IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Request for Ex Parte Reexamination
`US Patent No. 6,064,970
`
`Inventors: Robert J. McMillan, et al.
`
`US. Patent No. 6,064,970
`
`Formerly Application No. 09/ 1 35,034
`
`Issue Date: May 16, 2000
`
`Filing Date: August 17, 1998
`
`Former Group Art unit: 2761
`Former Examiner: Edward R. Cosimano
`
`WDWDWDWDWDWDWD
`
`Attorney Docket No.: 47,414
`
`Customer No.: 28120
`
`Requester: Liberty Mutual Insurance Co.
`
`For: MOTOR VEHICLE MONITORING SYSTEM FOR DETERMINING A COST OF
`
`INSURANCE
`
`MAIL STOP EX PARTE REEXAM
`
`Central Reexamination Unit
`
`Office of Patent Legal Administration
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 223 13-1450
`
`REQUEST FOR EX PARTE REEXAMINATION OF US. PATENT NO. 6,064,970
`PURSUANT TO 35 U.S.C. § 302, 37 C.F.R. § 1.510
`
`Dear Sir:
`
`Pursuant to the provisions of 35 U.S.C.
`
`§ 302 and 37 C.F.R. § 1.510,
`
`the
`
`undersigned, on behalf of Liberty Mutual Insurance Company (“the Requester”) hereby requests
`
`ex parte reexamination of claims 1-15 (all of the claims) of United States Patent No. 6,064,970
`
`(“the ‘970 patent”), which issued to Progressive Casualty Insurance Company on May 16, 2000,
`
`with Robert J. McMillan as the first named inventor. A complete copy of the ‘970 patent is
`
`attached as Exhibit A, and a copy of the prosecution history for the ‘970 patent (other than the
`
`prior art of record) is attached as Exhibit B. As detailed below, the Requester hereby asserts that
`
`a substantial new question of patentability exists as to all of the claims of the ‘970 patent based
`
`on five prior art references that were not previously before the Patent Office, and one reference
`
`- i -
`
`Progressive Exhibit 2007
`
`Liberty Mutual v. Progressive
`CBM2013-00009
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`that was.1 The Requester also cites two other references that the Applicants conceded, during
`
`prosecution, were prior art. The Requester further asserts that all of the claims are invalid in
`
`view of these references.
`
`The ‘970 patent is also at issue in Progressive Casualty Insurance Company v.
`
`Safeco Insurance Company ofIllinois, et al., Case No. 1:10-cv-01370-PAG, in the US. District
`
`Court for the Northern District of Ohio, Eastern Division (filed June 18, 2010). In the context of
`
`the present Request, the standard provided in MPEP § 2111 (Claim Interpretation; Broadest
`
`Reasonable Interpretation)
`
`for claim interpretation during patent examination is applied.
`
`Because the courts apply a different standard during litigation, see In re Am. Acad. of Sci. Tech
`
`Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), the Requester expressly reserves the right to
`
`argue a different claim construction in the pending litigation.
`
`The ‘970 patent issued on August 18, 1998, approximately 19 months before the USPTO implemented
`1
`“second-pair-of—eyes" review for business method patents in Class 705, to which the ‘970 patent is assigned. See,
`6%. Hip/MWuse”?gonveD/qflcevmmsram/wtow’g'ivflaW
`
`-11-
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`

`

`Request for Ex Parte Reexamination
`US Patent No. 6,064,970
`
`TABLE OF CONTENTS
`
`I.
`
`BACKGROUND TO THE REQUEST ............................................................................... 1
`
`II.
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY .......................................... 5
`
`A.
`
`B.
`
`Listing Of Prior Art Patents And Printed Publications .............................................. 5
`
`Statement Setting Forth Each Substantial New Question of Patentability ................ 6
`
`1.
`
`2.
`
`Background and Prosecution of the ‘970 Patent .............................................. 7
`
`The Specific Features the Applicants Emphasized During Prosecution to
`Obtain Allowance of the ‘970 Patent Existed Long Before Any Claimed
`Priority Date for the ‘970 Patent, As Shown By the New Technical Teachings
`of the Cited References, Which Thus Raise Substantial New Questions of
`Patentability ................................................................................................... l 5
`
`C.
