UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TOYOTA MOTOR CORPORATION. Petitioner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD TOYOTA MOTOR CORPORATION Petitioner v. INNOVATIVE DISPLAY TECHNOLOGIES LLC Patent Owner Case No.: IPR Patent No. 6,508,563 Title: Light Emitting Panel Assemblies for Use in Automotive Applications and the Like PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,508,563 Mail Stop Patent Board Patent Trial and Appeal Board P.O. Box 1450 Alexandria, VA

2 Table of Contents I. Grounds for Standing... 1 II. Identification of Challenge... 1 A. Overview of the 563 Patent The 563 Patent Specification The 563 Patent Claims The 563 Patent Prosecution History... 5 B. Level of Skill in the Art... 6 C. Claim Construction of the Challenged Claims... 7 D. Statement of Precise Relief Requested for Each Claim Challenged Claims for Which Review Is Requested Statutory Grounds of Challenge... 8 E. State of the Art at the Time the Application Was Filed Tsuboi (1982) Asai (1986) Tokita (1994) Additional References Containing Relevant Teachings III. Detailed Explanation of the Challenge A. Ground 1: Claims 1, 2, 11, and 18 are invalid as anticipated by Tsuboi Chart comparing Tsuboi to claims 1, 2, 11, and B. Ground 2: Claims 1, 2, 5, 7, 8, 11, and 22 are invalid as anticipated by Asai Chart comparing Asai to claims 1, 2, 5, 7, 8, 11, and i

3 C. Ground 3: Claims 5, 7, and 8 are anticipated by Tokita Chart comparing Tokita to claims 5, 7, and D. Ground 4: Claims 9 and 18 would have been obvious over Asai in view of Takahashi The trans reflector / film of Takahashi (1984) Motivation to combine Asai with Takahashi Chart comparing Asai and Takahashi to claims 9 and E. Ground 5: Claim 9 would have been obvious over Tokita in view of Makita The trans reflector of Makita (1990) Motivation to combine Tokita with Makita Chart comparing Tokita and Makita to claim F. Ground 6: Claims 22 and 23 are invalid as obvious over Tsuboi in view of Asai and Tokita, further in view of Gage and Lister The light source attached to [the] light input surface of Asai and Tokita The printed circuit board of Tokita Motivation to combine Tsuboi with Asai and Tokita in view of Gage (1981) and Lister (1992) Chart comparing Tsuboi, Asai, and Tokita to claims 22 and G. Ground 7: Claim 23 would have been obvious over Asai in view of Tokita, further in view of Gage The printed circuit board of Tokita Motivation to combine Asai with Tokita ii

4 3. Additional motivation to provide a printed circuit board Gage Chart comparing Asai and Tokita to claim IV. Mandatory Notices A. Real Party in Interest B. Related Matters C. Lead and Backup Counsel, and Service Information V. Payment of Fees VI. Conclusion iii

5 TABLE OF AUTHORITIES Page(s) Federal Cases In re Baxter TravenolLabs., 952 F.2d 388 (Fed. Cir. 1991) In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006)...passim KSR Int l Co. v. Teleflex Inc., 550 U.S. 398 (2007) Ex parte Masham, 2 U.S.P.Q.2d 1647 (BPAI 1987)... 17, 24, 32 Research Corp. Techs., Inc. v. Gensia Laboratories, Inc., 10 Fed. Appx. 856 (Fed. Cir. 2001)... 17, 24, 32 Federal Statutes 35 U.S.C passim 35 U.S.C , 9 35 U.S.C U.S.C Regulations 37 C.F.R C.F.R Board Authority Panel Claw Inc. v. Sunpower Corp., Paper 7, IPR (June 30, 2014)... 7 iv

6 Manual of Patent Examining Procedure MPEP passim MPEP passim MPEP v

7 Exhibit List Exhibit Description 1001 U.S. Patent No. 6,508,563 ( the 563 patent ) 1002 File History for U.S. Application No. 10/005, Declaration of John L. West, Ph.D. ( West Declaration ) 1004 H. Satsukawa, Optical System for Illuminating the Lateral Section of Wraparound Lamps, SAE Technical Paper Series No , Int l Congress and Exposition (Detroit, Mich., Feb , 1992) ( Satsukawa ) 1005 Japanese Laid Open Utility Model No. JPS ( Tsuboi ), published December 22, 1982 (with certified translation) 1006 Japanese Laid Open Utility Model No. S ( Asai ) published September 22, 1986 (with certified translation) 1007 Japanese Technical Disclosure Bulletin No ( Tokita ), published January 17, 1994, by Japanese Institute of Invention and Innovation (with certified translation) 1008 Japanese Laid Open Utility Model Application Publication No. JP S ( Takahashi ), published March 21, 1984 (with certified translation) 1009 U.S. Patent No. 4,949,226 to Makita, filed June 23, 1989, and issued August 14, 1990 ( Makita ) 1010 S. Gage et al., Optoelectronics/Fiber-Optics Applications Manual (2d ed. 1981) (excerpts) ( Gage ) 1011 M. Lister, LEDs for exterior lighting, Automotive Engineer v. 17 no. 5 (Oct./Nov. 1992) ( Lister ) vi

8 Petitioner Toyota Motor Corporation ( Petitioner ) requests Inter Partes Review ( IPR ) of claims 1, 2, 5, 7-9, 11, 18, 22, and 23 (collectively, the Challenged Claims ) of U.S. Patent No. 6,508,563 ( the 563 patent ) (Ex. 1001). I. Grounds for Standing Petitioner certifies that the 563 patent is available for IPR and that Petitioner is not barred or estopped from requesting IPR of the Challenged Claims on the grounds identified herein. Specifically: (1) Petitioner is not the owner of the 563 patent; (2) Petitioner has not filed a civil action challenging the validity of a claim of the 563 patent; (3) this petition is filed less than one year after the date on which Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the 563 patent; (4) the estoppel provisions of 35 U.S.C. 315(e)(1) do not prohibit this IPR; and (5) this petition is filed after the later of (a) the date that is nine months after the date of the grant of the 563 patent or (b) the date of termination of any post-grant review of the 563 patent. II. Identification of Challenge A. Overview of the 563 Patent The 563 patent, titled Light Emitting Panel Assemblies for Use in Automotive Applications and the Like, was filed on December 5, 2001, as U.S. Application No. 10/005,090, a continuation of Application No. 09/703,088 (filed Oct. 31, 2000), now U.S. Patent No. 6,367,940, which is a continuation of Application No. 09/167,949 (filed Oct. 7, 1998), now U.S. Patent No. 6,158,867, 1

