IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In Re Patent of (cid:9)
`James E. SMITH et al.
`Patent No. (cid:9)
`7,241,034
`Issued (cid:9)
`July 10, 2007
`Title (cid:9)
`AUTOMATIC DIRECTIONAL CONTROL SYSTEM
`FOR VEHICLE HEADLIGHTS
`10/285,312
`October 31, 2002
`Volkswagen Group of America, Inc.
`
`Application Serial No. (cid:9)
`Filed (cid:9)
`Requester (cid:9)
`
`VIA EFS-WEB
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`REQUEST FOR INTER PARTES REEXAMINATION
`OF U.S. PATENT NO. 7,241,034 PURSUANT TO 37 C.F.R. 1.915
`
`SIR:
`
`Volkswagen Group of America, Inc. ("VWGoA"), through its undersigned counsel,
`hereby respectfully requests inter partes reexamination of U.S. Patent No. 7,241,034 pursuant
`to 35 U.S.C. § 311 et seq. and the provisions of 37 C.F.R. § 1.902 et seq.
`
`SL Corp. Exhibit 1018
`
`

`
`TABLE OF CONTENTS
`
`I. (cid:9)
`II. (cid:9)
`III. (cid:9)
`IV. (cid:9)
`
`V. (cid:9)
`VI. (cid:9)
`
`IX. (cid:9)
`
`IDENTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(1) (cid:9)
`COPY OF '034 PATENT PURSUANT TO 37 C.F.R. § 1.915(b)(5) (cid:9)
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(7) (cid:9)
`IDENTIFICATION OF REAL PARTY IN
`INTEREST PURSUANT TO 37 C.F.R. § 1.915(b)(8) (cid:9)
`PROCEEDINGS RELATED TO '034 PATENT (cid:9)
`THE '034 PATENT AND ITS PROSECUTION (cid:9)
`Prosecution of '312 Application (cid:9)
`A.
`B.
`Pending Ex Parte Reexamination of '034 Patent (cid:9)
`VII. CITATIONS OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`THAT ARE PRESENTED TO PROVIDE SUBSTANTIAL NEW
`QUESTIONS OF PATENTABILITY PURSUANT TO 37 C.F.R. § 1.915(b)(2) (cid:9)
`VIII. STATEMENTS POINTING OUT EACH SUBSTANTIAL NEW QUESTION
`OF PATENTABILITY PURSUANT TO 37 C.F.R. § 1.915(b)(3) (cid:9)
`DETAILED EXPLANATIONS PURSUANT TO 37 C.F.R. § 1.915(b)(3) (cid:9)
`1.
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Uchida Under 35 U.S.C. § 102(b) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Arc
`Anticipated by Takahashi Under 35 U.S.C. § 102(b) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Hussman Under 35 U.S.C. § 102(b) (cid:9)
`Claims 1 and 5 of the '034 Patent Are
`Anticipated by Miskin et al. Under 35 U.S.C. § 102(b) (cid:9)
`Claims 1 and 5 of the '034 Patent Are
`Anticipated by Leleve Under 35 U.S.C. § 102(b) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over
`The Combination of Toda et al. and Uchida Under 35 U.S.C. § 103(a) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Toda et al. and Takahashi Under 35 U.S.C. § 103(a) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Toda et al. and Hussman Under 35 U.S.C. § 103(a) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Toda et al. and Miskin et al. Under 35 U.S.C. § 103(a) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over
`The Combination of Toda et al. and Leleve Under 35 U.S.C. § 103(a) (cid:9)
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Okuchi et al. and Uchida Under 35 U.S.C. § 103(a) (cid:9)
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`1
`1
`1
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`1
`1
`2
`3
`7
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`9
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`10
`13
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`16
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`17
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`21
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`28
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`31
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`12. (cid:9)
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`13. (cid:9)
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`14. (cid:9)
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`15. (cid:9)
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`16. (cid:9)
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`17. (cid:9)
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`18. (cid:9)
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`19. (cid:9)
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`20. (cid:9)
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`21. (cid:9)
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`22. (cid:9)
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`23. (cid:9)
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`24. (cid:9)
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`25. (cid:9)
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`26. (cid:9)
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`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Takahashi Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Hussman Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Okuchi et al. and Miskin et al. Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Okuchi et al. and Leleve Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Uchida Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Takahashi Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Hussman Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1, 2, 3, and 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Miskin et al. Under 35 U.S.C. § 103(a) (cid:9)
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination of Gotoh and Leleve Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 20, 22, 24, 25, 37,
`38, 41, 42, 44, and 45 of the '034 Ex Parte Reexamination
`Are Anticipated by Uchida Under 35 U.S.C. § 102(b) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 11, 17, 18,
`20 to 22, 24, 25, 28, 33, 34, 37, 38, 41, 42, 44, and
