throbber
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
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`I ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,621
`
`05/16/2011
`
`7,241,034
`
`06/23/2011
`
`7590 (cid:9)
`92045 (cid:9)
`The Caldwell Firm, LLC
`PO Box 59655
`Dept. SVIPGP
`Dallas, TX 75229
`
`1240
`
`EXAMINER
`
`ART UNIT (cid:9)
`
`I (cid:9)
`
`PAPER NUMBER
`
`DATE MAILED: 06/23/2011
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`SL Corp. Exhibit 1020
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`KENYON & KENYON LLP
`
`One Broadway
`
`New York, N.Y. 10004
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`womwspto.gov
`
`MAILED
`
`JUN 2 3 2011
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NUMBER 95/001,621.
`
`PATENT NUMBER 7 241 034.
`
`TECHNOLOGY CENTER 3900.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and
`Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be
`directed to the Central Reexamination Unit at the mail, FAX, or hand-carry addresses
`given at the end of the communication enclosed with this transmittal.
`
`PTOL-2070 (Rev.07-04)
`
`

`
`ORDER GRANTING/DENYING
`REQUEST FOR INTER PARTES
`REEXAMINATION
`
`Control No.
`
`95/001,621
`Examiner
`
`Patent Under Reexamination
`
`7,241,034
`Art Unit
`
`MY-TRANG TON
`
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --
`
`The request for inter partes reexamination has been considered. Identification of the claims, the
`references relied on, and the rationale supporting the determination are attached.
`
`Attachment(s): (cid:9) q P10-892 (cid:9)
`
`PTO/SB/08 (cid:9) q Other:
`
`1. EA The request for inter partes reexamination is GRANTED.
`n An Office action is attached with this order.
`El An Office action will follow in due course.
`
`2. q The request for inter partes reexamination is DENIED.
`
`This decision is not appealable. 35 U.S.C. 312(c). Requester may seek review of a denial by petition
`to the Director of the USPTO within ONE MONTH from the mailing date hereof. 37 CFR 1.927.
`EXTENSIONS OF TIME ONLY UNDER 37 CFR 1.183. In due course, a refund under 37 CFR 1.26(c)
`will be made to requester.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this
`Order.
`
`U.S. Patent and Trademark Office
`PTOL-2063 (08/06)
`
`Paper No. 20110608
`
`(cid:9)
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 2
`
`DECISION GRANTING INTER PARTES EXAMINATION
`
`Sumniary
`
`Reexamination has been requested for claims 1-5 of U.S. Patent No.
`
`7,241,034 ("the '034 patent") to Smith, entitled "AUTOMATIC DIRECTIONAL
`
`CONTROL SYSTEM FOR VEHICLE HEADLIGHTS".
`
`The '034 patent is currently assigned to Dana Corporation.
`
`A substantial new question of patentability (SNQ) affecting claims 1-5 of
`
`the '034 patent is raised by the present request for inter partes reexamination
`
`filed ("the Request").
`
`An Office action on the merits does not accompany this order for inter
`
`partes reexamination. An Office action on the merits will be provided in due
`
`course. Patent owner is reminded that no proposed amendment may be made
`
`in this proceeding until after the first Office action on the merits. 37 CFR
`
`1.939(b).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 3
`
`References Relied Upon in the Request
`
`Pages 9-10 of the Request identify the following documents as providing
`
`teachings relevant to claims 1-5 of the '034 patent:
`
`1. United Kingdom Patent Application Publication No. 2309773 by
`
`Uchida (hereinafter "Uchida").
`
`2. United Kingdom Patent Application Publication No. 2309774 by
`
`Takahashi (hereinafter "Takahashi").
`
`3. U.S. Patent No. 5,182,460 by Hussman (hereinafter "Hussman").
`
`4. German Patent Application Publication No. 3110094 by Miskin et al
`
`(hereinafter "Miskin et al.").
`
`5. German Patent Application Publication No. 3129891 by Leleve
`
`(hereinafter "Leleve").
`
`6. U.S. Patent No. 6,305,823 by Toda et al (hereinafter "Toda et al.").