9 which is a division of Application No. 08/585,062 (filed Jan. 16, 1996), now U.S. Patent No. 5,895,115. The earliest priority date to which the 563 patent may be entitled is January 16, The 563 Patent Specification The 563 patent relates to light emitting panel assemblies for use in automotive applications. Ex. 1001, 563 patent at 1: The 563 patent acknowledges that [l]ight emitting panel assemblies are generally known, and purports to provide improvements over such known assemblies. Id. at 1: The 563 patent describes examples of light emitting panel assemblies 24 [that] are mounted in body panels 25 along the rear, front and/or sides of a vehicle to provide vehicle running lights or accent lights or to light a logo, step, running board, or other surface area of a vehicle, as illustrated in Figure 3 (reproduced below). Id. at 8: According to the patent, light sources (9) [highlighted below in red] may be positioned along the back edges of the panel members 29 [highlighted below in yellow] used to provide running taillights for a vehicle. Id. at 8: According to the patent, the light sources may be embedded, potted or bonded in the light transition regions of the panels, mechanically held in place by a holder... in a slot in an edge of the panel member, or a fiber optic light pipe 64 [may be used] for transmitting light to the panel member from a remote light source 65. Id. at 9:

10 Ex. 1001, 563 Patent, Fig. 4 (annotated) The 563 patent states that these panel members 29 may form the exterior surface of the body panel 25 as shown at the left hand side of FIG. 4 or a lens or film 34 [highlighted above in green] may cover the panel members as shown at the right hand side of FIG. 4. Id. at 9:5-9. The 563 patent also describes that [a]n additional array of light sources 31 such as LEDs or incandescent or halogen lamps... may be strategically mounted inwardly (i.e., behind) the inner surface of the light emitting panel members 29 and/or 30 to cause a more intense light to shine through the panel members and a trans reflector 32 if provided on the panel members or through one or more clear areas or holes 33 where no print pattern, back reflector or trans reflector is provided on the panel members.... Id. at 9: The 563 Patent Claims Independent claims 1, 11, and 22 share substantially overlapping subject matter. Exemplary claim 1 recites a light emitting panel assembly mounted on a body portion of a vehicle, comprising: [1.a] at least one solid light emitting panel member having top and bottom surfaces and a greater cross sectional width than 3

11 thickness, [1.b] said panel assembly having at least one light input surface for receiving light from at least one light source and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of said panel member, and [1.c] said panel member being located on an exterior surface of said body portion with said panel member wrapped around a corner of said vehicle to provide illumination around said corner. In claims 11 and 22, the panel member is conforming to a curved profile of said vehicle, rather than wrapped around a corner, and in claim 22, the light source [is] attached to said light input surface. Independent claim 5 recites [5.a] at least one solid light emitting panel member with [5.b] at least one light input surface, but does not require that the panel be located on an exterior surface, wrapped around a corner, or conforming to a curved profile of the vehicle. In claim 5, [5.c] an other light source is located directly behind the panel member for shining light through the panel member independently of the light emitted by the panel member from the (first) light source. Dependent claims 2, 7-9, 18, and 23 recite additional features, including that: the panel member is located at least at one of a rear corner and a front corner of said vehicle (claim 2); the other light source is a light emitting diode, an incandescent lamp, [or] a halogen lamp (claim 7) or produces sufficient 4

12 illumination to provide... a brake light, a turn signal light, a turning light [or] a backup light (claim 8); or that the assembly further includes a trans reflector (claim 9), a lens or film (claim 18), or a printed circuit board (claim 23). 3. The 563 Patent Prosecution History As filed, the application for the 563 patent included independent claim 1, which recited every feature of issued claims 1 and 5 except elements [1.c] (the panel member being located on an exterior surface [and] wrapped around a corner ) and [5.c] (an other light source located directly behind said panel member ) as designated in subsection 2 above. Ex at Those features were recited in as-filed dependent claims 11 and 16. The examiner rejected claim 1 as anticipated. Id. at 54. The examiner rejected claims 11 and 16 only on the grounds of double-patenting. Id. at In response, the applicant rewrote claims 11 and 16 in independent form (as application claims 28 and 31), canceled claim 1, and entered a terminal disclaimer to overcome the double-patenting rejection. Id. at 65. The applicant also entered new independent claims 38 and 48, arguing that the claims were patterned after claim 28 (i.e., claim 11 rewritten to be independent) but reciting instead of the panel member being wrapped around a corner of the vehicle, that the panel member conforms to a curved profile of the vehicle to provide illumination along the curved profile. Id. at

13 In response, the examiner stated that the claims were allowable over the prior art for at least the reason that the prior art fails to teach or reasonably suggest the panel member being located on an exterior surface of the body portion with the panel member wrapped around a corner of the vehicle or conforming to a curved profile of the vehicle to provide illumination along the curved profile as set forth in the claimed combination and because the prior art fails to teach or reasonably suggest another light source located directly behind the panel member for shining light through the panel member independently of the light emitted by the panel member as set forth in the claimed combination. Id. at 73. Although the Examiner failed to identify the foregoing features in the prior art during original examination, those features were, in fact, known. B. Level of Skill in the Art The level of skill in the art is apparent from the cited art. Further, Petitioner submits that a person of ordinary skill in the art ( POSITA ) for the 563 patent would have at least an undergraduate degree in a science or engineering discipline, and a few years of work experience in a field related to optical technology, a graduate degree in a field related to optical technology, or a few years of continuing education toward a graduate degree in a field related to optical technology. Ex. 1003, West Decl

14 C. Claim Construction of the Challenged Claims Any final written decision in IPR will occur after the expiration of the 563 patent on January 16, Accordingly, the claims of the 563 patent generally [should be] given their ordinary and customary meaning, as understood by a POSITA, at the time of the invention, taking into consideration the language of the claims, the specification, and the prosecution history of record because the expired claims are not subject to amendment. See Panel Claw Inc. v. Sunpower Corp., Paper 7 at 7, IPR (June 30, 2014). Dependent claim 9 recites a trans reflector on said panel assembly through which a portion of light from said other light source passes. The 563 patent generally refers to trans reflectors as a type of back reflector or reflective coating. See Ex 1001 at 7: Light from light sources 31 provided behind panel members 29, 30 shown in FIG. 3 is described as shin[ing] through the panel members and a trans reflector 32. See id. at 9: Thus, a trans reflector, in view of the specification, is a component that both transmits and reflects light. That construction comports with the plain meaning of the more commonly used term of art, transflector, which generally refers to a component that both transmits and reflects light. Ex. 1003, West Decl. 28. For purposes of IPR only, Petitioner accepts that the remaining claim terms of the 563 patent assume the ordinary and customary meaning, consistent with the 7

15 specification, that they would have to a POSITA at the time of the alleged invention, and Petitioner does not contend that any remaining claim term requires specific construction. D. Statement of Precise Relief Requested for Each Claim Challenged 1. Claims for Which Review Is Requested Petitioner requests IPR under 35 U.S.C. 311 of claims 1, 2, 5, 7-9, 11, 18, 22, and 23 of the 563 patent and cancellation of these claims as unpatentable. 2. Statutory Grounds of Challenge Petitioner requests that claims 1, 2, 5, 7-9, 11, 18, 22, and 23 be canceled as unpatentable under 35 U.S.C. 102 and/or 103 for the following reasons: Ground 1: Claims 1, 2, 11, and 18 are invalid under 35 U.S.C. 102(b) as anticipated by Tsuboi. Ground 2: Claims 1, 2, 5, 7, 8, 11, and 22 are invalid under 102(b) as anticipated by Asai. Ground 3: Claims 5, 7, and 8 are invalid under 102(b) as anticipated by Tokita. Ground 4: Claims 9 and 18 are invalid under 35 U.S.C. 103(a) as obvious over Asai in view of Takahashi. Ground 5: Claim 9 is invalid under 103(a) as obvious over Tokita in view of Makita. 8

