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`C
`
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`
`.<:.
`
`Page 000224
`
`
`
`
`
`
`

`
`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: August 12 2011
`
`Name: James A Collins
`
`Signature: /James A, Collinsl
`
`B RI N K S
`H D F E R
`
`GILSON
`
`8. L I D N E
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ex Parte
`Reexam of:
`
`Robert John McMillan et al.
`
`Reexam Appln.
`No.:
`
`90/011,252
`
`Examiner: Karin M. Reichle
`
`Filed:
`
`For:
`
`September 22, 2010
`
`MOTOR VEHICLE MONITORING SYSTEM
`FOR DETERMINING A COST OF INSURANCE
`
`Art Unit:
`
`3992
`
`Cont. No.: 4116
`
`
`
`Attorne Docket No.: 12741-32
`
`CERTIFICATE OF SERVICE
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`I hereby certify that a true copy of the foregoing INTERVIEW SUMMARY and RESPONSE TO
`OFFICE ACTION was served this August 12, 2011 by First Class United States Mail, postage
`prepaid, on:
`
`J. Steven Baughman
`Ropes & Gray LLP
`One International Place
`Boston, MA 02110
`
`August 12, 2011
`Date
`
`Respectfully submitted,
`
`/James A. Collins/
`James A. Collins (Reg. No. 43,557)
`
`_
`EBRINKS
`EHOFER
`EGILSON
`§a.LIoNE
`
`BRINKS HOFER GILSON & LIONE
`NBC Tower — Suite 3600, 455 N. Cityfront Plaza Drive, Chicago, IL 60611-5599
`
`Page 000225
`
`

`
`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
`
`Customer Number:
`
`10999
`
`Filer:
`
`James A. Collins/Claire B. Briggs
`
`Receipt Date:
`
`Filing Date:
`
`12-AUG-2011
`
`22—SEP—201 0
`
`Payment information:
`
`File Listing:
`
`Document
`
`.
`
`.
`
`File Size(Bytes)/
`
`Multi
`
`Pages
`
`fEd35
`
`Miscellaneous Incoming Letter
`
`12741-32_Trans.pdf
`
`29e2I a9ea3d0e73ed60SSbSf6bd6e8I400
`
`Information:
`
`Page 000226
`
`

`
`RespExParteOA_12741-32_08‘l
`1201 1.pdf
`
`186627
`
`92b196becbe2840b4346bccd46f5di00414
`bee3Z
`
`Multipart Description/PDF files in .zip description
`
`Document Description
`
`Trans Letter filing ofa response in a reexam
`
`Applicant Arguments/Remarks Made in an Amendment
`
`Applicant Arguments/Remarks Made in an Amendment
`
`Warnings:
`
`_
`_
`.
`_
`Applicant summary of interview with
`examin e r
`
`29945
`
`49fc9ab68af63ff4c7Sd7Scfc4292b537686b
`4%
`
`Applicant Arguments/Remarks Made in
`a n Amend ment
`
`7bff64e9e3Zed8ef41ffd7B4b6De4b332e3d
`80db
`
`Reexam Certificate of Service
`
`12741 -32_CertificateofService.
`pdf
`
`7111d368c457aeabc65ebabffeb42l2e15f1
`2573
`
`Information:
`
`Total Files Size (in bytes)
`
`2203209
`
`Page 000227
`
`

`
`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 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 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.
`
`Page 000228
`
`

`
`
`
`UNI'I'ED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box.l450 ‘
`_
`Alcxnndna. Virginia 27313-1450
`www.usp(0.gnv
`
`APPLICATION NO.
`
`90/011,252
`
`FILING DATE
`
`09/22/2010
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`6,064,970
`
`I274]-32
`
`4| I6
`
`Progressive Casualty/BHGL
`P.O. Box 10395
`Chicago, IL 60610
`
`*’*‘*’F-“NUMBER
`
`DATE MAILED: 07/25/2011
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Page 000229
`
`