`
`7. U.S. Patent No. 6,193,398 by Okuchi et al (hereinafter "Okuchi et
`
`al.").
`
`8. U.S. Patent No. 5,909,949 by Gotoh (hereinafter "Gotoh").
`
`9. U.S. Patent No. 4,954,933 by Wassen et al (hereinafter "Wassen et
`
`al.").
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 4
`
`Issues Raised by Requester
`
`The Requester asserts that the cited references raise substantial new
`
`questions of patentability when interpreted in the following manner:
`
`1. Claims 1, 2, 4, and 5 are anticipated by Uchida under 35 U.S.C.
`
`§ 102(b).
`
`2. Claims 1, 2, 4, and 5 are anticipated by Takahashi under 35
`
`U.S.C. § 102(b).
`
`3. Claims 1, 2, 4, and 5 are anticipated by Hussman under 35
`
`U.S.C. § 102(b).
`
`4. Claims 1 and 5 are anticipated by Miskin et al. under 35 U.S.C. §
`
`102(b).
`
`5. Claims 1 and 5 are anticipated by Leleve under 35 U.S.C. §
`
`102(b).
`
`6. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Toda et al. and Uchida under 35 U.S.C. § 103(a).
`
`7. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Toda et al. and Takahashi under 35 U.S.C. § 103(a).
`
`8. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Toda et al. and Hussman under 35 U.S.C. § 103(a).
`
`9. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Toda et al. and Miskin et al. under 35 U.S.C. § 103(a).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 5
`
`10. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Toda et al. and Leleve under 35 U.S.C. § 103(a).
`
`11. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Okuchi et al. and Uchida under 35 U.S.C. § 103(a).
`
`12. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Okuchi et al. and Takahashi under 35 U.S.C. § 103(a).
`
`13. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Okuchi et al. and Hussman under 35 U.S.C. § 103(a).
`
`14. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Okuchi et al. and Miskin et al. under 35 U.S.C. § 103(a).
`
`15. Claims 1, 2, 4, and 5 are unpatentable over the combination of
`
`Okuchi et al. and Leleve under 35 U.S.C. § 103(a).
`
`16. Claims 1 to 5 are unpatentable over the combination of Gotoh
`
`and Uchida under 35 U.S.C. § 103(a).
`
`17. Claims 1 to 5 are unpatentable over the combination of Gotoh
`
`and Takahashi under 35 U.S.C. § 103(a).
`
`18. Claims 1 to 5 are unpatentable over the combination of Gotoh
`
`and Hussman under 35 U.S.C. § 103(a).
`
`19. Claims 1, 2, 3, and 5 are unpatentable over the combination of
`
`Gotoh and Miskin et al. under 35 U.S.C. § 103(a).
`
`20. Claims 1 to 5 are unpatentable over the combination of Gotoh
`
`and Leleve under 35 U.S.C. § 103(a).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 6
`
`21. Proposed claims 1, 2, 4 to 6, 9 to 13, 20, 22, 24, 25, 37, 38, 41, 42,
`
`44 and 45 are anticipated by Uchida under 35 U.S.C. § 102(b).
`
`22. Proposed claims 1, 2,4-6, 9-11, 17, 18, 20, 21, 22, 24, 25, 28, 33,
`
`34, 37, 38, 41, 42, 44 and 45 are anticipated by Takahashi under 35
`
`U.S.C. § 102(b).
`
`23. Proposed claims 1, 2, 4-6, 9, 10, 37, 38, 41, 42, 44 and 45 are
`
`anticipated by Hussman Under 35 U.S.C. § 102(b).
`
`24. Proposed claims 1, 2, 4-6, 9-13, 17, 18, 20-22, 24, 25, 28, 29, 36-
`
`42, 44 and 45 are unpatentable over the combination of Toda et al. and
`
`Uchida under 35 U.S.C. § 103(a).
`
`25. Proposed claims 1, 2, 4-6, 9-13, 17, 18, 20-22, 24, 25, 28, 29, 33,
`
`34, 36-42, 44 and 45 are unpatentable over the combination of Toda et
`
`al. and Takahashi under 35 U.S.C. § 103(a).