`
`Secondary Considerations and Obviousness Under 35 U.S.C. § 103 ..................... 17
`
`III. DETAILED EXPLANATION OF THE PERTINENCE AND MANNER OF
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`APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR
`
`WHICH REEXAMINATION IS REQUESTED .............................................................. 22
`
`A.
`
`Kosaka and Black Magic .........................................................................................23
`
`1.
`
`2
`
`3.
`
`4
`
`5.
`
`6.
`
`7.
`
`8.
`
`Overview of Kosaka ....................................................................................... 23
`
`Overview of Black Magic ..............................................................................25
`
`Kosaka ............................................................................................................ 26
`
`Claims 4-8, 10, and 13 Should be Rejected under 35 U.S.C. lO2(b) as
`Anticipated by Kosaka ...................................................................................27
`
`Kosaka and Black Magic ...............................................................................48
`
`Claims 1-3, 11-12, and 14-15 Should be Rejected under 35 U.S.C. 103(a) as
`Obvious in Light of Kosaka in View of Black Magic ................................... 50
`
`The Admitted Prior Art .................................................................................. 67
`
`Claim 9 Should be Rejected under 35 U.S.C. 103(a) as Obvious in Light of
`Kosaka in View of the Admitted Prior Art .................................................... 67
`
`B.
`
`Lemelson and Dorweiler .......................................................................................... 69
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Overview of Lemelson ................................................................................... 69
`
`Overview of Dorweiler .................................................................................. 7l
`
`Lemelson and Dorweiler ................................................................................ 72
`
`Claims 1-8, 10-15 Should be Rejected under 35 U.S.C. 103(a) as Obvious in
`Light of Lemelson in View of Dorweiler ....................................................... 74
`
`Claim 9 Should be Rejected under 35 U.S.C. 103(a) as Obvious in Light of
`Lemelson in View of Dorweiler and the Admitted Prior ............................. 1 17
`
`-iii-
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`C.
`
`Bouchard and Pettersen ......................................................................................... 118
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Overview of Bouchard ................................................................................. 1 l9
`
`Overview of Pettersen .................................................................................. 120
`
`Bouchard and Pettersen ................................................................................ 122
`
`Claims l-8, 10-15 Should be Rejected under 35 U.S.C. 103(a) as Obvious in
`Light of Bouchard in View of Pettersen ...................................................... 123
`
`Claim 9 of the “970 patent is rendered obvious by Bouchard in view of
`Pettersen and the Admitted Prior Art. .......................................................... 168
`
`IV. CONCLUSION ............................................................................................................... 170
`
`-iv-
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`

`

`Request for Ex Parte Reexamination
`US. Patent No. 6,064,970
`
`LIST OF EXHIBITS
`
`Exhibit A:
`
`US. Patent No. 6,064,970
`
`Exhibit B:
`
`US. Patent No. 6,064,970 File History
`
`Exhibit C:
`
`Kosaka
`
`Exhibit D:
`
`Black Magic
`
`Exhibit E:
`
`Lernelson
`
`Exhibit F:
`
`Dorweiler
`
`Exhibit G:
`
`Bouchard
`
`Exhibit H:
`
`Pettersen
`
`Exhibit 1:
`
`US. Patent No. 5,797,134 File History
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`I.
`
`BACKGROUND TO THE REQUEST
`
`The ‘970 patent is nothing more than an attempt to claim ideas that had long been
`
`known in the art — monitoring and recording vehicle data for insurance rating purposes.
`
`Independent claims 1, 2 and 4-6, and dependent claim 3, require three main elements:
`
`(1)
`
`“monitoring” or “extracting” data representative of vehicle or driver behavior (e.g., time and
`
`location) during a selected period of time; (2) “recording” the data in, e.g., a database; and (3)
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`“determining” a cost of insurance for the selected time period. Dependent claims 7-15 recite a
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`more detailed method for monitoring vehicle and driver behavior and adjusting insurance costs
`
`based on safety and actuarial standard values.
`
`These claimed principles were not invented by the Applicants. This is confirmed,
`
`in part, by the Background of the Invention section of the ‘970 patent and statements made by
`
`the Applicants during prosecution.
`
`In fact, by the Applicants’ own admissions,
`
`it was well
`
`known to monitor and record data collected from a vehicle and to use that data to assess
`
`insurance costs.
