary
`
`considerations, e.g. long-felt but unresolved need, are not presented in declaratory form.
`
`Regardless, a nexus between such arguments/evidence, including the Attachment 5, i.e. the 2009
`
`document, and the claimed invention has not been established, see MPEP 716.01(b) and 2145
`
`Page 000308
`
`

`
`Application/Control Number: 90/011,252
`Art Unit: 3992
`
`Page 50
`
`(i.e., “However, to be entitled to substantial weight, the applicant should establish a nexus
`
`between the rebuttal evidence and the claimed invention, i.e., objective evidence of
`
`nonobviousness must be attributable to the claimed invention. The Federal Circuit has
`
`‘acknowledged that applicant bears the burden of establishing nexus” and “Additionally, the
`
`evidence must be reasonably commensurate in scope with the claimed invention.”) (Note the
`
`Attachment 5 document while referring to Progressive patents, does not specifically identify the
`
`patent numbers and additionally refers to “Perez patent” but also does not provide the patent
`
`number thereof), nor have the factors pertaining to relevance of long-felt need and failure of
`
`others to the issue of obviousness being addressed, see MPEP 716.04. Furthermore as set forth
`
`in “Background” supra, the industry literature, i.e. ‘079 and Black Magic, do not demonstrate
`
`“long-felt but unresolved need” nor lack of want of technical know-how (i.e. if anything they
`
`illustrate lack of interest or lack of appreciation of an inventions potential or marketability, see,
`
`esp., Black Magic). Furthermore, industry literature, i.e. ‘868, of record was not even addressed
`
`in such Background.
`
`35 USC 112 Rejectionszi
`
`Patent Owner’s arguments on pages 71-106 with regard to the rejections under 35 USC
`
`112, second paragraph, have been considered but are either deemed moot in that the issue argued
`
`has not been reraised due to the amendments to the claims, e.g. the terminology “processor”
`
`removed from claims 16-41, 44-51, 56-57, 61 and 66-69, or are deemed not persuasive since the
`
`claims have not been amended to overcome the issues raised in the non-final Office Action, e.g.
`
`claims 17 and 18 have not been amended to clarify how many times the selected data elements
`
`Page 000309
`
`

`
`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 51
`
`are stored at a minimum, the terminology of claims 38-40, e.g., “an insurance premium” and
`
`“insurance cost”, and claim 65, e.g. “initial operator profile” and “initial insured profile” has not
`
`been clarified, or the amendments that were made raise new issues, e.g. see discussion of claim
`
`16. Finally it is noted with regard to Patent Owner’s argument/note with regard to each
`
`addressed claim (e.g. “Regarding the Office Action's comparison of the claim language with the
`
`specification language, Applicant notes that ‘[t]here is no requirement that the words in the claim
`
`must match those used in the specification disclosure.’ M.P.E.P. § 2173.05(e)”) that the non—final
`
`Office Action did not require matching 115 in the claims, i.e. narrower than the rejections.
`
`Furthennore, attention is also invited to MPEP 608.0l(o), i.e.
`
`Usually the terminology of the original claims follows the nomenclature of the
`specification, but sometimes in amending the claims or in adding new claims, new
`tenns are introduced that do not appear in the specification. The use of a
`confusing variety of tenns for the same thing should not be permitted. New
`claims and amendments to the claims already in the application should be
`scrutinized not only for new matter but also for new terminology. While an
`applicant is not limited to the nomenclature used in the application as filed, he or
`she should make appropriate amendment of the specification whenever this
`nomenclature is departed from by amendment of the claims so as to have clear
`support or antecedent basis in the specification for the new terms appearing in the
`claims. This is necessary in order to insure certainty in construing the claims in
`the light of the specification...” (emphasis added)
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`and 37 CFR 1.75(d)(l).
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`Claim Rejections-Original Patent Claims
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`4. The text of those sections of Title 35, U.S. Code not included in this action can be
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`found in a prior Office action.
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`Page 000310
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`

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`Application/Control Number: 90/01 1,252
`Art Unit: 3992
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`Claim Rejections - 35 USC§102
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`Page 52
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`5. Claims 4-5 are rejected under 35 U.S.C. 102(b) as being anticipated by Kosaka JP
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`‘868, citations infra referring to the English translation thereof.
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`Claims 4-5 are rejected as being anticipated by Kosaka as set forth on pages 3-23 of the
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`3-7-2011 Office Action which is hereby incorporated into this rejection by reference.
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`Claim Rejections - 35 USC § 103
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`6. Claims 1-3 and 6-15 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Bouchard ‘079 in view of Kosaka ‘686 and Black Magic.
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`Claims 1-3 and 6-15 are rejected as being unpatentable over Bouchard ‘079 in view of
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`Kosaka ‘686 and Black Magic as set forth on pages 24-75 of the 3-7-2011 Office Action which
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`is hereby incorporated into this rejection by reference.
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`Claim Rejections-Added Claims
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`Claim Rejections - 35 USC § 112
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`7. Claims 16-50, 56-75 and 78-80 are rejected under 35 U.S.C. 112, second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the
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`subject matter which applicant regards as the invention.
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`Claim 16
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`This claim also requires the step of analyzing, grouping and storing according to claim 6,
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`(i.e. “analyzing, grouping, and storing th_e one or more data elements as group data values in a
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`Page 000311
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`

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`Application/Control Number: 90/01 1,252
`Art Unit: 3992
`
`Page 53
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`first memory related to a predetermined group of elements” (emphasis added) (Note also the
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`discussion of the interpretation of such claim language with regard to claim 6 supra)) to comprise
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`the steps of determining that th_e one or more data elements have a preselected relationship to
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`a predetermined safety standard; and recording @ one or more data elements in t_h_efirst
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`memory in response to determining that th_e one or_ more data elements have th_e preselected
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`relationship to the safety standard. First, this claim is still unclear. The analyzing step of
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`claim 6 requires the analyzing, grouping and storing of all data elements as group data values in
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`a first memory related to a predetermined group of elements. This claim requires a
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`determination and recording of all data elements as group data values in a first memory related to
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`a safety standard. Are the analyzing of claim 6 and determination of this claim one and the
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`same? Are the grouping and recording of this claim and claim 6 one and the same, i.e. are the
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`relation to a predetermined group of elements and the preselected relationship to the safety
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`standard one and the same? In other words, at a minimum how many times are the data elements
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`analyzed/determined, grouped and stored in the first memory at a minimum, i.e. once or twice?
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`Second, Patent Owner continues to rely upon, e.g., col. 3, line 61 to col. 4, line 15, col. 8, lines
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`39-52, col. 12, lines 7-25 of the ‘970 Patent for support, see page 107 of the 4-6-11 amendment.
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`Note again 37 CFR 1.530(e). Such portions of the ‘97O Patent Q describe determining whether
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`one or more data elements, specifically raw data elements, have a preselected relationship to a
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`predetermined safety standard, and recording select ones of the one or more data elements into a
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`database in response to determining that the select ones of the one or more data elements have
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`the preselected relationship to the safety standard but Qiot describe such determining and
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`recording as part of a step of analyzing, grouping and storing of a method as claimed in claim 6.
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`Page 000312
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`

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`Application/Control Number: 90/01 1,252
`Art Unit: 3992
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`Page 54
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`Note with regard to the clarity/consistency discussion supra th