`
`26. Proposed claims 1, 2, 4-6, 9-13, 17, 18, 20-22, 24, 25, 28, 29, 36-
`
`42, 44 and 45 are unpatentable over the combination of Toda et al. and
`
`Hussman under 35 U.S.C. § 103(a).
`
`27. Proposed claims 1, 2, 4-6, 9-13, 15-18, 20-22, 24, 25, 28, 29, 33,
`
`35, 37-42, 44 and 45 are unpatentable over the combination of Okuchi
`
`et al. and Uchida under 35 U.S.C. § 103(a).
`
`28. Proposed claims 1, 2, 4-6, 9-13, 15-18, 20-22, 24, 25, 28, 29, 33-35,
`
`37-42, 44 and 45 are unpatentable over the combination of Okuchi et al.
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`and Takahashi under 35 U.S.C. § 103(a).
`
`Page 7
`
`29. Proposed claims 1, 2, 4-6, 9-13, 15-18, 20-22, 25, 28, 29, 33, 35,
`
`37-42, 44 and 45 are unpatentable over the combination of Okuchi et al.
`
`and Hussman under 35 U.S.C. § 103(a).
`
`30; Proposed claims 1-13, 20, 22, 24-26, 28, 29, 37, 38 and 41 to 45 are
`
`unpatentable over the combination of Gotoh and Uchida under 35 U.S.C.
`
`§ 103(a).
`
`31. Proposed claims 1-12, 14, 16-18, 20-22, 24-26, 28, 29, 33, 34, 37,
`
`38 and 41-45 are unpatentable over the combination of Gotoh and
`
`Takahashi under 35 U.S.C. § 103(a).
`
`32. Proposed claims 1-13, 24, 26, 28, 29, 37, 38 and 41-45 are
`
`unpatentable over the combination of Gotoh and Hussman under 35
`
`U.S.C. § 103(a).
`
`33. Proposed claims 17, 19, 21, 23, 26 and 30-32 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).
`
`34. Proposed claims 19, 23, 26 and 30-32 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).
`
`35. Proposed claims 17-21, 23-26 and 30-32 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).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 8
`
`36. Proposed claim 27 is unpatentable over the combination of Uchida
`
`and Wassen et al. under 35 U.S.C. § 103(a).
`
`37. Proposed claim 27 is unpatentable over the combination of
`
`Takahashi and Wassen et al. under 35 U.S.C. § 103(a).
`
`38. Proposed Claim 27 is unpatentable over the combination of
`
`Hussman and Wassen et al. under 35 U.S.C. § 103(a).
`
`*** Regarding issues 21-38: Since the Ex Parte Reexamination
`
`(90/011,011) of the '034 patent is still pending, the amendment (filed
`
`2/16/2011) is not officially in effect yet in the '034 patent. According to 35
`
`USC 312, an SNQ is raised for "any claim of the patent", so at this time the
`
`Examiner only addresses the patented claims in this Inter parte Reexamination
`
`(95/001,621) of the '034 patent. The Requester can discuss the new and
`
`amended claims in the Request; however, only the Requester's assertions
`
`regarding SNQs in issues 1-20 for patented claims are evaluated herein. Issues
`
`21-38 will not be evaluated until the Inter Parte and Ex Parte are merged. The
`
`Patent Owner will have to put the same amended/new claims in the Inter Parte
`
`case, and those amended and new claims in the merged case will be evaluated.
`
`See MPEP 2643 and 2640(II)(A).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 9
`
`The patent claims in effect at the time of the determination will be the basis for deciding
`whether a substantial new question of patentability has been raised (37 CFR 1.923). See
`MPEP § 2643. Amendments which (A) have been filed in a copending reexamination
`proceeding in which the reexamination certificate has not been issued, or (B) have been
`submitted in a reissue application on which no reissue patent has been issued, will not be
`considered or commented upon when deciding a request for reexamination.
`
`Therefore, this request will be decided on the wording of the
`
`patent claims in effect at the present time (without any proposed
`
`amendments). The decision on the request will be made on the basis of
`
`the patent claims as though the proposed amendment had not been
`
`presented.
