CERTIFICATE OF MAILING BY FIRST CLASS MAIL
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`PATENT
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`I hereby certify that this document is being deposited with the United States
`Postal Service as first class mail in an envelope addressed to the Commissioner
`or Patents, P.O. Box 1450 Alexandria, Virginia 22313-1450 on the date set forth below.
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`signature) o/- Der-off'
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Date of signature and deposit -
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`In re Application of:
`JAMES E. SMITH et al.
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`Serial No. 10/285,312
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`Filed: October 31, 2002
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`For: AUTOMATIC DIRECTIONAL CONTROL
`SYSTEM FOR VEHICLE HEADLIGHTS
`
`Commissioner For Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`Group Art Unit 2875
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`Examiner Ali Alavi
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`Confirmation No. 1413
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`Attorney Docket 1-23649
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`RESPONSE
`Reconsideration of the above-identified application is respectfully requested in
`light of the following remarks.
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`REMARKS
`Section 707.07(f) of the M.P.E.P. states that in "order to provide a complete
`application file history and to enhance the clarity of the prosecution history record, an
`examiner must provide clear explanations of all actions taken by the examiner during
`prosecution of an application." Because the Examiner has completely failed to do this
`in the Office Action dated October 6, 2006, withdrawal of the rejections and
`reconsideration of the application is appropriate.
`Independent Claim 1 recites that the controller is responsive to the sensor signal
`for generating an output signal only when the sensor signal changes by more than a
`predetermined amount. Independent Claim 14 recites that the controller is responsive
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`1
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`SL Corp. Exhibit 1015
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`g
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`to the sensor signal for generating an output signal only when the sensor signal
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`changes by more than a predetermined minimum threshold amount to prevent the
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`actuator from being operated continuously or unduly frequently in response to
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`relatively small variations in the sensed operating condition. The cited references fail
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`to disclose either of these features.
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`The Examiner rejected independent Claims 1 and 14 as being anticipated by
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`either of the Toda et al., Okuchi et al., and Gotoh references. However, the Examiner
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`did not cite any portion of such references that meets the language of these claims.
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`The Examiner is requested to specifically identify the portions of the cited references
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`that anticipate the claimed recitations of either:
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`(1) 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
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`predetermined amount, as recited in Claim 1; or
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`(2) 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
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`predetermined minimum threshold amount to prevent the actuator from
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`being operated continuously or unduly frequently in response to
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`relatively small variations in the sensed operating condition, as recited in
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`Claim 14.
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`The Examiner stated that the limitation of the controller being responsive to the
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`sensor signal for generating an output signal only when the sensor signal changes by
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`more than a predetermined amount was "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." This statement is simply incorrect. Independent Claims 1 and 14 define a
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`system wherein the actuator does not change the headlight according to the output
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`signal generated by the sensor unless the sensor signal changes by more than a
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`predetermined amount. Thus, the Examiner is incorrect in stating that the "actuator
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`would change the headlight according to the output signal generated by the sensor."
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`On the contrary, the claims define a system that specifically prevents this from
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`occurring unless a threshold condition (namely, the sensor signal changing by more
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`than a predetermined amount) is met. This recitation is not a mere statement of use
`but an important structural feature of the claimed invention.
`Claim 7 recites that the controller is responsive to a rate of change of the sensor
`signal for generating the output signal. The Toda et al. and the Okuchi et al.
`references fail to disclose this feature. Indeed, the term "rate of change" does not even
`appear in the Examiner's Office Action. Thus, the Examiner is also requested to
`specifically identify the portions of the cited references that anticipate the claimed
`recitations of a controller is responsive to a rate of change of the sensor signal for
`generating the output signal, as recited in Claim 7.
`Respectfully submitted,
`
`'chard S. MacMillan
`Reg. No. 30,085
`
`MacMillan, Sobanski & Todd, LLC
`One Maritime Plaza, Fifth Floor
`720 Water Street
`Toledo, Ohio 43604
`(419) 255-5900
`
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