`45 of the '034 Ex Parte Reexamination Are
`Anticipated by Takahashi Under 35 U.S.C. § 102(b) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9, 10, 37, 38, 41, 42, 44, and
`45 of the '034 Ex Parte Reexamination Are
`Anticipated by Hussman Under 35 U.S.C. § 102(b) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22,
`24, 25, 28, 29, 36 to 42, 44, and 45 of the '034
`Ex Parte Reexamination Are Unpatentable Over the
`Combination of Toda et al. and Uchida Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22, 24, 25,
`28, 29, 33, 34, 36 to 42, 44, and 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the
`Combination of Toda et al. and Takahashi Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 17, 18, 20 to 22, 24,
`25, 28, 29, 36 to 42, 44, and 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the Combination
`Of Toda et al. and Hussman Under 35 U.S.C. § 103(a) (cid:9)
`
`ii
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`33
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`34
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`36
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`38
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`40
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`42
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`43
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`45
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`47
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`48
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`50
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`52
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`53
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`56
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`58
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`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`

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`27. (cid:9)
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`28. (cid:9)
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`29. (cid:9)
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`30. (cid:9)
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`31. (cid:9)
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`32. (cid:9)
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`33. (cid:9)
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`34. (cid:9)
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`35. (cid:9)
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`36. (cid:9)
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`37. (cid:9)
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`38. (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18, 20 to 22,
`24, 25, 28, 29, 33, 35, 37 to 42, 44, and 45 of the
`'034 Ex Parte Reexamination Arc Unpatentable Over the
`Combination of Okuchi et al. and Uchida Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18, 20 to 22, 24, 25,
`28, 29, 33 to 35, 37 to 42, 44, and 45 of the '034 Ex
`Parte Reexamination Are Unpatentable Over the Combination
`Of Okuchi et al. and Takahashi Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1, 2, 4 to 6, 9 to 13, 15 to 18, 20 to 22, 25, 28,
`29, 33 to 35, 37 to 42, 44, and 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the Combination
`Of Okuchi et al. and Hussman Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1 to 14, 20, 22, 24 to 26, 28, 29, 37,
`38, and 41 to 45 of the '034 Ex Parte Reexamination
`Are Unpatentable Over the Combination
`Of Gotoh and Uchida Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1 to 12, 14, 16 to 18, 20 to 22, 24 to 26,
`28, 29, 33, 34, 37, 38, and 41 to 45 of the '034 Ex Parte
`Reexamination Are Unpatentable Over the
`Combination of Gotoh and Takahashi Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 1 to 13, 24, 26, 28, 29, 37, 38, and
`41 to 45 of the '034 Ex Parte Reexamination Are
`Unpatentable Over the Combination of
`Gotoh and Hussman Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 17, 19, 21, 23, 26, and 30 to 32 of the
`'034 Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Uchida and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 19, 23, 26, and 30 to 32 of the '034
`Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Takahashi and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claims 17 to 21, 23 to 26, and 30 to 32 of the '034
`Ex Parte Reexamination Are Unpatentable in
`View of the Combination of Hussman and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claim 27 of the '034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of
`Uchida and Wassen et al. Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claim 27 of the '034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of
`Takahashi and Wassen et al. Under 35 U.S.C. § 103(a) (cid:9)
`
`Proposed Claim 27 of the '034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of Hussman
`'460 and Wassen et al. Under 35 U.S.C. § 103(a) (cid:9)
`
`iii
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`61
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`63
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`66
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`78
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`84
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`85
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`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
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`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`

`
`X.
