IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Transcription

1 REQUEST FOR INTER PARTES REVIEW IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re application of Jeffery R. Parker, et al. U.S. Patent No. 6,508,563 Docket No: PR00023 Issued: January 21, 2003 Application No. 10/005,090 Filing Date: December 5, 2001 For: LIGHT EMITTING PANEL ASSEMBLIES FOR USE IN AUTOMOTIVE APPLICATIONS AND THE LIKE REQUEST FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,508,563 UNDER 35 U.S.C , 37 C.F.R. 42 Mail Patent Board US Patent and Trademark Office P.O. Box 1450 Alexandria, VA Pursuant to 35 U.S.C and 37 C.F.R. 42, Petitioners Koito Manufacturing Co., Ltd. and Stanley Electric Co., Ltd. ( Petitioners ) respectfully petition for Inter Partes Review ( Petition or IPR ) of claims 1, 2, 5, 7-9, 11, 18, 22 and 23 ( challenged claims ) of U.S. Patent No. 6,508,563 (Ex. 1001, the 563 patent ), which is currently assigned to Innovative Display Technologies, LLC ( Patent Owner ) according to the US Patent and Trademark Office assignment records. There is a reasonable likelihood that Petitioners will prevail with respect to at least one of the claims challenged in this Petition.

2 TABLE OF CONTENTS I. Mandatory Notices Under 37 C.F.R. 42.8(a)(1)... 1 A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)... 1 B. Related Matters Under 37 C.F.R. 42.8(b)(2)... 1 C. Lead and Back-Up Counsel 37 C.F.R. 42.8(b)(3)... 1 D. Service Information 37 C.F.R (b)(4)... 2 II. Payment of Fees 37 C.F.R III. Requirements For IPR Under 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a)... 2 B. Effective Filing Dates and Prior Art Patents and Printed Publications. 3 C. Identification of Challenge Under 37 C.F.R (b) and Relief Requested... 4 IV. Summary Of The 563 Patent... 5 A. Brief Description... 5 B. Summary of the Prosecution History of the 563 patent... 7 V. Claim Construction... 8 A. exterior surface of said body portion (claims 1, 11 and 22)... 9 B. at least one light source attached to said light input surface (claim 22) C. trans reflector (claim 9) VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 563 PATENT IS UNPATENTABLE A. Ground 1: Claims 1, 2, 11, 18 and 22 Are Anticipated Under 35 U.S.C. 102(b) by Johnson i

3 1. Brief Overview Of Johnson Claims 1, 2, 11, 18 and 22 Are Anticipated by Johnson B. Ground 2: Claims 1, 2, 11 and 22 Are Anticipated Under 35 U.S.C. 102(b) by FR Brief Overview Of FR Claims 1, 2, 11 and 22 Are Anticipated by FR C. Ground 3: Claims 22 and 23 Are Obvious Under 35 U.S.C. 103(a) by Johnson and DE Brief Overview Of DE Claims 22 and 23 Are Obvious over Johnson in view of DE D. Ground 4: Claims 22 and 23 are Obvious Under 35 U.S.C. 103(a) over FR 359 and DE Claims 22 and 23 are Obvious Over FR 359 and DE E. Ground 5: Claim 18 is Obvious under 35 U.S.C. 103(a) by FR 359 in view of Pristash Brief Overview of Pristash Claim 18 is Obvious under 35 U.S.C. 103(a) by FR 359 in view of Pristash F. Ground 6: Claims 1, 2, 11, 18 and 22 are Obvious Under 35 U.S.C. 103(a) by JP 234 in view of JP Brief Overview Of JP 234 and JP Claims 1, 2, 11, 18 and 22 are Obvious by JP 234 in view of JP G. Ground 7: Claims 5 and 7-9 are Anticipated under 35 U.S.C. 102(b) by JP ii

4 1. Additional Description Of JP Claims 5, 7 9 are anticipated by JP H. Ground 8: Claims 5 and 7-9 are Anticipated under 35 U.S.C. 102(b) by JP Brief Description Of JP Claims 5 and 7-9 are anticipated by JP VII. Conclusion iii