`
`
`
`UNITED STATES DEPARTMENT OF COMIVHERCE
`U.S. Patent and Trademark Office
`Addie$: COMMISSIONER FOR PATENTS
`P.0.Bax145O
`Alexandria, Wrginia 22313-1450
`
`APPLICATION NO.I
`CONTROL NO.
`90/011,252
`
`FILING DATE
`
`22 September 2010
`
`FIRST NAMED INVENTORI
`PATENT IN REEXAMINATION
`6,064,970
`
`ATTORNEY DOCKET NO.
`
`12741-32
`
`Progressive Casualty/BHGL ~
`P.0. Box 10395
`Chicago.
`IL 60610
`
`‘
`
`'
`
`ART UNIT
`
`KAR'N RE"‘fH'-E
`PAPER
`
`3992
`
`20110719
`
`MAILED
`
`DATE MAILED:
`
`2 5
`
`CENTRAL REEXAMINATION UNIT
`
`Please find below andlor attached an Office communication concerning this application or
`proceeding.
`
`Commissioner for Patents
`
`PTO-90C (Rev.04-03)
`
`Karin M. Reichle
`Primary Examiner
`Art Unit: 3992
`
`Page 000230
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`,-tsxc-..
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Ornce
`P.0. B01145!)
`Alexandria. VA 22313-1450
`vmwusptogov
`
`DO NOT USE IN PALM PRINTER
`
`I
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`ROPES & GRAY LLP
`PATENT DOCKETING 39141
`
`ONE INTERNATIONAL PLACE
`
`BOSTON. MA 02110-2624
`
`MA"-ED
`
`2 5
`I
`CENTRAL REEXAMlNATl0N UNIT
`
`EX PARTE REEXAMINATION COMMUNICATIONTRANSMITTAL FORM
`
`
`
`
`
` IREEXAMINATION CONTROL NO. 90/011 252. I
`
`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 parte reexamination 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 000231
`
`

`
`Control No.
`
`Patent Under Reexamination
`
`Ex Parte Reexamination Interview Summary 90/011,252
`Examiner
`
`6.064.970
`Art Unit
`
`KARIN REICHLE
`
`3992
`
`All participants (USPTO personnel, patent owner, patent owner's representative):
`
`‘
`
`(1) Karin M. Reichle Jessica Harrison Zoila Cabrera
`
`(3) Raymond Ling.
`
`(2) James A. Collins.
`
`(4)
`
`Date of Interview: 18 July 201 1
`
`b)I:] Video Conference
`Type: a)[] Telephonic
`c)IZ Personal (copy given to: 1)|:] patent owner
`
`2)I:I patent owner's representative)
`
`Exhibit shown or demonstration conducted:
`If Yes, brief description:
`
`d)E] Yes
`
`e)E No.
`
`Agreement with respect to the claims f)|:] was reached. g)E was not reached. h)l:] N/A.
`Any other agreement(s) are set forth below under "Description of the general nature of what was agreed to..."
`
`C|aim(s) discussed: 1 2 4-6 and 70.
`
`Identification of prior art discussed: Kosaka, Black Magic and Bouchard et al.
`
`Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
`The guestions and grogosed amendments set forth in the submission entitled "Brief Outline for Interview" filed in the
`record on July 12, 2011 were discussed. The differences between the grior art and the claimed invention and between
`the grior art and the invention as understood was discussed. No agreement as to confirmation of gatentability or
`sgecific claim language was reached.
`'
`
`(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the claims
`patentable, if available, must be attached. Also, where no copy of the amendments that would render the claims
`patentable is available, a summary thereof must be attached.)
`
`A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION MUST INCLUDE PATENT OWNER’S
`
`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. (See MPEP § 2281). IF A RESPONSE TO THE
`LAST OFFICE ACTION HAS ALREADY BEEN FILED, THEN PATENT OWNER IS GIVEN ONE MONTH FROM THIS
`INTERVIEW DATE TO PROVIDE THE MANDATORY STATEMENT OF THE SUBSTANCE OF THE INTERVIEW
`
`(37 CFR 1.560(b)). THE REQUIREMENT FOR PATENT OWNER'S STATEMENT CAN NOT BE WAIVED.
`EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(6).
`
`/Karin M. Reichlel
`
`Primary Examiner, Art Unit 3992
`
` cc: Requester (if third party requester)
`
`U.S. Patent and Trademark Office
`PTOL-474 (Rev. 04-01)
`
`Ex Parte Reexamination Interview Summary
`
`Paper No. 20110719
`
`Page 000232
`
`

