UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CONMERCE
`United States Patent and Trademark Office
`Addmis, COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`,..-ww.uslyto.gos..
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`APPLICATION NO. (cid:9)
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`10/285,312
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`FILING DATE
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`10/31/2002
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO. (cid:9)
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`CONFIRMATION NO.
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`James E. Smith
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`1-23649
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`1413
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`27210
`7590 (cid:9)
`1123/2003
`MACMILLAN, SOBANSKI & TODD, LLC
`ONE MARITIME PLAZA - FOURTII FLOOR
`720 WATER STREET
`TOLEDO, OH 43604
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`EXAMINER
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`ALAVI, ALI
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`ART UNIT
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`PAPER NUMBER
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`2875
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`DATE MAILED: 12/2312003
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. 10/03)
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`SL Corp. Exhibit 1008
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`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
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`Office Action Summary
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`Application No.
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`10/285,312
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`Examiner
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`Applicant(s)
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`SMITH ET AL.
`
`Art Unit
`
`Ali Alavi
`2875
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`- (cid:9) Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`- (cid:9)
`tithe 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.
`- (cid:9)
`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.
`- (cid:9) 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 term adjustment. See 37 CFR 1.704(b).
`Status
`1)(21 Responsive to communication(s) filed on 31 October 2002.
`22)0 This action is FINAL. (cid:9)
`2b)E This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`Disposition of Claims
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`4)(21 Claim(s) 1-13 is/are pending in the application.
` is/are withdrawn from consideration.
`4a) Of the above claim(s) (cid:9)
`5)0 Claim(s) (cid:9)
` is/are allowed.
`6)EI Claim(s) 1-13 is/are rejected.
`7)0 Claim(s) (cid:9)
` is/are objected to.
`8)0 Claim(s) (cid:9)
`are subject to restriction and/or election requirement.
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`Application Papers
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`9)q The specification is objected to by the Examiner.
` is/are: a)1=1 accepted or b)01 objected to by the Examiner.
`10)EI The drawing(s) filed on (cid:9)
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawings) is objected to. See 37 CFR 1.121(d).
`11)EI The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`Priority under 35 U.S.C. §§ 119 and 120
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)E] All WO Some * c)0 None of:
`1.0 Certified copies of the priority documents have been received.
`
`2.0 Certified copies of the priority documents have been received in Application No. (cid:9)
`3.q Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`13)E Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application)
`since a specific reference was included in the first sentence of the specification or in an Application Data Sheet.
`37 CFR 1.78.
`a) q The translation of the foreign language provisional application has been received.
`14)0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121 since a specific
`reference was included in the first sentence of the specification or in an Application Data Sheet. 37 CFR 1.78.
`
`Attachment(s)
`1) Ej Notice of References Cited (PTO-892) (cid:9)
`2) q Notice of Draftsperson's Patent Drawing Review (PTO-948) (cid:9)
`3) El Information Disclosure Statement(s) (PTO-1449) Paper No(s) 10/02. (cid:9)
`
`
`4) q Interview Summary (PTO-413) Paper No(s). (cid:9)
`5) q Notice of Informal Patent Application (PTO-152)
`6) q Other:
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`U.S Patent and Trademark Office
`PTOL-326 (Rev. 11-03)
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`Office Action Summary
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`Part of Paper No. 20031212
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`(cid:9)
`(cid:9)
`

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`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
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`Page 2
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`DETAILED ACTION
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`Information Disclosure Statement
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`1.
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`The references on PTO 1499 submitted on 10/31/2002 are acknowledged. All the
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`cited references have been considered. However the foreign patents and documents
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`cited by applicant are considered to the extent that could be understood from the
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`abstract and drawings. Patent applicant has duty not just to disclose pertinent prior art
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`references but to make the disclosure in such way as not to "bury" it within other
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`disclosures of less relevant prior art; See Golden Valley Microwave Foods Inc. v.
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`Weaver Popcorn Co. Inc., 24 USPQ2d 1801 (N.D.I. 1992); Molins PLC v. Textron Inc.,
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`26 USPQ2d 1889, at 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea Lark Boats,
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`Inc. et al., 175 USPQ 260, at 272 (S.D. Fl. 1972).
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`Claim Rejections - 35 USC § 102
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`2.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351(a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21(2)
`of such treaty in the English language.
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`Claims 1-2, 4-8, 10-13 are rejected under 35 U.S.C. 102(e) as being anticipated
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`by Toda et al (U.S. Pat. No 6,305,823).
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`Toda et al discloses an automatic directional control system for a vehicle
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`headlight comprising: a sensor (12, 14) that is adapted to generate a signal that is
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`

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`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
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`Page 3
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`representative of a condition of the vehicle, said sensed condition includes one or more
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`of road speed (12), and suspension height (14) of the vehicle; a controller (16) that is
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`responsive to said sensor signal for generating an output signal; and an actuator (10)
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`that is adapted to be connected to the headlight to effect movement thereof in
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`accordance with said output signal, wherein said sensor generates a signal that is
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`representative of the road speed of the vehicle (see abstract), speed sensor (12),
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`Height sensor (14).
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`Claims 1-2, 4-8, 10-13 are rejected under 35 U.S.C. 102(e) as being anticipated
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`by Okuchi et al (U.S. Pat. No 6,193,398).
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`Okuchi et al discloses an automatic directional control system for a vehicle
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`headlight comprising: a sensor (12) that is adapted to generate a signal that is
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`representative of a condition of the vehicle, said sensed condition includes one or more
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`of road speed (12) a controller (20) that is responsive to said sensor signal for
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`generating an output signal; and an actuator (35) that is adapted to be connected to the
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`headlight to effect movement thereof in accordance with said output signal, wherein
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`said sensor generates a signal that is representative of the road speed of the vehicle
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`(see abstract), speed sensor (12), pitch angle (2103, fig. 9), suspension height (2201,
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`2203, fig. 14).
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`

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`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
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`Page 4
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`Claim Rejections - 35 USC § 102
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or 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 1-3 and 9 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Gotoh (US Pat. No 5,909,949).
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`Gotoh discloses an automatic directional control system for a vehicle headlight
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`comprising: a sensor (22) that is adapted to generate a signal that is representative of a
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`condition of the vehicle, said sensed condition includes one or more of road speed (22),
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`and steering angle (21) and a controller (10) that is responsive to said sensor signal for
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`generating an output signal; and an actuator (24) that is adapted to be connected to the
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`headlight to effect movement thereof in accordance with said output signal, wherein
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`said sensor generates a signal that is representative of the road speed of the vehicle
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`(see abstract).
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`Conclusion
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`4.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. Kobayashi (US Pat. No 6,049,749) discloses a lighting device for
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`a vehicle light including a road profile calculation (2) and vehicle advancing direction
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`predicting means (3), and vehicle speed sensor (7) is cited of interest.
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`

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`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
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`Page 5
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`5. (cid:9)
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`Any inquiry concerning this communication or earlier communication from the
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`examiner should be directed to Ali Alavi whose telephone number is (703) 305-0522.
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`The examiner can normally be reached between 8:00 A.M. to 6:30 P.M. Tuesday to
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`Friday. If attempts to reach the examiner by phone are unsuccessful, the examiner's
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`supervisor, Sandy O'Shea can be reached at (703) 305-4939 or you may fax your
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`inquiry to the Central Fax at (703) 872-9306.
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`Ali Alavi