5 EXHIBITS Exhibit Description 1001 U.S. Patent No. 6,508, File History of U.S. Patent No. 6,508, U.S. Patent No. 4,947,293 to Johnson et al. ( US 293 or Johnson ) 1004 French Patent No.: to Hitzelberger ( FR 359 ) 1005 Certified Translation of FR Japanese Utility Model JP S U ( JP 234 ) 1007 Certified Translation of JP Japanese Utility Model JP H U ( JP 004 ) 1009 Certified Translation of JP U.S. Patent No. 5,005,108 to Pristash et al. ( US 108 or Pristash ) 1011 German Unexamined Patent Specification No.: DE A 1 to Decker ( DE 094 ) 1012 Certified Translation of DE Japanese Utility Model JP S U ( JP 304 ) 1014 Certified Translation of JP Merriam-Webster Dictionary searching attached : Declaration of Dr. Edward F. Carome in Support of Petitioners Request for Inter Partes Review 1017 JP H U ( JP 602 ) 1018 Certified Translation of JP Power of Attorney iv

6 I. Mandatory Notices Under 37 C.F.R. 42.8(a)(1) A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) Petitioner Koito Manufacturing Co., Ltd.; its subsidiary North American Lighting, Inc.; Petitioner Stanley Electric Co., Ltd.; and its subsidiaries Stanley Electric U.S. Co., Inc., I I Stanley Co., Inc. and Stanley Electric Holding of America, Inc. are the real parties-in-interest. B. Related Matters Under 37 C.F.R. 42.8(b)(2) Pursuant to 37 C.F.R. 42.8(b)(2), Petitioners state that the 563 patent is the subject of several patent infringement lawsuits brought by the assignee, Innovative Display Technologies, LLC ( IDT ), which may affect, or be affected by, a decision in this proceeding. These include Innovative Display Technologies LLC v. Toyota Motor Corporation, et al., C.A. (2:14- cv-200) (E.D. Texas); Innovative Display Technologies LLC v. Nissan Motor Co., Ltd et al. C.A. (2:14- cv-202) (E.D. Texas); and Innovative Display Technologies, LLC v. American Honda Motor Co., Inc. et al. (2:14-cv-222) (E. D. Texas), filed March 10, 2014, March 10, 2014 and March 13, 2014, respectively. C. Lead and Back-Up Counsel 37 C.F.R. 42.8(b)(3) Petitioners provide the following designation of counsel. LEAD COUNSEL William H. Mandir (Reg. No 32,156) (wmandir@sughrue.com) 1 BACK-UP COUNSEL Steven M. Gruskin (Reg. No 36,818) (sgruskin@sughrue.com)

7 Sughrue Mion PLLC 2100 Pennsylvania Ave, NW Washington, DC T: , F: Sughrue Mion PLLC 2100 Pennsylvania Ave, NW Washington, DC T: , F: Pursuant to 37 C.F.R (b), a Power of Attorney from each Petitioner accompanies this Petition. D. Service Information 37 C.F.R (b)(4) Service information is provided in the designation of lead and back-up counsel, above. Service of any documents via hand-delivery may be made at the postal mailing addresses listed above. Petitioners also consent to electronic service by at koito@sughrue.com. II. Payment of Fees 37 C.F.R Petitioners authorize the Patent and Trademark Office to charge Deposit Account No for the fees set in 37 C.F.R (a) for this Petition for Inter Partes Review, and further authorize payment for any additional fees to be charged to this Deposit Account. III. Requirements For IPR Under 37 C.F.R A. Grounds for Standing Under 37 C.F.R (a) Petitioners certify that the 563 patent (Ex. 1001) is available for Inter Partes Review and that Petitioners are not barred or estopped from requesting an Inter Partes Review challenging the patent claims on the grounds identified in this Petition. 2

8 B. Effective Filing Dates and Prior Art Patents and Printed Publications The claims of the 563 patent (Ex. 1001) have an effective filing date no earlier than January 16, 1996, the filing date of the parent U.S. Application No. 08/585,062. Petitioners rely upon the following patents and printed publications, each of which is prior art to the 563 patent under 35 U.S.C. 102(b): Ex U.S. Patent No. 4,947,293 to Johnson et al. ( US 293 or Johnson ), published on August 7, 1990; Ex French Patent No.: 1,474.,359 to Hitzelberger ( FR 359 ), published on March 24, 1967 (Ex certified translation of FR 359); Ex JP S U to Takahashi ( JP 234 or Takahashi ), published on March 21, 1984 (Ex certified translation of JP 234); Ex JP H U to Shinkai ( JP 004 or Shinkai ), published on June 16, 1989 (Ex certified translation of JP 004); Ex U.S. Patent No. 5,005,108 to Pristash et al. ( US 108 or Pristash ), published on April 2, 1991; and Ex German Unexamined Patent Specification No.: DE A 1 to Decker ( DE 094 ), published on March 4, 1993 (Ex certified translation of DE 094). 3

