Patent Assignment Abstract of Title
`
`Filing Dt: 10/31/2002
`
`Patent #: 7241034
`Publication #: US20030107898
`
`Issue Dt: 07/10/2007
`Pub Dt: 06/12/2003
`
`Total Assignments: 4
`Application #: 10285312
`PCT #:NONE
`Inventors: James E. Smith, Anthony B. McDonald
`Title: AUTOMATIC DIRECTIONAL CONTROL SYSTEM FOR VEHICLE HEADLIGHTS
`Assignment: 1
`Reel/Frame: 013729 I 0559
`
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`
`Received: 02/10/2003
`
`Recorded: 02/06/2003
`
`Mailed: 06/13/2003
`
`Pages:3
`
`Exec Dt: 01/31/2003
`
`Exec Dt: 01/31/2003
`
`Assignors: SMITH. JAMES E.
`
`MCDONALD. ANTHONY B.
`
`Assignee: DANA CO~PORATION
`4500 DORR STREET
`TOLEDO, OHIO 43615
`Correspondent: MACMILLAN, SOBANSKI & TODD, LLC
`RICHARD S. MACMILLAN
`720 WATER STREET
`ONE MARITIME PLAZA, FOURTH FLOOR
`TOLEDO, OH 43604-1853
`Assignment: 2
`Reel/Frame: 020540 I 0476
`
`Received: 02/22/2008
`
`Recorded: 02/22/2008
`
`Mailed: 02/22/2008
`
`Pages:30
`
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`
`Assignor: DANA CORPORATION
`
`Assignee: DANA AUTOMOTIVE SYSTEMS GROUP. LLC
`4500 DORR STREET
`TOLEDO, OHIO 43615
`
`Correspondent: DANA HOLDING CORPORATION
`4500 DORR STREET
`KRISTENE M RAGAN
`TOLEDO, OH 43615
`Assignment: 3
`Reel/Frame: 022813 I 0432
`
`Received: 06/12/2009
`
`Exec Dt: 01/31/2008
`
`Recorded: 06/12/2009
`
`Mailed: 06/12/2009
`
`Pages:2
`
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`Assignor: DANA AUTOMOTIVE SYSTEMS GROUP, LLC
`
`Exec Dt: 05/26/2009
`
`Assignee: STRAGENT. LLC
`211 W. TYLER, SUITE C
`LONGVIEW, TEXAS 75601
`
`Correspondent: ASSIGNMENT RECORDATION
`211 W. TYLER ST., SUITE C
`LONGVIEW, TX 75601
`Assignment: 4
`Reel/Frame: 024045 I 0235
`
`Received: 03/08/2010
`
`Recorded: 03/08/2010
`
`Mailed: 03/09/2010
`
`Pages:2
`
`Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS).
`
`Assignor: STRAGENT. LLC
`
`Assignee: BALTHER TECHNOLOGIES. LLC
`211 W. TYLER
`SUITE C-4
`LONGVIEW, TEXAS 75601
`Correspondent: THE CALDWELL FIRM, LLC
`PO BOX 59655
`DEPT. SVIPGP
`DALLAS, TX 75229
`
`Exec Dt: 12/16/2009
`
`If you have any comments or questions concerning the data displayed. contad PRO I Assignments at571-272-3350.
`
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`Notice of References Cited
`
`Application/Control No.
`
`90/011,011
`
`Examiner
`
`MY-TRANG N. TON
`
`U.S. PATENT DOCUMENTS
`
`Date
`MM-YYYY
`
`03-1988
`
`Shibata et al.
`
`Name
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`Document Number
`*
`Country Code-Number-Kind Code
`* A US-4,733,333
`B US-
`c US-
`D US-
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`E US-
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`F US-
`
`G US-
`
`H US-
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`I
`
`US-
`
`Applicant(s)/Patent Under
`Reexamination
`7,241,034
`
`Art Unit
`
`3992
`
`Page 1 of 1
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`Classification
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`362/40
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`I
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`US-
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`'. J
`K US-
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`M US-
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`*
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`Document Number
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`FOREIGN PATENT DOCUMENTS
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`Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
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`0
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`u
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`v
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`. A copy of th1s reference 1s not be1ng furniShed w1th th1s Office act1on. (See MPEP § 707.05(a).)
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`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
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`U.S. Patent and Trademark Office
`PT0-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20100810
`
`Page 3 of 1228
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`PTO/SB/58 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`(Also referred to as FORM PT0-1465)
`REQUEST FOR INTER PARTES REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.:
`
`-------------------------
`Date: May 16, 2011
`
`7,241 ,034
`1. ~ This is a requestfor inter partes reexamination pursuant to 37 CFR 1.913 of patent number
`issued July 1 0, 2007
`. The request is made by a third party requester, identified herein below.
`
`2. ~ a. The name and address of the person requesting reexamination is:
`Volkswagen Group of America, Inc.
`
`2200 Ferdinand Porsche Drive
`
`Herndon, Virginia 20171
`
`3. D
`D
`
`b. The real party in interest (37 CFR 1.915(b)(8)) is: Volkswagen Group of America, Inc.
`
`a. A check in the amount of$ ______ is enclosed to cover the reexamination fee, 37 CFR 1.20( c)(2);
`
`b.
`
`The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20( c)(2)
`to Deposit Account No. ___________ ; or
`
`~ c.
`4. ~ Any refund should be made by D check or ~ credit to Deposit Account No. _1_1_-_0_6_0_0 ______ _
`
`Payment by credit card. Form PT0-2038 is attached.
`
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`5. ~ A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`enclosed. 37 CFR 1.915(b )(5)
`
`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`
`D Landscape Table on CD
`
`6. D
`7. D
`
`b. Specification Sequence Listing on:
`
`Nucleotide and/or Amino Acid Sequence Submission
`If applicable, items a. - c. are required.
`a. D Computer Readable Form (CRF)
`i. D CD-ROM (2 copies) or CD-R (2 copies); or
`ii. D paper
`c. D Statements verifying identity of above copies
`8. D A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`9. ~ Reexamination of claim(s) _1_-_5 ______________________ is requested.
`
`10. ~ A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/SB/08, PT0-1449, or equivalent.
`11. ~ An English language translation of all necessary and pertinent non-English language patents and/or printed
`publications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.915. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 18 minutes to complete, including
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`TO: Mail Stop Inter Partes Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form. ca/11-800-PT0-9199 and select option 2.
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`PTO/SB/58 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
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`12. ~ The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR 1.915(b )(3)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.915(b )(1) & (3).
`13. ~ It is certified that the estoppel provisions of 37 CFR 1.907 do not prohibit this reexamination. 37 CFR 1.915(b )(7)
`14. ~ a. It is certified that a copy of this request has been served in its entirety on the patent owner as provided in
`37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`The Caldwell Firm, LLC
`
`PO Box 59655, Dept. SVIPGP
`
`Dallas, TX 75229
`
`Date of Service:
`
`May 16, 2011
`
`; or
`
`Db. A duplicate copy is enclosed because service on patent owner was not possible. An explanation of the efforts
`made to serve patent owner is attached. See MPEP 2620.
`
`15. Third Party Requester Correspondence Address: Direct all communications about the reexamination to:
`
`~ The address associated with Customer Number:
`OR
`
`I
`
`26646
`
`I
`
`Firm or
`Individual Name
`
`D
`Address
`
`KENYON & KENYON LLP, One Broadway
`
`City New York
`Country US
`
`I State NY
`
`I Zip 10004
`
`Telephone 212.425.7200
`
`I Email
`
`16. ~ The patent is currently the subject of the following concurrent proceeding(s):
`a. Copending reissue Application No.
`D
`~ b. Copending reexamination Control No. 90/011,011
`c. Copending Interference No.
`D
`
`d. Copending litigation styled:
`
`D
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`WARNING: Information on this form may become public. Credit card information should not be
`included on this form. Provide credit card information and authorization on PT0-2038.
`/Clifford A. Ulrich/
`May 16,2011
`Authorized Signature
`Date
`Clifford A. Ulrich
`42,194
`Typed/Printed Name
`Registration No., if applicable
`
`[Page 2 of 2]
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Patent of
`
`Patent No.
`
`Issued
`
`Title
`
`James E. SMITH et al.
`
`7,241,034
`
`July 10, 2007
`
`AUTOMATIC DIRECTIONAL CONTROL SYSTEM
`FOR VEHICLE HEADLIGHTS
`
`Application Serial No.
`
`10/285,312
`
`Filed
`
`Requester
`
`October 31, 2002
`
`Volkswagen Group of America, Inc.
`
`VIAEFS-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 of37 C.F.R. § 1.902 et seq.
`
`Page 7 of 1228
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`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`IDENTIFICATION PURSUANT TO 37 C.P.R.§ 1.915(b)(1) .................................... 1
`
`COPY OF '034 PATENT PURSUANT TO 37 C.P.R.§ 1.915(b)(5) ........................... 1
`
`CERTIFICATION PURSUANT TO 37 C.P.R.§ 1.915(b)(7) ...................................... 1
`
`IDENTIFICATION OF REAL PARTY IN
`INTEREST PURSUANT TO 37 C.P.R.§ 1.915(b)(8) ................................................. 1
`
`PROCEEDINGS RELATED TO '034 PATENT .......................................................... 1
`
`THE '034 PATENT AND ITS PROSECUTION .......................................................... 2
`
`A.
`
`B.
`
`Prosecution of '312 Application ........................................................................ 3
`
`Pending Ex Parte Reexamination of '034 Patent .............................................. 7
`
`VII. CITATIONS OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`THAT ARE PRESENTED TO PROVIDE SUBSTANTIAL NEW
`QUESTIONS OF PATENTABILITY PURSUANT TO 37 C.P.R. § 1.915(b)(2) ....... 9
`
`VIII. STATEMENTS POINTING OUT EACH SUBSTANTIAL NEW QUESTION
`OF PATENTABILITY PURSUANT TO 37 C.P.R. § 1.915(b)(3) ............................. 10
`
`IX.
`
`DETAILED EXPLANATIONS PURSUANT TO 37 C.P.R.§ 1.915(b)(3) ............... 13
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Uchida Under 35 U.S.C. § 102(b) ........................................... 16
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Takahashi Under 35 U.S.C. § 102(b) ...................................... 17
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Anticipated by Russman Under 35 U.S.C. § 102(b) ........................................ 19
`
`Claims 1 and 5 ofthe '034 Patent Are
`Anticipated by Miskin et al. Under 35 U.S.C. § 102(b) .................................. 21
`
`Claims 1 and 5 ofthe '034 Patent Are
`Anticipated by Leleve Under 35 U.S.C. § 102(b) ............................................ 22
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over
`The Combination ofToda et al. and Uchida Under 35 U.S.C. § 103(a) .......... 23
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination ofToda et al. and Takahashi Under 35 U.S.C. § 103(a) ............ 24
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are
`Unpatentable Over the Combination of
`Toda et al. and Russman Under 35 U.S.C. § 103(a) ........................................ 26
`
`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) ................................. .28
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over
`The Combination ofToda et al. and Leleve Under 35 U.S.C. § 103(a) .......... 29
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination ofOkuchi et al. and Uchida Under 35 U.S.C. § 103(a) ............ .31
`
`1
`
`Page 8 of 1228
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`

