1
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of: (cid:9)
`
`7,241,034 (cid:9)
`
`Applications No. 95/001,621 & 90/011,011 (cid:9)
`
`Filed: 05/16/2011 (cid:9)
`
`)
`)
`) Art Unit: 3992
`)
`) Examiner: MY-TRANG N. TON
`)
`) Atty. Docket No.:
`) SVIPGP109RE
`For: AUTOMATIC DIRECTIONAL CONTROL)
`SYSTEM FOR VEHICLE (cid:9)
`) Date: 03/23/2012
`HEADLIGHTS (cid:9)
`)
`)
`
`AMENDMENT D
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Examiner:
`
`In response to the Office Action mailed 2/23/2012, the notice of Merger of
`
`Proceedings mailed 2/23/2012, the Office Action mailed 1/12/2011 ("Office Action"),
`
`and as a substitute for the Responses filed 1/18/2011, 2/16/2011, and 02/02/2012 in the
`
`90/011,011 proceeding, please enter the following amendments believed to place the
`
`Claims in condition for allowance.
`
`SL Corp. Exhibit 1003
`
`(cid:9)
`

`
`2
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`AMENDMENTS TO THE CLAIMS
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`Amended claims follow:
`
`1.
`
`(Currently Amended) An automatic directional control system for a vehicle
`
`headlight, comprising:
`
`[[a]]two or more sensors that [[is]]are each adapted to generate a signal that is
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`representative of at least one of a plurality of sensed conditions of [[the]]a
`
`vehicle, said sensed conditions including at least[[es]] one or more of road
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`speed, steering angle[[,]] and pitch, and suspension height of the vehicle;
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`a controller that is responsive to said two or more sensor signals for generating
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`[[an]]at least one output signal only when said at least one of the two or
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`more sensor signals changes by more than a predetermined minimum
`
`threshold amount to prevent [[said]]at least one first 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 the sensed operating conditions;
`
`and
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`[[an]]said two or more actuators [[that is]]each being adapted to be connected to
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`the headlight to effect movement thereof in accordance with said at least
`
`one output signal.
`
`2.
`
`(Currently Amended) The automatic directional control system defined in claim
`
`1_, wherein at least one of said two or more sensors further generate[[s]] a signal that is
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`representative of the road speed of the vehicle.
`
`3.
`
`(Currently Amended) The automatic directional control system defined in claim
`
`1_, wherein at least one of said two or more sensors further generates a signal that is
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`representative of [[the]]a rate of change of steering angle of the vehicle.
`
`

`
`3
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`4.
`
`(Currently Amended) The automatic directional control system defined in claim
`
`1_, wherein at least one of said two or more sensors further generates a signal that is
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`representative of Uthell a rate of change of pitch of the vehicle.
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`5.
`
`(Currently Amended) The automatic directional control system defined in claim
`
`1_, wherein at least one of said two or more sensors further generates a signal that is
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`representative of the suspension height of the vehicle.
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`6.
`
`(New) The automatic directional control system defined in claim 1, wherein said
`
`two or more sensors include a first sensor and a second sensor.
`
`7.
`
`(New) The automatic directional control system defined in claim 6, wherein said
`
`first sensor is adapted to generate a signal that is representative of a condition including
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`the steering angle of the vehicle and said second sensor is adapted to generate a signal
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`that is representative of a condition including the pitch of the vehicle.
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`8.
`
`(New) The automatic directional control system defined in claim 6, wherein said
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`first sensor is physically separate from said second sensor.
`
`9.
`
`(New) The automatic directional control system defined in claim 1, further
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`comprising one or more additional sensors for sensing one or more of a rate of change of
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`road speed of the vehicle, a rate of change of steering angle of the vehicle, a rate of
`
`change of pitch of the vehicle, a suspension height, or a rate of change of suspension
`
`height of the vehicle.
`
`10.
`
`(New) The automatic directional control system defined in claim 9, wherein at
`
`least one of said one or more additional sensors generate a signal that is representative of
`
`the rate of change of road speed of the vehicle.
`
`