9 Ex JP S U to Yamada ( JP '304 or Yamada ), published on October 23, 1987 and therefore is available as prior art under 35 U.S.C. 102(b) (Ex certified translation of JP 304). C. Identification of Challenge Under 37 C.F.R (b) and Relief Requested Petitioners request Inter Partes Review of claims 1, 2, 5, 7-9, 11, 18, 22 and 23 of the 563 patent (Ex. 1001) on the grounds set forth in the table and claim charts below and further request that each of the claims be found unpatentable. Of the requested claims, claims 1, 5, 11 and 22 are independent claims. An explanation of how claims 1, 2, 5, 7-9, 11, 18, 22 and 23 are unpatentable under the statutory grounds identified below, including an identification of where each element is found in the prior art references and the relevance of each of the prior art references, is provided in the form of detailed claim charts. Additional explanation and support for each ground of rejection is set forth in the Declaration of Dr. Edward F. Carome. Ex Verifications of the translations are also provided for the foreign language documents (Ex. 1005, Ex. 1007, Ex. 1009, and Ex. 1012). Ground Claim(s) Basis for Rejection Ground 1 1, 2, 11,18 and 22 Anticipated under 35 U.S.C. 102(b) by Johnson (Ex. 1003) 4

10 Ground 2 1, 2, 11 and 22 Anticipated under 35 U.S.C. 102(b) by FR 359 (Ex. 1004) Ground 3 22 and 23 Obvious under 35 U.S.C. 103(a) by Johnson and DE 094 (Ex and Ex. 1011) Ground 4 22 and 23 Obvious under 35 U.S.C. 103(a) by FR 359 in view of DE 094 (Ex and Ex. 1011) Ground 5 18 Obvious under 35 U.S.C. 103(a) by FR 359 in view of Pristash (Ex and Ex. 1010) Ground 6 1, 2, 11, 18 and 22 Obvious under 35 U.S.C. 103(a) by JP 234 and JP 004 (Ex and Ex. 1008) Ground 7 5 and 7-9 Anticipated under 35 U.S.C. 102(b) by JP 234 (Ex. 1006) Ground 8 5 and 7-9 Anticipated under 35 U.S.C. 102(b) by JP '304 (Ex. 1013) IV. Summary Of The 563 Patent A. Brief Description The 563 patent is directed to light emitting panel assemblies having a transparent light emitting panel member made of a resiliently deformable elastomeric material that absorbs impact without breakage for use in automotive lighting applications. See Ex at Abstract. As shown in FIGS. 3 and 4 5

11 (reproduced below), light emitting panel assemblies 24 mounted on body panels 25 of a vehicle 23 include light emitting panel members 29, 29 on each side of the vehicle 23. See Ex at 8: 30 38; FIGs. 3, 4. The 563 patent describes that light emitting 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 may cover the panel members as shown at the right-hand side of FIG. 4. Ex at 9: 5 9. Also, the light emitting panel members 29 are shaped to fit the particular application and may be made of a transparent resiliently deformed material such as a thermoplastic elastomer or silicone rubber that will flex upon impact during minor traffic accidents without breakage. Ex at 8: Specifically, the above figures of the 563 patent show light emitting panel members 29 provided as vehicle taillights at an exterior surface of the vehicle. Ex at 8: A light source 9 inputs light into a light emitting panel member 29 at one end/edge of the light emitting panel member 29. See Ex at 9: The light is guided through the panel member 29 and exits at a front surface 6