`
`First, the ‘970 patent makes plain that “conventional insurance” schemes that used
`
`actuarial classes to rate insurance costs were known. Ex. A at Col. 1:16-2:37. Second, the
`
`Applicants acknowledged the following methods and systems as commonplace:
`
`that “disclose a variety of
`0 Vehicle operating data recording systems
`conventional techniques for recording vehicle operation data elements in a
`variety of data recording systems” (id. at Col. 2:54-61);
`
`0 Vehicle tracking systems “with navigation systems for providing information
`describing a vehicle’s location based upon navigation signals. When such
`positioning information is combined with roadmaps in an expert system,
`vehicle location is ascertainable” (id. at Col. 3: 28-34);
`
`0 Using radio communication links and cellular phones to “provide immediate
`communication of certain types of data elements or to allow a more immediate
`response in cases of theft, accident, break-down or emergency” (id. at Col. 1:
`61-66); and
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`0 Detection and recording of vehicle usage data, e.g., seatbelt usage, to assess
`vehicle insurance costs (id. at Col. 1:66-22).
`
`Third, the “970 patent recognizes that “[c]urrent motor vehicle control and operating systems
`
`comprise electronic systems readily adaptable for modification to obtain the desired types of
`
`information relevant to determination of the cost of insurance.” Id. at Col. 3 :25-28.
`
`Indeed, during prosecution of the “970 patent, the Applicants stated that the prior
`
`art of record was “useful for teaching a collection of operational data about a vehicle” and “that
`
`this stored data can be acquired by automobile insurance companies for ‘appropriately
`
`allocating higher costs only among the highest risk drivers’
`
`[or
`
`to allow]
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`‘insurance
`
`companies to evaluate the driving habits of vehicle operators.”’ EX. B, Amend. D at 5
`
`(emphasis added).
`
`Faced with the breadth of the prior art teaching the use of vehicle data for
`
`
`insurance rating, the Applicants were forced to limit their “invention” based on which insurance
`
`period to apply cost adjustments, premium adjustments, and ratings, i. e., for application to the
`
`monitored time period. Particularly, the Applicants argued that the “important and consequential
`
`advantage of the subject invention [is] determining insurance costs for a certain period based
`
`upon how the vehicle is operated during that very same time period.”
`
`Id. at 5-6 (emphasis
`
`added). The Applicants further assured the PTO that “the instant invention is directed to a
`
`system which adjusts the insurance premium for the current insurance period and not a future
`
`insurance period as in the applied prior art.” EX. B, Interview Summary (emphasis added). As
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`such, the Applicants made clear during prosecution that the “invention” as a whole is limited to
`
`using vehicle data for determining insurance cost adjustments, premium adjustments, and ratings
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`to apply to the corresponding monitored period of vehicle operation. This is further confirmed
`
`by the issued claim language, as illustrated in claim 1 of the ‘970 patentz:
`
`. monitoring a plurality of the data elements representative of an operating
`“. .
`state of a vehicle or an action of the operator during a selected time period; and
`recording selected ones of the plurality of data elements into the database when
`said ones are determined to be appropriate for recording relative to determining a
`cost of insurance for the vehicle during the selected time period.”
`
`But, contrary to the Applicants’ representations to the Examiner, at least three
`
`separate prior art references (one that was before the original Examiner and two newly-located
`
`references) did disclose this purported “novel” concept of insurance rating for the monitored
`
`time period.
`
`In fact, using vehicle data to rate insurance retrospectively was known 80 years
`
`age-
`
`The Dorweiler reference, published in 1930, discloses a method for determining
`
`“premium bases” using data from “devices” to assess exposure retrospectively, i.e., collecting
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`data during one period that affects an insurance rate during the same monitored period. Ex. F at
`
`339. The article states that when hazard media such as “mileage, car-hour, or fuel-consumption
`
`exposure” are used in “rate making,” they would “require a final adjustment which would be
`
`determined retrospectively” for the period monitored. Id. at 339 (emphasis added).
`
`The Kosaka reference, published in 1992, discloses a risk evaluation device “for
`
`evaluating risk in moving bodies (vehicles) or insurance customers,” and to an “insurance
`
`premium determination device that employs this risk evaluation device.” Ex. C at 2 (emphasis
`
`added). The information gathered and evaluated by these devices is then used to determine a
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`“real time” insurance premium. Id. at 4, 7.