16 Ground 6: Claims 22 and 23 are invalid under 103(a) as obvious over Tsuboi in view of Asai and Tokita, further in view of Gage and Lister. Ground 7: Claim 23 is invalid under 103(a) as obvious over Asai in view of Tokita, further in view of Gage. Petitioner details the reasons for unpatentability and specific evidence supporting this petition below. E. State of the Art at the Time the Application Was Filed Before the priority date for the 563 patent, the automotive and lighting industries sought to address the challenges posed by so-called wraparound vehicle lights. Hideaki Satsukawa, an employee of the Japan-based Koito Manufacturing Company ( Koito ), summarized the origin and nature of those challenges in 1992: Automobile signalling lamps play an important role in ensuring safety during night driving by indicating one s presence and intentions to not only oncoming and following vehicles, but also to adjacent vehicles and pedestrians. Recent automotive design has favored curved, uniform lines to permit increased streamlining. These designs preclude the protruding lamp systems which formerly served the purpose of lateral signalling. Instead, wraparound units, particularly for the rear combination and front turn signal lamps, have become the norm (fig. 1). 9

17 Ex. 1004, Satsukawa at 3. Figure 1 of Satsukawa, reproduced below, illustrates the wraparound concept. Ex. 1004, Satsukawa, Fig. 1 Satsukawa described that demands for increased trunk space and engine room have also had a significant effect on today s lamps, pushing the industry toward ultra-slim, space-saving designs. Id. According to Satsukawa, such space constraints reduced the capability to illuminate the lateral wraparound portion of lamps, causing that portion to fail[] to serve its function as a lateral indicator and compromising the overall appearance of the lamp. Id. Figure 3 of Satsukawa, illustrated below, illustrates the problem of lateral illumination of wraparound lamps. Specifically, Figure 3 of Satsukawa identifies a wraparound portion beyond Direct Illumination from [the] Light Source. Id. at 4. 10

18 Ex. 1004, Satsukawa, Fig. 3 Satsukawa described a particular solution of mak[ing] use of a photoconductive panel to illuminate wraparound portions of the vehicle lamps. Id. at 3. In Satsukawa s solution, illustrated at right in annotated Figure 10, the photoconductive panel [highlighted in yellow] is roughly L-shaped, its specific shape depending on the lamp body dimensions. Id. at 8. Light enters the panel at the edge closest to the light source, and is transmitted by total reflection along the panel s surfaces to lateral areas where direct rays from the light source cannot reach.... The ray exits directly from the outer surface of the panel, 11

19 resulting in the illumination of the wraparound portion of the lamp.... through the overlying lens [highlighted in green]. Id. at Tsuboi (1982) The work by Satsukawa and Koito on edge-lighted tail light panels began well before the above-noted it summary of the operating principles of such panels. For example, more than a decade earlier, Koito filed a utility model with the Japanese Patent Office, depicting a solution for wraparound vehicle lights. Japanese Laid Open Utility Model No. JPS to Tsuboi (published Dec. 22, 1982) (Ex. 1005, Tsuboi ). Similarly to the later Satsukawa article, Tsuboi described illuminating a panel to direct light to the lateral portions of the vehicle lamp. Ex. 1005, Tsuboi at 2 ( [l]ight from the bulb 4 is conveyed by the light guide plate 5 to the ends of lateral space 3b so as to form uniform illumination over the entire surface of the front lens 2 ). Like the 563 patent filed a dozen years later, Tsuboi described that the illuminated panel (highlighted below in yellow) could either be covered by a lens (green, below at left) or could be left uncovered on the vehicle exterior (below at right). Cf. Ex. 1001, 563 patent, at 9:5-9 and Figs

20 Ex. 1005, Tsuboi, Fig. 1 (annotated) Ex. 1005, Tsuboi, Fig. 6 (annotated) 2. Asai (1986) Koito continued to develop its edge-lighted wraparound vehicle lamps, and in 1986 four years after Tsuboi publicly filed another Japanese Utility Model directed to another implementation. Japanese Laid Open Utility Model No. S (laid open Sept. 22, 1986) to Asai et al. (Ex. 1006, Asai ). In Asai, the wraparound lens of a vehicle is illuminated by two independent light sources: bulb 2 and light emitting diode ( LED ) 20. See Ex. 1006, Asai, Fig. 3 (annotated at right). The LED in Asai is embedded in a rear end face of this wraparound portion 31A of the lens. Id. at Tokita (1994) Continuing its development in this area, Koito published another design including two independent light sources in JP Technical Disclosure Bulletin No. H (Jan. 17, 1994) to Tokita et al. (Ex. 1007, Tokita ). Tokita 13

21 described a clearance lamp... incorporated in a head lamp... of an automobile. Ex. 1007, Tokita at 1. As illustrated below, Tokita illuminated a light conducting panel (lens 2, highlighted in yellow) by using two independent light sources (bulb 3, below at left, and LED 6, below at right). As in Asai, the LED of Tokita is attached to the light input surface of the lens i.e., via printed circuit board 5 and housing 1. See id., Fig. 2, below; see also Fig. 3 (LED attached to light input surface, lens 16, via printed circuit board 5 and housing 11). Ex. 1007, Tokita, Figs. 1 and 2 (annotated) 4. Additional References Containing Relevant Teachings As detailed in this petition, each independent Challenged Claim (claims 1, 5, 11, and 22) is invalid as anticipated by one or more of the foregoing Koito references. The foregoing Koito references also anticipate or, together with one or more secondary references discussed below, render obvious each dependent Challenged Claim (claims 2, 7-9, 18, and 23). 14

22 III. Detailed Explanation of the Challenge A. Ground 1: Claims 1, 2, 11, and 18 are invalid as anticipated by Tsuboi Tsuboi was published on December 22, 1982, and is prior art under 35 U.S.C. 102(b). Tsuboi teaches a light-emitting panel assembly mounted on a body portion of a vehicle including all of the limitations of claims 1, 2, 11, and 18. As in claims 1 and 11, Tsuboi discloses a solid panel ( light guide plate 5 ), which has top and bottom surfaces and a greater cross sectional width than thickness (elements 1[a], 11[a]). See Ex. 1005, Tsuboi, Figs. 1-6; accord id. at 3 ( The lighting member area is formed so as to be great compared to the thickness of the light guide plate. ). These relative dimensions of the light guide plate would have been understood by a POSITA based on the teachings of Tsuboi and common-sense understanding. As another example, Tsuboi teaches that its vehicle light fixture [will provide] uniform, bright illumination over the entire surface of the front lens. Id. at 3; see also id. at 4 ( Bright light can be derived uniformly over the entire surface of the front lens, and the visibility can be enhanced. ). A POSITA would recognize that such uniform illumination of the lens would not be achieved if the thickness of the light guide plate illustrated in Figures 1-5 were greater than the width of the light guide plate. Ex. 1003, West Decl. 44. In Tsuboi, the plate should be structured so that light from the light source is irradiated to the side of the vehicle via a light guide space formed in these 15

