CERTIFICATE OF EFS FILING UNDER 37 CFR §1.8
`I hereby certify that this correspondence is being electronically transmitted to the United States Patent and Trademark
`Office, Commissioner for Patents, via the EFS pursuant to 37 CFR §1.8 on the below date:
`
`
`
`Date: Januam11 2012
`
`Name: James A. Collins
`
`Signature: Names A. Collins!
`
`BRINKS
`
`H 0 F E R
`G I L S O N
`
`8‘ L I O N E
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Appln. of: Raymond S. Ling et al.
`
`—Appln. No.:
`
`12/132,487
`
`Examiner: Robert R. Niquette
`
`Filed:
`
`For:
`
`June 3, 2008
`
`Art Unit:
`
`3695
`
`VEHICLE MONITORING SYSTEM
`
`Conf. No.2 7812
`
`Attorney Docket No.:
`
`12654/42
`
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`Attached islarez
`
`TRANSMITTAL
`
`IX!
`
`Transmittal; Request to Correct of Inventorship Under 37 C.F.R. § 1.48; Statement Under 35 U.S.C. § 116 and
`37 C.F.R. 1.48(a); Declaration for Patent Application; Statement Under 37 CFR 3.73(b); and Assignment .
`Fee calculation:
`
`El
`
`I]
`
`I:I
`IX
`El
`
`No additional fee is required.
`
`Small Entity.
`
`An extension fee in an amount of $___ for a ___-_ month extension of time under 37 CFR § 1.136(a).
`A petition or processing fee in an amount of $1_?»_CJ.@ under 37 CFR § 1.17(i).
`An additional filing fee has been calculated as shown below:
`
`Small Enti
`
`
`Not a Small Entit
`
`
`
`Present
`Extra
`
`
`
`
`
`
`
`Claims Remaining
`Highest No.
`After Amendment
`Previousl Paid For
`Total @-
`@‘
`First Presentation of Multile De. Claim
`
`
`
`
`
`
`Fee payment:
`
`PX!
`
`I]
`
`X
`
`
`Please charge Deposit Account No. 23-1925 in the amount of $130.00 for Re uest to Correct of lnventorshi
`
`.
`
`Payment by credit card in the amount of $
`
`(Form PTO-2038 is attached).
`
`The Director is hereby authorized to charge payment of any additional filing fees required under 37 CFR § 1.16
`and any patent application processing fees under 37 CFR § 1.17 associated with this paper (including any
`extension fee required to ensure that this paper is timely tiled), or to credit any overpayment,
`to Deposit
`Account No. 23-1925.
`
`January 11, 2012
`Date
`
`Respectfully submitted,
`
`/James A. Collinsl
`James A. Collins (Reg. No. 43,557)
`
`BRINKS
`HOFER
`GILSON
`ELIONE
`
`BRINKS HOFER GILSON & LIONE
`NBC Tower — Suite 3600, 455 N. Cityfront Plaza Drive, Chicago, IL 60611-5599
`
`Page 000100
`
`

`
`-I hereby certify that this correspondence is being
`electronically transmitted to the United States Patent and
`Trademark Office, Commissioner for Patents, via the EFS
`pursuant to 37 CFR § 1.8.
`
`/James A. Collins]
`
`James A. Collins, Reg. No. 43,557
`
`January 11, 2012
`Date of Signature & Date of Transmission
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Appln. of: Ling et al.
`
`Appln. No.:
`
`12/132,487
`
`Examiner: Robert R. Niquette
`
`Filed:
`
`For:
`
`June 3, 2008
`
`Art Unit:
`
`3695
`
`Vehicle Monitoring System
`
`Conf. No.: 7812
`
` Attorne Docket No:
`12654-42
`
`REQUEST TO CORRECT OF INVENTORSHIP UNDER 37 C.F.R. § 1.48
`
`Commissioner for Patents
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`Progressive Casualty Insurance Company (hereinafter “ProgressiVe”) by and through
`
`the undersigned counsel, hereby submits this request to correct inventorship for the above
`
`referenced application under 37 C.F.R. § 1.48. The requirements of section 37 C.F.R. § 1.48
`
`are set forth below.
`
`Page 000101
`
`

