UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`SL Corporation,
`Petitioner
`
`v.
`
`Adaptive Headlamp Technologies, Inc.
`Patent Owner
`
`__________
`
`
`
`Case IPR2016-00193
`Patent 7,241,034
`
`
`
`PATENT OWNER’S RESPSONE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`

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`Case No. IPR2016-00193
`Patent No. 7,241,034
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND AND SCOPE OF THE ‘034 PATENT .............................. 4
`
`III. CLAIM INTERPRETATION ......................................................................... 7
`
`IV. PRIOR ART REFERENCES .......................................................................... 8
`
`A. KATO ......................................................................................................... 8
`
`B.
`
`TAKAHASHI ...........................................................................................10
`
`V.
`
`PETITIONER’S NINTH ASSERTED GROUND ........................................ 12
`
`A. Kato is non-analogous prior art which may not be relied upon to
`support a finding of obviousness. .......................................................................15
`
`Kato is addressed to a different field of endeavor than the ‘034
`1.
`Patent. ............................................................................................................16
`
`Kato is not reasonably pertinent to the problem addressed by
`2.
`the ‘034 Patent. ..............................................................................................20
`
`There is no motivation to combine Kato with the threshold of
`B.
`Takahashi ............................................................................................................24
`
`Consideration of Kato in its entirety belies any motivation to
`1.
`modify Kato with the threshold of Takahashi. ..............................................25
`
`Kato teaches against implementation of the threshold of
`2.
`Takahashi. ......................................................................................................29
`
`3. Modifying Kato with the threshold of Takahashi yields a device
`unsuitable for performing its intended function of Kato ...............................31
`
`Claim 7 is patentable over the combination of Kato and Takahashi
`C.
`since the modified device does not meet all limitations of claim 7....................33
`
`VI. CONCLUSION .............................................................................................. 37
`
`CERTIFICATE OF SERVICE ................................................................................ 39
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`Page ii
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`Case No. IPR2016-00193
`Patent No. 7,241,034
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`TABLE OF AUTHORITIES
`
`CASES
`
`CFMT, Inc. v. Yieldup Intern. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ..................................................................... 33
`
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) ..................................................................... 34
`
`
`Ex parte Levengood,
`28 USPQ2d 1300 (B.P.A.I. 1993) ................................................................. 24
`
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ........................................................................................... 15
`
`
`Hartness Int'l, Inc. v. Simplimatic Eng'g Co.,
`819 F.2d 1100 (Fed. Cir. 1987) ..................................................................... 13
`
`
`In re Abele,
`684 F.2d 902, 910 (CCPA 1982) ................................................................... 13
`
`
`In re Antle,
`444 F.2d 1168 (CCPA 1971) ......................................................................... 20
`
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ..................................................... 3, 15, 16, 20
`
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ................................................................. 15, 20
`
`
`In re Deminski,
`796 F.2d 436 (Fed. Cir. 1986) ................................................................. 15, 16
`
`In re Ellis,
`476 F.2d 1370 (CCPA 1973) ......................................................................... 17
`
`
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`Page iii
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`Patent No. 7,241,034
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`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ..................................................................... 12
`
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ................................................................... 4, 31
`
`
`In re Icon Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ..................................................................... 20
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 24
`
`
`In re Royka
`490 F.2d 981 (CCPA 1974) ........................................................................... 33
`
`
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) ..................................................................... 16
`
`
`In re Ratti,
`270 F.2d 810 (CCPA 1959) ........................................................................... 31
`
`
`In re Wood,
`599 F.2d 1032 (CCPA 1979) ................................................................... 15, 16
`
`
`Jones v. Hardy,
`727 F.2d 1524 (Fed. Cir. 1984) ..................................................................... 34
`
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)....................................................................................... 24
`
`
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987) ..................................................................... 34
`
`
`Stevenson v. Int'l Trade Comm.,
`612 F.2d 546 (CCPA 1979) .......................................................................... 17
`
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`Patent No. 7,241,034
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`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ............................................................... 24, 34
`
`
`
`STATUTES and OTHER
`
`35 U.S.C. § 103 .................................................................................................. 15, 33
`
`35 U.S.C. § 316 .......................................................................................................... 1
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`M.P.E.P. § 2131 ....................................................................................................... 31
`
`M.P.E.P. § 2141 ................................................................................................... 3, 15
`
`M.P.E.P. § 2143 ............................................................................................. 4, 24, 31
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`Case No. IPR2016-00193
`Patent No. 7,241,034
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, Adaptive
`
`Headlamp Technologies, Inc. (hereinafter “AHT” or “Patent Owner”) hereby
`
`provides a Response to the Petition for Inter Partes Review (Paper 1), filed on
`
`November 13, 2015, and the challenges therein. Inter partes review of claims 7-1,
`
`12-21, 23, 24, and 28-39 in the Reexamination Certificate of U.S. Patent No.