23 spaces. Ex. 1004, Tsuboi at at 2. In other words, light received through an input surface is directed through the panel assembly for emission from a top or bottom surface (elements 1[b], 11[b]). The transmission of light through the panel ( plate 5 ) of Tsuboi is specifically illustrated, e.g., in Figures 1, 2, and 4. Although the light rays are not specifically illustrated in Figure 6, a POSITA would have understood that light is transmitted in that embodiment in substantially the same way. Ex. 1003, West Decl. 46. As illustrated, e.g., in Figure 6, the panel member of Tsuboi is wrapped around a corner to provide illumination around the corner (element 1[c]) and conforms to a curved profile of the vehicle to provide illumination along the curved profile (element 11[c]). See also Ex. 1005, Tsuboi at 2 ( [T]he fixture body and the front lens should be formed in a roughly L shape that matches the vehicular body shape so that the directional indicator deployed on the outside can be confirmed from the vehicle side for traffic safety considerations, and it should be structured so that light from the light source is irradiated to the side of the vehicle via a light guide space formed in these spaces. ). Moreover, as best illustrated in Figure 6 of Tsuboi, the panel member is on the exterior surface of the body portion of the vehicle (elements 1[c], 11[c]). See also id. at 4 ( light guide plate 5 may be integrally formed with the front lens 2, as shown in Figure 6 ). 16

24 As to the additional limitations of claim 2, Tsuboi s panel member is located at a rear corner of the vehicle. Specifically, Tsuboi teaches that in vehicle light fixtures that incorporate a tail light, a stop light, and a directional indicator like combination lights (necessarily on the rear of the vehicle), the fixture body and the front lens should be formed in a roughly L shape that matches the vehicular body shape so that the directional indicator... can be confirmed from the vehicle side. Id. at 2 (emphasis added). In other words, the panel member curves from the back of the vehicle to the side of the vehicle, and the panel member accordingly is located at a rear corner of the vehicle. See also id., Figs. 1-6 (illustrating corner light assemblies); Ex. 1003, West Decl. 35. Moreover, the wherein limitation that the panel member is located at least at one of a rear corner and a front corner of said vehicle is non-limiting because it provides no distinguishing structure to the claim. See Research Corp. Techs., Inc. v. Gensia Laboratories, Inc., 10 Fed. Appx. 856, 861 (Fed. Cir. 2001) (construing the expression protected from light as non-limiting); accord MPEP The limitation is merely a recitation with respect to the manner in which the claimed apparatus is intended to be employed. See MPEP 2114(II); Ex parte Masham, 2 U.S.P.Q.2d 1647 (BPAI 1987) ( the apparatus disclosed [in the prior art] does not undergo a metamorphosis to a new apparatus merely by affixing instructions thereto indicating how it is to be used). Accordingly, because the 17

25 panel of Tsuboi possesses the structure to be located at the corner of a vehicle, it is immaterial whether the panel is actually depicted on that corner. As to claim 18, Tsuboi depicts a lens or film covering one of said top and bottom surfaces of said panel member, as claimed. See, e.g., Ex. 1005, Tsuboi, Fig. 1 (element 2). 1. Chart comparing Tsuboi to claims 1, 2, 11, and 18 Claim 1 1. A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [1.a] at least one solid light emitting panel member having top and bottom surfaces and a greater cross sectional width than thickness, Exemplary Disclosure of Prior Art Tsuboi is titled Vehicle light fixture. Tsuboi describes that its invention relates to vehicle light fixtures that incorporate a tail light, a stop light, and a directional indicator like combination lights. Ex. 1005, Tsuboi at 2. A light guide plate 5 formed from transparent synthetic resin is deployed in the light guide space 3 from the anterior space 3a to the lateral space 3b. Light from the bulb 4 is conveyed by the light guide plate 5 to the ends of lateral space 3b so as to form uniform illumination over the entire surface of the front lens 2. For this reason, the light guide plate 5 is formed with a curvature roughly equal to that of the side of the front lens Id. at 2. The lighting member area is formed so as to be great compared to the thickness of the light guide plate. Id. at 3 and Figs The lighting plane comprising individual refraction planes should have an area greater than the thickness of the base of the light guide plate. Id. at 4. The vehicle light fixture [will provide] uniform, bright illumination over the entire surface of the front lens. Id. at 3 (emphasis added); see also id. at 4 ( Bright light can be derived uniformly over the entire surface of the front lens, and the visibility can be enhanced. ). 18

26 Claim 1 [1.b] said panel assembly having at least one light input surface for receiving light from at least one light source and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of said panel member, Exemplary Disclosure of Prior Art Light from the bulb 4 is conveyed by the light guide plate 5 to the ends of lateral space 3b so as to form uniform illumination over the entire surface of the front lens 2. Id. at 2. [R]eflection member 7 [is provided] comprising serrated shape steps formed so as to reflect incident light from the lighting member 6 along the curve of the front lens 2. Id. See id., Figs. 1-6 (exemplary Fig. 1 annotated below); see also id. at 2 (describing transmission of light rays 8, 8a, 8b, and 8c); see Ex. 1003, West Decl. 37, 43. Tsuboi, Fig. 1 (annotated) [1.c] said panel member being located on an exterior surface of said body portion with said panel member wrapped around a corner of said vehicle to provide illumination around said corner. [T]he fixture body and the front lens should be formed in a roughly L shape that matches the vehicular body shape so that the directional indicator deployed on the outside can be confirmed from the vehicle side for traffic safety considerations, and it should be structured so that light from the light source is irradiated to the side of the vehicle via a light guide space formed in these spaces. Id. at 2. Tsuboi describes prior art systems wherein irradiation of light from the light source to the side is difficult if a simple light guide space is formed and wherein the brightness of the light fixture on the side is dim compared to the brightness at the front, and the visibility is poor. Id. In contrast, in the invention of Tsuboi, Light from the bulb 4 is conveyed by the light guide plate 5 to the ends of lateral space 3b so as to form uniform illumination over the entire surface of the front 19