`
`XI.
`
`PROPOSED REJECTION OF PROPOSED
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 314(A) (cid:9)
`PROPOSED REJECTION OF PROPOSED
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 112, ¶ 4 (cid:9)
`FEE PURSUANT TO 37 C.F.R. § 1.915(a) (cid:9)
`XII.
`XIII. CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(6) (cid:9)
`XIV. CONCLUSION (cid:9)
`
`87
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`88
`88
`88
`89
`
`iv
`
`

`
`Exhibit 1 (cid:9)
`Exhibit 2 (cid:9)
`
`Exhibit 3 (cid:9)
`
`Exhibit 4 (cid:9)
`
`Exhibit 5 (cid:9)
`
`Exhibit 6 (cid:9)
`Exhibit 7 (cid:9)
`Exhibit 8 (cid:9)
`Exhibit 9 (cid:9)
`Exhibit 10 (cid:9)
`
`Exhibit 11 (cid:9)
`Exhibit 12 (cid:9)
`
`Exhibit 13 (cid:9)
`Exhibit 14 (cid:9)
`Exhibit 15 (cid:9)
`Exhibit 16 (cid:9)
`Exhibit 17 (cid:9)
`
`EXHIBITS
`U.S. Patent No. 7,241,034
`"Original Complaint for Patent Infringement," filed on March 8, 2010,
`BALTHER TECHNOLOGIES, LLC, v. AM. HONDA MOTOR CO. INC., et al.,
`Case No. 6:10-CV-78-LED (E.D. Tex.)
`"Plaintiff's Notice of Voluntary Dismissal," filed on May 17, 2010, BALTHER
`TECHNOLOGIES, LLC, v. AM. HONDA MOTOR CO. INC., et al., Case No.
`6:10-CV-78-LED (E.D. Tex.)
`"Order," dated May 17, 2010, BALTHER TECHNOLOGIES, LLC, v. AM.
`HONDA MOTOR CO. INC., et al., Case No. 6:10-CV-78-LED (E.D. Tex.)
`Listing of Prior Art Patents and Printed Publications that Raise Substantial
`New Questions of Patentability
`United Kingdom Patent Application Publication No 2 309 773 to Uchida
`United Kingdom Patent Application Publication No. 2 309 774 to Takahashi
`U.S. Patent No. 5,182,460 to Hussman
`German Patent Application Publication No. 31 10 094 to Miskin et al.
`Certified English-Language Translation of German Patent Application
`Publication No. 31 10 094 to Miskin et al.
`German Patent Application Publication No. 31 29 891 to Lcicvc
`Certified English-Language Translation of German Patent Application
`Publication No. 31 29 891 to Leleve
`U.S. Patent No. 6,305,823 to Toda et al.
`U.S. Patent No. 6,193,398 to Okuchi et al.
`U.S. Patent No. 5,909,949 to Gotoh
`U.S. Patent No. 4,954,933 to Wassen et al.
`Certificate of Service
`
`

`
`1. (cid:9)
`
`IDENTIFICATION PURSUANT TO 37 C.F.R. & 1.915(b)(1)
`
`Inter partes reexamination of claims 1 to 5 of U.S. Patent No. 7,241,034 ("the '034
`
`patent") is requested.
`
`II.
`
`COPY OF '034 PATENT PURSUANT TO 37 C.F.R. 1.915(b)(5)
`
`Pursuant to 37 C.F.R. § 1.915(b)(5), annexed hereto as Exhibit 1 is a copy of the
`
`entire '034 patent including the front face, drawings, specification and claims (in double
`
`column format) for which inter partes reexamination is requested.