`
`4
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`11.
`
`(New) The automatic directional control system defined in claim 9, wherein at
`
`least one of said one or more additional sensors generate a signal that is representative of
`
`the rate of change of steering angle of the vehicle.
`
`12.
`
`(New) The automatic directional control system defined in claim 9, wherein at
`
`least one of said one or more additional sensors generate a signal that is representative of
`
`the rate of change of pitch of the vehicle.
`
`13.
`
`(New) The automatic directional control system defined in claim 9, wherein at
`
`least one of said one or more additional sensors generate a signal that is representative of
`
`a suspension height of the vehicle.
`
`14.
`
`(New) The automatic directional control system defined in claim 1, wherein the
`
`automatic directional control system is configured to include the first actuator connected
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`to the headlight to effect movement thereof in a first direction and a second actuator
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`connected to the headlight to effect movement thereof in a second direction different
`
`form the first direction.
`
`15.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`two or more actuators include the first actuator that is adapted to be connected to the
`
`headlight to effect movement thereof in a vertical direction.
`
`16.
`
`(New) The automatic directional control system defined in claim 15, wherein the
`
`two or more actuators include a second actuator that is adapted to be connected to the
`
`headlight to effect movement thereof in a horizontal direction.
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`17.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`two or more actuators include an electronically controlled mechanical actuator.
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`18.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`two or more actuators include a step motor.
`
`

`
`5
`
`19. (cid:9)
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`two or more actuators include a servo motor.
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`20.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`two or more actuators include a microstepping motor capable of being operated in
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`fractional step increments.
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`21.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`automatic directional control system is configured such that the headlight is adjustably
`
`mounted on the vehicle such that a directional orientation at which a beam of light
`
`projects therefrom is capable of being adjusted both up and down relative to a horizontal
`
`reference position and left and right relative to a vertical reference position.
`
`22.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`automatic directional control system is configured such that, while in a calibration mode,
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`a directional orientation at which a beam of light projects therefrom is capable of being
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`adjusted relative to the vehicle by manual operation of the two or more actuators.
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`23.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`automatic directional control system is configured such that the controller includes a
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`microprocessor.
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`24.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`automatic directional control system is configured such that the controller includes a
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`programmable electronic controller.
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`25.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`automatic directional control system further includes at least one position feedback
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`sensor capable of providing a position feedback signal associated with at least one of the
`
`two or more actuators.
`
`

`
`6
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`26.
`
`(New) The automatic directional control system defined in claim 25, wherein the
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`at least one position feedback sensor includes a Hall Effect sensor.
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`27.
`
`(New) The automatic directional control system defined in claim 25, wherein the
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`at least one position feedback sensor includes an optical interrupter.
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`28.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`automatic directional control system further includes memory.
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`29.
`
`(New) The automatic directional control system defined in claim 28, wherein the
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`memory includes non-volatile memory.
`
`30.
`
`(New) The automatic directional control system defined in claim 28, wherein the
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`memory is configured to store a predetermined reference position associated with the
`
`headlight.
`
`31.
`
`(New) The automatic directional control system defined in claim 1, wherein the
`
`automatic directional control system is configured such that the pitch of the vehicle is
`
`capable of being determined by sensing a front and a rear suspension height of the
`
`vehicle.
`
`32.
`
`(New) The automatic directional control system defined in claim 1, wherein the
`
`automatic directional control system is configured such that the pitch of the vehicle is
`
`capable of being determined by a pitch sensor.
`
`33.
`
`(New) The automatic directional control system defined in claim 1, wherein the
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`automatic directional control system is configured such that the controller is programmed
`
`to be responsive to changes in the suspension height of the vehicle that occur at
`
`frequencies lower than a suspension rebound frequency of the vehicle.
`
`

`
`7
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`34.
`
`(New) The automatic directional control system defined in claim 1, wherein the
`
`automatic directional control system is configured such that the controller is programmed
`
`to be responsive to changes in the suspension height of the vehicle that occur at
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`frequencies lower than a suspension rebound frequency of the vehicle, thereby ignoring
`
`frequency changes in the suspension height of the vehicle that are a result of bumps in a
`
`road.
`
`35.
`
`(New) The automatic directional control system defined in claim 1, wherein the
`
`automatic directional control system is configured such that the predetermined minimum
`
`threshold amount functions as a filter to minimize undesirable operation of at least one of
`
`the two or more actuators.
`
`36.
`
`(New) The automatic directional control system defined in claim 1, wherein said
`
`controller is configured to be responsive to said two or more sensor signals for generating
`
`at least one output signal only when said at least one of the two or more sensor signals
`
`changes by more than a predetermined minimum threshold amount to prevent at least one
`
`of the two or more actuators from being operated continuously in response to relatively
`
`small variations in the sensed conditions.
`
`37.
`
`(New) The automatic directional control system defined in claim 1, wherein said
`
`controller is configured to be responsive to said two or more sensor signals for generating
`
`at least one output signal only when said at least one of the two or more sensor signals
`
`changes by more than a predetermined minimum threshold amount to prevent at least one
`
`of the two or more actuators from being operated unduly frequently in response to
`
`relatively small variations in the sensed conditions.
`
`38.
`
`(New) The automatic directional control system defined in claim 1, wherein said
`
`controller is further responsive to said two or more sensor signals to automatically
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`activate one or more vehicle lights that are different than the headlight.
`
`