12 providing a taillight. See Ex at FIG. 3 and 4. Independent claims 1, 11 and 22 are directed to this configuration. As shown in FIGs. 3 and 4 above, an additional array of light sources 31 is provided directly behind the panel members 29 and the array is positioned to cause more intense light to shine through the light emitting panel member 29. See Ex at 9: A trans reflector 32 is provided on an inward surface of the light emitting panel member 29 (see left-hand side of FIG. 4 above). Ex at FIG..4; 9: By providing the light source 9 at an end/edge of the panel member 29, the light source 9 does not interfere with or obstruct the visibility of the additional array of light sources 31 provided behind the panel assembly 29. See Ex at 9: Independent claim 5 is directed to this configuration. B. Summary of the Prosecution History of the 563 patent On March 19, 2002, the USPTO mailed an Office Action in which the Examiner rejected claims 1-5, 14 and under 35 U.S.C. 102 (e) as being anticipated by Li et al. (US Patent 5, 434, 754) and also rejected claims 6-10 and 13 under 35 U.S.C. 103(a) as being unpatentable over Li in view of Oficial Notice. See Ex at Pages The Examiner determined that claims 11, 12 and include allowable subject matter. In a Response dated July 24, 2002, Patentee canceled claims 1-27 and added new claims See Ex at Pages Specifically, Patentee rewrote 7

13 allowable subject matter recited in claim 11 ( wherein said panel member wraps around a corner of said vehicle to provide illumination around said corner ) and claim 16 ( further comprising 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 ) in independent form, and added two other independent claims reciting similar features to claim 11. U.S. Patent 6,508,563 subsequently issued on January 21, V. Claim Construction In an Inter Partes Review of an expired patent, the claims are construed using the Phillips standard, as in Federal District Court. The '563 patent expires on January 16, 2016, twenty years after the earliest parent application. Thus, if Inter Partes Review is instiituted, a final written decision would occur after the expiration of the '563 patent. The claims of the '563 patent should be construed under the Phillips standard in which claim terms generally are given their ordinary and customary meaning, as understood by a person of ordinary skill in the art, 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 PTAB decision Panel Claw Inc. v. Sunpower Corp. (IPR , Paper No. 7, p.7, June 30, 2014). 8

14 Petitioners submit that a person of ordinary skill in the art of automotive light emitting panel technologies at the time of the alleged invention would have had either a Bachelor s degree in Mechanical/Electrical engineering or Applied Physics or equivalent coursework and at least two years of experience in the lighting field. Ex at para. #26. Petitioners provide constructions for the following terms: A. exterior surface of said body portion (claims 1, 11 and 22) Claims 1, 11 and 22 of the 563 patent require said panel member being located on an exterior surface of said body portion. Referring to FIG. 4, the 563 patent teaches that the 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 may cover the panel members as shown at the right hand side of FIG. 4. Ex at 9: 5 9. see also FIG. 4. As shown in FIG. 4 above, the panel member 29 on the left-hand side forms the exterior surface of the body portion, and the panel member 29 on the right-hand side is flush with the exterior surface. In both cases, the panel members 29 are located on an exterior surface of said body portion as required by the claims. Thus, an exterior surface of said body portion means the outer-most surface of a body portion of a vehicle, or a surface that is flush with the body portion of the vehicle. 9

15 B. at least one light source attached to said light input surface (claim 22) Claim 22 recites 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. The dictionary defines attached as connected or joined. See Ex Accordingly, attached is broadly defined and does not necessarily require direct contact. Referring to FIGs. 3 and 4 of the 563 patent, the 563 patent discloses an embodiment in which the light sources 9 are mechanically held in light transition regions 10, which are located between light sources 9 and the panel member 29. Ex at 8: Thus, the light sources 9 are not in direct contact with the panel member 29, but are still attached thereto. Accordingly, at least one light source attached to said light input surface means that a light source and a panel member are connected together in a direct or indirect manner such that light from the light source 9 enters into the panel member 29. C. trans reflector (claim 9) 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. 10

16 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 Ex at 9: Thus,a trans reflector is a reflector that allows the transmission of light. VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 563 PATENT IS UNPATENTABLE A. Ground 1: Claims 1, 2, 11, 18 and 22 Are Anticipated Under 35 U.S.C. 102(b) by Johnson 1. Brief Overview Of Johnson As shown in FIGS. 1 and 8 below, Johnson discloses a trailer or semi-trailer cargo container body clearance lighting system including a light source enclosure 26 with a light source inside, and a pair of light guides 13 and 14 connected thereto. The light guides 13 and 14 are recessed into a conventional elongated indentation within a container body 11 of the vehicle. See Ex 1003 at 2: As shown in FIG. 8, the light guides 13 and 14 are flexible to facilitate corner bends 29 and 30 along corners of the container body 11. See Ex 1003 at 3: The lighting system of Johnson is aimed at developing flat light guides 13 and 14 in accordance with optic fiber principles and optimizing light transmission in a longitudinal direction (i.e. along a length of the light guides 13 and 14) as well as light transmission in a lateral direction (i.e. along a thickness of the light guides 13 and 14). See Ex 1003 at 1: As shown in FIG. 3 below, the flat light guides 11

