FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 9,311,271
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 4
2. ADDITIONAL TERMS 5
3. REISSUE PROCEDURAL REMINDERS 6
4. STATUS OF CLAIMS 7
5. PRIORITY AND AIA STATUS 7
6. INFORMATION CONSIDERED 10
7. PRIOR ART CITED 11
8. DECLARATION 11
9. CLAIM OBJECTIONS 12
10. BROADEST REASONABLE INTERPRETATION (BRI) 13
11. CLAIM INTERPRETATION UNDER 35 USC § 112, SIXTH PARAGRAPH 15
11.1. Functional Phrase #1 or FP#1 17
11.1.1. Prong (A) 19
11.1.2. Prong (B) 22
11.1.3. Prong (C) 22
11.1.4. Corresponding Structure for FP#1 23
11.2. Functional Phrase #2 or FP#2 25
11.2.1. Prong (A) 26
11.2.2. Prong (B) 28
11.2.3. Prong (C) 28
11.2.4. Corresponding Structure for FP#2 29
11.3. Functional Phrase #3 or FP#3 30
11.3.1. Prong (A) 31
11.3.2. Prong (B) 33
11.3.3. Prong (C) 33
11.3.4. Corresponding Structure for FP#3 34
11.4. Functional Phrase #4 or FP#4 34
11.4.1. Prong (A) 35
11.4.2. Prong (B) 37
11.4.3. Prong (C) 37
11.4.4. Corresponding Structure for FP#4 37
11.5. Functional Phrase #5 or FP#5 38
11.5.1. Prong (A) 39
11.5.2. Prong (B) 41
11.5.3. Prong (C) 41
11.5.4. Corresponding Structure for FP#5 41
11.6. Functional Phrase #6 or FP#6 42
11.6.1. Prong (A) 43
11.6.2. Prong (B) 45
11.6.3. Prong (C) 45
11.6.4. Corresponding Structure for FP#6 45
12. CLAIM REJECTIONS – 35 USC § 251 (Improper Broadening) 46
13. CLAIM REJECTIONS – 35 USC § 251 (Defective Declaration) 48
14. CLAIM REJECTIONS – 35 USC § 251 (New Matter) 49
15. CLAIM REJECTIONS – 35 USC § 112, First Paragraph 49
15.1. New Matter 49
16. CLAIM REJECTIONS – 35 USC § 112, Second Paragraph 52
16.1. Insufficient Disclosure Of Corresponding Structure (Claims 2, 5, and 8–32) 53
16.2. Contradictory Limitations (Claims 2, 5, and 8–32) 53
16.3. Conclusion of 35 USC § 112, Second Paragraph Rejection 54
17. CLAIM REJECTIONS – 35 USC § 103 54
17.1. Obvious Over Amigo, in view of Collings and Collins 55
17.1.1. Claim 8 55
17.1.2. Claim 15 61
17.1.3. Claim 16 61
17.1.4. Claim 17 62
17.1.5. Claim 18 63
17.1.6. Claim 19 63
17.1.7. Claim 21 63
17.2. Obvious Over Amigo, in view of Collings, Collins, and Peng 64
17.2.1. Claim 2 64
17.2.2. Claim 9 71
17.3. Obvious Over Amigo, in view of Collings, Collins, and Tamir 72
17.3.1. Claim 10 72
17.4. Obvious Over Amigo, in view of Collings, Collins, and Choi 73
17.4.1. Claim 20 73
17.5. Obvious Over Amigo, in view of Collings, Collins, and McClellan 74
17.5.1. Claim 5 75
17.5.2. Claim 11 82
17.5.3. Claim 12 90
17.5.4. Claim 22 91
17.5.5. Claim 23 91
18. ALLOWABLE SUBJECT MATTER 91
19. RESPONSE TO ARGUMENTS 92
20. CONCLUSION 96
ACKNOWLEDGEMENTS
This final Office action addresses U.S. reissue application No. 19/038,100 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 27 January 2025 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 9,311,271 (“Patent Under Reissue” or “'271 Patent”) titled “METHOD AND SYSTEM FOR LOGGING VEHICLE BEHAVIOR.”
An application for the Patent Under Reissue was filed on 24 July 2013 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 13/994,455 (“Base Application” or “'455 Application”) and issued on 12 April 2016 with claims 1–7 (“Originally Patented Claims”).
The '271 Patent was subject to inter partes review (“IPR”). See IPR2023-00911 (“'911 IPR”). The results of the '911 IPR are published in IPR certificate no. US 9,311,271 K1, which is now attached to the '271 Patent. The results show that claims 1, 3, 4, 6, and 7 of the Originally Patented Claims are cancelled. Id.
On 21 August 2025, the Office mailed a non-final Office action (“Aug 2025 Non-Final Action”). Notably, all claims of the Instant Proceeding were rejected in the Aug 2025 Non-Final Action.
On 21 January 2026, Applicant filed a response to the Aug 2025 Non-Final Action (“Jan 2026 Response”).
On 27 February 2026, the Office mailed a Notice of Non-compliant Amendment (“Feb 2026 Notice of Non-Compliance”). The Feb 2026 Notice of Non-Compliance indicated that the claim amendments filed in the Jan 2026 Response did not comply with 37 CFR §§ 1.121 and 1.173.
On 27 April 2026, Applicant filed a response to the Feb 2026 Notice of Non-Compliance (“April 2026 Response”).
This Office action addresses the Jan 2026 Response and the April 2026 Response.
ADDITIONAL TERMS
The following terms may appear in this Office action and, unless expressly noted otherwise, are defined as follows:
“POSITA” refers to a Person of Ordinary Skill in the Art.
“BRI” refers to Broadest Reasonable Interpretation.
“MPEP” refers to Manual of Patent Examining Procedure, Ninth Edition, Rev. 01.2024.
“IFW” refers to Image File Wrapper.
“35 USC” refers to Title 35 of the United States Code.
“37 CFR” refers to Title 37 of the Code of Federal Regulations.
“AIA ” refers to America Invents Act.
“Original Application” means the prosecution history of the Base Application, including the applications in the patent family’s entire prosecution history. See MPEP § 1412.02.
“Original Disclosure” means the substantive sections of the Base Application (i.e., the abstract, drawings, specification, and original claims) that were present in the Base Application on the Base Application Filing Date.
“Applicant” (uppercase) refers to the Applicant of the Instant Application.
“applicant” (lowercase) refers to an applicant(s) generally.
“patent owner” (lowercase) refers to a patent owner(s) generally and not the Applicant.
“Examiner” (uppercase) refers to the Examiner of the Instant Application.
“examiner” (lowercase) refers to an examiner(s) generally, e.g. the examiner of the Base Application, or any examiner(s) other than the Examiner.
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
STATUS OF CLAIMS
Claims 2, 5, and 8–32, as set forth in the April 2026 Response, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 2, 5, and 8–32 are rejected under 35 USC § 251.
Claims 2, 5, and 8–32 are rejected under 35 USC § 112, Second Paragraph.
Claims 2, 5, and 8–32 are rejected under 35 USC § 112, First Paragraph.
Claims 2, 5, 8–12, and 15–23 are rejected under 35 USC § 103.
Claim 2 is objected to.
PRIORITY AND AIA STATUS
National Stage Information. Based upon a review of the Instant Application, the Base Application, and the Patent Under Reissue, the Examiner finds the Base Application is a National Stage entry of PCT/GB2011/052491 (“International Application”) having an international filing date of 15 December 2011 (“International Application Filing Date”). To the extent the disclosure of the International Application supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the International Application Filing Date.
Foreign Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds the Instant Application contains a claim for benefit of foreign priority under 35 USC §§ 119(a)–(d) to the following foreign applications:
GB 1021292.6 (“P1”) filed on 15 December 2010 (“P1 Filing Date”);
GB 1101259.8 (“P2”) filed on 25 January 2011 (“P2 Filing Date”);
GB 1109759.9 (“P3”) filed on 10 June 2011 (“P3 Filing Date”); and
GB 1118777.0 (“P4”) filed on 31 October 2011 (“P4 Filing Date”).
To the extent the disclosure of P1 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P1 Filing Date.
To the extent the disclosure of P2 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P2 Filing Date.
To the extent the disclosure of P3 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P3 Filing Date.
To the extent the disclosure of P4 supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of the P4 Filing Date.
However, Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 USC § 112(a) or the first paragraph of pre-AIA 35 USC § 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of each of P1, P2, P3, and P4 fails to provide adequate support or enablement in the manner provided by pre-AIA 35 USC § 112, first paragraph for one or more claims of the Examined Claims. In particular, each of P1, P2, P3, and P4 fails to provide adequate support or enablement in the manner provided by pre-AIA 35 USC 112, first paragraph for at least the following claim limitations:
(1) “determine, based on inputs received by the user interface and a sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle” (claim 8); and
(2) “process, using the processor, the sensor data representing at least acceleration of the vehicle and position of the vehicle from the sensor set to generate derived driving information representing how safely the vehicle is being driven by the driver throughout the driving period, wherein the driving period is defined by a duration of a vehicle journey, and the derived driving information includes a driving score, and wherein the processing of the sensor data, by the processor, includes determining a driving incident occurring within the driving period by comparing the sensor data against at least one predetermined threshold value and detecting the driving incident when the sensor data exceeds the at least one predetermined threshold, the driving incident including at least one of a harsh braking, a harsh acceleration, a harsh swerving or a vehicle accident; generate the derived driving information without data from the vehicle or the vehicle's sensors throughout the driving period in which the mobile telecommunications device is removably attached to the vehicle and the vehicle is being driven by the driver, the derived driving information being based on inputs received by the user interface of the mobile telecommunications device and the sensor data; […] the remote data-logging server being further arranged to process the driving information logged to the corresponding account to generate a further driving score used to determine a risk profile for at least one of the vehicle and the driver” (claim 13).
AIA Status. Because the P1 Filing Date, the P2 Filing Date, the P3 Filing Date, and/or the P4 Filing Date is before 16 March 2013, the America Invents Act First Inventor to File (“AIA -FITF”) provisions do not apply. Instead, the pre-AIA “First to Invent” provisions will govern this proceeding. See 35 USC § 100 (note). In the event the determination of the status of the application as subject to pre-AIA 35 USC §§ 102 and 103 is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
INFORMATION CONSIDERED
The Information Disclosure Statement filed on 21 January 2026 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
PRIOR ART CITED
The following prior art patents and printed publications are cited in a prior art rejection:
U.S. Patent Application Publication 2011/0153367 A1 (“Amigo”);
U.S. Patent Application Publication 2011/0224868 A1 (“Collings”);
International Publication Number WO 2011/146466 A2 (“Collins”);
U.S. Patent Application Publication 2011/0307188 A1 (“Peng”);
U.S. Patent 7,821,421 (“Tamir”);
U.S. Patent Application Publication 2008/0319602 A1 (“McClellan”); and
U.S. Patent Application Publication 2010/0030540 A1 (“Choi”).
DECLARATION
The reissue declaration filed with the Jan 2026 Response (“Jan 2026 Reissue Declaration”) is defective because it fails to properly identify at least one error which is relied upon to support the reissue application. See 37 CFR § 1.175 and MPEP § 1414.
Applicant is respectfully reminded, “the oath/declaration must specifically identify an error” and “[a]ny error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP § 1414 II.C. (emphasis added).
The January 2025 Declaration states “There are errors in claims 1, 3, 4, 6, and 7 of U.S. Patent No. 9,311,271 (the '271 patent), because these claims were found unpatentable by the Patent Trial and Appeal Board (‘PTAB’) as being obvious under 35 U.S.C. § 103(a) in view of various combinations of prior art in IPR2023-00911 pursuant to a Final Written Decision (Paper 28), dated November 25, 2024, and accordingly, these claims were canceled pursuant to an IPR Certificate, dated February 28, 2025. Because claims 1, 3, 4, 6, and 7 were found obvious by the PTAB, they were erroneously issue in the 271 patent.”
The above statement says “[t]here are errors” but does not indicate what each error is. The above statement also does not reference specific claim language. Therefore, the Jan 2026 Declaration does not identify an error by reference to a specific claim and does not identify the error by reference to specific claim language wherein lies the error. Accordingly, the reissue declaration does not comply with 37 CFR § 1.175.