`
`7,241,034 C1 (Ex. 1001; “the ‘034 Patent”) of AHT was instituted by the Board’s
`
`June 7, 2016 Decision (Paper 10) in response to SL Corporation’s (hereinafter “SL
`
`Corp” or “Petitioner”) Petition. Inter partes review of claims 3-6, 11, 22, and 25-27
`
`of the ‘034 Patent was not instituted.
`
`Petitioner asserts ten grounds for unpatentability of various claims of the ‘034
`
`Patent. Petitioner primarily relies upon either of Japanese Patent Application
`
`Publication H10-324191 to Kato (hereinafter “Kato”; Ex. 1024) or Japanese
`
`Unexamined Patent Application Publication 2000-185593 to Fukuwa (hereinafter
`
`“Fukuwa”; Ex. 1025), both standing alone and in combination with one or more
`
`other references or alleged admissions made by the Patent Owner during prosecution
`
`of the ‘034 Patent. The asserted grounds for invalidating one or more claims of the
`
`‘034 Patent are summarized in Table 1, below.
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`Ground
`1
`
`Claims
`7-9, 13-18, 21-24,
`and 28-33
`3-6, 10-12
`
`Basis
`Anticipation
`
`Obviousness
`
`19, 20, 25-27
`
`Obviousness
`
`References
`
`Kato
`
`Kato in view of Izawa and/or
`alleged Patent Owner
`admissions
`Kato in view of alleged Patent
`Owner admissions
`Fukuwa
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`8
`9
`
`7-9, 13-17, 21-24,
`and 28-33
`3-6, 10-12
`
`Anticipation
`
`Obviousness
`
`18-20, 25-27
`
`Obviousness
`
`36-39
`36-39
`3-39
`
`Obviousness
`Obviousness
`Obviousness
`
`Fukuwa in view of Izawa
`and/or alleged Patent Owner
`admissions
`Fukuwa in view of alleged
`Patent Owner admissions
`Kato in view of Hayami
`Fukuwa in view of Hayami
`Kato in view of Izawa,
`Takahashi, and/or alleged
`Patent Owner admissions
`Fukuwa in view of Izawa,
`Takahashi, and/or alleged
`Patent Owner admissions
`Table 1: Asserted Grounds for Invalidation of Claims of ‘034 Patent
`
`10
`
`3-39
`
`Obviousness
`
`The Board did not institute inter partes review of any claims of the ‘034 Patent
`
`under grounds 1-8 or ground 10 in its June 7, 2016 Decision (Paper 10). Decision
`
`at 9-12, 31-36. The Board did institute inter partes review of several claims of the
`
`‘034 Patent under asserted ground 9, as summarized in Table 2 below. Decision at
`
`36-37.
`
`Notably, ground 9 relies on Kato as the primary reference for invalidating one
`
`or more claims of the ‘034 Patent as obvious. Pet. at 14. Additionally, each of the
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`bases upon which inter partes review was instituted rely on modification of Kato
`
`with the threshold of Takahashi. See Decision at 15-31.