`
`CERTIFICATE OF EFS FILING UNDER 37 CFR §1.E!
`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:
`
`
`
`Dale: July 12 2011
`
`Name: James A. Collins Reg. No.43 557
`
`Signature: IJames A.Col|ins/
`
`BRINKS
`
`H 0 F E R
`G I L S 0 N
`
`& L I 0 N E
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Re-Examination of: Robert J. McMillan et al.
`
`Re-Examination Appl. No.: 90/011,252
`
`Filing Date: September 22, 2010
`
`u.s. Patent No.: 6,064,970
`
`Exammefi Karm M‘ ReI°hIe
`
`G'°“P A“ U“"3 3992
`
`For:
`
`MOTOR VEHICLE MONITORING SYSTEM FOR
`DETERMINING A COST OF INSURANCE
`
`C°“f- N°* 4115
`
`Attorne DocketNo.: 12741/32
`
`
`TRANSMITTAL
`
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`Attached islarez
`
`Transmittal; Brief Outline for Interview; and Certificate of Senlice.
`IX
`Fee calculation:
`
`IXI
`
`[I
`[:1
`E]
`[:1
`
`No additional fee is required.
`
`Small Entity.
`— month extension of time under 37 CFR § 1.136(a).
`for a
`An extension fee in an amount of $
`under 37 CFR § 1.17(
`)
`.
`A petition or processing fee in an amount of $
`An additional filing fee has been calculated as shown below:
`
`
`
`Present
`Extra
`
`
`
`
`
`
`
`— F
`
`
`
`
`Claims Remaining
`Highest No.
`
`Previousl Paid For
`After Amendment
`
`
`
`le De.
`irst Presentation of Multi
`
`
`
`
`Small Entit I
`
`Rate
`
`Add‘| Fee
`
`Fee payment:
`
`CI
`I:I
`X
`
`for
`Please charge Deposit Account No. 23-1925 in the amount of $
`Payment by credit card inthe 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 filed), or to credit any overpayment,
`to Deposit
`Account No. 23-1925.
`
`.
`
`July 12, 2011
`Date
`
`Respectfully submitted,
`
`/James A. Collins/
`James A. Collins (Reg. No. 43,557)
`
`Page 000233
`
`

`
`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
`
`July 12, 2011
`Date of Signature & Date of Transmission
`
`EX PAR TE REEXAM
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`CENTRAL REEXAMINATION UNIT
`
`Ex parte Reexamination of
`U.S. Patent 6,064,970
`
`Robert J. McMillan, et al.
`
`Control No. 90/011,252
`
`Filing Date: August 17, 1998
`
`Confirmation No. 4116
`
`Examiner: Karin M. Reichle
`
`Group Art Unit: 3992
`
`F01‘: MOTOR VEHICLE MONITORING SYSTEM FOR
`DETERMINING A COST OF INSURANCE
`
`Attorney Docket NO. 12741-32
`
`BRIEF OUTLINE FOR INTERVIEW
`
`Dear Examiner:
`
`Thank you for the opportunity to interview the case.
`
`I will attempt to briefly outline the questions we have with
`
`respect to the pending Office Action and attempt to respond to any perceived inconsistencies. At the outset, please let me
`
`assure you that my only goal is to advance prosecution.
`
`I would like to focus on the questions and possible amendments to
`
`claims 4, 5, 6, and 70.
`
`Page | 1
`
`Page 000234
`
`