A reissue declaration, properly identifying at least one error which is relied upon to support the reissue application, is required in response to this Office action.
CLAIM OBJECTIONS
37 CFR § 1.173(d) states:
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), and a “Sequence Listing XML” (§ 1.831(a)) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
Based upon a review of the claim amendments filed with the April 2026 Response, and in light of 37 CFR § 1.173(d), the Examiner finds amended claim 2 is improperly marked up. All matter to be added or deleted by reissue must be indicated by underlining and bracketing, respectively, in accordance with Rule 173(d). Appropriate correction is required.
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims.1 Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
application (n.) “A program designed to assist in the performance of a specific task, such as word processing, accounting, or inventory management.” Microsoft Computer Dictionary (5th Ed. 2002).
computer (n.) “Any device capable of processing information to produce a desired result. […].” Microsoft Computer Dictionary (5th Ed. 2002).
during (prep.) “1. Throughout the course or duration of: suffered food shortages during the war.” The American Heritage Dictionary of the English Language (3rd Ed. 1992).
executable (adj.) “Of, pertaining to, or being a program file that can be run. Executable files have extensions such as .bat, .com, and .exe.” Microsoft Computer Dictionary (5th Ed. 2002).
instruction (n.) “An action statement in any computer language, most often in machine or assembly language. Most programs consist of two types of statements: declarations and instructions.” Microsoft Computer Dictionary (5th Ed. 2002).
mobile computing (n.) “The process of using a computer while traveling. Mobile computing usually requires a portable computer that is battery powered, rather than a desktop system.” Microsoft Computer Dictionary (5th Ed. 2002).
portable computer (n.) “Any computer designed to be moved easily. Portable computers can be characterized by size and weight. See the table.” Microsoft Computer Dictionary (5th Ed. 2002).
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server (n.) “1. On a local area network (LAN), a computer running administrative software that controls access to the network and its resources, such as printers and disk drives, and provides resources to computers functioning as workstations on the network. 2. On the Internet or other network, a computer or program that responds to commands from a client. For example, a file server may contain an archive of data or program files; when a client submits a request for a file, the server transfers a copy of the file to the client.” Microsoft Computer Dictionary (5th Ed. 2002).
telecommunications (n.) “The transmission and reception of information of any type, including data, television pictures, sound, and facsimiles, using electrical or optical signals sent over wires or fibers or through the air.” Microsoft Computer Dictionary (5th Ed. 2002).
CLAIM INTERPRETATION UNDER 35 USC § 112, SIXTH PARAGRAPH
The following is a quotation of pre-AIA 35 USC § 112, Sixth Paragraph2:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
“Application of 35 U.S.C. 112[ ¶ 6] is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35 U.S.C. 112, sixth paragraph ‘merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation’).” MPEP § 2181 I.
“A claim limitation is presumed to invoke 35 U.S.C. 112[ ¶ 6] when it explicitly uses the term ‘means’ or ‘step’ and includes functional language. The presumption that 35 U.S.C. 112[ ¶ 6] applies is overcome when the limitation further includes the structure, material or acts necessary to perform the recited function.” MPEP § 2181 I.
“By contrast, a claim limitation that does not use the term ‘means’ or ‘step’ will trigger the rebuttable presumption that 35 U.S.C. 112[ ¶ 6] does not apply. […]. Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome. The presumption that 35 U.S.C. 112[ ¶ 6] does not apply to a claim limitation that does not use the term ‘means’ is overcome when ‘the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.’ Williamson[ v. Citrix Online, LLC], 792 F.3d [1339,] 1349[…] (Fed. Cir. 2015) (en banc) (quoting Watts v. XL Systems, Inc., 232 F.3d 877, 880, 56 USPQ2d 1836, 1838 (Fed. Cir. 2000).” MPEP § 2181 I. (internal quotations of Williamson removed).
However, “section 112, ¶ 6, […] with respect to steps, […] is implicated only when steps plus function without acts are present. […] claiming a step by itself, or even a series of steps, does not implicate section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997) (emphasis in original).
In other words, “[m]erely claiming a step without recital of a function is not analogous to a means plus a function.” O.I. Corp. v. Tekmar Co., id. (emphasis added).
Accordingly, examiners will apply 35 U.S.C. 112[ ¶ 6] to a claim limitation if it meets the following 3-prong analysis:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
MPEP § 2181 I.
“Each claim must be independently reviewed in order to determine if it is subject to the requirements of section 112, ¶ 6.” O.I. Corp. v. Tekmar Co., id.
In view of the above MPEP and Federal Circuit guidance, the Examiner has evaluated each claim under the 3-Prong Analysis set forth in MPEP § 2181 I. to determine whether any of the claim elements are subject to the requirements of § 112 ¶ 6. In the sections that follow, the Examiner will identify each claim limitation that is subject to the requirements of § 112 ¶ 6.
Functional Phrase #1 or FP#1
The first functional phrase to be considered is “downloaded application comprising […] computer-executable instructions comprises an algorithm, which when executed by the processor, causes the mobile telecommunications device to: [1] determine, based on inputs received by the user interface and a sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle […] [and] [2] register the start of the driving period.” Claims 8 and 13–14 (“Functional Phrase #1” or “FP#1”).
For purpose of discussion below, FP#1 is broken into the following three parts:
“downloaded application comprising […] computer-executable instructions comprises an algorithm” (“Introductory Phrase of FP#1);
“which when executed by the processor, causes the mobile telecommunications device to” (“Linking Phrase of FP#1); and
“[1] determine, based on inputs received by the user interface and a sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle […] [and] [2] register the start of the driving period” (“Function of FP#1”).
Prong (A)
In accordance with the MPEP, Prong (A) requires “the claim limitation uses the term ‘means’ […] or a term used as a substitute for ‘means’ that is a generic placeholder […] for performing the claimed function.”3 MPEP § 2181 I. (“Prong (A)”).4
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome. “Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome.” MPEP § 2181 I.
With respect to the presumption that 35 USC § 112 ¶ 6 is not invoked, “[t]he question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112 ¶ 6 if it recites ‘function without reciting sufficient structure for performing that function.’ Williamson, 792 F.3d at 1348 (emphasis added) (quoting Watts, 232 F.3d at 880). [Emphasis in original.]” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1374 (Fed. Cir. 2020).
“And, again, the question is not whether [the claim term] is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.” Egenera at 1374 (emphasis added).
To help understand the meaning of “sufficient structure,” the MPEP and the Federal Circuit have stated that:
Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.
See MPEP § 2181 I. quoting TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008).
Moreover, in assessing whether or not FP#1 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#1 in isolation, but the entire FP#1 including the Function of FP#1. See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019) (“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.”).
Based upon the ordinary meaning of the claim language, a consultation of dictionaries, and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#1 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#1. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#1, the Examiner finds that the claim language itself within FP#1 does not recite an algorithm for accomplishing the Function of FP#1. The Examiner also finds that the remainder of each of claims 8 and 13–14 also does not recite a complete algorithm for accomplishing the Function of FP#1. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#1 is not expressly recited in each of claims 8 and 13–14.5
Furthermore, the Examiner has looked to both general and subject matter specific dictionaries6 and finds no evidence that the Introductory Phrase of FP#1, i.e., the term “downloaded application comprising […] computer-executable instructions comprises an algorithm,” has achieved recognition as a term denoting structure for performing the Function of FP#1. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” has achieved recognition as denoting structure for performing the Function of FP#1.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” is not an art-recognized structure to perform the Function of FP#1, and each of claims 8 and 13–14 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “downloaded application comprising […] computer-executable instructions comprises an algorithm” is not an art-recognized structure to perform the Function of FP#1, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#1 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#1 does not include sufficient structure for performing the Function of FP#1. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “downloaded application comprising […] computer-executable instructions comprises an algorithm” is a generic placeholder for performing the Function of FP#1, and therefore FP#1 meets Prong (A).
Prong (B)
In accordance with the MPEP, Prong (B) requires “the term ‘means’ […] or the generic placeholder is modified by functional language, typically, but not always linked by the transition word ‘for’ […] or another linking word or phrase, such as ‘configured to’ or ‘so that.’” MPEP § 2181 I. (“Prong (B)”).
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#1 (generic placeholder) is modified by the Function of FP#1 (functional language) linked by the Linking Phrase of FP#1. Therefore, the Examiner concludes that FP#1 meets Prong (B).
Prong (C)
In accordance with the MPEP, Prong (C) requires “the term ‘means’ […] or the generic placeholder is not modified by sufficient structure […] for performing the claimed function.” MPEP § 2181 I. (“Prong (C)”).
Based upon a review of FP#1, and for reasons already discussed above, the Examiner finds that FP#1 does not contain sufficient structure for performing the entire Function of FP#1. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#1 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#1 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#1.
Because FP#1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 meets Prong (C). Because FP#1 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#1 invokes § 112 ¶ 6.
Corresponding Structure for FP#1
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, if the claimed phase is meant to cover software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#1 to sufficient corresponding structure (i.e., an algorithm) found in the specification. See at least the '271 Patent at C3:L25–38 and C18:L30–39 for the closest disclosure of an algorithm.7 First, there is no disclosure of the entire Function of FP#1 such that the Examiner could find anything clearly linked or associated with the Function of FP#1. For example, there is no disclosure of “determine […] a start of a driving period determined automatically […] the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle” clearly linked or associated with corresponding structure (e.g., an algorithm). Second, there is no disclosure of an algorithm (software structure) describing how to determine the start of the driving period “defined as a duration from a start to an end of a vehicle journey of the vehicle,” as claimed, based on both user input from the user interface and input from sensor data. As a first example, there is no disclosure of a particular “predetermined threshold” that would satisfy “the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. Figure 12 shows an example threshold as a speed of 45 mph; however, that particular threshold would not result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. As a second example, there is no disclosure of a particular input received by the user interface that would satisfy “the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C3:L25–30 an example input is given as “the user manually executing the application;” however, that particular input would not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C18:L30–39 another example input is given as “start of the driving period may be manually entered by the user via the […] GUI;” however, that particular input would also not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#1 to sufficient corresponding structure, claims 8 and 13–14 are indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claims 8 and 13–14.
Functional Phrase #2 or FP#2
The second functional phrase to be considered is “downloaded application comprising […] computer-executable instructions comprises an algorithm, which when executed by the processor, causes the mobile telecommunications device to: determine, based on inputs received by the user interface and a sensor data from the sensor set, wherein the sensor data received from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle.” Claim 11 (“Functional Phrase #2” or “FP#2”).
For purpose of discussion below, FP#2 is broken into the following three parts:
“downloaded application comprising […] computer-executable instructions comprises an algorithm” (“Introductory Phrase of FP#2);
“which when executed by the processor, causes the mobile telecommunications device to” (“Linking Phrase of FP#2); and
“determine, based on inputs received by the user interface and a sensor data from the sensor set, wherein the sensor data received from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle” (“Function of FP#2”).
Prong (A)
As an initial matter, the Examiner finds that FP#2 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
Moreover, in assessing whether or not FP#2 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#2, but the entire FP#2 including the Function of FP#2.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#2 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#2. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#2, the Examiner finds that the claim language itself within FP#2 does not recite an algorithm for accomplishing the Function of FP#2. The Examiner also finds that the remainder of claim 11 also does not recite an algorithm for accomplishing the Function of FP#2. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#2 is not expressly recited in claim 11.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” has achieved recognition as a term denoting structure to perform the Function of FP#2. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” has achieved recognition as denoting structure to perform the Function of FP#2.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” is not an art-recognized structure to perform the Function of FP#2, and claim 11 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “downloaded application comprising […] computer-executable instructions comprises an algorithm” is not an art-recognized structure to perform the Function of FP#2, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#2 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#2 does not include sufficient structure for performing the Function of FP#2. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “downloaded application comprising […] computer-executable instructions comprises an algorithm” is a generic placeholder for performing the Function of FP#2, and therefore FP#2 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#2 (generic placeholder) is modified by the Function of FP#2 (functional language) linked by the Linking Phrase of FP#2. Therefore, the Examiner concludes that FP#2 meets Prong (B).
Prong (C)
Based upon a review of FP#2, and for reasons already discussed above, the Examiner finds that FP#2 does not contain sufficient structure for performing the entire Function of FP#2. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#2 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#2 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#2.