`
`To the best of VWGoA's knowledge, as of the filing date of this Request, no
`
`disclaimer, certificate of correction, or reexamination certificate has been issued in
`
`connection with the '034 patent.
`
`III.
`
`CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(7)
`
`Pursuant to 37 C.F.R. § 1.915(b)(7), VWGoA certifies that the estoppel provisions of
`
`37 C.F.R. § 1.907 do not prohibit the inter partes reexamination.
`
`IV.
`
`IDENTIFICATION OF REAL PARTY IN
`INTEREST PURSUANT TO 37 C.F.R. § 1.915(b)(8)
`
`The real party in interest is VOLKSWAGEN GROUP OF AMERICA, INC., which is
`
`a subsidiary of VOLKSWAGEN AG.
`
`V.
`
`PROCEEDINGS RELATED TO '034 PATENT
`
`Although VWGoA is not obligated to inform the Office of proceedings related to the
`
`'034 patent, the Office is hereby informed of the following proceeding that relates to the '034
`
`patent which is pending as of the filing date of this Request:
`
`

`
`EX PARTE REEXAMINATION OF THE '034 PATENT,
`Control Number 90/011,011 (Request for Ex Parte
`Reexamination filed July 10, 2010) ("the '034 Ex Parte
`Reexamination"). Pursuant to M.P.E.P. § 2282,1 VWGoA is
`filing in the '034 Ex Parte Reexamination a "Notice of
`Concurrent Proceeding" to inform the Office of the filing of
`this Request.
`
`The Office is hereby further informed of the following concluded proceeding that
`
`related to the '034:2
`
`BALTHER TECHNOLOGIES, LLC, v. AM. HONDA MOTOR
`CO. INC., et al., Case No. 6:10-CV-78-LED (E.D. Tex. —
`Complaint Filed on March 8, 2010) ("the BALTHER case").
`Plaintiff Balther Technologies, LLC ("Balther") asserted
`infringement of the '034 patent by the Requester. Requester
`was therefore a party to the BALTHER case. A copy of the
`"Original Complaint for Patent Infringement" filed on March
`8, 2010 is annexed hereto as Exhibit 2. A copy of "Plaintiff's
`Notice of Voluntary Dismissal" filed on May 17, 2010 is
`annexed hereto as Exhibit 3. A copy of the "Order" dismissing
`the BALTHER case pursuant to Plaintiffs request dated May
`18, 2010 is annexed hereto as Exhibit 4.
`
`VI. (cid:9)
`
`THE '034 PATENT AND ITS PROSECUTION
`
`The '034 patent issued on July 10, 2007 from U.S. Patent Application Serial No.
`
`10/285,312 ("the '312 application"), filed on October 31, 2002. The '034 patent states that it
`
`claims the benefit of U.S. Provisional Application No. 60/369,447, filed on April 2, 2002,
`
`1
`
`"Ordinarily, no submissions of any kind by third parties filed after the date of the order are entered into
`the reexamination or patent file while the reexamination proceeding is pending However, in order to ensure a
`complete file, with updated status information regarding prior or concurrent proceedings regarding the patent
`under reexamination, the Office will, at any time, accept from any parties, for entry into the reexamination file,
`copies of notices of suits and other proceedings involving the patent and copies of decisions or papers filed in
`the court from litigations or other proceedings involving the patent."
`
`2
`
`Despite its duty under 37 C.F.R. § 1.565(a) ("In an ex parte reexamination proceeding before the
`Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or
`was involved such as . . . litigation and the results of such proceedings") and M.P.E.P. § 2282 ("It is important
`for the Office to be aware of any prior or concurrent proceedings in which a patent undergoing ex parte
`reexamination is or was involved, such as . . . litigations, and the results of such proceedings") to inform the
`Office of all prior and concurrent proceedings involving the '034 patent, as of the filing date of this Request,
`Balther has not informed of Office of the BALTHER case in connection with the '034 Ex Parte Reexamination.