`
`Summary:
`
`1/ It is agreed issues 1-2, 4-7, 9-12, 14-17 and 19-20 raise SNQs as to
`
`claims 1-5 of the '034 patent.
`
`2/ Issues 3, 8, 13 and 18 are found not to raise SNQ as to claims 1-5 of
`
`the '034 patent.
`
`3/ Issues 21-38 will not be evaluated at this time.
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 10
`
`Prosecution History
`
`The description of the prosecution history included on pages 3-7 of the
`
`request is accepted and is incorporated herein by reference. It is accepted that
`
`the Examiner of record issued non-final Office action on 12/23/2003
`
`including: rejected claims 1-2, 4-8, 10-13 under 35 U.S.C. 102(e) as being
`
`anticipated by Toda et al (U.S. Pat. No 6,305,823); rejected claims 1-2, 4-8, 10-
`
`13 under 35 U.S.C. 102(e) as being anticipated by Okuchi et al (U.S. Pat. No
`
`6,193,398); and rejected claims 1-3 and 9 under 35 U.S.C. 102(b) as being
`
`anticipated by Gotoh (US Pat. No 5,909,949).
`
`The Patent Owner complied with such requirements by submitting an
`
`amendment on 3/25/2004 which amendment to claims 1 and 7 and canceled
`
`claim 6. Thus, in this amendment claims 1-5 and 7-13 were pending. Of these,
`
`claims 1 and 7 were independent claims.
`
`In response to the amendment, the Examiner of record issued a final
`
`Office action on 6/15/2004 including rejected claims 1-2, 4-5, 7-8, 10-13
`
`under 35 U.S.C. 102(e) as being anticipated by Toda et al (U.S. Pat. No
`
`6,305,823); rejected claims 1-2, 4-5, 7-8, 10-13 under 35 U.S.C. 102(e) as
`
`being anticipated by Okuchi et al (U.S. Pat. No 6,193,398) and rejected claims
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 11
`
`1-3 and 9 under 35 U.S.C. 102(b) as being anticipated by Gotoh (US Pat. No
`
`5,909,949).
`
`The Patent Owner submitted Notice of Appeal on 9/17/ 2004 and a
`
`request for reconsideration on 12/ 28/2004. The Patent Owner noted in the
`
`remark that for claim 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"
`
`and claim 7: "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".
`
`In response, the Examiner of record issued an Advisor Action on
`
`12/ 28/ 2004 indicated that "The prior art of record including Toda et al in
`
`particular reads on independent claims 1 and 7. Regarding claims 1 and 7, Toda
`
`discloses an automatic leveling device for vehicle headlamps including a sensor
`
`(speed sensor 12 and height sensor 14 fig. 1), a controller (CPU 16), an actuator
`
`(motor driver 18, and 20). Therefore, Toda meets the limitation of claims 1 and 7
`
`and thus rejection of claims 1-5, and 7-13 are maintained".
`
`Notice of Abandonment mailed out 2/ 22/ 2005.
`
`RCE was filed on 2/ 28/ 2005 after personal interview held on
`
`2/26/2005 (noted in preliminary remark 02/ 28/ 2005).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 12
`
`In response to the RCE, the Examiner of record issued a non-final Office
`
`action on 4/14/2005 including rejected claims 1-2, 4-5, 7-8, 10-13 under 35
`
`U.S.C. 102(e) as being anticipated by Toda et al (U.S. Pat. No 6,305,823);
`
`rejected claims 1-2, 4-5, 7-8, 10-13 under 35 U.S.C. 102(e) as being
`
`anticipated by Okuchi et al (U.S. Pat. No 6,193,398); and rejected claims 1-3
`
`and 9 under 35 U.S.C. 102(b) as being anticipated by Gotoh (US Pat. No
`
`5,909,949).