`
`Ground
`9
`
`9
`
`9
`
`Claims
`7-9, 13-18, 21,
`23, 24, and 28-35
`10, 12
`
`Basis
`Obviousness
`
`Obviousness
`
`19, 20
`
`Obviousness
`
`References
`Kato in view of Takahashi
`
`Kato in view of Takahashi and
`further in view of Izawa and
`Patent Owner admissions
`Kato in view of Takahashi and
`further in view of Patent
`Owner admissions
`Kato in view of Takahashi and
`further in view of Hayami
`Table 2: Summary of claims for which IPR is instituted under Ground 9
`
`9
`
`36-39
`
`Obviousness
`
`As discussed herein as well as in the declaration of Joe Katona, attached hereto
`
`as AHT’s Ex. 2002, Petitioner’s asserted grounds for invalidation of the claims of
`
`the ‘034 Patent are deficient and must be rejected. First, Petitioner’s primary
`
`reference, Kato, comprises non-analogous art with respect to the claimed invention
`
`of the ‘034 Patent. Invalidation of any claim of the ‘034 Patent as obvious in light
`
`of Kato is, therefore, improper. M.P.E.P. § 2141.01(a); In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004).
`
`Second, Petitioner has failed to establish a prima facie case of obviousness
`
`with regard to any claim of the ‘034 Patent since Petitioner has provided nothing
`
`more than mere conclusory statements as motivation for the combinations proffered,
`
`rather than providing some objective reason for combining Kato with Takahashi,
`
`Izawa, or Hayami. Specifically, there exists no motivation to modify Kato with the
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`teachings of Takahashi, as proffered by Petitioner, since doing so would yield a
`
`modified device unsuitable for performing the intended purpose of Kato. Because
`
`modifications rendering the prior art unsatisfactory for its intended purpose may not
`
`be relied upon to support a finding of obviousness and because all bases for
`
`invalidating claims of the ‘034 Patent rely on Kato in view of at least Takahashi,
`
`Petitioner’s asserted grounds for invalidating the claims of the ‘034 Patent must be
`
`rejected. M.P.E.P. § 2143.01; In re Gordon, 733 F.2d 900 (Fed. Cir. 1984).
`
`Lastly, the modified device produced via combining Kato with certain
`
`features of Takahashi would not meet all of the limitations of claim 7 of the ‘034
`
`Patent because the threshold taught in Takahashi is not within the claim language of
`
`the claims of the ‘034 Patent.
`
`For at least these reasons, Petitioner’s ground 9 for invalidation of the claims
`
`of the ‘034 Patent must be rejected.
`
`II. BACKGROUND AND SCOPE OF THE ‘034 PATENT
`
`The two named inventors of the ‘034 Patent, entitled “Automatic Directional
`
`Control System for Vehicle Headlights,” were engineers working at Dana Holding
`
`Corporation at the time of the invention. Dana Holding Corporation is an American
`
`manufacturer of automotive parts and supplier of a wide range of technologies for
`
`original-equipment and aftermarket products. The ‘034 Patent issued on July 10,
`
`2007 and was later assigned to AHT, a company unrelated to Dana Holding
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`Corporation created to protect the patent rights of the ‘034 Patent. The ‘034 Patent
`
`claims priority to three provisional applications, Appl. No. 60/335,409 filed on
`
`October 31, 2001, 60/356,703 filed on February 13, 2002, and 60/369,447 filed on
`
`April 2, 2002, but was conceived and actually reduced to practice prior to that time.
`
`Ex. 1001, Title Page.
`
`A person having ordinary skill in the art (“PHOSITA”) would view the ‘034
`
`Patent to encompass the scope described by the declaration of Joe Katona, and
`
`herein. A PHOSITA would have at least the following qualifications: a bachelor’s
`
`degree in electrical engineering, computer science, physics, or other related field of
`
`study; at least two years of relevant work experience in the automotive industry; a
`
`working understanding of control systems and associated components used within
`
`the automotive industry; and, relevant work experience with product development
`
`and design in the automotive industry. Ex. 2002 at ¶ 28. A PHOSITA would have
`
`knowledge of vehicle attributes and operating conditions necessary to determine the
`
`necessary headlamp directional control responses, and how to effectuate those
`
`responses. Ex. 2002 at ¶ 28.