`
`8
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`39.
`
`(New) The automatic directional control system defined in claim 38, wherein said
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`one or more vehicle lights that are different than the headlight include one or more lights
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`for illuminating a road in front of the vehicle during a turn.
`
`40.
`
`(New) The automatic directional control system defined in claim 1, wherein said
`
`controller is further responsive to a steering angle in excess of a predetermined
`
`magnitude for automatically activating one or more vehicle lights that are different than
`
`the headlight.
`
`41.
`
`(New) The automatic directional control system defined in claim 1, wherein said
`
`controller is further responsive to a steering angle in excess of a predetermined
`
`magnitude for automatically activating one or more vehicle lights that are different than
`
`the headlight to extend an angular range of a road surface.
`
`

`
`9
`
`REMARKS
`
`As noted in the 6/23/2011 Office Communication for the Inter Partes
`
`Reexamination Proceeding number 95/001,621, which has now been merged with the
`
`current matter, Examiner has agreed with the Requestor that Requestor's issues 1-2, 4-7,
`
`9-12, 14-17 and 19-20 raise substantial new questions of patentability as to claims 1-5 of
`
`the '034 patent.
`
`Specifically, the Examiner agrees that:
`
`Claims 1, 2, 4, and 5 are anticipated by Uchida (United Kingdom Patent
`
`Application Publication No. 2309773) under 35 U.S.C. §102(b);
`
`Claims 1, 2, 4, and 5 are anticipated by Takahashi (United Kingdom Patent
`
`Application Publication No. 2309774) under 35 U.S.C. §102(b);
`
`Claims 1 and 5 are anticipated by Miskin et al. (German Patent Application
`
`Publication No. 3110094) under 35 U.S.C. §102(b);
`
`Claims 1 and 5 are anticipated by Leleve (German Patent Application Publication
`
`No. 3129891) under 35 U.S.C. §102(b);
`
`Claims 1, 2, 4, and 5 are unpatentable over the combination of Toda et al. (U.S.
`
`Patent No. 6,305,823) and Uchida under 35 U.S.C. § 103(a);
`
`Claims 1, 2, 4, and 5 are unpatentable over the combination of Toda et al. and
`
`Takahashi under 35 U.S.C. § 103(a);
`
`Claims 1, 2, 4, and 5 are unpatentable over the combination of Toda et al. and
`
`Miskin et al. under 35 U.S.C. § 103(a);
`
`Claims 1, 2, 4, and 5 are unpatentable over the combination of Toda et al. and
`
`Leleve under 35 U.S.C. § 103(a);
`
`Claims 1, 2, 4, and 5 are unpatentable over the combination of Okuchi et al. (U.S.
`
`Patent No.6,193,398) and Uchida under 35 U.S.C. § 103(a);
`
`Claims 1, 2, 4, and 5 are unpatentable over the combination of Okuchi et al. and
`
`Takahashi under 35 U.S.C. § 103(a);
`
`