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`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`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) ................................... 33
`
`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) .................................... 34
`
`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) .............................. .36
`
`Claims 1, 2, 4, and 5 of the '034 Patent Are Unpatentable Over the
`Combination ofOkuchi et al. and Leleve Under 35 U.S.C. § 103(a) ............. .38
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination ofGotoh and Uchida Under 35 U.S.C. § 103(a) ....................... .40
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination ofGotoh and Takahashi Under 35 U.S.C. § 103(a) .................. .42
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination ofGotoh and Hussman Under 35 U.S.C. § 103(a) ................... .43
`
`Claims 1, 2, 3, and 5 of the '034 Patent Are Unpatentable Over the
`Combination ofGotoh and Miskin et al. Under 35 U.S.C. § 103(a) .............. .45
`
`Claims 1 to 5 of the '034 Patent Are Unpatentable Over the
`Combination ofGotoh and Leleve Under 35 U.S.C. § 103(a) ....................... .47
`
`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) ................................... .48
`
`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. § 1 02(b) ...................................... 50
`
`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. § 1 02(b ) ........................................ 52
`
`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 ofToda et al. and Uchida Under 35 U.S.C. § 103(a) ................. 53
`
`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 ofToda et al. and Takahashi Under 35 U.S.C. § 103(a) ............ 56
`
`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
`OfToda et al. and Hussman Under 35 U.S.C. § 103(a) .................................. 58
`
`11
`
`Page 9 of 1228
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`