`
`2
`
`

`
`U.S. Provisional Application No. 60/356,703, filed on February 13, 2002, and U.S.
`
`Provisional Application No. 60/335,409, filed on October 31, 2001.
`
`A. (cid:9)
`
`Prosecution of '312 Application
`
`As originally filed, the '312 application included thirteen claims, of which application
`
`claim 1 was the only independent claim. Application claim 1 is reproduced below:
`
`1. An automatic directional control system for a vehicle
`headlight comprising:
`
`a sensor 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, steering angle,
`pitch, and suspension height of the vehicle;
`
`a controller that is responsive to said sensor signal for
`generating an output signal; and
`
`an actuator that is adapted to be connected to the
`headlight to effect movement thereof in accordance with said
`output signal.
`
`An Office Action was issued on December 23, 2003, in which: (1) application claims
`
`1 to 2, 4 to 8, and 10 to 13 were rejected under 35 U.S.C. § 102(e) as anticipated by U.S.
`
`Patent No. 6,305,823 ("Toda et al."); (2) application claims 1 to 2, 4 to 8, and 10 to 13 were
`
`rejected under 35 U.S.C. § 102(e) as anticipated by U.S. Patent No. 6,193,398 ("Okuchi et
`
`al."); and (3) application claims 1 to 3 and 9 were rejected under 35 U.S.C. § 102(b) as
`
`anticipated by U.S. Patent No. 5,909,949 ("Gotoh").
`
`In an Amendment submitted on March 23, 2004, application claim 6 was cancelled,
`
`and application claims 1 and 7 were amended as follows:
`
`1. An automatic directional control system for a vehicle
`headlight comprising:
`
`a sensor 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, steering angle,
`pitch, and suspension height of the vehicle;
`
`a controller that is responsive to said sensor signal for
`generating an output signal only when said sensor signal
`changes by more than a predetermined amount; and
`
`3
`
`

`
`an actuator that is adapted to be connected to the
`headlight to effect movement thereof in accordance with said
`output signal.
`
`7. An The automatic directional control system defined
`in Claim 1 wherein said for a vehicle headlight comprising:
`
`a sensor 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, steering angle,
`pitch, and suspension height of the vehicle;
`
`a controller that is responsive to a rate of change of said
`sensor signal for generating said output signal- and
`
`an actuator that is adapted to be connected to the
`headlight to effect movement thereof in accordance with said
`output signal.
`
`The "Remarks" section of the Amendment alleged that: (1) "None of the art of record
`is believed to show or suggest a controller that is responsive to the sensor signal for
`generating an output signal only when the sensor signal changes by more than a
`predetermined amount," as recited in amended claim 1, and (2) "None of the art of record is
`believed to show or suggest a controller that is responsive to a rate of change of the sensor
`signal for generating the output signal," as recited in amended claim 7. Amendment at page
`5.
`
`A Final Office Action was issued on June 15, 2004, in which all of the claims were
`again rejected. In particular, (1) application claims 1 to 2, 4 to 5, 7 to 8, and 10 to 13 were
`rejected under 35 U.S.C. § 102(e) as anticipated by Toda et al.; (2) application claims 1 to 2,
`4 to 5, 7 to 8, and 10 to 13 were rejected under 35 U.S.C. § 102(e) as anticipated by Okuchi et
`al.; and (3) application claims 1 to 3 and 9 were rejected under 35 U.S.C. § 102(b) as
`anticipated by Gotoh. The Examiner further stated that the applicants' arguments had been
`considered but were not persuasive.
`On September 15, 2004, the applicants filed a Request for Reconsideration along with
`a Notice of Appeal. On December 28, 2004, the Examiner issued an Advisory Action, which
`stated that the "request for reconsideration has been considered but does NOT place the
`application in condition for allowance because [t]he prior art of record including Toda et al[.]