`
`Each independent claim of the ‘970 patent has language that refers to monitoring driver behavior during a
`2
`specific time period and determining an insurance rate for that time period. Ex. A at Col. 11:41-12:40.
`
`-3-
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`And the Pettersen reference, published in 1990, taught that vehicle data related to
`
`the “driving pattern of a motor vehicle” may be used to provide a “bonus” to persons with
`
`measured safe driving characteristics, and in particular, a “more fair bonus arrangement, i.e.,
`
`that policy holders having a ‘careful’ driving pattern — low speeds and low accelerations — may
`
`be allotted a higher bonus.” Ex. H at 3 (emphasis added). One of ordinary skill at the time
`
`would naturally have understood Pettersen’s disclosure of this “bonus” in its ordinary sense to
`
`include at least a possible reward for performance in the monitored period, and would thus have
`
`recognized Pettersen to be disclosing an insurance scheme where the policyholder receives such
`
`a “bonus” or rebate for good driver behavior during the measured time period against the
`
`premium for that period. Id.
`
`As explained below in Section 111, each of these three references not only
`
`demonstrates the existence of rating for the monitored time period — the Applicants’ claimed
`
`distinction for patentability — in the prior art, but also renders claims 1-15 invalid, as either
`
`anticipated (Kosaka) or obvious in combination with other cited prior art references (including
`
`three newly-cited references not before the examiner during original prosecution and admissions
`
`by the Applicants). For example, Lemelson teaches monitoring how a vehicle is being driven to
`
`create an evaluation code that can warn the driver or a remote location about unsafe driving
`
`while Dorweiler
`
`teaches how to use this exposure media to change premium rates
`
`retrospectively.
`
`In addition, Bouchard and Pettersen teach complementary systems of
`
`monitoring vehicle sensors to determine whether the driver is operating safely, which, as
`
`Pettersen discloses, can be used to give insurance bonuses to drivers who drove carefully during
`
`the monitored period,
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`thus reducing the premium paid for that monitored period.
`
`Finally,
`
`Kosaka discloses a filzzy logic system that uses data about the operation of a motor vehicle to
`
`

`

`Request for Ex Parte Reexamination
`US. Patent No. 6,064,970
`
`evaluate risk. Based on the level of risk, Kosaka discloses changing insurance premiums in real
`
`time or triggering an alarm signal. Combining Kosaka with Black Magic yields a location-aware
`
`real-time insurance pricing system. Kosaka, standing alone, and each of these combinations
`
`raise substantial new issues of patentability.
`
`II.
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`Section II.A, below, provides a list of all prior art references relied upon in the
`
`present request — including references not previously cited to or considered by the Patent Office
`
`— disclosing the features the Applicants argued were missing from the prior art considered during
`
`the original prosecution. Section 11B explains how each of the references raises a substantial
`
`new question of patentability that is different from those raised in the previous examination of
`
`the patent before the Office. As part of this discussion, Section II.B(l) provides an overview of
`
`the subject matter and prosecution history of the ‘970 patent, including an overview of the
`
`features the Applicants argued were missing from the prior art considered during the original
`
`prosecution. Section II.B(2) explains how the features emphasized by the Applicants during
`
`prosecution to obtain the ‘970 patent were well known in the art, and in particular are shown by
`
`the references and combinations of references that form the basis for Requester’s substantial new
`
`questions of patentability. Section II.C explains why the obviousness of all the claims of the
`
`‘970 patent cannot be overcome by secondary considerations.
`
`A.
`
`Listing Of Prior Art Patents And Printed Publications
`
`Reexamination of claims 1-15 (all of the issued claims) of the ‘970 patent is
`
`requested in view of the following references:
`
`Exhibit C:
`
`filed on
`JP-A-4/ 182868,
`Japanese Patent Publication No.
`November 19, 1990 and published on June 30, 1992, to Kosaka
`(“Kosaka”) and Certified English-Language Translation.
`
`

`

`Request for Ex Parte Reexamination
`US. Patent No. 6,064,970
`
`Exhibit D:
`
`“An Interest in Black Magic — Motor Technology” published on
`January 1, 1994 in Insurance Age magazine (“Black Magic”).