Because FP#2 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#2 meets Prong (C). Because FP#2 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#2 invokes § 112 ¶ 6.
Corresponding Structure for FP#2
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#2 to sufficient corresponding structure (i.e., an algorithm) found in the specification. See at least the '271 Patent at C3:L25–38 and C18:L30–39 for the closest disclosure of an algorithm.8 First, there is no disclosure of the entire Function of FP#2 such that the Examiner could find anything clearly linked or associated with the Function of FP#2. For example, there is no disclosure of “determine […] a start of a driving period […] the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle” clearly linked or associated with corresponding structure (e.g., an algorithm). Second, there is no disclosure of an algorithm (software structure) describing how to determine the start of the driving period “defined as a duration from a start to an end of a vehicle journey of the vehicle,” as claimed, based on both user input from the user interface and input from sensor data. As a first example, there is no disclosure of a particular “predetermined value” that would satisfy “the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. Figure 12 shows an example predetermined value as a speed of 45 mph; however, that particular value would not result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. As a second example, there is no disclosure of a particular input received by the user interface that would satisfy “the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C3:L25–30 an example input is given as “the user manually executing the application;” however, that particular input would not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. At C18:L30–39 another example input is given as “start of the driving period may be manually entered by the user via the […] GUI;” however, that particular input would also not necessarily result in a determination of a start of a driving period as “a duration from a start to an end of a vehicle journey of the vehicle,” as claimed.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#2 to sufficient corresponding structure, claim 11 is indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claim 11.
Functional Phrase #3 or FP#3
The third functional phrase to be considered is “downloaded application comprising […] computer-executable instructions comprises an algorithm, which when executed by the processor, causes the mobile telecommunications device to: […] process, using the processor, the sensor data representing at least acceleration of the vehicle and position of the vehicle from the sensor set to generate derived driving information […] and the derived driving information includes a driving score.” Claims 13 and 14 (“Functional Phrase #3” or “FP#3”).
For purpose of discussion below, FP#3 is broken into the following three parts:
“downloaded application comprising […] computer-executable instructions comprises an algorithm” (“Introductory Phrase of FP#3);
“which when executed by the processor, causes the mobile telecommunications device to” (“Linking Phrase of FP#3); and
“process, using the processor, the sensor data representing at least acceleration of the vehicle and position of the vehicle from the sensor set to generate derived driving information […] and the derived driving information includes a driving score” (“Function of FP#3”).
Prong (A)
As an initial matter, the Examiner finds that FP#3 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
Moreover, in assessing whether or not FP#3 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#3, but the entire FP#3 including the Function of FP#3.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#3 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#3. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#3, the Examiner finds that the claim language itself within FP#3 does not recite an algorithm for accomplishing the Function of FP#3. The Examiner also finds that the remainder of each of claims 13 and 14 also does not recite an algorithm for accomplishing the Function of FP#3. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#3 is not expressly recited in either of claims 13 or 14.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” has achieved recognition as a term denoting structure to perform the Function of FP#3. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” has achieved recognition as denoting structure to perform the Function of FP#3.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “downloaded application comprising […] computer-executable instructions comprises an algorithm” is not an art-recognized structure to perform the Function of FP#3, and each of claims 13 and 14 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “downloaded application comprising […] computer-executable instructions comprises an algorithm” is not an art-recognized structure to perform the Function of FP#3, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#3 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#3 does not include sufficient structure for performing the Function of FP#3. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “downloaded application comprising […] computer-executable instructions comprises an algorithm” is a generic placeholder for performing the Function of FP#3, and therefore FP#3 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#3 (generic placeholder) is modified by the Function of FP#3 (functional language) linked by the Linking Phrase of FP#3. Therefore, the Examiner concludes that FP#3 meets Prong (B).
Prong (C)
Based upon a review of FP#3, and for reasons already discussed above, the Examiner finds that FP#3 does not contain sufficient structure for performing the entire Function of FP#3. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#3 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#3 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#3.
Because FP#3 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#3 meets Prong (C). Because FP#3 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#3 invokes § 112 ¶ 6.
Corresponding Structure for FP#3
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#3 to sufficient corresponding structure (i.e., an algorithm) found in the specification.
For example, Applicant’s specification discloses “Preferably, the mobile device is controlled by the executed application to process the driving information to generate a driving score. The driving information may comprise the driving score.” Patent Under Reissue, C10:L13–16.
The disclosure noted above is insufficient because the specification simply discloses language similar to the Function of FP#3, but does not disclose an algorithm or other sufficient corresponding structure clearly linked or associated with the Function of FP#3.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#3 to sufficient corresponding structure, claims 13 and 14 are indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claims 13 and 14.
Functional Phrase #4 or FP#4
The fourth functional phrase to be considered is “remote data logging server […] arranged to process the driving information logged to the corresponding account to generate a further driving score used to determine a risk profile for at least one of the vehicle and the driver.” Claims 13 and 14 (“Functional Phrase #4” or “FP#4”).
For purpose of discussion below, FP#4 is broken into the following three parts:
“remote data logging server” (“Introductory Phrase of FP#4);
“arranged to” (“Linking Phrase of FP#4); and
“process the driving information logged to the corresponding account to generate a further driving score used to determine a risk profile for at least one of the vehicle and the driver” (“Function of FP#4”).
Prong (A)
As an initial matter, the Examiner finds that FP#4 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
Moreover, in assessing whether or not FP#4 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#4, but the entire FP#4 including the Function of FP#4.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#4 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#4. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#4, the Examiner finds that the claim language itself within FP#4 does not recite an algorithm for accomplishing the Function of FP#4. The Examiner also finds that the remainder of each of claims 13 and 14 also does not recite an algorithm for accomplishing the Function of FP#4. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#4 is not expressly recited in each of claims 13 and 14.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “remote data logging server” has achieved recognition as a term denoting structure to perform the Function of FP#4. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “remote data logging server” has achieved recognition as denoting structure to perform the Function of FP#4.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “remote data logging server” is not an art-recognized structure to perform the Function of FP#4, and each of claims 13 and 14 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “remote data logging server” is not an art-recognized structure to perform the Function of FP#4, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#4 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#4 does not include sufficient structure for performing the Function of FP#4. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “remote data logging server” is a generic placeholder for performing the Function of FP#4, and therefore FP#4 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#4 (generic placeholder) is modified by the Function of FP#4 (functional language) linked by the Linking Phrase of FP#4. Therefore, the Examiner concludes that FP#4 meets Prong (B).
Prong (C)
Based upon a review of FP#4, and for reasons already discussed above, the Examiner finds that FP#4 does not contain sufficient structure for performing the entire Function of FP#4. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#4 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#4 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#4.
Because FP#4 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#4 meets Prong (C). Because FP#4 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#4 invokes § 112 ¶ 6.
Corresponding Structure for FP#4
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#4 to sufficient corresponding structure (i.e., an algorithm) found in the specification.
For example, Applicant’s specification discloses “Preferably, the system is arranged to process the driving information logged to the corresponding account to generate a driving score. The driving score may be used to determine a risk profile for at least one of the vehicle and driver. The driving score may be used to define an insurance premium associated with the account.” Patent Under Reissue, C12:L4–9.
The disclosure noted above is insufficient because the specification simply discloses language similar to the Function of FP#4, but does not disclose an algorithm or other sufficient corresponding structure clearly linked or associated with the Function of FP#4.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#4 to some corresponding structure, claims 13 and 14 are indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claims 13–14.
Functional Phrase #5 or FP#5
The fifth functional phrase to be considered is “mobile telecommunications device configured to: [1] determine, based on inputs received by the user interface and a sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use; […] [and] [2] register the start of the driving period in response to an initialization input generated automatically in response to the sensor data having predetermined values, wherein the initialization input is generated in response to the sensor data reflecting a detected speed above a predetermined threshold.” Claim 2 (“Functional Phrase #5” or “FP#5”).
For purpose of discussion below, FP#5 is broken into the following three parts:
“mobile telecommunications device” (“Introductory Phrase of FP#5);
“configured to” (“Linking Phrase of FP#5); and
“[1] determine, based on inputs received by the user interface and a sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use; […] [and] [2] register the start of the driving period in response to an initialization input generated automatically in response to the sensor data having predetermined values, wherein the initialization input is generated in response to the sensor data reflecting a detected speed above a predetermined threshold” (“Function of FP#5”).
Prong (A)
As an initial matter, the Examiner finds that FP#5 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
Moreover, in assessing whether or not FP#5 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#5, but the entire FP#5 including the Function of FP#5.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#5 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#5. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#5, the Examiner finds that the claim language itself within FP#5 does not recite an algorithm for accomplishing the Function of FP#5. The Examiner also finds that the remainder of claim 2 also does not recite an algorithm for accomplishing the Function of FP#5. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#5 is not expressly recited in claim 2.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “mobile telecommunications device”9 has achieved recognition as a term denoting structure to perform the Function of FP#5. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “mobile telecommunications device” has achieved recognition as denoting structure to perform the Function of FP#5.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “mobile telecommunications device” is not an art-recognized structure to perform the Function of FP#5, and claim 2 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “mobile telecommunications device” is not an art-recognized structure to perform the Function of FP#5, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#5 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#5 does not include sufficient structure for performing the Function of FP#5. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “mobile telecommunications device” is a generic placeholder for performing the Function of FP#5, and therefore FP#5 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#5 (generic placeholder) is modified by the Function of FP#5 (functional language) linked by the Linking Phrase of FP#5. Therefore, the Examiner concludes that FP#5 meets Prong (B).
Prong (C)
Based upon a review of FP#5, and for reasons already discussed above, the Examiner finds that FP#5 does not contain sufficient structure for performing the entire Function of FP#5. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#5 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#5 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#5.
Because FP#5 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#5 meets Prong (C). Because FP#5 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#5 invokes § 112 ¶ 6.
Corresponding Structure for FP#5
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#5 to sufficient corresponding structure (i.e., an algorithm) found in the specification. See at least the '271 Patent at C3:L25–38 and C18:L30–39 for the closest disclosure of an algorithm.10 First, there is no disclosure of the entire Function of FP#5 such that the Examiner could find anything clearly linked or associated with the Function of FP#5. For example, there is no disclosure of “determine […] a start of a driving period” clearly linked or associated with corresponding structure (e.g., an algorithm). Second, there is no disclosure of an algorithm (software structure) describing how to determine the start of the driving period, as claimed, based on both user input from the user interface and input from sensor data.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#5 to sufficient corresponding structure, claim 2 is indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claim 2.
Functional Phrase #6 or FP#6
The sixth functional phrase to be considered is “mobile telecommunications device configured to: determine, based on inputs received by the user interface and a sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use.” Claim 5 (“Functional Phrase #6” or “FP#6”).
For purpose of discussion below, FP#6 is broken into the following three parts:
“mobile telecommunications device” (“Introductory Phrase of FP#6);
“configured to” (“Linking Phrase of FP#6); and
“determine, based on inputs received by the user interface and a sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use” (“Function of FP#6”).
Prong (A)
As an initial matter, the Examiner finds that FP#6 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
Moreover, in assessing whether or not FP#6 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#6, but the entire FP#6 including the Function of FP#6.
Based upon consultation of dictionaries and a review of the record (including a review of the prior art of record), the Examiner concludes that the Function of FP#6 is not coextensive with a general-purpose computer or microprocessor. Therefore, special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#6. See Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.”).
Based upon the express wording of FP#6, the Examiner finds that the claim language itself within FP#6 does not recite an algorithm for accomplishing the Function of FP#6. The Examiner also finds that the remainder of claim 5 also does not recite an algorithm for accomplishing the Function of FP#6. For at least these reasons, the Examiner finds that an algorithm to perform the entire Function of FP#6 is not expressly recited in claim 5.
Similar to the above analysis of FP#1, the Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “mobile telecommunications device” has achieved recognition as a term denoting structure to perform the Function of FP#6. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “mobile telecommunications device” has achieved recognition as denoting structure to perform the Function of FP#6.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “mobile telecommunications device” is not an art-recognized structure to perform the Function of FP#6, and claim 5 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “mobile telecommunications device” is not an art-recognized structure to perform the Function of FP#6, and because an algorithm is not expressly recited in the claim yet necessary structure for the Function of FP#6 (a special programming function; see above), the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#6 does not include sufficient structure for performing the Function of FP#6. See at least EON and TriMed, as cited above.