`
`The ‘034 Patent discloses and claims automatic directional control systems
`
`for a vehicle headlight which address several deficiencies in headlight control
`
`systems. Ex. 2002 at ¶ 31. In particular, the ‘034 Patent discloses headlight control
`
`systems which operate to adjust the beam direction of a vehicle headlight in response
`
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`to two or more sensed conditions of the vehicle. Ex. 2002 at ¶ 31. The ‘034
`
`describes certain deficiencies in fixedly positioned headlights, such as: (1) inability
`
`to adjust beam direction upward or downward in response to the speed or pitch of
`
`the vehicle to more brightly illuminate either farther off or closer portions of the
`
`roadway; and, (2) inability to adjust beam direction to the left or right corresponding
`
`to the direction of cornering as the vehicle turns a corner, illuminating areas
`
`somewhat lateral to the vehicle. Ex. 2002 at ¶ 32.
`
`As claimed, the control systems disclosed in the ‘034 Patent utilize at least
`
`two sensors, each of which senses at least one condition of the vehicle, including at
`
`least the steering angle and vehicle pitch. Ex. 2002 at ¶ 33. Additional conditions,
`
`such as road speed, suspension height, rate of change of road speed, rate of change
`
`of pitch of the vehicle, and/or rate of change of suspension height of the vehicle may
`
`be sensed. Ex. 2002 at ¶ 33. Notably, neither banking of the vehicle nor the rate of
`
`change of banking angle of the vehicle are disclosed or claimed as a condition which
`
`may be sensed. Ex. 2002 at ¶ 34, 46.
`
`The claimed systems comprise a controller responsive to the sensed
`
`conditions of the vehicle to generate an output signal for adjusting the beam direction
`
`of a headlight. Ex. 2002 at ¶ 35. As claimed, the controller only generates the output
`
`signal upon at least one of the sensor signals representing a condition of the vehicle
`
`changing by more than a predetermined minimum threshold is exceeded. Ex. 2002
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`at ¶ 35 (emphasis added). Importantly, the predetermined minimum threshold value,
`
`as claimed, must comprise a minimum magnitude or rate change of a sensed
`
`condition of the vehicle, rather than comprising a minimum time or distance value.
`
`Ex. 2002 at ¶ 35 (emphasis added).
`
`III. CLAIM INTERPRETATION
`
`The standard for claim construction applied in this proceeding is that a claim
`
`is given its “broadest reasonable construction in light of the specification of the
`
`Patent in which it appears,” which is different from the standards applied in the
`
`related litigation. The broadest reasonable interpretation of the term “vehicle,” as
`
`used consistently throughout the ‘034 Patent and as understood by a PHOSITA, does
`
`not encompass motorcycles in light of the inclusion and exclusion of certain
`
`discussion throughout the specification of the ‘034 Patent, as noted throughout this
`
`Response. Ex. 2002 at ¶¶ 41, 44-48.
`
`Petitioner has proposed constructions for several terms within the claims of
`
`the ‘034 Patent. See Pet. at 10-12. The Board declined adoption of these proposed
`
`constructions because they are not necessary to resolve the controversy. Decision at
`
`7. Patent Owner proceeds with this Response under the Board’s decision not to
`
`further construe these terms.1
`
`
`1 Patent Owner reserves the right to propose constructions for certain terms in the pending litigation
`under the alternative Phillips claim construction standard.
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`IV. PRIOR ART REFERENCES
`
`The Board’s Decision instituting inter partes review of several claims of the
`
`‘034 Patent relies upon two references, primarily, under ground 9. Namely, the
`
`combination of Kato in view of Takahashi, either standing alone or in concert with
`
`additional references or alleged admissions of the Patent Owner, form the basis for
`
`inter partes review instituted under ground 9 of the Petition. Decision at 36-37. The
`
`scope and content of the Kato and Takahashi references are described in the
`
`following sections.
`
`A. KATO
`
`Kato is a Japanese Patent application entitled “Front Lamp Optical Axis
`
`Control Device for a Motorcycle.”2 Ex. 1024, Title Page (emphasis added). Kato
`
`addresses the problem of instability of the beam irradiation range of the headlight of
`
`a motorcycle caused by changes in the pitch angle, bank angle, and steering angle
`
`of the motorcycle during operation. Ex. 1024, Abstract; Ex. 2002 at ¶ 36.