`
`App. No. 12/132,487
`
`Case No. 12654-42
`
`(1)
`
`It is requested that Robert John McMillan be added as an inventor to the above
`
`referenced application.
`
`(2)
`
`A statement from Robert John McMillan stating that the error in inventorship
`
`occurred without deceptive intent on his part and his executed oath is submitted
`
`herewith.
`
`(3)
`
`Re-executed oaths from actual inventors Raymond Scott Ling, Richard Ashton
`
`Hutchinson, Wilbert John Steigerwald, William Andrew Say, Patrick Lawrence
`
`O’Ma1ley, Dane Allen Shrallow, and William Curtis Everett are submitted herewith.
`
`(4)
`
`The Director is hereby authorized to charge payment of the processing fee set forth in
`
`§ 1.17(i) associated with this request (including any extension fee required to ensure
`
`that this paper is timely filed), or to credit any overpayment to Deposit Account No.
`
`23 - 1 925.
`
`(5)
`
`On August 8, 2008, assignments from Raymond Scott Ling, Richard Ashton
`
`Hutchinson, Wilbert John Steigerwald, William Andrew Say, Patrick Lawrence
`
`O’Malley, Dane Allen Shrallow, and William Curtis Everett were recorded in the
`
`United States Patent and Trademark Office at reel 021360 and frame 0881. On
`
`January 10, 2012, an assignment from Robert John McMillan was submitted to the
`
`United States Patent and Trademark Office (a copy is attached to this submission with
`
`the 37 C.F.R. § 3.73(b) assignee statement).
`
`(6)
`
`The assignee, Progressive, hereby consents to the addition of Robert John McMillan,
`
`as an inventor to the above reference application by submitting a Statement Under 37
`
`C.F.R. § 3.73(b), attached to this request.
`
`Respectfully submitted,
`
`/James A. Collins/
`
`BRJNKS HOFER GILSON & LIONE
`
`James A. Collins
`
`P.O. BOX 10395
`CHICAGO, ILLINOIS 60610
`(312) 321-4200
`
`Registration No. 43,557
`Attorney for Applicant
`
`- 2 -
`
`Page 000102
`
`

`
`Attorney Docket No. 12654l42
`
`I hereby certify that this correspondence is being
`electronically transmitted to the United States Patent and
`Trademark Office, Commissioner for Patents, via the EFS
`pursuant to 37 CFR § 1.8.
`
`lJames A. Collins/
`
`James A. Collins, Reg. No. 43,557
`
`Date of Signature & Date of Transmission
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`Attorney Docket No. 12654142
`
`In re Application of:
`Raymond S. Ling et al.
`
`Serial Number:
`
`12/132,487
`
`Title:
`
`Vehicle Monitoring System
`
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Examiner: Robert Niquette
`
`Group Art Unit: 3695
`
`\./\4~y&/\/\yé\./
`
`STATEMENT UNDER 35 U.S.C. § 116 AND 37 C.F.R. 1.48(a)
`
`I, Robert John McMillan. hereby declare that I am an inventor of the above mentioned
`
`patent application. The inventorship error occurred without deceptive intention on my
`
`part.
`
`I hereby declare that all statements made herein of my own knowledge are true, and
`
`that all statements made on information and belief are believed to be true; and further, -
`
`that these statements are made with the knowledge that willful false statements, and the
`
`like so made, are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001,
`
`Page 000103
`
`

`
`and that such willful
`
`false statements may jeopardize the validity of the above
`
`mentioned patent application or any patent issuing thereon.
`
`lol~30~J,oz/
`Date
`
`Signature
`
`5 \
`
`BRINKS
`HOFER
`GILSDN
`ILIONE
`
`Page 000104
`
`