`in particular reads on independent claims 1 and 7.
`
`4
`
`

`
`Concurrent with the filing of a Request for Continued Examination on February 17,
`2005, the applicants again argued that the claims, as amended on March 23, 2004, were
`allowable. Again, the applicants argued in particular that (1) "None of the art of record is
`believed to show or suggest a controller that is responsive to the sensor signal for generating
`an output signal only when the sensor signal changes by more than a predetermined amount,"
`as recited in amended claim 1, and (2) "None of the art of record is believed to show or
`suggest a controller that is responsive to a rate of change of the sensor signal for generating
`the output signal," as recited in amended claim 7. Request for Continued Examination,
`Remarks at pages 2 to 4 (emphasis in original).
`Another Office Action was issued on April 14, 2005 again rejecting all of the pending
`claims on the same grounds as the June 15, 2004 Office Action, and also concluding that the
`arguments of the applicants were not persuasive. The applicants replied to the April 14, 2005
`Office Action by submitting a Response on July 14, 2005, in which the applicants stated that
`the limitation, "wherein the controller generates an output signal only when the sensor signal
`changes by more than a predetermined amount" (emphasis in original), "is not merely a
`recitation of 'intended use' alleged by the Examiner, but rather an important aspect of the
`operation of the headlight automatic directional control system." Response at page 2.
`The Examiner issued a Final Office Action on October 5, 2005, again rejecting the
`claims as anticipated by Toda et al., Okuchi et al., and Gotoh et al., and again finding the
`applicants arguments to be unpersuasive.
`The applicants then filed a Notice of Appeal and a Pre-Appeal Brief Request for
`Review on January 5, 2006, again restating their position. On February 3, 2006, a Notice of
`Panel Decision from Pre-Appeal Brief Review was issued, which states that the application
`remains under appeal because there is at least one actual issue for appeal.
`On August 9, 2006, the applicants filed a Request for Continued Examination with a
`Preliminary Amendment, adding new independent claim 14, and again arguing that
`independent claims 1 and 7 were patentable. Newly added independent claim 14 is
`reproduced below:
`
`14. An automatic directional control system for a
`vehicle headlight comprising:
`
`a sensor 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, steering angle,
`pitch, and suspension height of the vehicle;
`
`5
`
`

`
`a controller that is responsive to said sensor signal for
`generating an output signal only when said sensor signal
`changes by more than a predetermined minimum threshold
`amount to prevent said actuator from being operated
`continuously or unduly frequently in response to relatively
`small variations in the sensed operating condition; and
`
`an actuator that is adapted to be connected to the
`headlight to effect movement thereof in accordance with said
`output signal.
`
`According to the "Remarks" section of the Preliminary Amendment, (1) the cited
`
`references, i.e., Toda et al., Okuchi et al., and Gotoh, fail to disclose the limitation of claim 1
`
`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; (2) the cited references, i.e.,
`
`Toda et al., Okuchi et al., and Gotoh, fail to disclose the limitation of claim 14 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 minimum threshold amount to prevent
`
`the actuator from being operated continuously or unduly frequently in response to relatively
`
`small variations in the sensed operating condition; and (3) the cited references, i.e., Toda et
`
`al. and Okuchi et al., fail to disclose the limitation of claim 7 that the controller is responsive
`
`to a rate of change of the sensor signal for generating the output signal.
`
`A further Office Action was issued on October 6, 2006 in which all of the claims were
`
`rejected. In particular, (1) application claims 1 to 2, 4 to 5, 7 to 8, and 10 to 14 were rejected
`
`under 35 U.S.C. § 102(e) as anticipated by Toda et al.; (2) application claims 1 to 2, 4 to 5, 7
`
`to 8, and 10 to 14 were rejected under 35 U.S.C. § 102(e) as anticipated by Okuchi et al.; and
`
`(3) application claims 1 to 3 and 9 were rejected under 35 U.S.C. § 102(b) as anticipated by
`
`Gotoh. The Examiner further stated that the applicants' arguments had been considered but
`
`were not persuasive.
