UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
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`APPLICATION NO. (cid:9)
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`I (cid:9)
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`FILING DATE
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`1
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`FIRST NAMED INVENTOR (cid:9)
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`I ATTORNEY DOCKET NO. I CONFIRMATION NO.
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`• 10/285,312
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`10/31/2002
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`James E. Smith
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`1-23649
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`1413
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`27210 (cid:9)
`04/14/2005
`7590 (cid:9)
`MACMILLAN, SOBANSKI & TODD, LLC
`ONE MARITIME PLAZA - FOURTH 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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`2875
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`PAPER NUMBER
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`DATE MAILED: 04/14/2005
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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 1012
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`(cid:9)
`(cid:9)
`(cid:9)
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`Application No.
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`10/285,312
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`Applicant(s)
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`SMITH ET AL.
`Art Unit
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`Office Action Summary
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`Examiner
`2875
`Ali Alavi
`-- 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.
`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
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`1)Z Responsive to communication(s) filed on 17 February 2005.
`2b)E1 This action is non-final.
`2a)0 This action is FINAL. (cid:9)
`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.
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`Disposition of Claims
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`4)E Claim(s) 1-5 and 7-13 is/are pending in the application.
`is/are withdrawn from consideration.
`4a) Of the above claim(s) (cid:9)
`is/are allowed.
`5)0 Claim(s) (cid:9)
`6)E Claim(s) 1-5, and 7-13 is/are rejected.
` is/are objected to.
`7)0 Claim(s) (cid:9)
` are subject to restriction and/or election requirement.
`8)0 Claim(s) (cid:9)
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`Application Papers
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`9)0 The specification is objected to by the Examiner.
`is/are: a)0 accepted or b)0 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 P10-152.
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`Priority under 35 U.S.C. § 119
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`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)0 All b)0 Some * c)0 None of:
`1.0 Certified copies of the priority documents have been received.
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`2.0 Certified copies of the priority documents have been received in Application No. (cid:9)
`3.0 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.
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`Attachment(s)
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`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/SB/08)
`Paper No(s)/Mail Date
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`4) q Interview Summary (PTO-413)
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`Paper No(s)/Mail Date.
`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. 1-04)
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`Office Action Summary
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`Part of Paper No./Mail Date 20050318
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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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`Continued Examination Under 37 CFR 1.114
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after abandonment. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the abandonment of the previous Office
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`action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`2/17/05 has been entered.
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`Response to Arguments
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`Applicant's arguments filed on 2/17/05 have been considered but they are not
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`persuasive. Applicant contends that "none of the art of record is believed to show or
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`suggest a controller that is responsive to the sensor signal for generating an output
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`signal only when the sensor signal changes by more than a predetermined amount."
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`Examiner respectfully disagrees with the applicant assertion. All of the art of record
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`including Toda etal, Okuchi et al, and Gotoh references discloses the claimed invention.
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`For instance, Toda et al discloses a sensor (12, 14) that is adapted to generate a signal
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`that is representative of a condition of the vehicle, said sensed condition includes one or
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`more of road speed (12), and suspension height (14) of the vehicle; a controller (16)
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`that is responsive to said sensor signal for generating an output signal only when said
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`sensor signal changes by more than a predetermined amount (this limitation is
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`considered an intended use, because the actuator would change the headlight
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`according to the output signal generated by the sensor), and an actuator (10) that is
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`adapted to be connected to the headlight to effect movement thereof in accordance with
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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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`said output signal, wherein said sensor generates a signal that is representative of the
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`road speed of the vehicle.
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`Claim Rejections - 35 USC § 102
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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, 4-5, 7-8, 10-13 are rejected under 35 U.S.C. 102(e) as being
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`anticipated 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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`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 only when said sensor
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`signal changes by more than a predetermined amount (this limitation is considered an
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`intended use, because the actuator would change the headlight according to the output
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`signal generated by the sensor), and an actuator (10) that is adapted to be connected to
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`the 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), Height sensor (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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`Claims 1-2, 4-5, 7-8, 10-13 are rejected under 35 U.S.C. 102(e) as being
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`anticipated 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 only when said sensor signal changes by more than a
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`predetermined amount (this limitation is considered an intended use, because the
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`actuator would change the headlight according to the output signal generated by the
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`sensor), and an actuator (35) that is adapted to be connected to the headlight to effect
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`movement thereof in accordance with said output signal, wherein said sensor generates
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`a signal that is representative of the road speed of the vehicle (see abstract), speed
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`sensor (12), pitch angle (2103, fig. 9), suspension height (2201, 2203, fig. 14).
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`Claim Rejections - 35 USC § 102
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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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`(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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`

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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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`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 only when said sensor signal changes by more than a
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`predetermined amount (this limitation is considered an intended use, because the
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`actuator would change the headlight according to the output signal generated by the
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`sensor), and an actuator (24) that is adapted to be connected to the headlight to effect
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`movement thereof in accordance with said output signal, wherein said sensor generates
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`a signal that is representative of the road speed of the vehicle.
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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 (571) 272-2365.
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`The examiner can normally be reached between 7:00 A.M. to 5:30 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 (571) 272-2378 or you may fax your
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`inquiry to the Central Fax at (703) 872-9306.
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`Any inquiry of a general nature or relating to the status of this application should
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`be directed to the receptionist whose telephone number is (703) 308-2956.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for published
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`applications may be obtained from either Private PAIR or Public PAIR. Status
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`information for unpublished applications is available through Private PAIR only. For
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`

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`Application/Control Number: 10/285,312 (cid:9)
`Art Unit: 2875
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`Page 6
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`more information about the PAIR system, see http://pair-direct.uspto.gov. Should you
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`have questions on access to the Private PAIR system, contact the Electronic Business
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`Center (EBC) at 866-217-9197 (toll-free).
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`Ali Alavi
`Examiner
`AU 2875