27 Claim 1 Exemplary Disclosure of Prior Art lens 2. Id. at 2. See id., Figs The light guide plate 5 may be integrally formed with the front lens 2, as shown in Figure 6 [annotated below]. Ex. 1005, Tsuboi, Fig. 6 (annotated) Claim 2 2. The assembly of claim 1 wherein said panel member is located at least at one of a rear corner and a front corner of said vehicle. Exemplary Disclosure of Prior Art The panel member of Tsuboi curves from the back of the vehicle to the side of the vehicle i.e., around the rear corner. [I]n vehicle light fixtures that incorporate a tail light, a stop light, and a directional indicator like combination lights, the fixture body and the front lens should be formed in a roughly L shape that matches the vehicular body shape so that the directional indicator... can be confirmed from the vehicle side. Id. at 2 (emphasis added); Figs Claim A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [11.a] at least one solid light emitting panel member having top and bottom surfaces and a Exemplary Disclosure of Prior Art Preamble and elements 11.a and 11.b are identical to claim 1, above. See claim 1 for analysis. Preamble and elements 11.a and 11.b are identical to claim 1, 20

28 greater cross sectional width than thickness, [11.b] said panel assembly having at least one light input surface for receiving light from at least one light source and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of said panel member, [11.c] said panel member being located on an exterior surface of said body portion with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile. above. See claim 1 for analysis. Preamble and elements 11.a and 11.b are identical to claim 1, above. See claim 1 for analysis. See claim 1, element 1.c., for analysis of substantially similar claim limitation. Claim The assembly of claim 11 further comprising [18.a] a lens or film covering one of said top and bottom surfaces of said panel member. Exemplary Disclosure of Prior Art See claim 11. See, e.g., Figs. 1-5 (element 2). B. Ground 2: Claims 1, 2, 5, 7, 8, 11, and 22 are invalid as anticipated by Asai Asai was published on September 22, 1986, and is prior art under 35 U.S.C. 102(b). Asai teaches a light-emitting panel assembly mounted on a body portion of a vehicle including all of the limitations of claims 1, 2, 5, 7, 8, 11, and 22. Ground 2 is non-duplicative of Ground 1 at least because Ground 2 details the anticipation of claims 5, 7, 8, and 22. Furthermore, Asai, unlike Tsuboi, expressly teaches using an LED edge light embedded in the edge of a lens (relevant to 21

29 claim 22) and an other light source backlighting the lens (claims 5, 7, 8). In addition, because the light source of Asai is embedded in the edge of the lens, its light input surface will receiv[e] light from at least one light source in a different way from the light-guide plate of Tsuboi (claims 1 and 11). Accordingly, Ground 2 warrants separate consideration from Ground 1. Regarding claims 1, 5, 11, and 21 (elements 1[a], 5[a], 11[a], 21[a]), Asai discloses a solid panel ( wraparound lens 31 ), which, as a lens, has top and bottom surfaces (see annotated Fig. 3, right). Asai does not expressly define the width relative to the thickness, but a wraparound lens would have been understood by a POSITA, as a matter of common sense and knowledge, to have a greater width than thickness. See Ex. 1004, Satsukawa, Figs. 10 and 13 (illustrating cross-section and side view of lens); Ex. 1003, West Decl. 54. As illustrated in Figure 3 of Asai, above, Asai teaches that a light emitting diode is embedded in a portion of a thick wall portion of a lens... and an indentation and protrusion portion to reflect light that has been guided inside the thick wall portion from the diode is formed on an inner surface of the lens (Ex. 1006, Asai at 3) i.e., Asai receives light from a light source through a light 22

30 input surface (elements 1[b], 5[b], 11[b], 21[b]). Further, as indicated by the directional arrows extending from LED 20 through the surface of element 31A, the light is directed for emission from the outer surface of the panel member (elements 1[b], 5[b], 11[b], 21[b]). See id. at 5:18-31 ( light [from LED 20] passes through the inside of the wraparound portion 31A [of lens 31], and is reflected by the indentations and protrusions 32 and is output to the outside. ). As in element 21[b], the light source (LED 20) is attached to ( embedded in ) the input surface. Id. at 3; accord 563 patent at 9:10-19 (light source may be embedded ). As illustrated in the expanded portion of Figure 3 at right, the panel member of Asai is wrapped around a corner to provide illumination around the corner (element 1[c]) and conforms to a curved profile of said vehicle to provide illumination along the curved profile (elements 11[c], 22[c]). Specifically, Figure 3 of Asai depicts the travel of light emitted from LED 20, including at least one light ray (the top directional arrow) providing illumination around a corner. Ex. 1003, West Decl. 52. Further, a POSITA would have understood that additional light from the LED 20 would necessarily be transmitted around the corner of the lens 31, thereby providing illumination around the corner. Id. Finally, in Asai, the light passing through the lens 31 is output to the outside (Ex. 1006, Asai at 5, ll

31 29) meaning that the lens is located on an exterior surface of said body portion of a vehicle (elements 1[c], 11[c], 22[c]). As for the additional limitations of claim 2, it was understood in the art that a wraparound lens as described in Asai is located at least at one of a rear corner and a front corner of a vehicle. See Ex. 1004, Satsukawa, Fig. 1 1 ; Ex. 1003, West Decl. 52. Further, Asai is titled vehicle lamp, and describes the field of its invention as relat[ing] to a vehicle lamp suitable for use in a lens of a tail lamp, a stop lamp and the like. Ex. 1006, Asai at 2:2, It was understood in the art that a tail lamp, stop lamp, etc., would have been located at a rear corner of a vehicle. See Ex. 1004, Satsukawa, Fig. 1. Moreover, claim 2 merely recites the manner in which the claimed apparatus is intended to be employed. See MPEP , 2114(II). Accordingly, because the panel of Asai possesses the structure to be located at the corner of a vehicle, it is immaterial whether the panel is actually depicted on that corner. See Research Corp., 10 Fed. Appx. 861 ( protected from light found to be non-limiting); Ex Parte Masham, 2 U.S.P.Q.2d 1 Satsukawa is properly considered to explain the meaning of a term, i.e., wraparound lens, used in the primary reference. In re Baxter TravenolLabs., 952 F.2d 388, 390 (Fed. Cir. 1991) ( extrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference ); accord MPEP (II). 24

32 at 1647 (instructions for use non-limiting); accord MPEP , MPEP 2114(II). Referring to claim 5 (element 5[c]) Figure 3 of Asai (full depiction above) illustrates an other light source (2) located behind a panel member (31) for shining light through the panel member independently of the light emitted by the panel member from the (first) light source (20). See also Ex. 1006, Asai at 5 ( the light emitting diode 20 is used independently from the light source 2 for the light itself ). As to claim 7, Asai describes light source 2 as a bulb (id. at 2), and illustrates the light source 2 as having a filament, making it an incandescent bulb. Id. at Fig. 3; Ex. 1003, West Decl. 53. As to claim 8, Asai discloses that its vehicle lamp is suitable for use in a lens of a tail lamp, a stop lamp and the like. Ex. 1006, Asai at 2:2, 16-17; see also 2:19-3:1 (describing prior art tail lamp in Fig. 7, including a bulb 2, used to make[] a driver of the following vehicle aware of the existence of the own vehicle to as to prevent a rear-end accident or the like ). 1. Chart comparing Asai to claims 1, 2, 5, 7, 8, 11, and 22 Claim 1 1. A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly Exemplary Disclosure of Prior Art Asai is titled vehicle lamp, and describes the field of its invention as relat[ing] to a vehicle lamp suitable for use in a lens of a tail lamp, a stop lamp and the like. Ex. 1003, Asai at 2:2, 16-17, Fig