`
`Exhibit E:
`
`US. Patent No. 5,570,087, filed on February 18, 1994 and issued
`on October 29, 1996, to Lemelson (“Lemelson”).
`
`Exhibit F:
`
`“Notes on Exposure and Premium Bases” by P. Dorweiler, on page
`319 of a book published in 1930 by the Casualty Actuarial Society
`entitled
`“Proceedings of
`the Casualty Actuarial Society”
`(“Dorweiler”).
`
`Exhibit G:
`
`US. Patent No. 5,465,079, filed on August 13, 1993 and issued on
`November 7, 1995, to Bouchard et al. (“Bouchard”).
`
`Exhibit H:
`
`WO 90/02388, filed on August 8, 1989 and published on March 8,
`1990, to Pettersen (“Pettersen”).
`
`B.
`
`Statement Setting Forth Each Substantial New Question of Patentability
`
`Other than Pettersen, none of the above-listed references were cited by the
`
`Applicants or the Examiner or otherwise utilized during the prosecution of the application that
`
`issued as the ‘970 patent. As detailed below in this section, each of these new references is more
`
`relevant than the art that was utilized during the prosecution of the ‘970 patent. With regard to
`
`Pettersen, although it was made of record during the ‘970 patent’s prosecution, Pettersen was not
`
`cited or discussed during examination to reject the claims. As discussed below, Pettersen is
`
`being presented in this Request in a new light and in combination with references that were not
`
`cited or otherwise utilized during reexamination.
`
`In addition, statements the Applicants made
`
`during prosecution of the ‘970 patent application (“Admitted Prior Art”) are also used in this
`
`Request in combination with the newly-cited references that contain disclosures more pertinent
`
`than those before the Examiner during the original examination.
`
`Thus,
`
`the questions of
`
`patentability raised in this request were not raised during prosecution of the application that led
`
`to the ‘970 patent.
`
`

`

`The following combinations of references raise new issues of patentability that
`
`were not considered during prosecution of the ‘970 patent:
`
`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`l.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`A substantial new question is raised as to the patentability of claims 4-8, 10, and
`13 by Kosaka.
`
`A substantial new question is raised as to the patentability of claims 1-3, 11-12,
`and 14-15 by Kosaka in view of Black Magic.
`
`A substantial new question is raised as to the patentability of claim 9 by Kosaka
`in view of the Admitted Prior Art.
`
`A substantial new question is raised as to the patentability of claims 1-8 and 10-15
`by Lemelson in view of Dorweiler.
`
`A substantial new question is raised as to the patentability of claim 9 by Lemelson
`in view of Dorweiler and the Admitted Prior Art.
`
`A substantial new question is raised as to the patentability of claims 1-8 and 10-15
`by Bouchard in view of Pettersen.
`
`A substantial new question is raised as to the patentability of claim 9 by Bouchard
`in view of Pettersen and the Admitted Prior Art.
`
`1.
`
`Background and Prosecution of the ‘970 Patent
`
`(21)
`
`The ‘970 Patent
`
`The “970 patent states it is directed to “a method and system of determining a cost
`
`of automobile insurance based on monitoring, recording and communicating data representative
`
`of operator and vehicle driving characteristics.” EX. A at Abstract. The majority of the written
`
`description of the “970 patent relates to well-known insurance schemes and vehicle monitoring
`
`technology. For example, the “970 patent describes “conventional insurance” schemes that use
`
`actuarial classes and assess underwriting costs. Id. at Col. 1:28-2:37.
`
`In addition, according to the Background of the Invention, the following concepts
`
`were recognized in the prior art:
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`that “disclose a variety of
`0 Vehicle operating data recording systems
`conventional techniques for recording vehicle operation data elements in a
`variety of data recording systems” (id. at Col. 2:54-61);
`
`0 Vehicle tracking systems “with navigation systems for providing information
`describing a vehicle’s location based upon navigation signals. When such
`positioning information is combined with roadmaps in an expert system,
`vehicle location is ascertainable” (id. at Col. 3:28-34);
`
`0 Using radio communication links and cellular phones to “provide immediate
`communication of certain types of data elements or to allow a more immediate
`response in cases of theft, accident, break-down or emergency” (id. at Col.