`
`Case No. 12654/'42
`
`As a below named inventor, I hereby declare that:
`
`DECLARATION FOR PATENT APPLICATION
`
`My residence, post office address and citizenship are as stated below next to my name.
`I believe I am the original, first and sole inventor (if only one name is listed below) or an original. first and joint inventor (if
`plural names are listed below) of the subject matter which is claimed and for which a patent is sought on the invention
`entitled, VEHICLE MONITORING SYSTEM. the specification of which:
`E]
`is attached hereto.
`
`
`as Application Serial No. 12/132 487
`June 3. 2008
`was filed on
`IE
`f___ ____y__________
`___
`(if applicable).
`and was amended on
`_
`D
`I hereby state that I have reviewed and understand the contents of the above-identified specification, including the claims. as
`amended by any amendment referred to above.
`
`I acknowledge the duty to disclose information which is material to the patentability as defined in Title 37. Code of Federal
`Regulations, § l.56(a).
`
`I hereby claim foreign priority benefits under 35 U.S.C. § 119(a)-(d) or § 365(b) of any foreign application(s) for patent or
`inventor's certificate or § 365(a) of any PCT lntemational application which designated at least one country other than the
`United States.
`listed below and have also identified below, by checking the box. any foreign application for patent or
`inventor's certificate. or PCT International application having a filing date before that of the application on which priority is
`claimed:
`
`Prior Foreign Agplicationts)
`
`
`(Day/Month/Year Filed)
`(Country)
`(Number)
`I hereby claim the benefit under 35 U.S.C. § 119(e) of any United States provisional application(s) listed below:
`
`Priority Claimed
`D
`E]
`Yes
`No
`
`(Application Serial No.)
`
`(Filing Date)
`
`I hereby claim the benefit under 35 U.S.C. § 120 of any United States application(s). or § 365(c) of any PCT lntemational
`application designating the United States,
`listed below and. insofar as the subject matter of each of the claims of this
`application is not disclosed in the prior United States or PCT lntemational application in the manner provided by the first
`paragraph of 35 U.S.C. § 112, l acknowledge the duty to disclose information which is material to patentability as defined in
`37 CFR § 1.56 which became available between the filing date of the prior application and the national or PCT lntemational
`filing date of this application:
`
`10/764,076
`(Application Serial No.)
`
`O9/57l.650
`(Application Serial No.)
`
`09/135.034
`(Application Serial No.)
`
`
`January 23, 2004
`(Filing Date)
`
`pending
`(Status-patented, pending, abandoned)-
`
`May 15. 2000
`(Filing Date)
`
`patented
`(Status-patented, pending. abandoned)
`
`
`August 17. 1998
`(Filing Date)
`
`patented
`(Status-patented. pending, abandoned)
`
`patented
`January 20, 1996
`08/592,958
`(Status-patented. pending. abandoned)
`(Filing Date)
`(Application Serial No.)
`I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information
`and belief are believed to be true; and further that these statements were made with the knowledge that willful false
`statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the
`United States Code and that such willful false statements may _ieopardize the validity of the application or any patent issued
`thereon.
`
`Page ;
`
`Page 000105
`
`

`
`Case N 0. 12654/42
`
`
`
`IZ-2'5’-1‘u’.‘H
`
`
`
`Date:
`
`Richard Ashton Hutchinson
` .____
`USA
`
`
`
`Wilbert John Steigerwald Ill
`
`USA
`
`
`
`Date:
`
`
`
`William Andrew Say
`
` _.__
`USA
`
`
`
`Date:
`
`
`
`Date:
`
`Patrick Lawrence O’Ma11ey
`
`
`
`B93, Q_ 5; I 2359:;
`3116
`D
`Allen Shraliow
`
`mm:
`
`‘L 7% 707‘
`
`3,” Q4
`
`
`Date:
`
`William Curtis Everett
`
`
`USA
`
` ._—
`
`Page 2
`
`Page 000106
`
`Inventor‘s Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`lnventor‘s Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Officc Address
`
`