`
`In a January 8, 2007 Response, the applicants again argued that (1) the cited
`
`references, i.e., Toda et al., Okuchi et al., and Gotoh, fail to disclose the limitation of claim 1
`
`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; (2) the cited references, i.e.,
`
`Toda et al., Okuchi et al., and Gotoh, fail to disclose the limitation of claim 14 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 minimum threshold amount to prevent
`
`the actuator from being operated continuously or unduly frequently in response to relatively
`
`small variations in the sensed operating condition; and (3) the cited references, i.e., Toda et
`
`6
`
`

`
`al. and Okuchi et al., fail to disclose the limitation of claim 7 that the controller is responsive
`
`to a rate of change of the sensor signal for generating the output signal. The applicants
`
`further argued that claims 1 and 14 "define a system wherein the actuator does not change the
`
`headlight according to the output signal generated by the sensor unless the sensor signal
`
`changes by more than a predetermined amount" (emphasis in original).
`
`On January 31, 2007, an Interview took place. In the Interview Summary, the
`
`Examiner summarized the substance of the Interview as follows:
`
`We discussed independent claims 1, 7, and 14. We agreed that
`claim 14 is allowable over the prior art of record because of the
`specific limitation of "a predetermined minimum threshhold
`[sicl amount to prevent the actuator from being operated
`continiously [sic] or duly in response to relatively small
`variations in the sensed operating speed. [ski"
`
`Interview Summary (emphasis added).
`
`That same day, the applicants submitted an Amendment, cancelling claims 1 and 7 to
`
`13, and amending dependent claims 2 to 5 to depend from independent claim 14.
`
`A Notice of Allowance issued on April 19, 2007, in which application claims 2 to 5
`
`and 14 were indicated to be allowed. The Examiner stated that the "applicant's amendment
`
`and accompanying remarks has persuaded the examiner to place the application in condition
`
`for allowance." Thus, it is clear that application claim 14 was allowed due to the inclusion of
`
`the limitation:
`
`a controller that is responsive to said sensor signal for
`generating an output signal only when said sensor signal
`changes by more than a predetermined minimum threshold
`amount to prevent said actuator from being operated
`continuously or unduly frequently in response to relatively
`small variations in the sensed operating condition.
`
`Independent application claim 14 corresponds to claim 1 in the '034 patent, the sole
`
`independent claim of the '034 patent.
`
`B. (cid:9)
`
`Pending Ex Parte Reexamination of '034 Patent
`
`On May 25, 2010, Balther Technologies, LLC ("Balther"), the stated owner of the
`
`'034 patent, filed an incomplete request for ex parte reexamination of the '034 patent, and on
`
`July 9, 2010, Balther filed a "Substitute Request for Ex Parte Reexamination of U.S. Patent
`
`No. 7,241,034" requesting reexamination of the '034 patent. According to the records of the
`
`Office, the filing date of the request for reexamination is July 10, 2010, the date the requisite
`
`fee was received, and Reexamination Control No. 90/011,011 has been assigned to the ex
`
`7
`
`

`
`parte reexamination proceeding. In its request, Balther admitted that claims 1 and 3 of the
`'034 patent were anticipated by U. S . Patent No. 4,733,333 ("Shibata") under 35 U. S .0 . §
`102(b), as Shibata teaches all of the limitations of claims 1 and 3.
`On August 12, 2010, an Order Granting Request for Ex Parte Reexamination issued
`granting reexamination with respect to claims 1 and 3. On January 12, 2011 an Office Action
`issued rejecting claims 1 and 3 under 35 U.S.C. § 102(b) as anticipated by Shibata.