`
`The Patent Owner complied with such requirements by submitting
`
`remarks on 7/ 18/2005 with argument stating that "In independent Claim 1,
`
`the claimed controller is responsive to a sensor signal for generating an output
`
`signal when the sensor signal changes by more than a predetermined amount"
`
`and "In independent Claim 7, the claimed controller is responsive to a rate of
`
`change of the sensor signal for generating the output signal"
`
`In response to the remarks, the Examiner of record issued a final Office
`
`action on 10/5/2005 including rejected claims 1-2, 4-5, 7-8, 10-13 under 35
`
`U.S.C. 102(e) as being anticipated by Toda et al (U.S. Pat. No 6,305,823);
`
`rejected claims 1-2, 4-5, 7-8, 10-13 under 35 U.S.C. 102(e) as being
`
`anticipated by Okuchi et al (U.S. Pat. No 6,193,398) and rejected claims 1-3
`
`and 9 under 35 U.S.C. 102(b) as being anticipated by Gotoh (US Pat. No
`
`5,909,949).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 13
`
`The Patent Owner complied with such requirement by submitting a
`
`notice of Appeal filed 1/9/2006.
`
`In response, a pre-Appeal brief conference has been held on 2/3/2006
`
`and a panel from the pre--appeal conference has determined that forwarded
`
`rejected claims 1-13 to Board of Patent Appeals and Interferences.
`
`The examiner of record issued notice of abandonment mailed out
`
`4/ 6/ 2006.
`
`In response to the notice of abandonment, Patent Owner filed request for
`
`withdrawal of holding of abandonment filed on 7 / 11/2006.
`
`RCE was filed on 8/9/2006 including previously presented claims 1-5, 7-
`
`13 and added claim 14. Thus, in the RCE claims 1-5 and 7-14 were pending.
`
`Of these, claims 1, 7 and 14 were independent claims.
`
`The decision for withdrawal of holding of abandonment was granted and
`
`the Notice of Abandonment was vacated on 9/29/2006.
`
`In response to the RCE, the Examiner of record issued a non final Office
`
`action on 10/6/2006 including rejected claims 1-2, 4-5, 7-8, 10-14 under 35
`
`U.S.C. 102(e) as being anticipated by Toda et al (U.S. Pat. No 6,305,823);
`
`rejected claims 1-2, 4-5, 7-8, 10-14 under 35 U.S.C. 102(e) as being
`
`anticipated by Okuchi et al (U.S. Pat. No 6,193,398) and rejected claims 1-3
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 14
`
`and 9 under 35 U.S.C. 102(b) as being anticipated by Gotoh (US Pat. No
`
`5,909,949).
`
`The Patent Owner complied with such requirement by submitting
`
`remarks on 1 / 10/ 2007 and argued that "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 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. The cited references fail to
`
`disclose either of these features" and "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".
`
`A personal interview held on 1 / 31 / 2007. The Examiner of record noted
`
`in the interview summary stating "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 threshold amount to prevent
`
`the actuator from being operated continuously or duly in response to relatively
`
`small variations in the sensed operating speed".
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 15
`
`On the same day, the Patent Owner submitted an amendment including
`
`canceled claims 1, 6-13 and amended claims 2-5 to depend from claim 14.
`
`Thus, in this amendment claims 2-5 and 14 were pending. Of these, claim 14
`
`was independent claim.
`
`Notice of allowance was mailed on 4/19/2007 with a statement of
`
`reasons for allowance: "applicant's amendment and accompanying remarks has
`
`persuaded the examiner to place this application in condition for allowance."
`
`Claims 2-5 and 14 were renumbered, the same numbering that appears
`
`in the base patent.
`
`Thus, it appears from the Examiner's Statement of Reasons for allowance
`
`included in the base patent prosecution history that at the time of allowance,
`
`claims 2-5 and 14 were perceived as including at least the limitation "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" (the remark 1/ 10/ 2007) and the
`
`base patent issued for that reason.
`
`In summary, a reference or combination of references teaching "a
`
`controller .... 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" or equivalents
`
`thereof will be accepted as raising an SNQ and any reference or combination
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 16
`
`that provides a portion of the critical limitations that is not cumulative to the
`
`teachings of record will also be accepted as raising an SNQ.
`
`The above SNQ is based in part on patents and/or printed publications
`
`already cited/considered in an earlier concluded examination of the patent
`
`being reexamined. On November 2, 2002, Public Law 107-273 was enacted.