`
`12/23/2011 14.41 FAX
`
`PROGRESSIVE CA8 INS C0
`
`002/002
`
`"'5.
`
`Case No. 12654/42
`
`Date
`
`Inventor's Signature
`Full name
`Residence (city. state)
`Citizenship
`Post Office Address
`
`Inventors Si gnarure
`Full name
`Residence (city, state}
`Citizenship
`Post Office Address
`
`inventors Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`P051 Office Address
`
`Inventor's: Signature
`Full name
`Residence (city. state)
`Citizenship
`Post Office Address
`
`Inventor‘: Signamre
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city. state)
`Citizenship
`Post Office Address
`
`Raxmond Scott Ling
`
`USA
`
`‘<"*"“""
`rd Ashton Hutchinson
`
`R
`
`Date:
`
`\"— _ 1:‘ ' 1“\\
`
`C-I-H-'H-‘-'2-A-C0—\r—* flaws ca\-‘n=----
`
`use.
`'.'-Ex;
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`r-‘a-
`
`_\\:_~o~.-_.‘n——*-
`
`-ax-<~—€--:~<"
`
`:
`M
`,
`
`_
`
`Date:
`
`
`
`Wilbert John Sleigerwald lll
`
`USA
`
` Date.
`
`William Andrew Sax
`
`USA
`
`_
`
`
`
`Patrick Luwrcncl: 0‘MalJez
`
`Date;
`
` Date:
`Dane Allen Shrallow
`
`USA
`
`
` Date:
`William Curtis Everett
`
`USA
`
`Page 2
`
`Page 000107
`
`

`
`01/11/2012 12:04 FAX
`
`002/002
`
`Case No. 12654/42
`
`
`
`Raymond Scott Ling
`
`Date:
`
`USA
`
`
`Date:
`
`
`
`Richard Ashton Hutchinson
`
`USA
`
`
`
`Patrick Lawrence 0’Ma1ley
` —-:*_jj
`
` —e
`
`
`Dane Allen Shrallow
`
`
`William Curtis Everett
`
`Page 2
`
`Page 000108
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Ofiice Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`Residence (city, state)
`Citizenship
`Post Office Address
`
`

`
`01/‘I0/201219108 FAX
`12f22/2011 10103 FAX
`
`440 335 3730
`
`PROGRESSIVE CORP LAW
`PROGRESSIVE C88 INS CD
`
`002/002
`oos/oos
`
`Case No. 12654142
`
`__$_ Dale: Ti
`Raxgmd Scan Ling
`USA
`
`
`Richard Ashton Hutchinson
`
`Dnte:
`
`
`
`USA
`
`Date:
`
`Wilbert John Slcigerwald III
`
`
`
`USA
`
`Date:
`
`William Andrew Sag
`USIA
`
`
`
`E 2
`Pan-ick Lawrence 0'
`E: Z/-Zol
`
`
`Date;
`
`a
`
`Date:
`Dana Allen Shrallow
`
`USA
`
`Date:
`Willlmn Curtis Everett
`
`USA
`
`
`Page 2
`
`Page 000109
`
`Inventor's Signature
`Full nurnc
`Residence (city. slate)
`Citizenship
`Post Offic: Addreee
`
`Inventor‘.-x Signature
`Full name
`'
`Rmidenee (city. state)
`Citizenship
`Post Office Address
`
`Inventor’: Signmunc
`Full name
`Residence (city, slate)
`Gtizcnship
`Post 01351:: Address
`
`Inventor's Signature
`Full name
`Residence (city, smg)
`Ciliauenship
`Post Office Add:-egg
`
`lnvcmorn Signature
`Fu11 name
`Residence (any, mm)
`Citizenship
`Post Office Address
`
`lnvenmrs signature
`Full name
`Rcsidcnuc (city, state)
`Citizenship
`Post Office Address
`
`lnveumfs Slgnnmre
`Full name
`
`Re-aidcmn: (I:iLy, state)
`Ci tizenship
`Post Office Adams
`
`

`
`Inventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Ofiice Address
`
`Inventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Case No. 12654142
`
`Date:
`
`Raflond Scou Lino:
`
`USA
`
`
`Richard Ashton Hutchinson
`
`USA
`
`
`Date:
`
`Date:
`
`Wilbert John Steigerwald lll
`
`USA
`
`
`Inventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Ofiice Address
`
`Date:
`
`William Andrew Sax
`
`USA
`
`
`Date :
`
`
`
`Patrick Lawrence O’Mallez
`
`.—?——
`
`Inventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Office Address
`
`Inventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Office Address
`
`
`Dane Allen Shrallow
`
`USA
`
`
`lnventor's Signature
`Full name
`
`Residence (city, state)
`Citizenship
`Post Office Address
`
`"C
`l?.fZ?.(1(
`Date:
`William Curtis Everett
`
`A
`\ M
`Lia
`I 0
`
`USA
`uTs
`
`Page 000110
`
`