33 Claim 1 comprising [1.a] at least one solid light emitting panel member having top and bottom surfaces and a greater cross sectional width than thickness, Exemplary Disclosure of Prior Art See Asai, Fig. 3. Asai s lens is a solid light emitting panel member, because light passes through the inside of the wraparound portion 31A [of lens 31], and is reflected by the indentations and protrusions 32 and is output to the outside. Id. at 5: The lens of Asai has top and bottom surfaces (e.g., the surfaces to which reference numbers 31A and 32 are pointed) in Figure 3. See textual discussion above regarding greater cross sectional width than thickness. Ex. 1006, Asai, Fig. 3 (annotated) [1.b] said panel assembly having at least one light input surface for receiving light from at least one light source and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of said panel member, [L]ight emitting diode is embedded in a portion of a thick wall portion of a lens... and an indentation and protrusion portion to reflect light that has been guided inside the thick wall portion from the diode is formed on an inner surface of the lens. Ex. 1006, Asai at 3; see also Fig. 3 (depicting embedded LED 20); id. at 4 (describing diode accommodating concave portion 21 in Figure 1); id. at 5 (in Figure 3, light emitting diode 20 is embedded in a rear end face of this wraparound portion 31A ). [L]ight [from LED 20] passes through the inside of the wraparound portion 31A [of lens 31], and is reflected by the indentations and protrusions 32 and is output to the outside. Id. at 5:

34 Claim 1 [1.c] said panel member being located on an exterior surface of said body portion with said panel member wrapped around a corner of said vehicle to provide illumination around said corner. Exemplary Disclosure of Prior Art See Asai, Fig. 3 (depicting wraparound lens 31 ); accord Ex. 1004, Satsukawa, Fig. 1 (illustrating known location of wraparound lenses on an automobile). [L]ight [from LED 20] passes through the inside of the wraparound portion 31A [of lens 31], and is reflected by the indentations and protrusions 32 and is output to the outside. Ex. 1006, Asai at 5: Claim 2 2. The assembly of claim 1 wherein said panel member is located at least at one of a rear corner and a front corner of said vehicle. Exemplary Disclosure of Prior Art Asai describes the field of its invention as relat[ing] to a vehicle lamp suitable for use in a lens of a tail lamp, a stop lamp and the like. Ex. 1006, Asai at 2:2, Figure 3 of Asai depicts a wraparound lens. See Ex. 1004, Satsukawa, Fig. 1 (illustrating known location of a wraparound lens ). Claim 5 5. A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [5.a] at least one solid light emitting panel member having top and bottom surfaces and a greater cross sectional width than thickness, [5.b] said panel assembly having at least one light input surface for receiving light from at least one light source and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of Exemplary Disclosure of Prior Art Preamble and elements 1.a and 1.b. are identical to preamble and elements 5.a and 5.b. See claim 1 for analysis. Preamble and elements 1.a and 1.b. are identical to preamble and elements 5.a and 5.b. See claim 1 for analysis. Preamble and elements 1.a and 1.b. are identical to preamble and elements 5.a and 5.b. See claim 1 for analysis. 27

35 said panel member, and [5.c] an other light source located directly behind said panel member for shining light through said panel member independently of the light emitted by said panel member from said light source. [T]he light emitting diode 20 is used independently from the light source 2 for the light itself. Ex. 1006, Asai at 5; see Fig. 3. Claim 7 7. The assembly of claim 5 wherein said other light source comprises at least one of: a light emitting diode, an incandescent lamp, and a halogen lamp Exemplary Disclosure of Prior Art See Ex. 1006, Asai, Fig. 3 (illustrating light source 2 as having a filament). Claim 8 8. The assembly of claim 5 wherein said other light source produces sufficient illumination through said panel member to provide at least one of: a brake light, a turn signal light, a turning light, and a backup light Exemplary Disclosure of Prior Art Asai discloses that its vehicle lamp is suitable for use in a lens of a tail lamp, a stop lamp and the like. Ex. 1006, Asai at 2:2, 16-17; see also 2:19-3:1 (describing prior art tail lamp in Fig. 7, including a bulb 2, used to make[] a driver of the following vehicle aware of the existence of the own vehicle to as to prevent a rear-end accident or the like ). Claim A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [11.a] at least one solid light emitting panel member having top and bottom surfaces and a greater cross sectional width than thickness, [11.b] said panel assembly having at least one light Exemplary Disclosure of Prior Art Preamble and elements 11.a and 11.b are identical to claim 1, above. See claim 1 for analysis. Preamble and elements 11.a and 11.b are identical to claim 1, above. See claim 1 for analysis. Preamble and 28

36 input surface for receiving light from at least one light source and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of said panel member, [11.c] said panel member being located on an exterior surface of said body portion with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile. elements 11.a and 11.b are identical to claim 1, above. See claim 1 for analysis. See claim 1, element 1.c., for analysis of substantially similar claim limitation. Claim A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [22.a] at least one solid light emitting panel member having top and bottom surfaces and a greater cross sectional width than thickness, [22.b] said panel assembly having at least one light input surface for receiving light from at least one light source attached to said light input surface and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of said panel member, [22.c] said panel member being located on an exterior surface of said body portion with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile. Exemplary Disclosure of Prior Art Preamble is identical to that of claim 1, above. See claim 1 for analysis. See element 1.a, above, for analysis of identical claim limitation. [L]ight emitting diode 20 is embedded in a rear end face of this wraparound portion 31A. Ex. 1006, Asai at 5; see also Fig. 3 (depicting embedded LED 20). See element 11.c, above, for analysis of identical claim limitation. 29

37 C. Ground 3: Claims 5, 7, and 8 are anticipated by Tokita Tokita was published on January 17, 1994, and is prior art under 35 U.S.C. 102(b). Tokita teaches a light-emitting panel assembly mounted on a body portion of a vehicle including all of the limitations of claims 5, 7, and 8. Ground 3 is non-duplicative of Ground 2 at least because while the lens of Asai inherently has a greater cross sectional width than thickness, Tokita expressly teaches that feature. See Ex. 1007, Tokita, Figs. 1 and 2 (annotated below). Accordingly, Ground 3 warrants separate consideration from Ground 2. As to claim 5 (element 5[a]), Tokita discloses a solid panel, lens 2, incorporated in a headlamp... of an automobile. Id. at 1. The lens 2 has top and bottom surfaces and a greater cross sectional width than thickness, as illustrated in the combination of Figures 1 and 2 (annotated below). See West Decl. 61. Ex. 1007, Tokita, Figs. 1 and 2 (annotated) In Tokita, light enters the lens 2 from an LED 6 via an input surface of the lens 2 (above, right) (element 5[b]). As shown by the directional arrows 7 and 8, light rays are directed through the panel assembly from an edge of the panel 30