`2:61-66); and
`
`o Utilizing seatbelt use to assess vehicle insurance costs (id. at Col. 2:66-32).
`
`Consequently, the “970 patent recognizes that “current motor vehicle control and
`
`operating systems comprise electronic systems readily adaptable for modification to obtain the
`
`desired types of information relevant to determination of the cost of insurance.” Id. at Col. 3: 25-
`
`28.
`
`Indeed, Figure 3 (depicted below) discloses a motor vehicle with well-known components
`
`for “implementing the subject invention” (Col. 5:44-46) — e. g., on-board computer (300), vehicle
`
`data bus (304), vehicle sensors (306), driver input device (308), car battery (310), GPS antenna
`
`(312), and communication link (314).
`
`
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`The claims of the ‘970 patent are thus a combination of elements that were known
`
`in the prior art. Specifically, independent claims 1, 2, 4-5 and dependent claim 3 of the ‘970
`
`patent generally require three elements: (1) monitoring data elements representative of vehicle
`
`behavior (e.g.,
`
`time and location) during a selected period of time;
`
`(2) recording the data
`
`elements in, e.g, a database; and (3) determining a cost of insurance for the selected time period.
`
`Independent claim 6 requires a specific type of vehicle monitoring, z'.e.: (1) extracting data
`
`elements during a data collection period; (2) analyzing, grouping and storing the data elements;
`
`and (3) generating an output data value to compute an insurance rating for the data collection
`
`period.
`
`Dependent claims 7-15, generally recite a more detailed method for monitoring a
`
`vehicle for insurance and adjusting insurance costs based on safety and actuarial standard values.
`
`These claims require one or more of the following:
`
`(1) determining a trigger event and
`
`storing/transmitting a signal related to said trigger event (claims 7-8); (2) additionally using an
`
`output data value for computing an insurance rating for a filture data collection period (claim 9);
`
`(3) comparing data elements (e.g., location and time) to preset values (safety/actuarial standards)
`
`to create an adjusted insurance cost output (claims 10-11);
`
`(4) using adjusted cost for a
`
`prospective or retrospective basis (claim 12); and (5) generating an adjusted underwriting cost
`
`(claims 13-14), including for a prospective or retrospective basis (claim 15).
`
`(b)
`
`The ‘970 Prosecution History
`
`The application that resulted in the ‘970 patent (No. 09/135,034) was filed on
`
`August 17, 1998. The application claims priority to US. Application No. 08/592,958, which
`
`was filed on January 1996 and issued as US. Patent No. 5,797,134 on August 18, 1998. A copy
`
`of the ‘970 patent prosecution history is attached as Exhibit B, excluding the prior art of record.
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`The same day the application for the ‘970 patent was filed (August 17, 1998),
`
`originally-filed claims 1-27 were canceled and claims 28-34 were added by Preliminary
`
`Amendment A. Newly-added independent claim 283 of the application read as follows:
`
`A method of generating a database comprising data elements
`28 (21,1).
`representative of operator or vehicle driving characteristics,
`the method
`comprising:
`
`monitoring a plurality of data elements representative of an operating state
`of a vehicle or an action of the operator during a selected time period; and,
`
`recording selected ones of the plurality of the data elements into the
`database when said ones are determined to be appropriate for recording relative to
`determining a cost of insurance for the vehicle during the selected time period,
`said ones including a time and location of vehicle operating and a corresponding
`log of vehicle speed for the time and location.
`
`Later, on December 23, 1998, Preliminary Amendment B added claims 35-47. Newly-
`
`added independent claim 35 read as follows:
`
`A method of monitoring a human controlled power source driving
`35 (28, 6).
`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 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.
`
`In the First Office Action the Examiner rejected all of the pending claims (21-
`
`40).4 Claims 21-24, 28, 29, 33 and 34 were rejected under 35 U.S.C. 102(b) as being “clearly
`
`anticipated by Camhi et a1 (5,430,432) or Ousboume (5,499,182)” because each disclosed:
`
`The originally filed application had 20 claims, not 27. As a result, in the First Office Action and in
`3
`accordance with 37 CFR 1.126, the examiner renumbered claims 28-34 as claims 21-27 and claims 35-47 as claims
`28-40.