`
`Case No. 12654/42
`
`Inventor's Signature
`Full name
`
`Post Office Address
`
`Residence (city, state)
`Citizenship
`
`Page 3
`
`Page 000111
`
`

`
`01/11/2012 15:17 FAX
`
`440 395 3790
`
`PROGRESSIVE CORP Law
`
`002/003
`
`PTDISBIQG (07-09)
`Approved for gee through 0173112012. OMB 0651-0031
`U.8. Patent and Trademark Oflice; u_s_ DEPARTMENT OF COMMERCE
`under 9-,, Pgpgfwafi Raauqjon Au gf19%_ no pgrgqng are Lluifed to mspona to a lmllflfllfln of lntormarlon unless It dla I = a valid ONE mnlml mlnbar.
`
`STATEMENT UNDER 31 QFR 3.73(b|
`
`Applicant/Patent Owner: U09 9‘ 3'-
`Application No.lPalent No.: 121132-487 Jo Filedllssua Date: June 3. 2008
`Titled:
`_
`_
`_
`Vehicle Monitoring System
`
`Progressive Casualty Insurance Company
`(Mama of Mflgneo)
`states that it is:
`
`I a
`
`Corporation
`(Typo cfneslgnae. e.g.. mrpomtlnrl, partnership. unhrereity, oavomrncht agency. etc
`
`
`
`1_
`
`2.
`
`the aasignee at the entire right. title. and interest in:
`
`|:]
`
`an aselgnee of less than the ntire right. title. and interest in
`(The extent (by parentage) of its ownership interest is
`
`_ %l: or
`
`3. D the assignae of an undivided interest in the entirety of (a complete assignment from one of the joint inventors was made)
`the patent appilcationrpalent identified above. by virtue of either:
`
`A. D An assignment from the inventor(3) of the patent applitionlpatent identified above. The assignment was recorded in
`the United States Patent and Trademark Offlce at Real
`_ Frame
`, or for which a
`copy therefore is attached.
`
`OR
`
`B.
`
`A chain of title from the invantor(s), of the patent application/patent identified above, to the current assignee as follows:
`1. Fmm; Ling, Hutchinson. Steigerwald. Say, O'MaIIey,
`10, Progressive Casualty Insurance Company
`The document was recorded in the United States Patent and Trademark Office at
`
`Real 021360
`
`_
`
`Frame 0881
`
`.
`
`or for which a copy thereof is attached.
`
`2. From: Shrallow. Everett
`
`To: Progressive Casualty insurance Company
`
`The document was recorded in the United States Patent and Trademark Olfice at
`
`Real
`
`35°
`
`. Frame . or for which a copy thereof is attached.
`
`3. From: Mcil/ilii an
`
`To: Progressive Casualty insurance Company
`
`The document was rammed in the United States Patent and Trademark Offlce at
`
`Reel
`
`,
`
`Frame
`
`,
`
`or for which a copy thereof is attached.
`
`E]
`
`Additional documents in the chain or title are listed on a supplemental sheel(s).
`
`As required by 37 CFR 3.73(t-.i)(1)(i), the documentary evidence of the chain of title from the original owner to the assignee was,
`or concurrently is being, submitted for reoorclation pursuant to 37 CFR 3.11.
`[NOTE: A separate copy (i.e., a true copy of the original assignment clocument(s)) must be submitted to Assignment Division in
`accordance with 37 CFR Part 3, to record the assignment in the records of the USPTO. E MPEP 302.03]
`
`The undersigned (whose title is supplied below) is authorized to act on behalf of the asaignee.
`gas
`3
`J
`a 3
`C
`Signature
`
`Dane A. Shrailow
`
`January.“
`Date
`
`2012
`
`Secretary
`
`Title
`V
`Printed or Typed Name
`This cerium.-. ofinfermallan to required try 37 CFR 3.730;). The information as required In onlain or retain a Dcfnflt by the pubic which is in Ila (and by the USPTO In
`process) an application. Confldenlidity is governed by 36 U.$.C. 122 and 3'!‘ CFR 1.11 and 1.14. This collection in eaumatad to lake 12 minutes to complete. including
`gathering, prepemg. and submitting the completed application form to the USFVTO. Tmo villi vary depending upon the Individual one. My mmmente on the amount of time
`you require in complete this form andlor suggestions for radtrdrtg this burflon. should be sent to the chief Information o-mi.-or. U3. Palanl and Trademark Otllce. LI.-S.
`ogparinunl or commerce, P_o_ am 1450, A|gxan¢fia_ VA 22313.145u_ no N01’ sewn FEES 0R COMPLETED FORMS To THIS ADDRESS. SEND To: comrnlnloner
`lar Patents. Po. Box 1450. Alexandria. VA 22313-1450.
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`llyou need assistance In carrlpleflng the (amt, call 1-800-PTO-9199 and -MISC! Option 2.
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`Page 000112
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`ASSIGNMENT
`
`Case No. 12654/42
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`WHEREAS, Robert John McMillan hereinafter called the “Assignor”, has made the
`
`invention described in the United States patent application entitled VEHICLE MONITORING
`
`SYSTEM, for a fi1l1 description of which reference is here made to an application for Letters