`
`I.
`
`Claim 4:
`
`I With respect to the pending rejection of claim 4, we would appreciate your assistance in helping us understand the
`relevance of the definitions shown on pages 8 - 10 and 14.
`
`I
`
`I
`
`I
`
`I
`
`I
`
`I
`
`Can you please explain how these definitions show that the Patent Owner’s arguments are narrower than
`Kosaka and narrower than the ’970 claim language? Final OA, pgs. 8-10.
`
`I do not understand the Examiner’s reliance on the phrase “pure premium rating method” because the term
`is not used in Kosaka or the ’970 patent.
`
`I do not understand the Examiner’s reliance on the phrase “equity” because the term is not used in Kosaka
`or the ’970 patent.
`
`I do not understand the Examiner’s reliance on the phrase “gross premium” because the term is not used in
`Kosaka or the ’970 patent.
`
`I do not understand the Examiner’s reliance on the phrase “Pure premium” because the term is not used in
`Kosaka or the ’970 patent.
`
`If the definitions are shown to be a new ground of rejection, will you consider withdrawing the finality of
`the Office Action so that we can respond to the definitions and emphasis without restriction?
`
`0 Would the proposed amendments obviate the rejection of claim 4?
`
`4. 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 comprising a collection of actual driving data;
`
`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.
`Alternative
`
`4. 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;
`
`ggierating at least one actuarial class based upon the operator driving characteristics; and
`
`deciding a cost of vehicle insurance for the period based upon the operating characteristics monitored in that period.
`
`Support for the amendment may be found at least in the following passage:
`
`It is yet another object of the present invention to generate actuarial classes and operator profiles relative thereto
`based upon actual driving characteristics of the vehicle and driver, as represented by the monitored and recorded
`data elements for providing a more knowledgeable, enhanced insurance rating precision. ’97O Patent, col. 5, 27-32.
`
`Page I 2
`
`Page 000235
`
`

`
`II.
`
`Claim 5
`
`0 Would the proposed amendment obviate the rejection of claim 5?
`
`5. A method of determining a cost of vehicle insurance for a selected period based upon monitoring, recording and
`communicating data representative of an insured operator of a vehicle and vehicle driving characteristics during said
`period, whereby the cost is adjustable by relating the driving characteristics to predetermined safety standards t_ha_t
`are related to vehicle insurance, the method comprising:
`
`determining an initial insured profile and a base cost of vehicle insurance based on said insured profile that includes
`information about insurance coverages, wherein the insurance coverages comprise insurance limits and insurance
`deductibles for the insured operator of the vehicle;
`
`monitoring a plurality of data elements representative of an operating state of a vehicle or an action of the operator
`during the selected period;
`
`recording selected ones of the plurality of data elements when said ones are determined to have a preselected
`relationship to the safety standards;
`
`consolidating said selected ones for identifying a surcharge or discount to be applied to the base cost; and,
`
`producing a final cost of vehicle insurance for the selected period from the base cost and the surcharge or discount.
`
`Support for the amendment may be found at least in the following passage:
`
`This insured profile includes the information about coverages including limits and deductibles, which are necessary
`for establishing the appropriate cost of insurance for the subject insured. At step 214, the acquired consolidated file
`information from step 210 and the overall insured profile acquired at step 212 are combined and processed against a
`surcharge or discount algorithm file, which include the specific factors for the various usage patterns and trigger
`events. The surcharges and discounts are continuously adjusted based on the loss results associated with driving
`behaviors demonstrated. ’970 Patent, col. 10, lines 36-46.
`
`0
`
`There may be some confusion about adhering to prior Patent Office constructions. The law prohibits the Patent Office
`from providing contradictory constructions that are inconsistent with the definitions it previously provided to the
`identical term given in the earlier patent. The law does not require that that the constructions use identical words.
`
`Page | 3
`
`Page 000236
`
`

`
`III.
`
`Claims 6 & 70.
`
`- With respect to the pending rejection of claim 6, we would appreciate your assistance in helping us understand the
`Examiner’s interpretation of the phrase “insurance rating.”
`
`I Would the proposed amendment obviate the rejection of claim 6?
`
`6. A method of monitoring a human controlled power source driven vehicle, the method comprising:
`
`extracting one or more data elements from at least one sensor wherein the one or more elements are of at least one
`operating state of the vehicle and the at least one human's actions during a data collection period;
`
`analyzing, grouping, and storing the one or more data elements as group data values in a first memory related to a
`predetermined group of elements; and;
`
`correlating the group data values to preset values in a second memory and generating an output data value based on
`the correlation; 2_1n_d
`
` %%d using the output data value to-compute an insurance rating for the vehicle
`FGR Q the data collection period.
`
`Alternative
`
`6. A method of monitoring a human controlled power source driven vehicle, the method comprising:
`
`extracting one or more data elements from at least one sensor wherein the one or more elements are of at least one
`operating state of the vehicle and the at least one human's actions during a data collection period;
`
`analyzing, grouping, and storing the one or more data elements as group data values in a first memory related to a
`predetermined group of elements; and;
`
`correlating the group data values to preset values in a second memory and generating an output data value based on
`the correlation; and
`
` computmge an insurance rating from the output data value for the vehicle
`FQR for the data collection period.
`
`Page [ 4
`
`Page 000237
`
`