`
`Kato is inapplicable to four-wheel vehicles as Kato distinguishes headlight
`
`control parameters within the motorcycle setting from that of four-wheel vehicles,
`
`stating that “the pitch angle of a motorcycle changes more readily than that of a car
`
`
`2 When addressing Kato herein, Patent owner is referring to the certified translation provided by
`the Petitioner in Ex. 1024. Patent Owner reserves the right the challenge the accuracy of this
`translation later in this proceeding.
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`due to acceleration, deceleration, or bumps in the road.” Ex. 1024 at 2 ([0004]); Ex.
`
`2002 at ¶ 36. Further, Kato notes “[i]n a motorcycle, if a vehicle body tilts in a bank
`
`angle direction a range of illumination of the front lamp becomes elongated,” and
`
`that “the prior art… has failed to provide any effect with respect to the elongation of
`
`the range of illumination of the front lamp.” Ex. 1024 at 2 ([0005]); Ex. 2002 at ¶
`
`36. Kato notes that the prior art unsatisfactorily “turned the front lamp left and right
`
`in accordance with the steering or bank angle, and as such has only turned the front
`
`lamp in the direction of the steering angle.” Id. Therefore, the beam irradiation
`
`range of the headlight “[moves] up and down as the pitch angle changes during travel
`
`of the motorcycle, which [causes] the range of illumination of the front lamp to
`
`swivel in a non-fixed manner.” Ex. 1024 at 2 ([0004]); Ex. 2002 at ¶ 36.
`
`Kato discloses correction of the pitch angle of a motorcycle headlamp in
`
`response to changes in pitch, bank, steering angles, or the like change which occur
`
`while driving a motor cycle by using sensors to find pitch, bank, and/or steering
`
`angle correction amount and by “[correcting] an angle of the optical axis via the
`
`actuator.” Ex. 1024 at 2-3 ([0007]-[0013]); Ex. 2002 at ¶ 37. In other words, Kato
`
`aims to determine the excess amount of pitch, bank, or steering angle that has
`
`occurred while driving the motorcycle and corrects the angle of the optical axis by
`
`turning the headlight back toward the center position, i.e., overturn correction. Ex.
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`2002 at ¶ 37. This overturn correction movement abates the effects of larger than
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`optimal movements of the headlamp to prevent flattening of the elliptical irradiation
`
`cone of the headlight. Ex. 1024 at 2-3 ([0008]-[0010]); Ex. 2002 at ¶ 37.
`
`Petitioner fails to recognize the full extent of the discrepancies between Kato
`
`and the ‘034 Patent. In particular, the aim of Kato is quite the opposite of that of the
`
`‘034 Patent, which seeks to cause the headlights to swivel in the direction of the
`
`turn of a four-wheel vehicle to provide illumination of the road surface in the path
`
`of movement of the vehicle rather than providing for a reverse angle correction
`
`movement. Ex. 2002 at ¶ 38. The solutions are also quite contrasting, as the ‘034
`
`Patent avoids minimal variations of movement of the headlight by preventing the
`
`actuators from moving the headlamp when one or more of the sensed conditions are
`
`below a predetermined minimum threshold amount, whereas Kato, as admitted by
`
`Petitioner, does not explicitly teach nor suggests a “predetermined minimum
`
`threshold amount” limitation as required by the ‘034 Patent. Pet. at 18; Ex. 2002 at
`
`¶ 35.
`
`B. TAKAHASHI
`
`Takahashi discloses an automatic leveling device which rotates a headlight
`
`vertically to adjust for inclination of the vehicle. Ex. 1019 at 3; Ex. 2002 at ¶ 39.