`
`- 10 -
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`Claims 1, 2, 4, and 5 are unpatentable over the combination of Okuchi et al. and
`
`Miskin et al. under 35 U.S.C. § 103(a);
`
`Claims 1, 2, 4, and 5 are unpatentable over the combination of Okuchi et al. and
`
`Leleve under 35 U.S.C. § 103(a);
`
`Claims 1 to 5 are unpatentable over the combination of Gotoh (U.S. Patent No.
`
`5,909,949) and Uchida under 35 U.S.C. § 103(a);
`
`Claims 1 to 5 are unpatentable over the combination of Gotoh and Takahashi
`
`under 35 U.S.C. § 103(a);
`
`Claims 1, 2, 3, and 5 are unpatentable over the combination of Gotoh and Miskin
`
`et al. under 35 U.S.C. § 103(a); and
`
`Claims 1 to 5 are unpatentable over the combination of Gotoh and Leleve under
`
`35 U.S.C. § 103(a).
`
`Applicant has amended Claim 1 to overcome such rejections, as follows:
`
`(Currently Amended) An automatic directional control system for a vehicle
`1. (cid:9)
`headlight, comprising:
`[a]two or more sensors that [is]are each adapted to generate a signal that is
`representative of at least one of a plurality of sensed conditions of [the]a
`vehicle, said sensed conditions including at least[es one or more of road
`speed, ]steering angle[,] and pitch[, and suspension height ]of the vehicle;
`a controller that is responsive to said two or more sensor signals for generating
`[an]at least one output signal only when said at least one of the two or
`more sensor signals changes by more than a predetermined minimum
`threshold amount to prevent [said]at least one first one of two or more
`actuators from being operated continuously or unduly frequently in
`response to relatively small variations in the sensed [operating ]conditions;
`and
`[an]said two or more actuators [that is]each being adapted to be connected to the
`headlight to effect movement thereof in accordance with said at least one output signal.
`
`Applicant respectfully asserts that the references as relied on by the Examiner fail
`
`to teach "two or more sensors that are each adapted to generate a signal that is
`
`representative of at least one of a plurality of sensed conditions of a vehicle, said sensed
`
`conditions including at least steering angle and pitch of the vehicle" (emphasis added),
`
`

`
`as claimed by Applicant. Further, applicant respectfully asserts that the references as
`
`relied on by the Examiner fail to teach "two or more actuators each being adapted to be
`
`connected to the headlight to effect movement thereof in accordance with said at least
`
`one output signal" (emphasis added), as claimed by Applicant.
`
`Applicant respectfully notes that a claim is anticipated only if each and every
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`element as set forth in the claim is found, either expressly or inherently described in a
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`single prior art reference. Verdegaal Bros. v. Union Oil Co. Of California, 814 F.2d 628,
`
`631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Moreover, the identical invention must be
`
`shown in as complete detail as contained in the claim. Richardson v. Suzuki Motor
`
`Co.868 F.2d 1226, 1236, 9USPQ2d 1913, 1920 (Fed. Cir. 1989). Additionally, the
`
`elements must be arranged as required by the claim.
`
`This criterion has simply not been met by the above reference, as noted above.
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`Further, to establish a prima facie case of obviousness, three basic criteria must be
`
`met. First, there must be some suggestion or motivation, either in the references
`
`themselves or in the knowledge generally available to one of ordinary skill in the art, to
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`modify the reference or to combine reference teachings. Second, there must be a
`
`reasonable expectation of success. Finally, the prior art reference (or references when
`
`combined) must teach or suggest all the claim limitations. The teaching or suggestion to
`
`make the claimed combination and the reasonable expectation of success must both be
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`found in the prior art and not based on applicant's disclosure. In re Vaeck,947 F.2d 488,
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`20 USPQ2d 1438 (Fed.Cir.1991).
`
`Applicant respectfully asserts that at least the first and third elements of the prima
`
`facie case of obviousness have not been met, since it would be unobvious to combine the
`
`references, and the prior art references, as relied upon by the Examiner, fail to teach or
`
`suggest all of the claim limitations.
`
`