`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`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 Are Unpatentable Over the
`Combination ofOkuchi et al. and Uchida Under 35 U.S.C. § 103(a) ............. 61
`
`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
`OfOkuchi et al. and Takahashi Under 35 U.S.C. § 103(a) ............................. 63
`
`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
`OfOkuchi et al. and Bussman Under 35 U.S.C. § 103(a) ............................... 66
`
`Proposed Claims 1 to 14, 20, 22, 24 to 26, 28, 29, 37,
`38, and 41 to 45 ofthe '034 Ex Parte Reexamination
`Are Unpatentable Over the Combination
`OfGotoh and Uchida Under 35 U.S.C. § 103(a) ............................................. 69
`
`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 ofGotoh and Takahashi Under 35 U.S.C. § 103(a) ................... 71
`
`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 Bussman Under 35 U.S.C. § 103(a) ............................................... 74
`
`Proposed Claims 17, 19, 21, 23, 26, and 30 to 32 ofthe
`'034 Ex Parte Reexamination Are Unpatentable in
`View of the Combination ofUchida and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a) ............ 76
`
`Proposed Claims 19, 23, 26, and 30 to 32 of the '034
`Ex Parte Reexamination Are Unpatentable in
`View of the Combination ofTakahashi and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a) ............ 78
`
`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 ofBussman and the Admitted Prior Art
`Described in the '034 Patent Specification Under 35 U.S.C. § 103(a) ............ 80
`
`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) ....................................... 82
`
`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) .................................. 84
`
`Proposed Claim 27 of the '034 Ex Parte Reexamination
`Is Unpatentable Over the Combination of Bussman
`'460 and Wassen et al. Under 35 U.S.C. § 103(a) ........................................... 85
`
`111
`
`Page 10 of 1228
`
`