`
`The adjustment is made so that the illumination direction of the vehicle lamp “can
`
`be always kept in the reference direction” which is later described as “in the
`
`horizontal direction.” Ex. 1019 at 1-2, 7. In other words, the headlight is adjusted
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`so that it is always in a vertically centered position. Ex. 2002 at ¶ 39. Takahashi
`
`discloses a single sensor for change in the road gradient and a single actuator for
`
`adjusting the headlamp in a vertically in a first direction, but does not mention
`
`moving the headlight in a second direction as specified in the ‘034 Patent – i.e.,
`
`horizontal rotation of a headlight. Ex. 2002 at ¶ 39. Takahashi does not disclose
`
`moving the headlamp to illuminate the road surface in the path of the vehicle as a
`
`result of changes in the steering angle of the vehicle as specified in the ‘034 Patent,
`
`instead keeping the headlights at a centered position at all times. Ex. 2002 at ¶ 39.
`
`Takahashi discloses that the control means adjusts the inclination only when
`
`one of two conditions are met: 1) the vehicle is stationary and the vehicle is at an
`
`incline, or 2) the vehicle is moving, the amount of variations in the gradient exceeds
`
`a reference value and that excessive state continues for a time or distance exceeding
`
`a reference value. Ex. 1019 at 4, 13-14; Ex. 2002 at ¶ 40. The first condition
`
`involving stationary adjustments of the headlight is not relevant to the claims of the
`
`‘034 Patent. Ex. 2002 at ¶ 40. The second condition does not entail adjusting the
`
`headlight toward the direction of the incline or steering angle due to a change in the
`
`magnitude of a signal representative of a sensed pitch or steering angle of the vehicle
`
`as required by the claims of the ‘034 Patent. Ex. 2002 at ¶ 39. Rather, the second
`
`condition entails that a certain number of variations in the road gradient must occur
`
`over a period of time or distance before the headlight can be adjusted back to the
`
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`predetermined centered position. 1019 at 9; Ex. 2002 at ¶ 40. Thus, Takahashi
`
`discloses a markedly different approach than that of the ‘034 Patent, relying on the
`
`number and duration of changes of the signal instead of the magnitude of the signal
`
`in determining when to rotate the headlight vertically. Ex. 2002 at ¶ 40.
`
`V.
`
`PETITIONER’S NINTH ASSERTED GROUND
`
`Petitioner challenges the validity of Claims 3-39 of the ‘034 Patent, alleging
`
`that these claims are obvious in light of Kato in view of Takahashi, Izawa, and/or
`
`Patent Owner admissions. Pet. at 14. Review was instituted by the Board for only
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`certain claims among these and in light of specified combinations of prior art
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`references (see Table 2, above). Decision at 36-37.
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`Of the claims for which inter partes review was instituted, claim 7 is the lone
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`independent claim. Each of the remaining claims under review depend from and
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`further narrow claim 7. Because any claim depending from a nonobvious
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`independent claim is necessarily nonobvious, the arguments presented herein focus
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`on the patentability of claim 7 over the prior art combinations identified by the Board
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`in its Decision, namely the combination of Kato modified with the threshold taught
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`by Takahashi.3 Decision at 36-37; In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988);
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`3 No other prior art reference over which inter partes review is instituted is relied upon to teach
`the threshold limitation (See Decision at 15-31). It follows, therefore, that each dependent claim
`of claim 7 is nonobvious if claim 7 is found to be nonobvious over Kato in view of Takahashi.
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`Hartness Int'l, Inc. v. Simplimatic Eng'g Co., 819 F.2d 1100, 1108 (Fed. Cir.
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`1987); In re Abele, 684 F.2d 902, 910 (CCPA 1982).
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`Independent claim 7 is presented below:
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`7. An automatic directional control system for a vehicle
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`headlight, comprising:
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`two or more sensors that are each adapted to generate a signal
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`that is representative of at least one of a plurality of sensed conditions
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`of a vehicle such that two or more sensor signals are generated, said
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`sensed conditions including at least a steering angle and a pitch of the
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`vehicle;
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`a controller that is responsive to said two or more sensor signals
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`for generating at least one output signal only when at least one of said
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`two or more sensor signals changes by more than a predetermined
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`minimum threshold amount to prevent at least one of two or more
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`actuators from being operated continuously or unduly frequently in
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`response to relatively small variations in at least one of the sensed
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`conditions; and
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`said two or more actuators each being adapted to be connected to
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`the vehicle headlight to effect movement thereof in accordance with
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`said at least one output signal;
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`wherein said two or more sensors include a first sensor and a
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`second sensor; and
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`wherein said first sensor is adapted to generate a signal that is
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`representative of a condition including the steering angle of the
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`vehicle and said second sensor is adapted to generate a signal that is
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`representative of a condition including the pitch of the vehicle.