Therefore, the Examiner concludes that “mobile telecommunications device” is a generic placeholder for performing the Function of FP#6, and therefore FP#6 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#6 (generic placeholder) is modified by the Function of FP#6 (functional language) linked by the Linking Phrase of FP#6. Therefore, the Examiner concludes that FP#6 meets Prong (B).
Prong (C)
Based upon a review of FP#6, and for reasons already discussed above, the Examiner finds that FP#6 does not contain sufficient structure for performing the entire Function of FP#6. In particular, and as already noted above, because an algorithm is not expressly recited in the claim yet necessary for the Function of FP#6 (a special programming function), the Examiner concludes that the Introductory Phrase of FP#6 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#6.
Because FP#6 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#6 meets Prong (C). Because FP#6 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#6 invokes § 112 ¶ 6.
Corresponding Structure for FP#6
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#6 to sufficient corresponding structure (i.e., an algorithm) found in the specification. See at least the '271 Patent at C3:L25–38 and C18:L30–39 for the closest disclosure of an algorithm.11 First, there is no disclosure of the entire Function of FP#6 such that the Examiner could find anything clearly linked or associated with the Function of FP#6. For example, there is no disclosure of “determine […] a start of a driving period” clearly linked or associated with corresponding structure (e.g., an algorithm). Second, there is no disclosure of an algorithm (software structure) describing how to determine the start of the driving period, as claimed, based on both user input from the user interface and input from sensor data.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#6 to sufficient corresponding structure, claim 2 is indefinite under 35 USC § 112 ¶ 2. A rejection under 35 USC § 112 ¶ 2 is set forth below for claim 2.
CLAIM REJECTIONS – 35 USC § 251 (Improper Broadening)
Claims 2, 5, and 8–32 are rejected under 35 USC § 251 as being broadened in a reissue application filed outside the two year statutory period. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Regarding independent claim 2, the amendment “to register an attachment of the mobile telecommunications device to the vehicle” is improper broadening. The previous term “the attachment” clearly refers to a previously recited attachment present in the claim limitation “a driving period during which the mobile telecommunications device is removably attached to the vehicle,” of claim 2. The claim now covers “to register” a different attachment of the device, which would not infringe original patent claim 2.
Regarding independent claim 5, the amendment “wherein the driving information is derived without data from the vehicle or the vehicle’s sensors” is improper broadening. The claim now covers an alternative “without data from the vehicle,” which would not necessarily have infringed the original patent because the original patent requires “without data from vehicle sensors,” and “without data from the vehicle” can exclude data other than data from vehicle sensors. Independent claims 2, 8, 11, and 13–1412 (and their dependent claims) include similar amendments and thus are rejected on the same ground.
Regarding independent claim 8, the amendment removing the term “during” and replacing it with the term “at” is improper broadening. The Examiner interprets “during” to include “[t]hroughout the course or duration of.” See section titled “BROADEST REASONABLE INTERPRETATION (BRI),” supra. The claim now covers “a start of a driving period at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use,” i.e., the device is removably attached to the vehicle and the vehicle is in use “at” “a start of a driving period,” which would not have infringed the original patent because the original patent requires the device is removably attached to the vehicle and the vehicle is in use “during,” i.e., throughout the course or duration of, “the driving period,” i.e., the original claim 1 including the limitation “a start of a driving period during which the mobile device is removably attached to the vehicle and the vehicle is in use.” Dependent claims 9–10 and 15–21 fail to cure this deficiency of independent claim 8 (set forth directly above) and are rejected accordingly. Claims 11–14 and 22–32 contain language similar to claims 8–10 and 15–21, and for reasons similar to those discussed above, claims 11–14 and 22–32 are also rejected under 35 USC § 251 as being broadened in a reissue application filed outside the two year statutory period.
Regarding independent claim 8, the amendment “to register the start of the driving period
CLAIM REJECTIONS – 35 USC § 251 (Defective Declaration)
Claims 2, 5, and 8–32 are rejected as being based upon a defective reissue declaration under 35 USC § 251 as set forth above. See 37 CFR § 1.175.
The nature of the defects in the declaration is set forth in the discussion above in this Office action.
CLAIM REJECTIONS – 35 USC § 251 (New Matter)
Claims 2, 5, and 8–32 are rejected under 35 USC § 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is described below in subsection titled “New Matter.”
CLAIM REJECTIONS – 35 USC § 112, First Paragraph
The following is a quotation of the first paragraph of 35 USC § 112:
(a) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8–32 are rejected under 35 USC § 112, first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
New Matter
Claim 8 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitation introduces new matter, “a downloaded application comprising computer-executable instructions downloaded onto the memory, wherein the computer-executable instructions comprises an algorithm, which when executed by the processor, causes the mobile telecommunications device to: determine, based on inputs received by the user interface and sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle.” (Emphasis added by Examiner).
For example, the '271 Patent discloses “the user manually executing the application on the mobile device” as one example of input from a user interface used to “register the start of a driving period” (C3:L25–30). However, this does not support the claimed “application comprising computer-executable instructions downloaded onto the memory, wherein the computer-executable instructions comprises an algorithm, when executed by the processor, causes the mobile telecommunications device to: determine, based on inputs received by the user interface and sensor data from the sensor set, […], a start of a driving period determined automatically at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle” (emphasis added by Examiner), as now claimed, since a POSITA would understand that the user manually executing the application is not necessarily an input from the user interface to determine the start of the driving period “defined as a duration from a start to an end of a vehicle journey of the vehicle,” as claimed. For example, the disclosure noted above does not specify that the manual user execution of the application occurs at the “start […] of a vehicle journey,” as required by the claim.
Moreover, as a second example of input from a user interface used to register the start of a driving period, the '271 Patent discloses “The start of a driving period may be manually entered by the user via the application’s graphical user interface (GUI).” C18:L32–34. However, in this example, and the text surrounding this example, the '271 Patent discloses that the input from the user interface is used as one alternative, and sensor data is used as a second alternative, but they are not used in combination to determine the start of the driving period, as claimed. Furthermore, this second example does not disclose that the user enters the start of the driving period such that “the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle,” as now claimed.
Second, the Examiner cannot locate any other disclosure providing sufficient written description of an application (when executed) causes the device to determine “a start of a driving period” based on inputs from the user interface and sensor data and also where the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle, as now claimed. For example, while the '271 Patent discloses the optional objective “the application may include measures to guarantee that the application is enabled whenever a given insured vehicle is being driven,” e.g., “the Witness application records the distance traveled during every journey” (C29:L61–67; emphasis added), there is no disclosure of “a start of a driving period” determined based on inputs from the user interface and sensor data and also where the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle, so that the optional objective disclosed is reached in the manner claimed. Instead, the disclosed solution to this optional objective is to compare mileage entered by the user to mileage tracked by the Witness application, and taking an appropriate action if there is a “substantial discrepancy” ('271 Patent at C29:L64–C30:L11). However, such a solution clearly does not require “a start of a driving period” determined based on inputs from the user interface and sensor data and also where the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle, as now claimed.
Moreover, the above noted disclosure of the '271 Patent does not support the newly added “algorithm” or “driving period determined automatically.” Therefore, these new limitations are also new matter.
Dependent claims 9–10 and 15–21 fail to cure this deficiency of independent claim 8 (set forth directly above) and are rejected accordingly.
Claims 11–14 and 22–32 contain language similar to claims 8–10 and 15–21 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 11–14 and 22–32 are also rejected under 35 USC § 112 as failing to comply with the written description requirement.
CLAIM REJECTIONS – 35 USC § 112, Second Paragraph
The following is a quotation of the second paragraph of 35 USC § 112:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 5, and 8–32 are rejected under 35 USC § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention.
Insufficient Disclosure Of Corresponding Structure (Claims 2, 5, and 8–32)
As noted above, FP#1–FP#6 invokes 35 USC § 112, Sixth Paragraph. See above section titled “CLAIM INTERPRETATION UNDER 35 USC § 112, SIXTH PARAGRAPH.”
However, for each functional phrase, the Original Disclosure fails to disclose the corresponding structure for performing the entire claimed function and to clearly link the structure to the function. See above section titled “CLAIM INTERPRETATION UNDER 35 USC § 112, SIXTH PARAGRAPH” for an explanation of why the Original Disclosure does not include the corresponding structure. Therefore, claims 2, 5, and 8–32 are indefinite and are rejected under 35 USC § 112, Second Paragraph.
Contradictory Limitations (Claims 2, 5, and 8–32)
Claim 8 contains within its scope limitations that contradict one another. For example, the start of the driving period is determined by “sensor data reflecting a detected speed of the vehicle above a predetermined threshold.” An example threshold is 45 mph (see '271 Patent at fig. 12). In contradiction, the driving period is also “defined as a duration from a start to an end of a vehicle journey of the vehicle.”
Dependent claims 9–10 and 15–21 fail to cure this deficiency of independent claim 8 (set forth directly above) and are rejected accordingly.
Claims 11–14 and 22–32 contain language similar to claims 8–10 and 15–21 as discussed in the preceding paragraphs, and for reasons similar to those discussed above, claims 11–14 and 22–32 are also rejected under 35 USC § 112, Second Paragraph, as failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
Conclusion of 35 USC § 112, Second Paragraph Rejection
The Examiner has considered all limitations in the Examined Claims even though some claim limitations are indefinite. See MPEP § 2143.03 I. ¶1 noting that “[a] claim limitation which is considered indefinite cannot be disregarded.” However, the Examiner concludes that because claims 2, 5, and 8–32 are indefinite under § 112(b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Therefore in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections (or indicating allowance of the claims) even though certain claims are indefinite, these indefinite claims are construed and the prior art is currently applied as much as practically possible. Applicant is reminded that when a particular § 112(b) rejection is overcome by Applicant, and the claim limitation can then then be properly construed, the Examiner will reevaluate the prior art using this proper claim construction and then reassess the patentability of the claim over the prior art.
CLAIM REJECTIONS – 35 USC § 103
The following is a quotation of 35 USC § 103(a) which forms the basis for all obviousness rejections set forth in this Office Action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Obvious Over Amigo, in view of Collings and Collins
Claims 8, 15–19, and 21 are rejected under 35 USC § 103(a) as being unpatentable over Amigo, in view of Collings and Collins.
Claim 8
Amigo discloses [a] mobile telecommunications device (e.g., [0035], “smartphone 200”; fig. 3, 200; figs. 6–7) configured to log driving information associated with how safely a vehicle is being driven (e.g., [0008], “receiving, with a second processor, data based at least in part on telematics information indicative of the operation of the vehicle(s), and adjusting, with the second processor, an underwriting process, a premium determination process, and/or a workflow process, based on the received data.”), the mobile telecommunications device comprising:
a sensor set comprising an accelerometer and a positioning module
([0035], “smartphone or portable personal communications device with one or more telematics sensors, such as accelerometers and/or Global Positioning System sensors.”;
[0053], “The accelerometer 204 is configured to provide measurements of acceleration in three dimensions. Optionally, the smartphone 200 may include other telematics sensors, such as a Global Positioning System (GPS) sensor.”);
a user interface (fig. 6, 210; [0061]);
a processor (fig. 6, 206);
a memory (fig. 6, 208); and
a downloaded application comprising computer-executable instructions downloaded onto the memory ([0041], “The system also includes software operative to process telematics data received from telematics sensors in the smartphone […] user may then connect to the network address to download the software, either directly onto a smartphone or onto a computer which then transfers the software onto the smartphone”; [0062]), wherein the computer-executable instructions comprises an algorithm, which when executed by the processor, causes the mobile telecommunications device to:
determine […] a start of a driving period determined automatically at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, […]
([0077], “After locking the smartphone in the cradle in step 816, the system begins transmitting and/or recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”; [0086]);
process the sensor data from the sensor set throughout the driving period to derive a driving information associated with how safely the vehicle is being driven by a driver, the derived driving information representing movement of the vehicle throughout the driving period whilst the vehicle is being driven by the driver
([0037], “telematics information from telematics sensors within the smartphone can be calibrated with the known position/orientation information to provide telematics information that reflects vehicle behavior”;
[0087], “The received telematics information is then processed in step 1006 by, for example, smartphone processor 206. […]. For example, the smartphone processor 206 may combine information received from the smartphone accelerometer 204 with information about the position and orientation of the smartphone with respect to the vehicle in order to determine vehicle acceleration information. In addition, the processing may include summarizing telematics data collected over a period of time, filtering the raw data, encrypting, and/or compressing the telematics data.”); and
store a selection of the driving information to the memory (fig. 9, 902, “record telematics information”; [0084], “the process steps may be performed by a smartphone”),
wherein the derived driving information is derived without data from the vehicle or the vehicle’s sensors
([0077], “recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”;
[0079], “monitoring telematics information or changes in telematics information provided by a smartphone telematics sensor and/or a vehicle telematics sensor”); and […].