`
`III.
`
`Claims 6 & 70 (continued).
`
`0 Would the proposed amendment obviate the rejection of claim 70? (The amendments are intended to address the
`Examiner’s concerns and are shown with respect to original claim 6).
`
`70. A method of monitoring a human controlled power source driven vehicle, the method comprising:
`
`extracting one or more data elements from at least one sensor wherein the one or more elements are of at least one
`operating state of the vehicle and the at least one human‘s actions during a data collection period;
`
`analyzing, grouping, and storing the one or more data elements as group data values in a first memory related to a
`predetermined group of elements; and;
`
`correlating the group data values to preset values related to safeg in a second memory and generating an output
`data value based on the correlation; and
`
` computing an insurance classification rating based upon the
`output data value for the vehicle FQR for the data collection period.
`
`Alternative
`
`70. A method of monitoring at least one human’s action related to a controlled power source driven vehicle, the
`method comprising:
`
`extracting one or more data elements from at least one sensor wherein the one or more elements are of at least one
`operating state of the vehicle and the at least one human‘s actions during a data collection period;
`
`analyzing, grouping, and storing the one or more data elements as group data values in a first memory related to a
`predetermined group of elements; and;
`
`correlating the group data values to preset values related to safegg in a second memory and generating an output
`data value based on the correlation; and
`
` w% using the output data value to compute an insurance classification rating
`for the Vehicle FOR fi)_r the data collection period.
`
`Support for the amendment may be found at least in the following passage:
`
`The subject invention will base insurance charges with regard to current material data representative of actual driving
`characteristics of the Vehicle and driver operation to provide a classification rating of the operator and the vehicle in an
`actuarial class which has a vastly reduced rating error over conventional insurance cost systems.
`’970 Patent, col. 3,
`lines 45-50.
`
`Page | 5
`
`Page 000238
`
`

`
`IV.
`
`Claims 1 & 2.
`
`0
`
`The Patent Owner’s invention as defined in claims 1 and 2 are directed to databases that include data elements that are
`representative of an operating state of a vehicle. The databases include or record (1') time elements; (ii) location
`elements; and (iii) a log of vehicle speed that corresponds to the time elements and location elements. All three are
`recorded when both (i) and (ii) are appropriate (or are used) to determine a cost of insurance of a vehicle.
`0 With respect to claim 1, the Patent Owner asserted that (1) no log is disclosed in the cited references; and (2) there is no
`showing that fig both (i) and (ii) are found to be appropriate to determine a cost of vehicle insurance, z‘fz_en (i), (ii), and
`(iii ) are recorded in a database. Specifically, the conditional and temporal requirements of claim 1 are missing even if
`the meaning of the term “log” is given a broad reasonable construction based on its ordinary and accustomed meaning.
`The finding that both (i) and (ii) are appropriate to determine a cost of vehicle insurance is a condition precedent to the
`recording that then follows (i), (ii), and (iii).
`
`Page | 6
`
`Page 000239
`
`

`
`Reexamination Control No. 90/011,252
`Attorney Docket No. 12741-32
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing Brief Outline for Interview was served to the following individual by First
`Class United States Mail, postage prepaid, on July 12, 2011:
`
`J. Steven Baughman
`Ropes & Gray LLP
`One International Place
`Boston, MA 02110
`
`July 12, 2011
`Date
`
`Respectfully submitted,
`
`/James A. Collins/
`James A. Collins (Reg. No. 43,557)
`
`Page I 7
`
`Page 000240
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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
`
`Customer Number:
`
`10999
`
`Filer:
`
`James A. Collins/Maggie Pieczonka
`
`Receipt Date:
`
`Filing Date:
`
`12-JUL-201 1
`
`22—SEP—201 0
`
`Payment information:
`
`File Listing:
`
`Document
`
`.
`
`.
`
`File Size(Bytes)/
`
`Multi
`
`Pages
`
`7ZfD
`
`Reexam Miscellaneous Incoming Letter
`
`transforbriefoutforintsum.PDF Zf47a888929aad6(eIdfE9c0S6361733a4fc
`
`Information:
`
`Page 000241
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`