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`Patent of the United States filed on June 3, 2008 and assigned Application Serial No. 12/132,487
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`WHEREAS, Progressive Casualty Insurance Company, a corporation organized and
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`existing under the laws of the State of Ohio, having a place of business at 6300 Wilson Mills
`
`Road, N72, Mayfield Village, OH 44143, hereinafter called the “Assignee”, desires to acquire
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`the entire right, title and interest in and to the invention and the patent application identified
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`above, and all patents which may be obtained for said invention, as set forth below;
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`NOW, THEREFORE, in consideration of the sum of One Dollar ($1.00), and other
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`valuable and legally sufficient consideration, the receipt of which by the Assignor from the
`
`Assignee is hereby acknowledged, the Assignor has sold, assigned and transferred, and by these
`
`presents does sell, assign and transfer to the Assignee, the entire right, title and interest for the
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`United States in and to the invention and the patent application identified above, and any patents
`
`that may issue for said invention in the United States; together with the entire right, title and
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`interest in and to said invention and all patent applications and patents therefor in all countries
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`foreign to the United States, including the full right to claim for any such application all benefits
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`and priority rights under any applicable convention; together with the entire right, title and
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`interest in and to all continuations, divisions, renewals and extensions of any of the patent
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`applications and patents defined above; together with the right to recover all damages, including,
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`but not limited to, a reasonable royalty, by reason of past, present, or future infringement or any
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`other violation of patent or patent application rights; to have and to hold for the sole and
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`exclusive use and benefit of the Assignee, its successors and assigns, to the full end of the term
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`or terms for all such patents.
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`The Assignor hereby covenants and agrees, for both the Assignor and the Assignor’s
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`legal representatives, that the Assignor will assist the Assignee in the prosecution of the patent
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`application identified above; in the making and prosecution of any other patent applications that
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`the Assignee may elect to make covering the invention identified above;
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`in vesting in the
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`Page 000113
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`Assignee like exclusive title in and to all such other patent applications and patents; and in the
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`prosecution of any interference which may arise involving said invention, or any such patent
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`application or patent; and that the Assignor will execute and deliver to the Assignee any and all
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`additional papers which may be requested by the Assignee to carry out the terms of this
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`Assignment.
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`The Commissioner of Patents and Trademarks is hereby authorized and requested to issue
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`patents to the Assignee in accordance with the terms of this Assignment.
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`IN TESTIMONY WHEREOF, the Assignor has executed this agreement.
`
`DATED:
`
`4,24 as» aw//
`
`obe John McMillan
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`Page 000114
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`