Amigo does not expressly disclose that the start of the driving period is determined by the device based on inputs received by the user interface and sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold and that the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle; wherein the mobile telecommunications device is controlled by the downloaded application to cause the mobile telecommunications device to register the start of the driving period.
Similar to Amigo, Collings is directed to recording, into a digital memory, data relating to driving habits of a driver over a period of time, and determining a driving behavior profile of the driver based on the data (abstract). Collings uses a “portable driving habit data recording device 100” that includes a plurality of sensors to record the data. See, e.g., [0021].
Collings teaches “[O]ne embodiment uses a device that a user places in an existing conventional vehicle. The device records in detail the vehicle travel over a period of time that would be representative of the user’s real world travel requirements and experiences. In this embodiment the device can record in detail such information as: the time of the conventional vehicles location, its speed, its acceleration and deceleration, its elevation, the external temperature, the internal temperature and other power related parameters. It would do so through the use of a GPS receiver, accelerometers, thermometers and other related sensors. The data would be stored in electronic memory inside the device. The data may be processed and the results displayed on the device or the data would be transferred to a central computer system via electronic cable connection or via a periodic wireless transfer. In one embodiment, the system could be embodied in an existing type of personal electronics device, such as a cellular telephone or a GPS device.” Collings at [0018].
Collings is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collings, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collings teaches,
determine, based on […] a sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle;
wherein the mobile telecommunications device is controlled […] to register the start of the driving period
([0027], “[W]hen the velocity is greater than zero, the position, date, and time are marked in the record as the trip start time. When […] the velocity equals zero, then the position, date, and time are marked in the record as the trip end time.”).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo to define the driving period as a start and end of a journey, and to register the start with respect to a speed above a predetermined threshold, as taught by Collings. One would have been motivated to do so in order to record the telematics data in Amigo on a per trip basis with a recorded date/time for trip start time and a recorded date/time for trip end time, as taught by Collings.
Furthermore, Amigo/Collings does not expressly teach that the start of the driving period is also determined by the device based on inputs received by the user interface.
Similar to Amigo, Collins is directed to monitoring, recording, and/or transmitting customer-selected data items relating to use of a customer’s vehicle. Collins at [0005]. The customer-selected data items are monitored “when [the customer] uses a certain vehicle” (Collins at [0060]) and is performed by a “telematics device […] compris[ing] one or more of a global navigation satellite system (GNSS) device, such as a global positioning system (GPS) device, a mobile phone or personal portable electronic device, an accelerometer, an RFID device, a trailer tracking device, and an intelligent vehicle device” (Collins at [0039]). Collins also teaches that the “telematics device may provide information regarding the vehicle and/or its operation by being present in the vehicle and transmitting a signal while the vehicle is operated without a connection to any vehicle system” (Collins at [0039]).
Collins is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collins, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collins teaches, a start of a driving period is determined by the device based on inputs received by the user interface
([0077], “In addition, different individuals who share a vehicle may login to a telematics device of that vehicle when, for example, they enter the vehicle. Moreover, the individual’s login may cause the system to reprogram the telematics device […] to conform to that individual’s settings in real time.”;
[0060], “the telematics device 302 may include a user input, such as a keypad, for example, with which the driver may identify who (e.g., family member) is driving.”).
In other words, Collins teaches that the monitoring, recording, or transmitting of the customer-selected data items begins with a customer login to the device and subsequent reprogramming of the device with the customer’s individual settings (i.e., an indication of the data items that the customer wishes to have monitored/gathered). Therefore, the start of the driving period (i.e., the period in which the particular data items are gathered for that particular customer) is determined based on input received by the user interface, as claimed.
Notably, the above teaching in Collins at [0077] is similar to Amigo’s disclosure at [0074], where “the system uses the biometric identification to load a profile that corresponds to the user. This profile may include, for example, maximum allowable speed, restricted geographic areas, and other user preferences and/or restrictions.” Here, Amigo’s device determines the start of the driving period in-part by user input, however, in Amigo, user input is not “by the user interface,” as claimed. However, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo/Collings to also determine the start of the driving period based on user input received by the user interface, as taught by Collins. One would have been motivated to do so in order to reduce the complexity and cost associated with the biometric sensor by instead using an authentication through the existing user interface of the smartphone.
Claim 15
Amigo, Collins, and Collings teach [t]he mobile telecommunications device of claim 8, wherein execution of the computer-executable instructions by the processor further causes the mobile telecommunications device to detect an end of the driving period in response to an ending input generated automatically in response to the sensor data having a predetermined end value (Collings [0027]).
Claim 16
Amigo, Collins, and Collings teach [t]he mobile telecommunications device of claim 15, wherein the end of the driving period is detected in response to the sensor data indicating the detected speed of the vehicle is less than a predetermined minimum threshold over a predetermined period of time (Collings [0027]).
Claim 17
Amigo, Collins, and Collings teach [t]he mobile telecommunications device of claim 8, wherein execution of the computer-executable instructions by the processor further causes the mobile telecommunications device to determine a driving incident occurring within the driving period by comparing the sensor data against at least one predetermined threshold value and detecting the driving incident when the sensor data exceeds the at least one predetermined threshold (Amigo, [0078], “The steady-state process begins at step 902, similar to step 818 in process 800, where the smartphone-based system […] records telematics information. The smartphone-based system may also perform other processing tasks in step 902 […]”; [0079], “Vehicle […] events may occur while the system is engaged in step 902. These events may include, without limitation […] the vehicle being involved in an accident, or vehicular incidents such as exceeding a particular speed limit or passing beyond a prescribed geographic area. If such an event occurs, the system first determines, in step 904, if it is a vehicle event […]. The system may determine if an event is a vehicle event by monitoring telematics information or changes in telematics information provided by a smartphone telematics sensor […]. For example, if the system detects a sudden deceleration […] it may determine that a vehicle event, such as an accident, has occurred.”; [0080], “If the system determines that a vehicle event has occurred, such as an accident, the system will log information related to the incident (step 906). This information may include geographic location, vehicle speed, time of day, weather conditions, acceleration or deceleration, or any other information from smartphone telematics sensors […]. The system may then determine the type of incident and a suitable response (step 908), based in part on the information logged in step 906.”).
Claim 18
Amigo, Collins, and Collings teach [t]he mobile telecommunications device of claim 17, wherein the driving period comprises a plurality of portions of time throughout the driving period, and the driving incident is determined by a marked variation in a change of the sensor data over at least a portion of the plurality of portions of time during the driving period indicative of a difference in a state of motion of the vehicle occurring during the driving period (Amigo [0079]–[0081], e.g., “sudden deceleration”).
Claim 19
Amigo, Collins, and Collings teach [t]he mobile telecommunications device of claim 17, wherein execution of the computer-executable instructions by the processor further causes the mobile telecommunications device to transmit at least some of the derived driving information including the driving incident to a remote data-logging server (Amigo [0079]–[0081]).
Claim 21
Amigo, Collins, and Collings teach [t]he mobile telecommunications device of claim 8, wherein the processing of the sensor data, includes determining a driving incident concerning movement of the vehicle, occurring within the driving period by comparing the sensor data against at least one predetermined threshold value, and detecting the driving incident when the sensor data exceeds the at least one predetermined threshold, the driving incident including at least one of harsh breaking, harsh acceleration, harsh swerving or a vehicle accident (Amigo, [0078], “The steady-state process begins at step 902, similar to step 818 in process 800, where the smartphone-based system […] records telematics information. The smartphone-based system may also perform other processing tasks in step 902 […]”; [0079], “Vehicle […] events may occur while the system is engaged in step 902. These events may include, without limitation […] the vehicle being involved in an accident, or vehicular incidents such as exceeding a particular speed limit or passing beyond a prescribed geographic area. If such an event occurs, the system first determines, in step 904, if it is a vehicle event […]. The system may determine if an event is a vehicle event by monitoring telematics information or changes in telematics information provided by a smartphone telematics sensor […]. For example, if the system detects a sudden deceleration […] it may determine that a vehicle event, such as an accident, has occurred.”; [0080], “If the system determines that a vehicle event has occurred, such as an accident, the system will log information related to the incident (step 906). This information may include geographic location, vehicle speed, time of day, weather conditions, acceleration or deceleration, or any other information from smartphone telematics sensors […]. The system may then determine the type of incident and a suitable response (step 908), based in part on the information logged in step 906.”).
Obvious Over Amigo, in view of Collings, Collins, and Peng
Claims 2 and 9 are rejected under 35 USC § 103(a) as being unpatentable over Amigo, in view of Collings, Collins, and Peng.
Claim 2
Amigo discloses [a] mobile telecommunications device (e.g., [0035], “smartphone 200”; fig. 3, 200; figs. 6–7) configured to log driving information associated with a vehicle (e.g., [0008], “receiving, with a second processor, data based at least in part on telematics information indicative of the operation of the vehicle(s), and adjusting, with the second processor, an underwriting process, a premium determination process, and/or a workflow process, based on the received data.”), the mobile telecommunications device comprising:
a sensor set comprising an image sensor, an audio sensor, an accelerometer, a positioning module, or a combination thereof
([0035], “smartphone or portable personal communications device with one or more telematics sensors, such as accelerometers and/or Global Positioning System sensors.”;
[0053], “The accelerometer 204 is configured to provide measurements of acceleration in three dimensions. Optionally, the smartphone 200 may include other telematics sensors, such as a Global Positioning System (GPS) sensor.”);
a user interface (fig. 6, 210; [0061]);
a processor (fig. 6, 206); and
a memory (fig. 6, 208);
the mobile telecommunications device configured[, via a downloaded application,] [0041], “The system also includes software operative to process telematics data received from telematics sensors in the smartphone […] user may then connect to the network address to download the software, either directly onto a smartphone or onto a computer which then transfers the software onto the smartphone”; [0062]) to:
determine […] a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use
([0077], “After locking the smartphone in the cradle in step 816, the system begins transmitting and/or recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”; [0086]);
process the sensor data from the sensor set during the driving period to derive driving information associated with how the vehicle is driven
([0037], “telematics information from telematics sensors within the smartphone can be calibrated with the known position/orientation information to provide telematics information that reflects vehicle behavior”;
[0087], “The received telematics information is then processed in step 1006 by, for example, smartphone processor 206. […]. For example, the smartphone processor 206 may combine information received from the smartphone accelerometer 204 with information about the position and orientation of the smartphone with respect to the vehicle in order to determine vehicle acceleration information. In addition, the processing may include summarizing telematics data collected over a period of time, filtering the raw data, encrypting, and/or compressing the telematics data.”); and
store a selection of the driving information to the memory (fig. 9, 902, “record telematics information”; [0084], “the process steps may be performed by a smartphone”),
wherein the driving information is derived without data from the vehicle or the vehicle’s sensors
([0077], “recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”;
[0079], “monitoring telematics information or changes in telematics information provided by a smartphone telematics sensor and/or a vehicle telematics sensor”); […], and wherein the mobile telecommunications device is further configured to register an attachment of the mobile telecommunications device to the vehicle (Amigo at [0076]–[0077]) and […].
Amigo does not expressly disclose that the start of the driving period is determined by the device based on inputs received by the user interface and a sensor data from the sensor set; wherein the mobile telecommunications device is controlled by [the] downloaded application to control the mobile telecommunications device to register the start of the driving period in response to an initialization input generated automatically in response to the sensor data having predetermined values, wherein the initialization input is generated in response to the sensor data reflecting a detected speed above a predetermined threshold; and wherein the mobile telecommunications device is further configured to […] determine a match between a location of the mobile telecommunications device and a location of the vehicle.