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`Ex. 1001, Claim 7 (emphasis added).
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`Petitioner asserts that all of the limitations of claim 7, except the threshold
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`limitation, are expressly disclosed in Kato while Takahashi is relied upon for
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`disclosing the threshold limitation. Pet. at 53-54. Petitioner concludes that it would
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`have been obvious to a PHOSITA to modify Kato in view of Takahashi as claimed
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`in claim 7 to “reduce cost, and improve safety and visibility” since “[a PHOSITA]
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`would have recognized the undesirability of causing the actuators to move the
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`headlights every time there was a small bump in the road.” Pet. at 56, 57.
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`The combination of the motorcycle headlight control of Kato with the
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`threshold of Takahashi is improper and may not be relied upon to support a finding
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`that claim 7 of the ‘034 Patent is obvious. First, the prior art combination is improper
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`since it comprises non-analogous prior art. Second, even if each of Kato and
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`Takahashi comprise analogous prior art, the combination of Kato and Takahashi
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`ignores important differences between these references and the ‘034 Patent which
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`belie any alleged motivation to combine Kato with Takahashi. For at least these
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`reasons, a prima facie case of obviousness of claim 7 over the reference citing in
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`Petitioner’s ground 9 cannot be shown.
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`Additionally, claim 7 is nonobvious over the combination of Kato and
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`Takahashi since: (1) the modified device does not meet all limitations of claim 7;
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`and, (2) since modification of Kato with the threshold of Takahashi would frustrate
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`the intended purpose of Kato. Accordingly, claim 7 as well as dependent claims 8-
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`10, 12-21, 23, 24, and 28-39 are patentable over the prior art combination of Kato
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`and Takahashi, alone or as further modified by any other asserted prior art reference.
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`A. Kato is non-analogous prior art which may not be relied upon to support
`a finding of obviousness.
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`The analysis for determining obviousness under 35 U.S.C. 103 includes
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`examination of several factual inquiries, including: determining the scope and
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`content of the prior art; identifying the differences between the claimed invention
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`and the prior art; ascertaining the level of ordinary skill in the pertinent art; and,
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`consideration of any other relevant secondary considerations. Graham v. John
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`Deere Co., 383 U.S. 1 (1966); M.P.E.P. § 2141. For obviousness, the scope and
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`content of the prior art is limited to only that which is analogous to the claimed
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`invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“In order for a
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`reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the
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`reference must be analogous art to the claimed invention”); In re Clay, 966 F.2d 656,
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`658 (Fed. Cir. 1992). A reference is analogous to the claimed invention if: (1) the
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`reference and the claimed invention are within the same field of endeavor; or (2) the
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`reference is reasonably pertinent to the problem addressed by the claimed invention.
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`Id. at 1325; In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood,
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`599 F.2d 1032, 1036 (CCPA 1979). Here, Kato is non-analogous to the claimed
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`invention of the ‘034 Patent since Kato is not within the same field of endeavor of
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`the ‘034 Patent and since Kato is not reasonably pertinent to the problem addressed
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`by the ‘034 Patent.
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`1. Kato is addressed to a different field of endeavor than the ‘034 Patent.
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`As noted above, prior art must be analogous to the claimed invention to
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`support a finding of obviousness. The appropriate field of endeavor is determined
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`by reference to explanation of the subject matter of the invention found in the
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`embodiments, functions, and structures of the claimed invention. See Wood, 599
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`F.2d at 1036 (confining the field of endeavor to the scope explicitly specified in the
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`background of the invention); see also Deminski, 796 F.2d at 442. Adequate support,
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`therefore, for the scope of the field of endeavor may be derived from the
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`specification, claims, and the structure and function of the invention. Bigio, 381
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`F.3d at 1326. Additionally, “it is necessary to consider ‘the reality of the
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`circumstances’ - in other words, common sense - in deciding in which fie