`
`briefoutforintsum.PDF
`
`248147
`
`f077deB4adfc70f86913ab6193cb312c07ca
`7477
`
`Multipart Description/PDF files in .zip description
`
`Document Description
`
`Reexam Miscellaneous Incoming Letter
`
`Reexam Certificate of Service
`
`Warnings:
`Information:
`
`Total Files Size (in bytes):
`
`290590
`
`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.
`
`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 000242
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`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMEN"I' OF COMMERCE
`United States Patent and Trademark OI‘I'n:e
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 2313-1450
`www.u<plo.gnv
`
`APPLICATION NO.
`
`90/011,252
`
`FILING DATE
`
`09/22/2010
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`6,064,970
`
`I274]-32
`
`4116
`
`10999
`
`7590
`
`06I‘29fl01 I
`
`Progressive Casualty/BHGL
`P.O. Box 10395
`Chicago, IL 60610
`
`EXAMINER
`
`DATE MAILED: 06/29/201 I
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Page 000243
`
`

`
`
`
`
`Commissioner for Parents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 223 I 3- I 450
`w\\'w.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`ROPES & GRAY LLP
`PATENT DOCKETING 39/41
`ONE INTERNATIONAL PLACE
`
`BOSTON, MA 02110-2624
`
`'
`
`'
`
`Date:MA|l_ED
`
`0
`JUN 2 ” 20“
`CENTRAL REEXAMINATION umr
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. : 90011252
`
`PATENT NO. : 6064970
`
`ART UNIT : 3993
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination 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)).
`
`
`
`Page 000244
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`

`
`Control No.: 90/011,252
`Decision on Petition for Extension
`of Time in Reexamination
`
`THIS IS A DECISION ON THE PETITION FILED 21 June 2011
`
`.
`
`THIS DECISION IS ISSUED PURSUANT TO:
`
`A.
`
`IX 37 CFR 1.550(c) — The time for taking any action by a patent owner in an ex parte reexamination
`proceeding will be extended only for sufficient cause and for a reasonable time specified.
`[:1 37 CFR 1.956 — The time for taking any action by a patent owner in an interpartes reexamination
`proceeding will be extended only for sufficient cause and for a reasonable time specified.
`The petition is before the Central Reexamination Unit for consideration.
`
`B.
`
`FORMAL MATTERS
`
`Patent owner requests that the period for responding to the Office action dated 14 June 2011 which sets a .
`one (1) month period for filing a response to the Office action, be extended by two (2 months.
`
`A.
`
`B.
`
`C.
`D.
`
`IX) Petition fee per 37 CFR §1.17(g)):
`i.
`I:I Petition includes authorization to debit a deposit account.
`ii.
`I:I Petition includes authorization to charge a credit card account.
`iii. El Other:
`.
`[XI Proper certificate of service was provided. (Not required in reexamination where patent owner is
`requester.)
`JZI Petition was timely filed.
`IX Petition properly signed.
`
`B.
`C.
`
`4. DECISION (See MPEP 2265 and 2665)
`A. El Granted or IX) Granted—in—part for one (1) month, because petitioner provided a factual accounting
`that established sufficient cause. (See 37 CFR 1.550(c) and 37 CFR 1.956).
`IX) Other/comment: see attached
`I:I Dismissed because:
`i. D Formal matters (See unchecked box(es) (A, B, C and/or D) in section 4 above).
`ii.
`I:I Petitioner failed to provide a factual accounting of reasonably diligent behavior by all those
`responsible for preparing a response to the outstanding Office action within the statutory
`time period.
`I:I Petitioner failed to explain why, in spite of the action taken thus far, the requested
`additional time is needed.
`
`iii.
`
`iv.
`
`v.
`vi.
`
`I:I The statements provided fail to establish sufficient cause to warrant extension of the time
`for taking action (See attached).
`I:I The petition is moot.
`I:| Other/comment:
`
`5. CONCLUSION
`
`Telephone inquiries with regard to this decision should be directed to Mark Reinhart at 571-272-1611. In
`his/her absence, calls may be directed to Eric Keasel at 571-2724929 in the Central Reexamination Unit.
`
`/Mark Reinhartl
`Sinature
`
`US. Patent and Trademark Office
`PTO-2293 (Rev. 09-2010)
`
`'
`
`SPE AU 3992 Central Reexamination Unit
`
`Page 000245
`
`