`
`Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination
`
`statute by adding the following new last sentence to 35 U.S.C. 303(a) and
`
`312(a):
`
`"The existence of a substantial new question of patentability is not precluded by the fact
`
`that a patent or printed publication was previously cited by or to the Office or considered
`
`by the Office."
`
`For any reexamination ordered on or after November 2, 2002, the
`
`effective date of the statutory revision, reliance on previously cited/considered
`
`art, i.e., "old art," does not necessarily preclude the existence of a substantial
`
`new question of patentability (SNQ) that is based exclusively on that old art.
`
`Rather, determinations on whether a SNQ exists in such an instance shall be
`
`based upon a fact-specific inquiry done on a case-by-case basis.
`
`In the present instance, there exists a SNQ based in part on Gotoh,
`
`Okuchi and Toda. A discussion of the specifics now follows:
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 17
`
`With regard to Gotoh, Okuchi and Toda, which were the subject of
`
`extensive written discussion on the record of the base application, it is clear
`
`that the request presents theirs teachings in a new light. Gotoh, Okuchi and
`
`Toda are now presented in the request in combination with Uchida, Takahashi,
`
`Hussman, Miskin and Leleve. Insofar as these references were previously not of
`
`record; Gotoh, Okuchi and Toda are not presented in a manner that conflicts
`
`with a finding from the prosecution history but instead is presented in a new
`
`light. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. &
`
`Inter. 1984).
`
`Anitlysis
`
`Issue 1: The request indicates that Requester considers claims 1, 2, 4
`
`and 5 are rejected under 35 U.S.C. § 102(b) as being anticipated by Uchida.
`
`It is agreed that the consideration of Uchida raises a substantial new
`
`question of patentability for claims 1, 2, 4 and 5 of the '034 patent. As
`
`presented in the detailed explanation in the request, pp. 16-17, a reasonable
`
`examiner would consider Uchida important in making a decision as to the
`
`patentability of claims 1, 2, 4 and 5 of the '034 patent.
`
`Uchida appears to teach a vehicle lamp illumination directional control
`
`device which detects the posture of a vehicle and adjusts the illumination
`
`direction of a vehicle lamp so that the illumination direction can always be kept
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 18
`
`in a predetermined direction including a controller (3) that 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 (page 4, lines 16-27, page 10, line 26 to page 11, line 6).
`
`Sine this teaching is directly related to subject matter considered as the
`
`basis for allowability of the patent claim, a reasonable examiner would consider
`
`this teaching important in determining the patentability of claim 1. More
`
`particularly, the item matching in the claim chart, pages 1-6 offered by
`
`Requester is deemed plausible to the degree that further consideration is
`
`warranted.
`
`There is a substantial likehood that a reasonable examiner would
`
`consider this teaching important in deciding whether or not claim 1 is
`
`patentable. The prosecution history of the base application does not indicate
`
`that Uchida was included for consideration by the examiner in charge of the
`
`base application. Accordingly, such teaching is not cumulative to any written
`
`discussion on the record of the teachings of the prior art, was not previously
`
`considered nor addressed during a prior examination and the same question of
`
`patentability was not the subject of a final holding of invalidity by Federal
`
`Courts.
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 19
`
`Because dependent claims 2, 4 and 5 carry all of the limitations of the
`
`independent claim 1 from which its stem, by raising a substantial new question
`
`of patentability with regard to independent claim 1, the reference implicitly
`
`raises a substantial new question of patentability for claims 2, 4 and 5.
`
`Issue 2: The request indicates that Requester considers claims 1, 2, 4
`
`and 5 are rejected under 35 U.S.C. § 102(b) as being anticipated by Takahashi.
`
`It is agreed that the consideration of Takahashi raises a substantial new
`
`question of patentability for claims 1, 2, 4 and 5 of the '034 patent. As
`
`presented in the detailed explanation in the request, pp. 17-19, a reasonable
`
`examiner would consider Takahashi important in making a decision as to the
`
`patentability of claims 1, 2, 4 and 5 of the '034 patent.
