VWGoA - Ex. 1009
`Volkswagen Group of America, Inc., Petitioner
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`1
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`Applicant(s) Application No.
`10/298.367
`PARKER ET AL.
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`Office Action Summary
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`Examine,
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`Fayez G. Assaf
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`Art Uni,
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`2872
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`-- The MAILING DA TE of this communication appears n the cover sheet with the correspondenc address -
`Peri d for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`.after SIX (6) MONTHS from the mailing date of this communication.
`If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
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`If No period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
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`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication. even if timely filed, may reduce any
`earned patent tenn adjustment. See 37 CFR 1.704(b).
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`In no event, however, may a reply be timely filed
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`Status
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`1)IZ Responsive to communication(s) filed on 14 June 2004.
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`2a)l:] This action is FINAL.
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`2b)|Z This action is non-final.
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`3)l:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)|Z Claim(s) 1-8 10-23 26-33 and 53-55 is/are pending in the application.
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`4a) Of the above cIaim(s) 2_6fl is/are withdrawn from consideration.
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`5)EI Claim(s) j is/are allowed.
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`6)IZl Claim(s) 1-8 10-23 and 53-55 is/are rejected.
`A
`7)lj Claim(s) j is/are objected to.
`8)I:I Claim(s) __ are subject to restriction and/or election requirement.
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`Application Papers
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`9)Ij The specification is objected to by the Examiner.
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`10)E The drawing(s) filed on 18 November 2002 is/are: a)® accepted or b)El objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`11)[:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)lj Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)lj All b)I] Some * c)I:] None of:
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`1.[:l Certified copies of the priority documents have been received.
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`2.[:I Certified copies of the priority documents have been received in Application No. _.
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`3.[:l Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`4) D Interview Summary (PTO-413)
`A
`1) E Notice of References Cited (PTO-892)
`Paper N0($)/M3“ D3te- __.-
`2) El Notice of Draflsperson’s Patent Drawing Review (PTO-948)
`5) CI Notice of Informal Patent Application (PTO-152)
`3) El lnforrnation Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`6) El Other:
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`Paper No(s)/Mail Date
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`U.S. Patent and Trademark Office
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`PTOL-326 (Rev. 1-04)
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`Offic Action Summary
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`Part of Paper No./Mail Date 06252004
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`M
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`Application/Control Number: 10/298,367
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`Page 2
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`Art Unit: 2872
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`DETAILED ACTION
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`Election/Restrictions
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`The status of claims is as follows:
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`Claims 1-8, 10-23, 26-33, and 53-55 remain in the
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`application. Claims 53-55 are newly added. Claims 26-33 are
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`withdrawn from consideration.
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`Continued Examination Under 37 CER 1.114
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`A request for continued examination under 37 CFR 1.114,
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`including the fee set forth in 37 CFR 1.17(e), was filed in this
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`application after final rejection.
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`Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the
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`fee set forth in 37 CFR 1.17(e) has been timely paid,
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`the
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`finality of the previous Office action has been withdrawn
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`pursuant to 37 CFR 1.114. Applicant's submission filed on
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`6/14/2004 has been entered.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs
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`of 35 U.S.C. 102 that form the basis for the rejections under
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`this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`Application/Control Number: 10/298,367
`Art Unit: 2872
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`Page 3
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`the invention was patented or described in a printed publication in this or
`(b)
`a foreign country or in public use or on sale in this country, more than one
`‘year prior to the date of application for patent in the United States.
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`Claims 1-6, 8, 10, 11, 14-17, 19-23, 53 and 54 are rejected
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`under 35 U.S.C. 102(b) as being anticipated by Serizawa et al.
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`(US 4,733,335).
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`Regarding claims 1-6,
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`8 and 10, Serizawa discloses a light
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`emitting assembly illumination comprising a light guide (125 of
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`Fig. 2) having at least one light input surface (see Fig. 2, and
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`Fig. 4), one or more light emitting diodes (1l1’s of Fig. 2)
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`along said light input surface for supplying light to said light
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`guide,
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`a plurality of light extracting deformities (lenses onto
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`light guide) on at least one surface of said light guide, said
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`deformities having shapes (see Fig. 4)
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`for controlling an output
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`ray angle distribution of emitted light to suit a particular
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`application, and a transparent substrate (218 of Fig. 4)
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`overlying at least one surface of said light guide,
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`the
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`substrate providing an exterior portion of a Vehicle for vehicle
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`illumination at said exterior portion (line 8 to line 15 of Col.
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`10).
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`Regarding claim 6, Serizawa discloses the deformities being
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`at least one of depressions and raised surfaces on the one
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`surface of the light guide (see Fig. 2.)
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`Application/Control Number: 10/298,367
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`Page 4
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`Art Unit: 2872
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`Regarding claims 8 and 15, Serizawa discloses the
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`deformities being a device that changes the output ray angle
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`distribution (lenses 223 of Fig. 2).
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`Regarding claims 14 and 23, Serizawa discloses at least one
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`surface of at least one of said substrate and said light guide
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`being lenticular (see Fig. 7).
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`Regarding claims 16 and 22, Serizawa discloses more than
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`one said substrate overlies said light guide (see Fig. 6).
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`Regarding claims 17, 19 and 20, Serizawa discloses the
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`deformities on the substrate varying in at least shape (see 407,
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`406, 324 and 400 of Fig. 11) having reflective and refractive
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`surfaces.
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`Regarding claim 21, Serizawa discloses the substrate having
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`a coating (205 of Fig. 4).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103(a) which
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`forms the basis for all obviousness rejections set forth in this
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`Office action:
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`(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.
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`Application/Control Number: 10/298,367
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`Page 5
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`Art Unit: 2872
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`Claims 7, 12-13,
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`18 and 55 are rejected under 35 U.S.C.
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`103(a) as being unpatentable over Serizawa et al.
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`Serizawa discloses the claimed invention except for:
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`the deformities varying on the surface of said light
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`guide.
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`the variations in the deformities being random, on
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`more than one side of the light guide, or including
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`surfaces (prismatic) having angles that vary.
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`However, such features are well known in illumination
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`devices utilized in vehicles.
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`It would have been obvious, at the time the invention was
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`made,
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`to a person having ordinary skill in the art to use such
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`optical deformities in order to provide the proper light
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`illumination which suits particular application in a vehicle
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`(i.e.
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`illuminating plate,
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`turn signals etc.)
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`Conclusion
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`Any inquiry concerning this communication or earlier
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`communications from the examiner should be directed to Fayez G.
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`Assaf whose telephone number is (571) 272-2307.
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`The examiner
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`can normally be reached on 8-5 M-F.
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`If attempts to reach the examiner by telephone are
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`unsuccessful,
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`the examiner's supervisor, Drew Dunn can be
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`Application/Control Number: 10/298,367
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`Page 6
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`Art Unit: 2872
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`reached on (571) 272-2312.
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`The fax phone number for the
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`organization where this application or proceeding is assigned is
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`703-872-9306.
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`Information regarding the status of an application may be
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`obtained from the Patent Application Information Retrieval
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`(PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status
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`information for unpublished applications is available through
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`Private PAIR only.
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`For more information about the PAIR system,
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`see http://pair-direct.uspto.gov. Should you have questions on
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`access to the Private PAIR system, contact the Electronic
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`Business Center
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`(EBC) at 866¥217—9197 (toll—free).
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`’—eF*’2‘éA‘—‘==-‘vi-
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`Fayez G. Assaf
`Examiner
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`Art Unit 2872
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`FA
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`6/25/2004
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`7