`
`ri
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO. I (cid:9)
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO. I CONFIRMATION NO. .
`
`10/285,312
`
`10/31/2002
`
`James E. Smith
`
`1-23649
`
`1413
`
`06/15/2004
`7590 (cid:9)
`27210 (cid:9)
`MACMILLAN, SOBANSKI & TODD, LLC
`ONE MARITIME PLAZA - FOURTH FLOOR
`720 WATER STREET
`TOLEDO, OH 43604
`
`EXAMINER
`
`ALAVI, ALI
`
`ART UNIT
`
`2875
`
`PAPER NUMBER
`
`DATE MAILED: 06/15/2004
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`SL Corp. Exhibit 1011
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`
`
`Office Action Summary
`
`Application No.
`
`10/285,312
`
`Examiner
`
`Applicant(s)
`
`SMITH ET AL.
`
`Art Unit
`
`Ali Alavi
`2875
`-- The MAILING DATE of this communication appears on the coy r sh t 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)
`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.
`- (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)E1 Responsive to communication(s) filed on 28 March 2004.
`2a)E1 This action is FINAL. (cid:9)
`2b)0 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
`
` is/are pending in the application.
`4)0 Claim(s) (cid:9)
`4a) Of the above claim(s) (cid:9)
` is/are withdrawn from consideration.
`5)q Claim(s) (cid:9)
`is/are allowed.
`6)EI Claim(s) 1-5, 7-13 is/are rejected.
`7)0 Claim(s) (cid:9)
`is/are objected to.
`8)q Claim(s) (cid:9)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)q The specification is objected to by the Examiner.
` is/are: a)C1 accepted or b)q objected to by the Examiner.
`10)0 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 drawing(s) is objected to. See 37 CFR 1.121(d).
`11)0 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
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)EI All b)q 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 (cid:9) 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.
`
`Attachment(s)
`
`1) q Notice of References Cited (PTO-892)
`2) q Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) q Information Disclosure Statement(s) (PTO-1449 or PTO/S13/08)
`Paper No(s)/Mail Date
`
`4) q Interview Summary (PTO-413)
`Paper No(s)/Mail Date. (cid:9)
`
`5) q Notice of Informal Patent Application (PTO-152)
`6) q Other:
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 1-04)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20040608
`
`(cid:9)
`(cid:9)
`
`
`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`Applicant's amendment filed on 3/28/04 has been entered. Accordingly, claim 1
`
`has been amended and claim 6 has been canceled. Claims 1-5 and 7-13 are still
`
`pending in this application.
`
`Claim Rejections - 35 USC § 102
`
`2.
`
`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:
`
`A person shall be entitled to a patent unless —
`
`(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.
`
`Claims 1-2, 4-5, 7-8, 10-13 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by Toda et al (U.S. Pat. No 6,305,823).
`
`Toda et al discloses an automatic directional control system for a vehicle
`
`headlight comprising: a sensor (12, 14) that is adapted to generate a signal that is
`
`representative of a condition of the vehicle, said sensed condition includes one or more
`
`of road speed (12), and suspension height (14) of the vehicle; a controller (16) that is
`
`responsive to said sensor signal for generating an output signal; and an actuator (10)
`
`that is adapted to be connected to the headlight to effect movement thereof in
`
`accordance with said output signal, wherein said sensor generates a signal that is
`
`representative of the road speed of the vehicle (see abstract), speed sensor (12),
`
`Height sensor (14).
`
`
`
`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
`
`Page 3
`
`Claims 1-2, 4-5, 7-8, 10-13 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by Okuchi et al (U.S. Pat. No 6,193,398).
`
`Okuchi et al discloses an automatic directional control system for a vehicle
`
`headlight comprising: a sensor (12) that is adapted to generate a signal that is
`
`representative of a condition of the vehicle, said sensed condition includes one or more
`
`of road speed (12) a controller (20) that is responsive to said sensor signal for
`
`generating an output signal; and an actuator (35) that is adapted to be connected to the
`
`headlight to effect movement thereof in accordance with said output signal, wherein
`
`said sensor generates a signal that is representative of the road speed of the vehicle
`
`(see abstract), speed sensor (12), pitch angle (2103, fig. 9), suspension height (2201,
`
`2203, fig. 14).
`
`Claim Rejections - 35 USC § 102
`
`3. (cid:9)
`
`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:
`
`A person shall be entitled to a patent unless —
`
`(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.
`
`Claims 1-3 and 9 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`Gotoh (US Pat. No 5,909,949).
`
`Gotoh discloses an automatic directional control system for a vehicle headlight
`
`comprising: a sensor (22) that is adapted to generate a signal that is representative of a
`
`condition of the vehicle, said sensed condition includes one or more of road speed (22),
`
`and steering angle (21) and a controller (10) that is responsive to said sensor signal for
`
`
`
`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
`
`Page 4
`
`generating an output signal; and an actuator (24) that is adapted to be connected to the
`
`headlight to effect movement thereof in accordance with said output signal, wherein
`
`said sensor generates a signal that is representative of the road speed of the vehicle.
`
`Response to Arguments
`
`4.
`
`Applicant's arguments filed on March 28, 2004 have been considered but they
`
`are not persuasive. Since applicant failed to discuss the references applied against the
`
`claims, explaining how the claims avoid the references or distinguish from them.
`
`Therefore, claims 1-5, 7-13 rejection stand.
`
`Conclusion
`
`5.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action. In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`6.
`
`Any inquiry concerning this communication or earlier communication from the
`
`examiner should be directed to Ali Alavi whose telephone number is (571) 272-2365.
`
`
`
`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
`
`Page 5
`
`The examiner can normally be reached between 7:00 A.M. to 5:30 P.M. Tuesday to
`
`Friday. If attempts to reach the examiner by phone are unsuccessful, the examiner's
`
`supervisor, Sandy O'Shea can be reached at (571) 272-2378 or you may fax your
`
`inquiry to the Central Fax at (703) 872-9306.
`
`Any inquiry of a general nature or relating to the status of this application should
`
`be directed to the receptionist whose telephone number is (703) 308-2956.
`
`Ali Alavi
`
`ALAN ARIAS°
`PRIMARL EXAMINER