Similar to Amigo, Collings is directed to recording, into a digital memory, data relating to driving habits of a driver over a period of time, and determining a driving behavior profile of the driver based on the data (abstract). Collings uses a “portable driving habit data recording device 100” that includes a plurality of sensors to record the data. See, e.g., [0021].
Collings teaches “[O]ne embodiment uses a device that a user places in an existing conventional vehicle. The device records in detail the vehicle travel over a period of time that would be representative of the user’s real world travel requirements and experiences. In this embodiment the device can record in detail such information as: the time of the conventional vehicles location, its speed, its acceleration and deceleration, its elevation, the external temperature, the internal temperature and other power related parameters. It would do so through the use of a GPS receiver, accelerometers, thermometers and other related sensors. The data would be stored in electronic memory inside the device. The data may be processed and the results displayed on the device or the data would be transferred to a central computer system via electronic cable connection or via a periodic wireless transfer. In one embodiment, the system could be embodied in an existing type of personal electronics device, such as a cellular telephone or a GPS device.” Collings at [0018].
Collings is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collings, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collings teaches,
determine, based on […] sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use;
wherein the mobile telecommunications device is controlled […] to register the start of the driving period in response to an initialization input generated automatically in response to the sensor data having predetermined values, wherein the initialization input is generated in response to sensor data reflecting a detected speed of the vehicle above a predetermined threshold
([0027], “[W]hen the velocity is greater than zero, the position, date, and time are marked in the record as the trip start time. When […] the velocity equals zero, then the position, date, and time are marked in the record as the trip end time.”).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo to define the driving period as a start and end of a journey, and to register the start with respect to a speed above a predetermined threshold, as taught by Collings. One would have been motivated to do so in order to record the telematics data in Amigo on a per trip basis with a recorded date/time for trip start time and a recorded date/time for trip end time, as taught by Collings.
Furthermore, Amigo/Collings does not expressly teach that the start of the driving period is also determined by the device based on inputs received by the user interface.
Similar to Amigo, Collins is directed to monitoring, recording, and/or transmitting customer-selected data items relating to use of a customer’s vehicle. Collins at [0005]. The customer-selected data items are monitored “when [the customer] uses a certain vehicle” (Collins at [0060]) and is performed by a “telematics device […] compris[ing] one or more of a global navigation satellite system (GNSS) device, such as a global positioning system (GPS) device, a mobile phone or personal portable electronic device, an accelerometer, an RFID device, a trailer tracking device, and an intelligent vehicle device” (Collins at [0039]). Collins also teaches that the “telematics device may provide information regarding the vehicle and/or its operation by being present in the vehicle and transmitting a signal while the vehicle is operated without a connection to any vehicle system” (Collins at [0039]).
Collins is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collins, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collins teaches, a start of a driving period is determined by the device based on inputs received by the user interface
([0077], “In addition, different individuals who share a vehicle may login to a telematics device of that vehicle when, for example, they enter the vehicle. Moreover, the individual’s login may cause the system to reprogram the telematics device […] to conform to that individual’s settings in real time.”;
[0060], “the telematics device 302 may include a user input, such as a keypad, for example, with which the driver may identify who (e.g., family member) is driving.”).
In other words, Collins teaches that the monitoring, recording, or transmitting of the customer-selected data items begins with a customer login to the device and subsequent reprogramming of the device with the customer’s individual settings (i.e., an indication of the data items that the customer wishes to have monitored/gathered). Therefore, the start of the driving period (i.e., the period in which the particular data items are gathered for that particular customer) is determined based on input received by the user interface, as claimed.
Notably, the above teaching in Collins at [0077] is similar to Amigo’s disclosure at [0074], where “the system uses the biometric identification to load a profile that corresponds to the user. This profile may include, for example, maximum allowable speed, restricted geographic areas, and other user preferences and/or restrictions.” Here, Amigo’s device determines the start of the driving period in-part by user input, however, in Amigo, user input is not “by the user interface,” as claimed. However, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo/Collings to also determine the start of the driving period based on user input received by the user interface, as taught by Collins. One would have been motivated to do so in order to reduce the complexity and cost associated with the biometric sensor by instead using an authentication through the existing user interface of the smartphone.
Finally, Peng teaches wherein [a] mobile telecommunications device is further configured to […] determine a match between a location of the mobile telecommunications device and a location of the vehicle ([0037], “data collection module 40 may manage the physical orientation of handheld mobile device 10 within the vehicle. Module 40 may determine the orientation of handheld mobile device 10 within the vehicle by comparing GPS and position information for the handheld mobile device 10 with GPS and position information for the vehicle 12.”).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to determine location match as taught by Peng. One would have been motivated to do so in order to better ensure that the device is in a position suitable for collecting driving data (Peng, e.g., [0036]).
Claim 9
Amigo, Collings, and Collins teach [a] mobile telecommunications device according to claim 8, wherein the mobile telecommunications device is further configured to register the attachment of the mobile telecommunications device to the vehicle (Amigo at [0076]–[0077]) […].
Amigo, Collings, and Collins do not expressly teach wherein the mobile telecommunications device is further configured to […] determine a match between a location of the mobile telecommunications device and a location of the vehicle.
Peng teaches wherein [a] mobile telecommunications device is further configured to […] determine a match between a location of the mobile telecommunications device and a location of the vehicle ([0037], “data collection module 40 may manage the physical orientation of handheld mobile device 10 within the vehicle. Module 40 may determine the orientation of handheld mobile device 10 within the vehicle by comparing GPS and position information for the handheld mobile device 10 with GPS and position information for the vehicle 12.”).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to determine location match as taught by Peng. One would have been motivated to do so in order to better ensure that the device is in a position suitable for collecting driving data (Peng, e.g., [0036]).
Obvious Over Amigo, in view of Collings, Collins, and Tamir
Claim 10 is rejected under 35 USC § 103(a) as being unpatentable over Amigo, in view of Collings, Collins, and Tamir.
Claim 10
Amigo, Collings, and Collins teach [a] mobile telecommunications device according to claim 8, but do not expressly teach wherein the mobile telecommunications device is controlled by a downloaded application to control the mobile telecommunications device to down-sample sensor data from a first sampling rate to a second sampling and store the sensor data at said second sampling rate.
Tamir teaches wherein [a] mobile telecommunications device is controlled by a downloaded application to control the mobile telecommunications device to down-sample sensor data from a first sampling rate to a second sampling and store the sensor data at said second sampling rate (C20:L52–C21:L11).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to down-sample and store data at the down-sampled rate, as taught by Tamir, in order to save processing/storage resources when consecutive sensor samples are very close in value.
Obvious Over Amigo, in view of Collings, Collins, and Choi
Claim 20 is rejected under 35 USC § 103(a) as being unpatentable over Amigo, in view of Collings, Collins, and Choi.
Claim 20
Amigo, Collings, and Collins teach [t]he mobile telecommunications device of claim 19, the driving period comprises a plurality of portions of time throughout the driving period (at least Collings, as cited above, includes a plurality of portions of time, e.g., seconds, minutes, etc.), but do not expressly teach wherein the execution of the computer executable instructions by the processor further causes the processor to select a portion of time related to the driving incident from the plurality of portions of time for transmission to the remote logging server and to reduce an amount of data transmitted by transmitting sensor data relating to the selected portion of time to the remote data-logging server.
Amigo teaches monitoring deceleration and that harsh deceleration may indicate an accident ([0079]–[0081]). Collins also monitors harsh decelerations ([0065]). Collins at [0091] also teaches “In some embodiments, the monitored data items may be used to reconstruct events, such as automobile accidents.”
Choi teaches execution of [ ] computer executable instructions by [a] processor further causes the processor to select a portion of time related to [a] driving incident from [a] plurality of portions of time for transmission to [a] remote logging server and to reduce the amount of data transmitted by transmitting sensor data relating to the selected portion of time to the remote data logging server ([0022], “The vehicle blackbox 110 is installed in each vehicle to continuously collect the driving data and the status data (e.g., self-diagnosis data, engine operation status data, and component status data) of the vehicle. When a traffic accident occurs, the vehicle blackbox 110 transmits the blackbox data for a predetermined time interval around the time of the accident (e.g., from 3 minutes before the accident to 30 seconds after the accident) to the accident analyzing center 300.”).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to select a portion of time related to an incident for transmission to an accident analyzing center, as taught by Choi, in order to provide a segment of data useful in reconstructing the incident.
Obvious Over Amigo, in view of Collings, Collins, and McClellan
Claims 5, 11–12, and 22–23 are rejected under 35 USC § 103(a) as being unpatentable over Amigo, in view of Collings, Collins, and McClellan.
Claim 5
Amigo discloses [a] mobile telecommunications device (e.g., [0035], “smartphone 200”; fig. 3, 200; figs. 6–7) configured to log driving information associated with a vehicle (e.g., [0008], “receiving, with a second processor, data based at least in part on telematics information indicative of the operation of the vehicle(s), and adjusting, with the second processor, an underwriting process, a premium determination process, and/or a workflow process, based on the received data.”), the mobile telecommunications device comprising:
a sensor set comprising an image sensor, an audio sensor, an accelerometer, a positioning module, or a combination thereof
([0035], “smartphone or portable personal communications device with one or more telematics sensors, such as accelerometers and/or Global Positioning System sensors.”;
[0053], “The accelerometer 204 is configured to provide measurements of acceleration in three dimensions. Optionally, the smartphone 200 may include other telematics sensors, such as a Global Positioning System (GPS) sensor.”);
a user interface (fig. 6, 210; [0061]);
a processor (fig. 6, 206); and
a memory (fig. 6, 208);
the mobile telecommunications device configured[, via a downloaded application,] [0041], “The system also includes software operative to process telematics data received from telematics sensors in the smartphone […] user may then connect to the network address to download the software, either directly onto a smartphone or onto a computer which then transfers the software onto the smartphone”; [0062]) to:
determine […] a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use
([0077], “After locking the smartphone in the cradle in step 816, the system begins transmitting and/or recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”; [0086]);
process [a] sensor data from the sensor set during the driving period to derive driving information associated with how the vehicle is driven
([0037], “telematics information from telematics sensors within the smartphone can be calibrated with the known position/orientation information to provide telematics information that reflects vehicle behavior”;
[0087], “The received telematics information is then processed in step 1006 by, for example, smartphone processor 206. […]. For example, the smartphone processor 206 may combine information received from the smartphone accelerometer 204 with information about the position and orientation of the smartphone with respect to the vehicle in order to determine vehicle acceleration information. In addition, the processing may include summarizing telematics data collected over a period of time, filtering the raw data, encrypting, and/or compressing the telematics data.”);
store a selection of the driving information to the memory (fig. 9, 902, “record telematics information”; [0084], “the process steps may be performed by a smartphone”), wherein the driving information is derived without data from the vehicle or the vehicle's sensors
([0077], “recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”;
[0079], “monitoring telematics information or changes in telematics information provided by a smartphone telematics sensor and/or a vehicle telematics sensor”) , […];
detect occurrence of a predetermined event by correlating the sensor data against at least one event indication model, the at least one event indication model comprising a set of predetermined data values that are compared against corresponding sensor data (Amigo [0081], a set of predetermined data values is at least fairly suggested and/or inherent to “a relatively low deceleration rate” and “a relatively high deceleration rate”; [0079]–[0080]); and […].
Amigo does not expressly disclose that the start of the driving period is determined by the device based on inputs received by the user interface and [the] sensor data from the sensor set.
Similar to Amigo, Collings is directed to recording, into a digital memory, data relating to driving habits of a driver over a period of time, and determining a driving behavior profile of the driver based on the data (abstract). Collings uses a “portable driving habit data recording device 100” that includes a plurality of sensors to record the data. See, e.g., [0021].