`In response to the Office Action, on January 18, 2011 Balther submitted an
`"Amendment A," and then, on February 16, 2011, Balther submitted a "Substitute
`Amendment A," proposing amendments to claims 1 to 5 and proposing the addition of new
`claims dependent claims 6 to 45. Substitute Amendment A proposed the following
`amendment to independent claim 1, the sole independent claim:
`1. (cid:9)
`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 representative of a condition of [the] a
`vehicle, said sensed conditions including[es] [one] two or more
`of road speed, steering angle, 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 actuator from being
`operated continuously or unduly frequently in response to
`relatively small variations in the sensed operating conditions;
`and
`
`[an] said at least one actuator [that is] being adapted to
`be connected to the headlight to effect movement thereof in
`accordance with said at least one output signal.
`
`In the Remarks section of Substitute Amendment A, Balther argued that Shibata fails
`to teach "two or more sensors that are each adapted to generate a signal that is
`representative of a condition of the vehicle, said sensed conditions including two or more of
`road speed, steering angle, pitch, and suspension height of the vehicle." Substitute
`Amendment A at page 9 (emphasis in original). Thus, it appears that Balther considers
`proposed amended claim 1 to be patentable because it requires two or more sensors to
`generate a signal.
`
`8
`
`

`
`VII. CITATIONS OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`THAT ARE PRESENTED TO PROVIDE SUBSTANTIAL NEW
`QUESTIONS OF PATENTABILITY PURSUANT TO 37 C.F.R. 1.915(b)(2)
`
`Substantial new questions of patentability affecting claims 1 to 5 of the '034 patent
`under 35 U.S.C. §§ 102 and 103 are raised by the prior art patents and printed publications
`cited below pursuant to 37 C.F.R. § 1.915(b)(2). Annexed hereto as Exhibit 5 is a listing of,
`inter alia, the prior art patents and printed publications that raise substantial new questions of
`patentability.
`
`The following patents and publications constitute prior art against the '034 patent,
`under the subsections of 35 U.S.C. § 102 indicated below:
`
`1. United Kingdom Patent Application Publication No 2 309 773 ("Uchida"),
`which published on June 8, 1997 and therefore constitutes prior art against the
`'034 patent under 35 U.S.C. § 102(b).
`
`2. United Kingdom Patent Application Publication No. 2 309 774 ("Takahashi"),
`which published on June 8, 1997 and therefore constitutes prior art against the
`'034 patent under 35 U.S.C. § 102(b).
`
`3. U.S. Patent No. 5,182,460 ("Hussman"), which issued on January 26, 1993
`and therefore constitutes prior art against the '034 patent under 35 U.S.C. §
`102(b).
`
`4. German Patent Application Publication No. 31 10 094 ("Miskin et al."), which
`published on September 30, 1982 and therefore constitutes prior art against the
`'034 patent under 35 U.S.C. § 102(b).
`
`5. German Patent Application Publication No. 31 29 891 ("Leleve"), which
`published on June 9, 1982 and therefore constitutes prior art against the '034
`patent under 35 U.S.C. § 102(b).
`
`6. U.S. Patent No. 6,305,823 ("Toda et al."), which was filed on October 14,
`1999 and issued on October 23, 2001 and therefore constitutes prior art against
`the '034 patent under 35 U.S.C. § 102(e).
`
`7. U.S. Patent No. 6,193,398 ("Okuchi et al."), which was filed on June 16, 1999
`and issued on February 27, 2001 and therefore constitutes prior art against the
`'034 patent under 35 U.S.C. § 102(e).
`
`8. U.S. Patent No. 5,909,949 ("Gotoh"), which issued on June 8, 1999 and
`therefore constitutes prior art against the '034 patent under 35 U.S.C. § 102(b).
`
`9
`
`

`
`9. U.S. Patent No. 4,954,933 ("Wassen et al."), which issued on September 4,
`1990 and therefore constitutes prior art against the '034 patent under 35
`U.S.C. § 102(b).
`
`A copy of every prior art patent and printed publication relied upon or referred t