`
`X.
`
`XI.
`
`PROPOSED REJECTION OF PROPOSED
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 314(A) ....................................................... 87
`
`PROPOSED REJECTION OF PROPOSED
`CLAIMS 12 TO 16 UNDER 35 U.S.C. § 112, ~ 4 ...................................................... 88
`
`XII.
`
`FEE PURSUANT TO 37 C.F.R. § 1.915(a) ................................................................ 88
`
`XIII. CERTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(6) .................................... 88
`
`XIV. CONCLUSION ............................................................................................................ 89
`
`IV
`
`Page 11 of 1228
`
`

`
`Exhibit 1
`
`U.S. Patent No. 7,241,034
`
`EXHIBITS
`
`Exhibit 2
`
`Exhibit 3
`
`Exhibit 4
`
`Exhibit 5
`
`Exhibit 6
`
`Exhibit 7
`
`Exhibit 8
`
`Exhibit 9
`
`Exhibit 10
`
`"Original Complaint for Patent Infringement," filed on March 8, 2010,
`BALTHER TECHNOLOGIES, LLC, v. AA1. HONDA ~i\lfOTOR CO. INC., et al.,
`Case No. 6:10-CV-78-LED (E.D. Tex.)
`
`"Plaintiff's Notice ofVoluntary Dismissal," filed on May 17, 2010, BALTHER
`TECHNOLOGIES, LLC, v. AAf 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. AA1.
`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 ofPatentability
`
`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 Bussman
`
`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.
`
`Exhibit 11
`
`German Patent Application Publication No. 31 29 891 to Leleve
`
`Exhibit 12
`
`Certified English-Language Translation of German Patent Application
`Publication No. 31 29 891 to Leleve
`
`Exhibit 13
`
`U.S. Patent No. 6,305,823 to Toda et al.
`
`Exhibit 14
`
`U.S. Patent No. 6,193,398 to Okuchi et al.
`
`Exhibit 15
`
`U.S. Patent No. 5,909,949 to Gotoh
`
`Exhibit 16
`
`U.S. Patent No. 4,954,933 to Wassen et al.
`
`Exhibit 17
`
`Certificate of Service
`
`Page 12 of 1228
`
`

`
`I.
`
`IDENTIFICATION PURSUANT TO 37 C.F.R. § 1.915(b)(l)
`
`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 ofVOLKSW AGEN 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:
`
`Page 13 of 1228
`
`

`
`'034 PATENT,
`EX PARTE REEXAMINATION OF THE
`for Ex Parte
`Control Number 90/011,011
`(Request
`'034 Ex Parte
`Reexamination filed July 10, 2010) ("the
`Reexamination"). Pursuant to M.P.E.P. § 2282/ 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. AAf. HONDA ji.JOTOR
`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 Plaintiff's request dated May
`18,2010 is annexed hereto as Exhibit 4.
`
`VI.
`
`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,
`
`"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."
`
`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 infonn the
`Office of all prior and concuiTent 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
`
`Page 14 of 1228
`
`

`
`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.
`
`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. § 1 02(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
`
`Page 15 of 1228
`
`

`
`an actuator that is adapted to be connected to the
`headlight to effect movement thereof in accordance with said
`output signal.
`
`7. An +he automatic directional control system Elefi.Rea
`iR Claim 1 vll=tereiR saia 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;
`
`~ 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 ofthe 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 o