Collings teaches “[O]ne embodiment uses a device that a user places in an existing conventional vehicle. The device records in detail the vehicle travel over a period of time that would be representative of the user’s real world travel requirements and experiences. In this embodiment the device can record in detail such information as: the time of the conventional vehicles location, its speed, its acceleration and deceleration, its elevation, the external temperature, the internal temperature and other power related parameters. It would do so through the use of a GPS receiver, accelerometers, thermometers and other related sensors. The data would be stored in electronic memory inside the device. The data may be processed and the results displayed on the device or the data would be transferred to a central computer system via electronic cable connection or via a periodic wireless transfer. In one embodiment, the system could be embodied in an existing type of personal electronics device, such as a cellular telephone or a GPS device.” Collings at [0018].
Collings is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collings, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collings teaches,
determine, based on […] a sensor data from the sensor set, a start of a driving period during which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use
([0027], “[W]hen the velocity is greater than zero, the position, date, and time are marked in the record as the trip start time. When […] the velocity equals zero, then the position, date, and time are marked in the record as the trip end time.”).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo to determine a start of a driving period, as taught by Collings. One would have been motivated to do so in order to record the telematics data in Amigo on a per trip basis with a recorded date/time for trip start time and a recorded date/time for trip end time, as taught by Collings.
Furthermore, Amigo/Collings does not expressly teach that the start of the driving period is also determined by the device based on inputs received by the user interface.
Similar to Amigo, Collins is directed to monitoring, recording, and/or transmitting customer-selected data items relating to use of a customer’s vehicle. Collins at [0005]. The customer-selected data items are monitored “when [the customer] uses a certain vehicle” (Collins at [0060]) and is performed by a “telematics device […] compris[ing] one or more of a global navigation satellite system (GNSS) device, such as a global positioning system (GPS) device, a mobile phone or personal portable electronic device, an accelerometer, an RFID device, a trailer tracking device, and an intelligent vehicle device” (Collins at [0039]). Collins also teaches that the “telematics device may provide information regarding the vehicle and/or its operation by being present in the vehicle and transmitting a signal while the vehicle is operated without a connection to any vehicle system” (Collins at [0039]).
Collins is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collins, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collins teaches, a start of a driving period is determined by the device based on inputs received by the user interface
([0077], “In addition, different individuals who share a vehicle may login to a telematics device of that vehicle when, for example, they enter the vehicle. Moreover, the individual’s login may cause the system to reprogram the telematics device […] to conform to that individual’s settings in real time.”;
[0060], “the telematics device 302 may include a user input, such as a keypad, for example, with which the driver may identify who (e.g., family member) is driving.”).
In other words, Collins teaches that the monitoring, recording, or transmitting of the customer-selected data items begins with a customer login to the device and subsequent reprogramming of the device with the customer’s individual settings (i.e., an indication of the data items that the customer wishes to have monitored/gathered). Therefore, the start of the driving period (i.e., the period in which the particular data items are gathered for that particular customer) is determined based on input received by the user interface, as claimed.
Notably, the above teaching in Collins at [0077] is similar to Amigo’s disclosure at [0074], where “the system uses the biometric identification to load a profile that corresponds to the user. This profile may include, for example, maximum allowable speed, restricted geographic areas, and other user preferences and/or restrictions.” Here, Amigo’s device determines the start of the driving period in-part by user input, however, in Amigo, user input is not “by the user interface,” as claimed. However, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo/Collings to also determine the start of the driving period based on user input received by the user interface, as taught by Collins. One would have been motivated to do so in order to reduce the complexity and cost associated with the biometric sensor by instead using an authentication through the existing user interface of the smartphone.
Moreover, as noted above, Amigo uses software on a smartphone to process sensor data from the sensor set to derive driving information, e.g., acceleration information calibrated with known position/orientation of the smartphone, an incident (e.g., sudden deceleration indicating an accident, or a speed above a threshold), a summary of telematics data collected over a period of time, and/or encrypting and/or compressing the telematics data ([0035] [0037] [0041] [0053] [0079]–[0081] [0087]).
Also noted above, Collings teaches processing sensor data from a sensor set on a per trip basis, i.e., during a plurality of driving periods.
Therefore, as combined above, the device of Amigo/Collings/Collins further teaches wherein the mobile telecommunications device is controlled by the downloaded application to cause the mobile telecommunications device to process the sensor data from the sensor set during a plurality of driving periods to derive the driving information associated with how the vehicle is driven during the driving periods.
However, the device of Amigo/Collings/Collins does not expressly teach the sensor data being processed during a first set of driving periods defining a benchmark against which the sensor data is compared during subsequent sets of driving periods; and modify the at least one event indication model in response to the benchmark.
McClellan is directed to a system and method for monitoring driving behavior (title). McClellan teaches sensor data being processed during a first set of driving periods defining a benchmark against which sensor data is compared during subsequent sets of driving periods ([0041]–[0052]; e.g., a baseline measurement is made over multiple periods or trips from which a particular threshold(s) is set (e.g., a speed threshold) that is subsequently monitored/compared with respect to current sensor data; e.g., device can be put into a training mode for a period(s) of time to create a profile of acceptable driving, which is then used to compare with sensor data of a driver for mentoring and feedback); and modify the at least one event indication model in response to the benchmark (as noted above, various thresholds are set/modified based on a learned profile of either a particular driver or an experienced driver – see [0041]–[0052]).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to set a first set of driving periods (e.g., trips) to establish a benchmark to compare subsequent periods or trips, as taught by McClellan, to better monitor individual driving behavior based on bad habits of a particular driver and/or good habits of an experienced driver. Furthermore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to modify the model (set of predetermined values or thresholds) based on a benchmark, as taught by McClellan, to tailor the model to a particular driver’s known habits, thereby making the “relatively” determined values in Amigo more accurate for each particular driver and avoiding false positives.
Claim 11
Amigo discloses [a] mobile telecommunications device (e.g., [0035], “smartphone 200”; fig. 3, 200; figs. 6–7) configured to log driving information associated with how safely a vehicle is being driven (e.g., [0008], “receiving, with a second processor, data based at least in part on telematics information indicative of the operation of the vehicle(s), and adjusting, with the second processor, an underwriting process, a premium determination process, and/or a workflow process, based on the received data.”), the mobile telecommunications device comprising:
a sensor set comprising an accelerometer and a positioning module
([0035], “smartphone or portable personal communications device with one or more telematics sensors, such as accelerometers and/or Global Positioning System sensors.”;
[0053], “The accelerometer 204 is configured to provide measurements of acceleration in three dimensions. Optionally, the smartphone 200 may include other telematics sensors, such as a Global Positioning System (GPS) sensor.”);
a user interface (fig. 6, 210; [0061]);
a processor (fig. 6, 206);
a memory (fig. 6, 208); and
a downloaded application comprising computer-executable instructions downloaded onto the memory ([0041], “The system also includes software operative to process telematics data received from telematics sensors in the smartphone […] user may then connect to the network address to download the software, either directly onto a smartphone or onto a computer which then transfers the software onto the smartphone”; [0062]), wherein the computer-executable instructions comprises an algorithm, which when executed by the processor, causes the mobile telecommunications device to:
determine […] a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, […]
([0077], “After locking the smartphone in the cradle in step 816, the system begins transmitting and/or recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”; [0086]);
process the sensor data from the sensor set throughout the driving period to derive a driving information associated with how safely the vehicle is being driven by a driver, the derived driving information representing movement of the vehicle throughout the driving period whilst the vehicle is being driven by the driver
([0037], “telematics information from telematics sensors within the smartphone can be calibrated with the known position/orientation information to provide telematics information that reflects vehicle behavior”;
[0087], “The received telematics information is then processed in step 1006 by, for example, smartphone processor 206. […]. For example, the smartphone processor 206 may combine information received from the smartphone accelerometer 204 with information about the position and orientation of the smartphone with respect to the vehicle in order to determine vehicle acceleration information. In addition, the processing may include summarizing telematics data collected over a period of time, filtering the raw data, encrypting, and/or compressing the telematics data.”); and
store a selection of the driving information to the memory (fig. 9, 902, “record telematics information”; [0084], “the process steps may be performed by a smartphone”),
wherein the driving information is derived without data from the vehicle or the vehicle’s sensors
([0077], “recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors”;
[0079], “monitoring telematics information or changes in telematics information provided by a smartphone telematics sensor and/or a vehicle telematics sensor”); and […].
Amigo does not expressly disclose that the start of the driving period is determined by the device based on inputs received by the user interface and sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle.
Similar to Amigo, Collings is directed to recording, into a digital memory, data relating to driving habits of a driver over a period of time, and determining a driving behavior profile of the driver based on the data (abstract). Collings uses a “portable driving habit data recording device 100” that includes a plurality of sensors to record the data. See, e.g., [0021].
Collings teaches “[O]ne embodiment uses a device that a user places in an existing conventional vehicle. The device records in detail the vehicle travel over a period of time that would be representative of the user’s real world travel requirements and experiences. In this embodiment the device can record in detail such information as: the time of the conventional vehicles location, its speed, its acceleration and deceleration, its elevation, the external temperature, the internal temperature and other power related parameters. It would do so through the use of a GPS receiver, accelerometers, thermometers and other related sensors. The data would be stored in electronic memory inside the device. The data may be processed and the results displayed on the device or the data would be transferred to a central computer system via electronic cable connection or via a periodic wireless transfer. In one embodiment, the system could be embodied in an existing type of personal electronics device, such as a cellular telephone or a GPS device.” Collings at [0018].
Collings is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collings, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collings teaches,
determine, based on […] a sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle
([0027], “[W]hen the velocity is greater than zero, the position, date, and time are marked in the record as the trip start time. When […] the velocity equals zero, then the position, date, and time are marked in the record as the trip end time.”).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo to define the driving period as a start and end of a journey, and to determine the start with respect to as detected speed, as taught by Collings. One would have been motivated to do so in order to record the telematics data in Amigo on a per trip basis with a recorded date/time for trip start time and a recorded date/time for trip end time, as taught by Collings.
Furthermore, Amigo/Collings does not expressly teach that the start of the driving period is also determined by the device based on inputs received by the user interface.
Similar to Amigo, Collins is directed to monitoring, recording, and/or transmitting customer-selected data items relating to use of a customer’s vehicle. Collins at [0005]. The customer-selected data items are monitored “when [the customer] uses a certain vehicle” (Collins at [0060]) and is performed by a “telematics device […] compris[ing] one or more of a global navigation satellite system (GNSS) device, such as a global positioning system (GPS) device, a mobile phone or personal portable electronic device, an accelerometer, an RFID device, a trailer tracking device, and an intelligent vehicle device” (Collins at [0039]). Collins also teaches that the “telematics device may provide information regarding the vehicle and/or its operation by being present in the vehicle and transmitting a signal while the vehicle is operated without a connection to any vehicle system” (Collins at [0039]).
Collins is at least in the same field of endeavor as the claimed invention, at least because, based on the claimed invention and the disclosure of Collins, both are in the field of monitoring driving behavior using a mobile telecommunications device equipped with at least an accelerometer and positioning module.
Furthermore, Collins teaches, a start of a driving period is determined by the device based on inputs received by the user interface
([0077], “In addition, different individuals who share a vehicle may login to a telematics device of that vehicle when, for example, they enter the vehicle. Moreover, the individual’s login may cause the system to reprogram the telematics device […] to conform to that individual’s settings in real time.”;
[0060], “the telematics device 302 may include a user input, such as a keypad, for example, with which the driver may identify who (e.g., family member) is driving.”).
In other words, Collins teaches that the monitoring, recording, or transmitting of the customer-selected data items begins with a customer login to the device and subsequent reprogramming of the device with the customer’s individual settings (i.e., an indication of the data items that the customer wishes to have monitored/gathered). Therefore, the start of the driving period (i.e., the period in which the particular data items are gathered for that particular customer) is determined based on input received by the user interface, as claimed.
Notably, the above teaching in Collins at [0077] is similar to Amigo’s disclosure at [0074], where “the system uses the biometric identification to load a profile that corresponds to the user. This profile may include, for example, maximum allowable speed, restricted geographic areas, and other user preferences and/or restrictions.” Here, Amigo’s device determines the start of the driving period in-part by user input, however, in Amigo, user input is not “by the user interface,” as claimed. However, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the application/device of Amigo/Collings to also determine the start of the driving period based on user input received by the user interface, as taught by Collins. One would have been motivated to do so in order to reduce the complexity and cost associated with the biometric sensor by instead using an authentication through the existing user interface of the smartphone.