38 assembly for emission of the light from one of the top and bottom surfaces of the panel member (element 5[b]). Figure 1 of Tokita (above, left) illustrates a bulb (3) an other light source (element 5[c]) behind the lens (2). See id. at 1:28-31 ( The present invention is a thing which eliminates [a] problem [of poor light distribution across the front of a lens], and is characterized by softly brightening an entire surface of a lens without generating an optical invalid portion on a reflection lens, by placing LED at a lower end of an outer circumference of a lens ). As to claim 7, Tokita describes that a head lamp bulb (i.e., other light source ) is typically an incandescent bulb. See id. at 1. As to claim 8, Tokita discloses that [t]he present invention relates to a clearance lamp... incorporated in a head lamp... of an automobile. Id. at 1. As a matter of common sense, an automobile head lamp produces as much or more illumination than a brake light, a turn signal light, and turning light, or a backup light for a given vehicle. Ex. 1003, West Decl. 62. Accordingly, the other light source in Tokita necessarily produces sufficient illumination to provide at least one of a brake light, a turn signal light, a turning light, and a backup light, as claimed. Id. Moreover, claim 8 presents a non-limiting wherein clause that does not limit the claim to a particular structure, and merely recites the manner in which the claimed apparatus is intended to be employed. See MPEP , 2114(II). Accordingly, because Tokita possesses the structure to provide sufficient 31

39 illumination for a brake light, a turn signal light, a turning light, and a backup light, it is immaterial whether the structure is actually depicted in that configuration. See Research Corp., 10 Fed. Appx. 861 ( protected from light found to be nonlimiting); Ex Parte Masham, 2 U.S.P.Q.2d at 1647 (instructions for use nonlimiting); accord MPEP , MPEP 2114(II). 1. Chart comparing Tokita to claims 5, 7, and 8 Claim 5 5. A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [5.a] at least one solid light emitting panel member having top and bottom surfaces and a greater cross sectional width than thickness, Exemplary Disclosure of Prior Art The present invention relates to a clearance lamp... incorporated in a head lamp... of an automobile. Ex. 1007, Tokita at 1. See id., Figs. 1 and 2, annotated below to show width and thickness and top and bottom surfaces. Ex. 1007, Tokita, Fig. 1 (annotated) Ex. 1007, Tokita, Fig. 2 (annotated) [5.b] said panel assembly having at least one light input surface for See id., Fig. 2 (showing transmission of light 7, 8 from LED 6 into, through, and out of 32

40 receiving light from at least one light source and directing the light through said panel assembly from an edge of said panel assembly for emission of the light from one of said top and bottom surfaces of said panel member, and [5.c] an other light source located directly behind said panel member for shining light through said panel member independently of the light emitted by said panel member from said light source. lens 2). [W]hen CL 4 [including LED 6] is turned on, the light 7 is transmitted by being repeatedly reflected in the lens, and becomes indication light 8 to softly illuminate the entire surface of the lens 2. Id. at 2:6-9. See id. at Fig. 1 (illustrating bulb 3 behind the lens). Claim 7 7. The assembly of claim 5 wherein said other light source comprises at least one of: a light emitting diode, an incandescent lamp, and a halogen lamp Exemplary Disclosure of Prior Art A conventional head lamp bulb (i.e., other light source ) is an incandescent bulb. See id. at 1 ( In a conventional CL [clearance lamp]- incorporated HL [head lamp], an attachment hole is provided in a part of a reflection mirror because of assembling a separate CL using an incandescent bulb. ). Claim 8 8. The assembly of claim 5 wherein said other light source produces sufficient illumination through said panel member to provide at least one of: a brake light, a turn signal light, a turning light, and a backup light Exemplary Disclosure of Prior Art The present invention relates to a clearance lamp... incorporated in a head lamp... of an automobile. Id. at 1. 33

41 D. Ground 4: Claims 9 and 18 would have been obvious over Asai in view of Takahashi The lens (i.e., panel member) of Asai is necessarily trans reflective, because it both transmits and reflects light. Ex. 1003, West Decl. 55. For example, as illustrated in Figure 3 of Asai, the lens transmits light from source 2 and reflects and transmits light from LED 20. Id. Asai is silent as to whether the lens s trans reflective performance is provided by a trans reflector on [the] panel member (claim 9). Asai also is silent about the presence of a lens or film on a top or bottom surface of the lens (claim 18). However, as discussed below, it would have been obvious to provide or enhance the trans reflective properties of Asai s lens by providing a trans reflector in the form of a lens or film in view of Japanese Patent Application Publication No. JP S , to Takahashi (Ex. 1008, Takahashi ). 1. The trans reflector / film of Takahashi (1984) Takahashi (Ex. 1008) was published on March 21, 1984, and is prior art under 35 U.S.C. 102(b). Much like Asai, Takahashi discloses a vehicle lamp comprising an edge-lighted illuminated panel and an other light source for shining light through the panel member independently from the edge light. See Ex. 1008, Takahashi at 2:11-12 ( lamp covers of vehicle headlamps and vehicle tail lamps ), Figs. 5-6 (below). 34

42 Ex. 1008, Takahashi, Figs. 5-6 (annotated) Specifically, Takahashi discloses a semitransparent plate (1) [which] has a light transmitting property and a light source (5)... provided at the edge portion (6) of the plate, with another lamp light source (7) provided rearward of the semitransparent plate (1). Id. at 3:4-14, Takahashi further discloses that the semi-transparent nature of the plate (1) may be achieved by forming vapor deposition of aluminum, silver or carbon on an inner surface of the glass surface, or such materials may be applied by coating, or a semi-light-blocking body (3) such as a semi-light blocking film may be attached to the inner surface of the glass surface as shown in Fig. 5. Id. at 3: A POSITA would have understood that the deposited aluminum, silver or carbon, or the semi-light blocking body (3) would be both reflective (particularly in the case of silver) and transmissive (to allow light from lamp (7) to be transmitted through) i.e., the 35

43 component is a trans reflector. Ex. 1003, West Decl. 66. The plate of Takahashi, like the lens of Asai, also may transmit light around a corner, as illustrated in Figure 6 (above). See Ex. 1008, Takahashi at 3:16-18 ( the upper end of the semitransparent plate (1) may be bent rearward (rightward in the drawing), and a light source (5) may be provided at the edge portion (6) at the rear end therof ). According to the design of Takahashi, when light sources (5) and (7) are both not turned on, the semitransparent plate (1) conceals the rear portions of the lamps (2), (2), (2). Id. at 4:8-10, 5:1-3 (headlamp embodiment), 5:9-11 (tail lamp embodiment), Fig. 9. [W]hen [only] the light source (5) is turned on, only the groove portions (4) reflect, and the lamp light source (7) cannot be seen from the outside. Id. at 4:23-24, 5:4-7 (headlamp), 5:11-13 (tail lamp), Fig. 10. Next, when the lamp light source (7) is turned on, light passes toward the left in the drawing through the lamp lens (8) and the semitransparent [plate] (1) i.e., the plate (1) and trans reflector would allow the transmission of light therethrough. Id. at 4:25-26, 5:7-9 (headlamp), 5:13-15 (tail lamp), Figs According to Takahashi, the trans reflective properties of the plate (1) preserve a unitary feeling in the exterior appearance of the vehicle when the lamp light source (7) is turned off. Id. at 4: Consequently, Takahashi teaches, even when a light transmissive member is used, it is possible to easily make the observer to recognize 36