`
`Ex Pane Reexamination Control No. 90/011,252
`
`Page 2
`
`In consideration of providing the patent owner with a fair opportunity to present an argument
`against any attack on the patent as balanced with the statutory mandate of conducting
`reexamination proceedings with special dispatch that the Office must fully consider the facts
`presented in any petitions for extension of time. This is the f1r_st request for extension of time in
`this proceeding. The petition speaks to the considerations of the length and complexity of the
`Office action and consideration of declatory evidence. The petitioner also noted another
`proceeding for which reexamination was granted as well as current litigation. It is agreed that
`patent owner needs to be given opportunity to complete all aspects of investigation prior to
`responding to the Office action in a reexamination proceeding. Yet it is Patent owner who must
`exercise diligence in responding to an outstanding Office action. The requirement for reasonably
`diligent behavior by patent owner includes a reasonable expectation of resource management.
`Resource management takes into consideration other proceedings before the Office s well as
`outside litigation. The petition identifying another concurrent proceeding and litigation is noted
`but is not germane to the issues under consideration as to “sufficient cause” for granting an
`V
`extension of time. The length and complexity of the Office action as well as consideration of
`declatory evidence does warrant consideration as “sufficient cause” to grant an extension of time.
`
`MPEP 2665 states, “First requests for extensions of these time periods will be granted for
`sufficient cause, and for a reasonable time specified-usually 1 month. The reasons stated in the
`request will be evaluated, and the request will be favorably considered where there is a factual
`accounting of reasonably diligent behavior by all those responsible for preparing a response or
`comments within the statutory time period. Second or subsequent requests for extensions of time,
`or requests for more than one month, will be granted only in extraordinary situations.” (emphasis .
`added.)
`
`On balance, the petition for extension of time supports “sufficient cause” to grant a one (1)
`month extension of time.
`
`The petition for extension of time is hereby granted-in-part.
`
`Page 000246
`
`

`
`
`
`B RI N K S
`
`H 0 F E R
`G I L S 0 N
`
`
`
`GER‘-|F'ICAT'E OFIESS F‘|::LaI|rl4GtrleJ1r"?rrl1Eitl:e::17t:::e§:I'r:ted States Patent and Trademark
`'
`éo‘.ren:gsI2:te:tf‘<‘>sr Ig:rITeeI‘IsI:,°:I/‘IdaelrI1I(?eeE"|a;SbfiJIl[l1Iil.lea:I t;°§'7 Cl¥R §1.8 on the below date:
`
`Dale: Jung 21 g911
`
`
`
`
`
`Name: Si9natur°i _::—> & L | 0 N E
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Ex parte Reexamination of U.S. Patent 6,064,970
`
`Robert J. McMillan, et al.
`
`Patent Filing Date: August 17, 1998
`.
`Reexamination Filing Date: September 22,2010
`
`Control No.: 90/011,252
`
`For:
`
`MOTOR VEHICLE MONITORING SYSTEM FOR
`DETERMINING A COST OF INSURANCE
`
`
`
`'
`:
`' M. R ' hl
`Exammer Kenn
`elc e
`A U ‘t: 3992
`Group rt m
`f. N .: 4116
`0
`con
`Attorney Docket No.: 12741/32
`
`TRANSMITTAL
`
`Commissioner for Patents
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`Attached islarez
`
`E Transmittal; Patent Owner's Petition for Extension of Time for Response Pursuant to 37 C.F.R. § 1.550(c); and
`Certificate of Service.
`
`|_—_]
`I]
`E]
`
`No additional fee is required.
`Small Entity.
`An extension fee in