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`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`12132487
`
`03-Jun-2008
`
`Title of Invention:
`
`VEHICLE MONITORING SYSTEM
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`First Named Inventor/Applicant Name:
`
`Raymond Scott Ling
`
`Attorney Docket Number:
`
`12654/42
`
`Filed as Large Entity
`
`Utility under 35 USC 1 1 1 (a) Filing Fees
`
`Basic Filing:
`
`Pages:
`
`Miscellaneous-Filing:
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`Late filing fee for oath or declaration
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`1051
`
`Patent-Appeals-and-Interference:
`
`Post-AlIowance-and-Post-Issuance:
`
`Extension-of-Time:
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`Page 000115
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`

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`Miscellaneous: M 5"3'5333)'
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`Total in USD ($)
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`130
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`Page 000116
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`

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`Electronic Acknowledgement Receipt
`
`Application Number:
`
`12132487
`
`International Application Number:
`
`Confirmation Number:
`
`7812
`
`Title of Invention:
`
`VEHICLE MONITORING SYSTEM
`
`First Named Inventor/Applicant Name:
`
`Raymond Scott Ling
`
`Customer Number:
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`10999
`
`Filer:
`
`James A. Collins/Jesus Rodriguez
`
`Receipt Date:
`
`Filing Date:
`
`11-JAN-2012
`
`03—JUN—2008
`
`Application Type:
`
`Utility under 35 USC 111(a)
`
`Payment information:
`
`Payment Type
`
`Deposit Account
`
`Payment was successfully received in RAM
`RAM confirmation Number
`
`Deposit Account
`
`Authorized User
`
`S 130
`4721
`
`231925
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.17 (Patent application and reexamination processing fees)
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`Charge any Additional Fees required under 37 C.F.R. Section 1.16 (National application filing, search, and examination fees)
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`Page 000117
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`Charge any Additional Fees required under 37 C.F.R. Section 1.19 (Document supply fees)
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`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
`
`File Listing:
`Document
`
`Number
`
`Information:
`
`Information:
`
`Warnings:
`Information:
`
`Warnings:
`
`Information:
`
`Part /.zip (if appl.)
`
`D
`
`ocumen
`
`tD
`
`t’
`'
`escrlp Ion
`
`Flle Name
`
`Miscellaneous Incoming Letter
`
`transforreqtocorinvent.PDF
`
`Request under Rule 48 correcting
`inventorship
`
`reqtocorinvent.PDF
`
`Request under Rule 48 correcting
`inventorship
`
`statementunder35usc116.PDF
`
`Oath or Declaration filed
`
`declaration.PDF
`
`Assignee showing of ownership per 37
`CFR 3.73(b).
`
`File Size(Bytes)/
`Message Digest
`45377
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`Page 000118
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe 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
`Ifa 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 ofthe application.
`
`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 clue 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 of the International Filing Date (Form PCT/R0/105) 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.
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`Page 000119
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`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I hereby certify that this correspondence is being electronically deposited with the United States Patent and Trademark Office
`through the Electronic Filing System on: Date: November 29, 2011 Name:
`Joseph S. Hanasz {Reg No. 54,720)
`
`Signature:
`
`/Joseph S. Hanaszl
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`Our Case No: 12654/42
`
`In re Application of:
`
`Ling. et al.
`
`Serial NO.I
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`Filing Date? June 3» 2008
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`For: Vehicle Monitoring System
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`Examiner: Robert R. Niquette
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`Group Art Unit:
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`Confirmation N 0.: 7812
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`\_/\/\/\_/\_/\/\/\./\_/\_/
`
`RESPONSE TO OFFICE ACTION
`
`Mail Stop Amendment
`Commis sioner for Patents
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the Non—final Office Action mailed June 29, 2011, please consider the
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`following claims and remarks.
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`Claims begin on page 2 of this paper.
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`Remarks begin on page 28 of this paper.
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`Page 000120
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`