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`- 12 -
`
`Finally, Applicant brings to the Examiner's attention the subject matter of new
`Claims 6-41, which Applicant adds for full consideration. Claims 6-41 depend from and
`further limit Claim 1. Accordingly, Applicant respectfully submits that new Claims 6-41
`are allowable for at least the same reasons that Claim 1 is in condition for allowance, as
`described above. Support for the amendments to Claim 1, as well as for the newly added
`dependent claims may be found (by way of example), in Table 1.
`
`Table 1
`Claim 1 — e.g., see Abstract; Col. 2, lines 7-17; and Figure 1.
`Claim 2 — e.g., see Col. 2, line 10.
`Claim 3 — e.g. see Col. 2, lines 11-12.
`Claim 4 — e.g., see Col. 2, line 12.
`Claim 5 — e.g. see Col. 2, line 11.
`Claim 6 — e.g., see items 15 and 16 of Figure 1.
`Claim 7 - e.g., see Abstract; Col. 2, lines 7-17; Col. 3, line 58 - Col. 4, line 2; and
`Figure 1.
`Claim 8 — e.g., see items 15 and 16 of Figure 1.
`Claim 9 - e.g., see Col. 3, line 58 - Col. 4, line 2.
`Claim 10 - e.g., see Col. 3, line 58 - Col. 4, line 2.
`Claim 11 - e.g., see Col. 3, line 58 - Col. 4, line 2.
`Claim 12 - e.g., see Col. 3, line 58 - Col. 4, line 2.
`Claim 13 - e.g., see Col. 3, line 58 - Col. 4, line 2.
`Claim 14 - e.g., see Figure 1 and Col. 3, lines 26-29.
`Claim 15 - e.g., see Figure 1 and Col. 3, lines 26-29.
`Claim 16 - e.g., see Figure 1 and Col. 3, lines 26-29.
`Claim 17 - e.g., see Col. 3, lines 28-31.
`Claim 18 - e.g., see Col. 3, lines 28-31.
`Claim 19 - e.g., see Col. 3, lines 28-31.
`Claim 20 - e.g., see Col. 3, lines 31-37.
`Claim 21 - e.g., see Col. 3, lines 28-31.
`Claim 22 — e.g., see Figure 2, Col. 5, lines 25-29.
`
`

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`- 13 -
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`Claim 23 — e.g., see Col. 3, lines 53-58.
`
`Claim 24 — e.g., see Col. 3, lines 53-58.
`
`Claim 25 — e.g., see Col. 4, lines 7-30.
`
`Claim 26 - e.g., see Col. 4, line 26.
`
`Claim 27 — e.g., see Col. 4, lines 35-36.
`
`Claim 28 — e.g., see Col. 8, lines 8-11.
`
`Claim 29 — e.g., see Col. 8, line 16.
`
`Claim 30 — e.g., see Col. 6, lines 18-21.
`
`Claim 31 — e.g., see Col. 7, lines 1-4.
`
`Claim 32 — e.g., see Col. 7, lines 1-4.
`
`Claim 33 — e.g., see Col. 9, lines 33-42.
`
`Claim 34 — e.g., see Col. 9, lines 33-42.
`
`Claim 35 — e.g., see Col 9, lines 46-56.
`
`Claim 36 — e.g., see Col 9, lines 22-27.
`
`Claim 37 — e.g., see Col 9, lines 22-27.
`
`Claim 38 — e.g., see Col 12, lines 27-39.
`
`Claim 39 — e.g., see Col 12, lines 27-39.
`
`Claim 40 — e.g., see Col 12, lines 27-39.
`
`Claim 41 — e.g., see Col 12, lines 27-39.
`
`Of course, the above citations are merely examples of the above claim language
`
`and should not be construed as limiting in any manner.
`
`Applicant respectfully requests a Notice of Allowance of Claims 1-41, or a proper
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`prior art showing of all of Applicant's claim limitations, in combination with the
`
`remaining claim elements.
`
`Applicant believes no fees are due. In the event any other fees are due, the
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`Commissioner is authorized to charge any additional fees or credit any overpayment to
`
`Deposit Account No. 50-4964 (Order No. SVIPGP109RE).
`
`

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`- 14 -
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`Should the Examiner deem that any further amendment is desirable to place this
`
`application in condition for allowance, Applicant invites the Examiner to telephone the
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`undersigned attorney at the number listed below.
`
`Additionally, the undersigned hereby certifies that a true and complete copy of the
`
`forgoing Amendment D2 has been served on Third Party Requestor by mailing said copy
`
`on 27 Apr 2012 (and Amendment D, mailed 23 Mar 2012), via First Class Mail, postage
`
`prepaid to:
`
`Kenyon & Kenyon, LLP
`
`One Broadway
`
`New York, NY (cid:9)
`
`10004
`
`Dated: 27 April 2012
`The Caldwell Firm, LLC
`PO Box 59655
`Dallas, Texas 75229-0655
`Telephone: (972) 243-4523
`pcaldwell@thecaldwellfirm.com
`
`Respectfully submitted,
`
`Patrick E. Caldwell, Esq.
`Reg. No. 44,580