`
`Takahashi appears to teach a vehicle lamp illumination direction control
`
`device which detects the posture of a vehicle and correctly adjusts the
`
`illumination direction of a vehicle lamp to maintain it in a predetermined
`
`direction including a controller (4) that 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 (page 9, line
`
`16 - page 10, line 3; page 10, line 20 to page 11, line 11).
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 20
`
`Sine this teaching is directly related to subject matter considered as the
`
`basis for allowability of the patent claim, a reasonable examiner would consider
`
`this teaching important in determining the patentability of claim 1. More
`
`particularly, the item matching in the claim chart, pages 7-12 offered by
`
`Requester is deemed plausible to the degree that further consideration is
`
`warranted.
`
`There is a substantial likehood that a reasonable examiner would
`
`consider this teaching important in deciding whether or not claim 1 is
`
`patentable. The prosecution history of the base application does not indicate
`
`that Takahashi was included for consideration by the examiner in charge of the
`
`base application. Accordingly, such teaching is not cumulative to any written
`
`discussion on the record of the teachings of the prior art, was not previously
`
`considered nor addressed during a prior examination and the same question of
`
`patentability was not the subject of a final holding of invalidity by Federal
`
`Courts.
`
`Because dependent claims 2, 4 and 5 carry all of the limitations of the
`
`independent claim 1 from which its stem, by raising a substantial new question
`
`of patentability with regard to independent claim 1, the reference implicitly
`
`raises a substantial new question of patentability for claims 2, 4 and 5.
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 21
`
`Issue 3: The request indicates that Requester considers claims 1, 2, 4
`
`and 5 are rejected under 35 U.S.C. § 102(b) as being anticipated by Hussman.
`
`It is not agreed that the consideration of Hussman raises a substantial
`
`new question of patentability for claims 1, 2, 4 and 5 of the '034 patent.
`
`As pointed out on page 20 of the request, and the claim chart, pages 13-
`
`14, the requester indicates that Hussman teaches a controller that is
`
`responsive to the sensor signal for performing the recited functions at col. 3,
`
`lines 30-39 and lines 49-61; col. 4, lines 6-12 and col. 6, lines 51-64.
`
`However, these paragraphs do not teach the limitation "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 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" as recited in claim 1.
`
`Hussman merely teaches:
`
`"The curve-recognition device K is electrically conductively coupled with the switchover device SE
`and thereby couples the third filter F3 electrically conductively with the regulator R if a difference
`signal other than zero is fed to it from the subtractor SU. When no difference signal from the
`subtractor SU is present, the curve-recognition device K switches the switchover device SE so
`that the first filter Fl is coupled to the regulator R" (col. 3, lines 30-39)
`
`"At the coupling between the switchover device SE and the regulator R, a matching device AE is,
`here for example, arranged which, upon a switchover by the switchover device SE, adjusts the
`various nominal values to one another so that discontinuities or jumps in the adjustment and
`regulation of the illumination range are avoided". (col. 4, lines 6-12)
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 22
`
`There is no evidence presented that Hussman teaches a controller would
`
`include the same function as called for in claim 1. Thus, Hussman does not
`
`teach a key element of claim 1. As such, a reasonable examiner would not
`
`consider Hussman important in deciding whether or not the claims are
`
`patentable.
`
`Because claims 2, 4 and 5 depend from claim 1, thus, Hussman also
`
`fails to raise SNQ to claims 2, 4 and 5.
`
`Issue 4: The request indicates that Requester considers claims 1 and 5 •
`
`are rejected under 35 U.S.C. § 102(b) as being anticipated by Miskin.
`
`It is agreed that the consideration of Miskin raises a substantial new
`
`question of patentability for claims 1 and 5 of the '034 patent. As presented in
`
`the detailed explanation in the request, p. 21, a reasonable examiner would
`
`consider Miskin important in making a decision as to the patentability of
`
`claims 1 and 5 of the '034 patent.
`
`Miskin appears to teach a device for adjusting vehicle headlights
`
`automatically including a controller (2-4) that is responsive to the sensor signal
`
`(S1-S4) 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
`
`

`
`Application/Control Number: 95/001,621 (cid:9)
`Art Unit: 3992
`
`Page 23
`
`response to relat

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