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`Serial No. 12/132,487
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`Attorney Docket No. 12654/42
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`CLAIMS
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`1. (Withdrawn) A risk management device comprising:
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`an automotive device that provides an interface that filters data that is sent and received
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`across an in—vehicle bus by selectively acquiring vehicle data related to a level of insurable risk
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`or safety of operation, the interface acquires the selected vehicle data from one or more in-
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`vehicle sensors;
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`a memory that stores the selected vehicle data with relationship data within the vehicle that
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`establishes a connection between the selected vehicle data and one or more risk factors, safety
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`standards, or operatin g characteristics, together with a unique identifier and a user account; and
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`a wireless service provider interface that provides access to the selected vehicle data and
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`relationship data retained in the memory, where the wireless service provider interface is
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`responsive to a request to transfer the selected vehicle data and selected relationship data retained
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`in the memory to a remote server.
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`2. (Withdrawn) The risk management device of claim 1 where the wireless service
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`provider interface is compliant with a wireless transaction facilitator that throttles the
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`transmission rates across the wireless network based on an available bandwidth of the wireless
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`network.
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`3. (Withdrawn) The risk management device of claim 1 further comprising a dynamic
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`memory allocation processor that allocates a portion of the memory to retain a copy of a legacy
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`version of firmware that comprises input/output instructions when an updated firmware is
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`received through the wireless network and written to the memory, the dynamic memory
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`allocation processor de—allocates the portion of the memory when an error—free version of the
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`updated firmware is stored or installed in the risk management device.
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`4. (Withdrawn) The risk management device of claim 1 where the wireless network
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`comprises a mobile broadband wireless network that provides full data exchange mobility to two
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`or more vehicles.
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`Page 000121
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`

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`Serial No. 12/132,487
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`Attorney Docket No. 12654/42
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`5. (Withdrawn) The risk management device of claim 1 where the interface, the memory,
`
`and the wireless service provider interface are linked within a portable device.
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`6. (Withdrawn) The risk management device of claim 1 where the wireless service
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`provider interface comprises a single—chip cellular baseband processor.
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`7. (Withdrawn) The risk management device of claim 6 where the single—chip cellular
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`baseband processor is Global System for Mobile Communication compliant, Code Division
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`Multiple Access compliant, or General Packet Radio Service compliant.
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`8. (Withdrawn) The risk management device of claim 6 where the single—chip cellular
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`baseband processor is Global System for Mobile Communication compliant and General Packet
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`Radio Service compliant.
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`9. (Withdrawn) The risk management device of claim 6 where the single—chip cellular
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`baseband processor comprises integrated interface drivers that enable auxiliary components
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`comprising loudspeakers, display, and memory modules to connect directly to the single—chip.
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`10. (Withdrawn) The risk management device of claim 1 where the wireless service
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`provider interface comprises an embedded antenna element positioned adjacent to the interface
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`and the memory.
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`11. (Withdrawn) The risk management device of claim 10 where the embedded antenna
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`element comprises a circuit board element.
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`12. (Withdrawn) The risk management device of claim 1 where the wireless service
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`provider interface is further responsive to a trigger event by transmitting an alert to a third party
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`when a driving incident occurs.
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`Page 000122
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`

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`Serial No. 12/132,487
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`Attorney Docket No. 12654/42
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`13. (Withdrawn) The risk management device of claim 12 where the driving incident
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`comprises exceeding a speed threshold, traveling outside of a designated area, or a lock out
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`condition.
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`14. (Withdrawn) The risk management device of claim 13 where the wireless service
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`provider interface is further responsive to receive a communication from a third party and the
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`alert comprises a text or an aural message.
`
`15. (Withdrawn) The risk management device of claim 3 where the wireless service
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`provider interface is compliant with two or more multiple packet architectures that are
`
`automatically detected and one or more multiple packet architectures that are automatically
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`selected through two or more handshakes.
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`16. (Withdrawn) The risk management device of claim 15 where the automatic detection
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`and automatic selection includes Internet Protocol roaming that maintains connectivity as the
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`vehicle moves from a first coverage area of a selected network to a second coverage area of a
`
`second selected network.
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`17. (Withdrawn) The risk management device of claim 15 where the wireless service
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`provider interface is responsive to a monitored event—driven request to transfer the selected
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`vehicle data and selected relationship data retained in the memory to a remote server when the
`
`wireless service provider indicates the capacity to transfer data across the wireless network.
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`18. (Withdrawn) The risk management device of claim 15 where a unique identifier
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`comprises a unique identifier to the risk management devic