44 the entire light transmissive member in an integrated manner. Id. at 5:17-19; see also Figs The trans reflector of Takahashi (deposited or coated aluminum, silver or carbon, or semi-light-blocking body (3)) is a trans reflector as described in the 563 patent and as recited in claim 9, because it both reflects light (e.g., to conceal the rear of the lamp (2) when not illuminated) and transmits light (e.g., to allow light from the lamp light source (7) to be emitted when illuminated). Ex. 1003, West Decl. 66. Further, Takahashi s semi-light blocking body (3) may be a semi-light blocking film... attached to the inner surface of the glass surface (claim 18). Ex. 1008, Takahashi at 3: Motivation to combine Asai with Takahashi It would have been obvious to a POSITA to provide Asai with the trans reflector of Takahashi, because the very principle of operation of Asai (i.e., to illuminate a vehicle lamp lens via a back light and an edge light) depends on the lens both transmitting (from the back light and edge light) and reflecting (from the edge light). Ex. 1006, Asai at 5 ( [T]he light emitting diode 20 is used independently from the light source 2 for the light itself. ); Ex. 1003, West Decl. 74. A POSITA would have recognized that Takahashi s trans reflector was both consistent with and, indeed, additive to that principle of operation. Id. Moreover, Asai s intended purpose is to solve the problem of dark portions of automotive 37

45 lamp lenses, which are not good in visibility. Ex. 1006, Asai at 3: Asai deploys an LED edge light to achieve that purpose. Id. at 3: A POSITA would have recognized that providing Asai with the trans reflector of Takahashi would increase the perceived brightness of light from that LED, thereby furthering Asai s intended purpose. See also Ex. 1003, West Decl. 75. In addition, a POSITA would have recognized the similarities between Asai and Takahashi illustrated in the side-by-side comparison below and would have expected success from the combination due to those similarities. Id. 76. Asai, Fig. 3 (annotated) Takahashi, Fig. 6 (annotated) 3. Chart comparing Asai and Takahashi to claims 9 and 18 Claim 9 9. The assembly of claim 5 further comprising a trans reflector on said panel member Exemplary Disclosure of Prior Art See Ground 2 for analysis of claim 5 in view of Asai. Takahashi: According to this embodiment, the semitransparent plate (1) is formed by vapor deposition of aluminum, silver or carbon on an inner surface of the glass 38

46 through which a portion of the light from said other light source passes. surface, but such materials may be applied by coating, or a semi-light-blocking body (3) such as a semi-light blocking film may be attached to the inner surface of the glass surface as shown in Fig. 5. Ex. 1008, Takahashi at 3: [W]hen the light source (5) and the lamp light source (7) are both turned off, as shown in Fig. 9, the headlamp, the turn signal lamp and the like are obstructed by the semitransparent plate (1) and cannot be seen from the outside. Next, when only the light source (5) is turned on at twilight time or the like, as shown in Fig. 10, only the groove portions diffuse reflected light in accordance with the shape of the groove portions (4), and the lamp light source (7) of the headlamp and the like cannot be seen from the outside. When the lamp light source (7) of the turn signal lamp or the headlamp is turned on, as shown in Fig. 11 or Fig. 12, they function as normal headlamp. In a case of being applied to a tail lamp, when the light source (5) and the lamp light source (7) are both turned off, the inside lamp light source such as a light bulb cannot be seen from the outside, and when only the light source (5) is turned on, only the groove portions (4) reflects and diffuses light. When the lamp light source (7) of a turn signal lamp, a backup lamp or the like is turned on, only the corresponding portion functions as show in Fig. 13 illustrating an enlarged view of a portion of a vehicle tail lamp. Similarly, when only a tail stop lamp is turned on, only the corresponding portion is turned on as shown in Fig. 11. Consequently, according to this invention, even when a light transmissive member is used, it is possible to easily make the observer to recognize the entire light transmissive member in an integrated manner. Id. at 5:1-19; see also 4:8-13, 4: Claim The assembly of claim 11 further comprising a lens or film covering one of said top and Exemplary Disclosure of Prior Art See Ground 2 for analysis of claim 11 in view of Asai. Takahashi: [A] semi-light-blocking body (3) such as a semilight blocking film may be attached to the inner surface of the glass surface as shown in Fig. 5. Ex. 1008, Takahashi at 39

47 bottom surfaces of said panel member. 3: E. Ground 5: Claim 9 would have been obvious over Tokita in view of Makita The combination of the teachings of Tokita with U.S. Patent No. 4,949,226 to Makita (Ex. 1009, Makita ) would render claim 9 obvious to a POSITA. Ground 5 is non-duplicative of Ground 4 with respect to dependent claim 9 for at least the same reasons that Ground 3 and Ground 2 are non-duplicative with respect to independent claim 5. See Section III.C above. Accordingly, Ground 5 warrants separate consideration from Ground The trans reflector of Makita (1990) Makita was filed on June 23, 1989, and issued as a U.S. Patent on August 14, 1990; therefore, Makita qualifies as prior art under 35 U.S.C. 102(a) and (b). Makita discloses a projector-type lighting device of expanded outline appearance for use as a vehicular headlamp or the like. Ex. 1009, Makita, Title. In one embodiment, illustrated in Figures 2, 3, and 5, a vehicle lamp is provided with a filter plate 56 and a control lens 21 (highlighted below in green). Makita teaches that this embodiment may be modified by the provision of a half-silvered mirror film on the front lens 21. Id. at 5: The silvering film of Makita is a trans reflector as described in the 563 patent and as recited in claim 9, because it both reflects and transmits light. Ex. 1003, West Decl

48 Ex. 1009, Makita, Fig. 5 (annotated) 2. Motivation to combine Tokita with Makita It would have been obvious to a POSITA to provide Tokita with the trans reflector of Makita, to further the purpose of Tokita and to achieve the advantages known from Makita. Specifically, Tokita s purpose is to achieve softly brightening an entire surface of [Tokita s] lens without generating an optical invalid portion on a reflection lens. Ex. 1003, West Decl. 79; Ex. 1007, Tokita at 1: Makita teaches adding a silvering film to provide the advantage that it will reflect daytime sunlight, so that the lamp housing 312 will appear thoroughly glowing. See Ex. 1009, Makita at 8: A POSITA would have recognized that adding Makita s half-silvered film to Tokita would be compatible with and additive to Tokita s purpose. In particular, whereas the edge-lighting LED of Tokita (element 6) would avoid creating an optical invalid portion when the backlight (element 3) is illuminated, the half-silvered film of Makita would 41