`
`-10-
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`“[a] system which collect operational data about a vehicle. The data is then
`analyzed to determine if a trigger event of some type has occurred. When a
`trigger event has occurred, then the monitored operational data is stored in a
`different storage unit for filrther analysis.” EX. B, OA 1 at 5.
`
`The Applicants did not dispute the Examiner’s statements regarding the Camhi
`
`and Ousbome references.
`
`In fact, the Applicants admitted in their response to the First Office
`
`Action that both references teach: (I) collecting vehicle driver data and (2) providing that data to
`
`insurance companies for assessing insurance rates. EX. B, Amend. D at 5. Specifically, the
`
`Applicants stated that both references are:
`
`“useful for teaching the collection of operational data about a vehicle and which
`information is selectively stored, [and] that this stored data can be acquired by
`automobile insurance companies for “appropriately allocating higher costs only
`among the highest risk drivers.’, Osborne [sic] “182, Col. 2, lines 26-34; or, to
`allow “insurance companies to evaluate the driving habits of vehicle operators.’,
`Camhi et al. “432, at Col. 1, lines 63-65.” Id.
`
`The Applicants
`
`instead distinguished their “invention” from Camhi and
`
`Ousboume on m ground — asserting that the references merely teach rating for a fiiture period
`
`based on past driving activity,
`
`i.e., “a more sophisticated scheme of collecting historical
`
`information in a conventional insurance scheme by generating a prospective rate based upon
`
`then known operating results and parameters of the vehicle operator.” Id. According to the
`
`Applicants, the “important and consequential advantage of the subject invention [is] determining
`
`insurance costs for a certain period based upon how the vehicle is operated during that very
`
`same time period.”
`
`Id. at 5-6 (emphasis added).
`
`In particular,
`
`the Applicants made the
`
`following representations to the Examiner:
`
`“Claim 21 correlates the monitoring and recording of data elements relative to a
`common selected time period as opposed to the collection of data into a historical
`collection and then utilizing the historical collection to suggest a future cost of
`
`The Examiner also objected to the application on several grounds, including for impermissibly adding new
`4
`matter, nonstatutory double patenting, indefiniteness, and for failure meet the written description requirement. Ex.
`B, Office Action of Mar. 18, 1999 (“OA 1") at 3-4.
`
`-11-
`
`

`

`Request for Ex Parte Reexamination
`U.S. Patent No. 6,064,970
`
`insurance based on the mere historical collection of data. Rather, the subject
`invention determines the cost of insurance for a certain time period based upon
`the data elements collected during that same time period.” Id. at 6 (emphasis
`added).
`
`“The important novelty for the subject invention is retained in these claims by
`utilizing the output value for the data collection period to be determined by the
`data collected in that same period. Thus, the important and consequential
`advantage of the subject invention, of determining insurance costs for a certain
`period based upon how the vehicle is operated during that very same period, is
`defined in the claims and thus patentably distinguishes the invention from the
`teachings of the references.” Id. (emphasis added).5
`
`Thus,
`
`in order to obtain allowance of the ‘970 patent claims, the Applicants
`
`clearly limited their “invention” to merely determining insurance cost adjustments, premium
`
`adjustments, and ratings for application to the monitored time period and disclaimed determining
`
`prospective cost adjustments, premium adjustments and ratings for application to a fiature time
`
`period.
`
`The Examiner maintained his rejections in the Second Office Action. The
`
`Examiner was not persuaded by the Applicants’ arguments,6 and he further characterized Camhi
`
`and Ousboume as references that “record data which is to be used by an insurance company for
`
`the purpose of determining the cost of insurance based on driver habits.” Ex. B, OA 2 at 3.
`
`Notably, Applicants made the same argument regarding determining insurance costs for the data collection
`5
`period when seeking allowance of the claims filed in the application that led to U.S. Patent No. 5,797,134 (the
`parent application of the ‘970 patent). According to the January 27, 1998 Interview Summary, the Applicants
`(represented by the same attorney who prosecuted the ‘970 patent) “discussed [the] feature of collecting data in real
`time for a determination of premium for the period during which data is collected." Exh. B, Interview Summary at
`l. The Applicants “assert[ed] that the prior art determines cost payment based on past driving habits for a future
`period," id. and agreed to amend their claims to reflect these purported distinguishing characteristics over the prior
`art. On January 30, 1998, the Applicants did just that b