Moreover, as noted above, Amigo uses software on a smartphone to process sensor data from the sensor set to derive driving information, e.g., acceleration information calibrated with known position/orientation of the smartphone, an incident (e.g., sudden deceleration indicating an accident, or a speed above a threshold), a summary of telematics data collected over a period of time, and/or encrypting and/or compressing the telematics data ([0035] [0037] [0041] [0053] [0079]–[0081] [0087]).
Also noted above, Collings teaches processing sensor data from a sensor set on a per trip basis, i.e., during a plurality of driving periods.
Therefore, as combined above, the device of Amigo/Collings/Collins further teaches wherein the mobile telecommunications device is controlled by the downloaded application to cause the mobile telecommunications device to process the sensor data from the sensor set during a plurality of driving periods to derive the driving information associated with how the vehicle is driven during the driving periods.
However, the device of Amigo/Collings/Collins does not expressly teach the sensor data being processed during a first set of driving periods defining a benchmark against which the sensor data is compared during subsequent sets of driving periods.
McClellan is directed to a system and method for monitoring driving behavior (title). McClellan teaches sensor data being processed during a first set of driving periods defining a benchmark against which sensor data is compared during subsequent sets of driving periods ([0041]–[0052]; e.g., a baseline measurement is made over multiple periods or trips from which a particular threshold(s) is set (e.g., a speed threshold) that is subsequently monitored/compared with respect to current sensor data; e.g., device can be put into a training mode for a period(s) of time to create a profile of acceptable driving, which is then used to compare with sensor data of a driver for mentoring and feedback).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to set a first set of driving periods (e.g., trips) to establish a benchmark to compare subsequent periods or trips, as taught by McClellan, to better monitor individual driving behavior based on bad habits of a particular driver and/or good habits of an experienced driver.
Claim 12
Amigo, Collings, Collins, and McClellan teaches [a] mobile telecommunications device according to claim 11, wherein the mobile telecommunications device is further configured to: detect occurrence of a predetermined event by correlating the sensor data against at least one event indication model, the at least one event indication model comprising a set of predetermined data values that are compared against corresponding sensor data (Amigo [0081], a set of predetermined data values is at least fairly suggested and/or inherent to “a relatively low deceleration rate” and “a relatively high deceleration rate”; [0079]–[0080]).
McClellan teaches modify the at least one event indication model in response to the benchmark (as noted above, various thresholds are set/modified based on a learned profile of either a particular driver or an experienced driver – see [0041]–[0052]).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the device of Amigo/Collings/Collins to modify the model (set of predetermined values or thresholds) based on a benchmark, as taught by McClellan, to tailor the model to a particular driver’s known habits, thereby making the “relatively” determined values in Amigo more accurate for each particular driver and avoiding false positives.
Claim 22
Amigo, Collings, Collins, and McClellan teaches [t]he mobile telecommunications device of claim 11, wherein execution of the computer-executable instructions by the processor further causes the mobile telecommunications device to detect the end of the driving period in response to an ending input generated automatically in response to the sensor data having a predetermined end value (Collings [0027]).
Claim 23
Amigo, Collings, Collins, and McClellan teaches [t]he mobile telecommunications device of claim 22, wherein the end of the driving period is detected in response to the sensor data indicating the detected speed of the vehicle is less than a predetermined minimum threshold for a predetermined period of time (Collings [0027]).
ALLOWABLE SUBJECT MATTER
Claims 13–14 and 24–32 would be allowable if rewritten or amended to overcome the rejections under 35 USC § 251, 35 USC § 112 (pre-AIA ), First Paragraph, and 35 USC § 112 (pre-AIA ), Second Paragraph, set forth in this Office action.
In particular, claims 13–14 and 24–32 require both a score generated at the mobile device and transmitted to the server and a score generated at the server. None of the prior art of record discloses or teaches those limitations in combination with the surrounding claim language and within each claim as a whole.
RESPONSE TO ARGUMENTS
“Applicant does not agree with Examiner’s characterization that the three prong analysis (A), (B), and (C) in connection with FP#1, FP#2, FP#3, and FP#4 are satisfied, sufficient to invoke a rejection under section 112[¶6], because sufficient structure to carry out the functions were already recited.” Jan 2026 Response at p. 26.
This argument is not persuasive. As discussed above, none of the functional phrases (FP#1–FP#4) include “sufficient structure” to perform the claimed functions. Applicant is respectfully reminded, “[s]ufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” See MPEP § 2181 I. quoting TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008). Moreover, the claims require software functions (i.e., special programming). For software functions, the “exact structure” includes an algorithm. The Examined Claims include functional phrases with functions, supra, but do not include an algorithm(s) for performing those functions. Therefore, the claims do not recite sufficient structure for performing the recited functions, as alleged.
Applicant argues, “Support in the specification for algorithm is set forth in paragraphs [0076], [0109] and Fig. 4a and also in paragraphs [0077], [0122], and Fig. 4b. Figs. 4a and 4b are process flow charts showing a mobile telecommunications device having a downloaded application, wherein the application comprises an algorithm, which is executed by a processor, so that the algorithm performs each of the functions [FP#1–FP#4].” Jan 2026 Response at p. 26.
The Examiner respectfully disagrees. Applicant has not specified an algorithm. The Examiner has reviewed the cited portions and cannot locate an algorithm that is clearly linked and associated with each of the claimed functions. For example, Applicant points to Fig. 4a. While Fig. 4a is a flowchart, it merely includes, in relevant part, a box 42 with text “Register start of driving period.” This is not an algorithm for the Function of FP#1, i.e., the function “[1] determine, based on inputs received by the user interface and a sensor data from the sensor set, wherein the sensor data from the sensor set reflects a detected speed above a predetermined threshold, a start of a driving period determined automatically, at which the mobile telecommunications device is removably attached to the vehicle and the vehicle is in use, wherein the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle […] [and] [2] register the start of the driving period,” as recited by claim 8.
In view of the above analysis, the Examiner maintains the claim interpretation under 35 USC § 112, Sixth Paragraph.
Applicant disagrees with the rejection under § 251 for improper broadening. See Jan 2026 Response at pp. 27–29.
With respect to claim 8, Applicant argues that “[t]he term ‘during’ covers a time period sometime within the driving period.” The Examiner respectfully disagrees. Applicant provides no evidence of this interpretation. The Examiner does not adopt this interpretation. Therefore, the remainder of the arguments based on this interpretation are moot.
With respect to claim 13, Applicant’s arguments are moot, since the basis for the rejection to claim 13 is withdrawn.
Applicant disagrees with the rejection under §112, First Paragraph. See Jan 2026 Response at pages 29–32. In particular, Applicant argues that '271 Patent discloses that the device determines the start of a driving period by “the user manually executing the application on the mobile device” and “automatically in response to the sensor data having predetermined values,” e.g., “a detected speed above a predetermined threshold.” Id. The arguments on pages 29–32 are not persuasive because the claims also require “the driving period is defined as a duration from a start to an end of a vehicle journey of the vehicle” (as recited by, e.g., claim 8). Therefore, the “start of a driving period” coincides with the “start to […] a vehicle journey of the vehicle.” However, the '271 Patent does not disclose that the user manually starts the application at the start of the vehicle journey and that the detected speed above a predetermined threshold also occurs at the start of the vehicle journey. Thus, the rejection is maintained.
Applicant disagrees with the rejection under § 112, Second Paragraph, because “Applicant amended these claims to recite a structure (i.e., an algorithm) in support of the functions set forth in FP#1 – FP#4.” Jan 2026 Response at p. 32. This argument is not persuasive. Applicant amended the claims to recite the word “algorithm,” but has not amended the claims to recite an algorithm. Thus, the rejection is maintained.
Applicant disagrees with the rejection under § 112, Second Paragraph, because there is no contradiction in the claims. See Jan 2026 Response at p. 33. The Examiner respectfully disagrees. The predetermined threshold can be 45 mph. In this example, the start of the driving period would not coincide with the start of the vehicle’s journey. Yet the claim also requires the start of the driving period to coincide with the start of the vehicle’ journey. Therefore, there is a contradiction in the claims.
Applicant argues that Amigo does not disclose “wherein the derived driving information is derived without data from the vehicle or the vehicle’s sensors.” See Jan 2026 Response at pages 34–37.
The Examiner respectfully disagrees. Amigo discloses “recording telematics information from the accelerometer within the smartphone and/or vehicle telematics sensors.” See ¶ [0077]. Under the BRI of the term “or,” this disclosure means that Amigo’s system can use only the sensor (accelerometer) in the smartphone. Therefore, Amigo meets the limitation “wherein the derived driving information is derived without data from the vehicle or the vehicle’s sensors.”
Moreover, Applicant argues “However, Amigo does not disclose that the device can process sensor data to derive driving information by using sensor data from both its accelerometer and GPS sensor and do so without relying on the vehicle or vehicle’s sensors.” Jan 2026 Response at p. 37 (emphasis in original). This argument is not persuasive because the claims do not require sensor data from both an accelerometer and GPS sensor.
Moreover, Applicant argues “In addition, Amigo fails to disclose or teach claim 1’s (now claim 8’s) limitation requiring the mobile telecommunications device to ‘store a selection of the driving information to the memory.’” Jan 2026 Response at p. 38. This argument is not persuasive. The term “a selection” in the claim does not require a portion smaller than a whole.
Moreover, Applicant argues that Collings is deficient because “[p]er Collings, the sensor data of the device 100 cannot alone, be used to determine the start or end of the driving period.” Jan 2026 Remarks at p. 39 (emphasis in original). This argument is not persuasive because the claims do not require sensor data alone be used to determine the start or end of the driving period.
CONCLUSION
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR § 1.17(a)) pursuant to 37 CFR § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While at least one definition, of a term, is cited because the term is found in the Examined Claims, the Examiner may have provided an additional definition(s) to help interpret a word(s), a phrase(s), or a concept(s) found in a definition itself, in the prior art, or in the Patent Under Reissue.
2 “Paragraph 6 of 35 U.S.C. § 112 was replaced with newly designated § 112(f) when § 4(c) of the America Invents Act (AIA ), Pub. L. No. 112-29, took effect on September 16, 2012. Because the applications resulting in the patents at issue in this case were filed before that date, we will refer to the pre-AIA version of § 112.” Mobile Media Ideas LLC v. Apple Inc., 780 F.3d 1159, 1168 n3 (Fed. Cir. 2015).
3 “In [112 ¶ 6], structure and material go with means, acts go with steps.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997).
4 See also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed Cir. 2000) where the CAFC set forth the standard for determining if a functional phase overcomes the presumption that § 112 ¶ 6 is not invoked (i.e., invokes 112 ¶ 6) when a phrase does not use the word “means.”
5 The Examiner acknowledges that Applicant has amended FP#1 to include the word “algorithm,” but the Examiner finds that Applicant has not amended the claim to include an algorithm that is software structure for performing the Function of FP#1.
6 Microsoft Computer Dictionary (5th Ed. 2002) (Microsoft Press); Electrical Engineering Dictionary (CRC Press, 2000); The Authoritative Dictionary of IEEE Standards Terms (7th Ed. 2000); The American Heritage Dictionary of the English Language (3rd Ed. 1992).
7 The Examiner has considered the entire disclosure. However, the Examiner is merely identifying portions of the disclosure that appear to be the closest description of an algorithm.
8 The Examiner has considered the entire disclosure. However, the Examiner is merely identifying portions of the disclosure that appear to be the closest description of an algorithm.
9 Based on all evidence of record, the Examiner concludes that a “mobile telecommunications device” is synonymous with a portable computer that is capable of telecommunications.
10 The Examiner has considered the entire disclosure. However, the Examiner is merely identifying portions of the disclosure that appear to be the closest description of an algorithm.
11 The Examiner has considered the entire disclosure. However, the Examiner is merely identifying portions of the disclosure that appear to be the closest description of an algorithm.
12 “The newly added combination claims should be analyzed to determine whether they contain every limitation of the subcombination of any claim of the original patent. If the combination claims (added in the reissue) contain every limitation of the subcombination (which was claimed in the original application), then infringement of the combination must also result in infringement of the subcombination.” MPEP § 1412.03 I.
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