17 13 and 14 are made from a monolithic core 13a which is encased in a cladding 13b of a translucent material having an index of refraction differing from that of the monolithic core. See Ex 1003 at 2: Referring to FIGs. 3 and 6 below, within the light source enclosure 26, Johnson discloses that light flux (shown with arrows) generated from a light source 28 is reflected by a double concave reflector 27 and focused to enter through an inward end of the light guides 13 and 14. See Ex 1003 at 3: The light flux is transmitted through the light guides 13 and 14 in the longitudinal direction (FIG. 6) and emitted out of the light guides 13 and 14 in the lateral direction as illustrated by arrows 23 in FIG

18 2. Claims 1, 2, 11, 18 and 22 Are Anticipated by Johnson As detailed in the discussion and claim charts below and the Declaration of Dr. Carome (Ex. 1016), Johnson discloses all the limitations of claims 1, 2, 11, 18 and 22. As in the 563 patent, Johnson discloses a light emitting system mounted on a body portion 11 of a vehicle 10 including at least one light guide 13 and 14 corresponding to the recited solid light emitting panel member (claims 1, 11 and 22). Referring to the above annotated FIG. 3 of Johnson, the light guides 13 and 14 include at least two flat surfaces, a first (bottom) surface facing the container body 11 and a second (top) surface opposing the first surface through which the light flux 23 exits the light guides 13 and 14. These first and second surfaces of the light guides 13 and 14 correspond to the recited top and bottom surfaces (claims 1, 11 and 22). As shown above, a height of the light guides 13 and 14 (extending in a direction perpendicular from a light flux 23 emitting direction) 13

19 corresponds to the recited cross sectional width, and is greater than a thickness (extending in a direction parallel with the light flux emitting direction). Referring to FIG. 6, each of the light guides 13 and 14 includes at least one light input surface provided at an edge of the light guides for receiving the light flux shown with arrows from the light source 28. The light flux then is directed through the light guides 13 and 14 from the edge of light guides 13 and 14 for emission of the light flux from one of first and second surfaces of the light guides 13 and 14. The light source 28 and the edges of light guides 13 and 14 corresponding to the light input surface are attached (i.e., connected) to each other via the enclosure 26 (claim 22). Referring to FIGS. 1 and 8, light guides 13 and 14 are located on an exterior surface of the container body 11 and include corner bends 29 and 30 to wrap around front corners of the container body 11, thereby conforming to a curved profile of the container body 11 of the vehicle 10 to provide illumination around the front corners (claims 1, 2 and 11). The flat light guides 13 and 14 are made from a monolithic core 13a which corresponds to the solid light emitting panel member and a cladding 13b encasing the monolithic core corresponding to the recited film covering the core 13a (claim 18). CLAIM 1 14 JOHNSON

20 [1(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [1(b)] at least one solid light emitting panel member having top and bottom surfaces and A trailer or semi-trailer cargo container body clearance lighting system including a core light conducting material in the form of an elongated light-conducting strip to produce a light guide. Ex at Abstract The invention relates generally to apparatus for continuous strip illumination along the top edge of the perimeter of the vehicle body, and, more specifically, to a continuously illuminated clearance light strip arrangement along that perimeter of the vehicle body. Ex at 1: 7 11 (emphasis added). In FIG. 3 the light guide 13 will be seen to be configured as a substantially flat core member 13a with cladding 13b to produce light flux propagation along the length of light guide 13 as well as lateral emission illustrated by arrows 23. Ex at 2:

21 [1(c)] a greater cross sectional width than thickness, [1(d)] said panel assembly having at least one light input surface for receiving light from at least one light source and [1(e)] 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, [1(f)] said panel member being located on an exterior surface of said body portion See annotated FIG. 3 in [1(b)]. A double concave reflector 27 has a first concave reflective surface 27a for concentrating (focusing) light flux from light source 28 onto the inward end of light guide 13. Concave surface 27b similarly reflects light form source 28 onto the corresponding end of light guide 14. Ex at 3: (emphasis added); see also FIG. 6. See [1(d)] (end of light guide 13) is edge Light transmission from an energizing source must travel longitudinally within the strips but also must emit, more or less uniformly, laterally. The use of fiber optic structures to convey light longitudinally and at the same time provide the needed lateral emission is known in the prior art. Ex at 1: In FIG. 3 the light guide 13 will be seen to be configured as a substantially flat core member 13a with cladding 13b to produce light flux propagation along the length of light guide 13 as well as lateral emission illustrated by arrows 23. Ex at 2: (emphasis added). See also the figure in [1(b)] (light is emitted from top surface). Light guides 13 and 14 are shown recessed into the conventional elongated indentation within the container body adjacent to the roof thereof and are secured by a plurality of clips, typically 17 and 18. Ex at 2: See also FIG. 1 in [1(a)]. The light guide on this side of the body 11 is terminated in a cap 16 which is secured within the indentation (recess) 11a by a screw 20 16

22 [1(g)] with said panel member wrapped around a corner of said vehicle to provide illumination around said corner. CLAIM 2 [2(a)] The assembly of claim 1 [2(b)] wherein said panel member is located at least at one of a rear corner and a front corner of said vehicle. CLAIM 11 [11(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [11(b)] at least one solid light emitting panel member having top and bottom surfaces and [11(c)] a greater cross sectional width than thickness, [11(d)] said panel assembly having at least one light input surface for receiving light from at least one light source and through mounting hole 16a and into threaded opening 21. Ex at 2: The light guides employed in the combination described afford simple installation and are commercially available. The flexibility of this form of light guide facilitates corner bends at 29 and 30 (FIG. 8), resulting in ease of installation. Ex at 3: See [1(a)] [1(g)] JOHNSON The combination according to claim 1 in which said illuminating means is mounted along a forward end of said vehicle body and two of said light guides are connected therefrom and formed to bend around forward corners of said vehicle and thence formed around sides of said vehicle body to provide said clearance lighting. Ex at claim 3 (emphasis added). See [1(a)] See [1(b)] See [1(c)] See [1(d)] JOHNSON 17

23 [11(e)] 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(f)] said panel member being located on an exterior surface of said body portion [11(g)] with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile See [1(e)] See [1(f)] CLAIM 18 [18(a)] The assembly of claim 11 [18(b)] further comprising a lens or film covering one of said top The light guides employed in the combination described afford simple installation and are commercially available. The flexibility of this form of light guide facilitates corner bends at 29 and 30 (FIG. 8), resulting in ease of installation. Ex at 3: The combination according to claim 1 in which said illuminating means is mounted along a forward end of said vehicle body and two of said light guides are connected therefrom and formed to bend around forward corners of said vehicle and thence formed around sides of said vehicle body to provide said clearance lighting. Ex at claim 3. See [11(a)] [11(g)] 18 JOHNSON In FIG. 3 the light guide 13 will be seen to be configured as a substantially flat core member

24 and bottom surfaces of said panel member. CLAIM 22 [22(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [22(b)] at least one solid light emitting panel member having top and bottom surfaces and [22(c)] a greater cross sectional width than thickness, [22(d)] 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 [22(e)] 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(f)] said panel member being located on an exterior surface of said body portion [22(g)] with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved 13a with cladding 13b to produce light flux propagation along the length of light guide 13 as well as lateral emission illustrated by arrows 23. Ex at 2: (emphasis added); see also FIG. 3. See [11(a)] See [11(b)] See [11(c)] 19 JOHNSON A double concave reflector 27 has a first concave reflective surface 27a for concentrating (focusing) light flux from light source 28 onto the inward end of light guide 13. Concave surface 27b similarly reflects light form source 28 onto the corresponding end of light guide 14. Ex at 3: (emphasis added) ; see also FIG. 6. See [11(e)] See [11(f)] See [11(g)]

25 profile. B. Ground 2: Claims 1, 2, 11 and 22 Are Anticipated Under 35 U.S.C. 102(b) by FR 359 Claims 1, 2, 11 and 22 are unpatentable under 35 U.S.C. 102(b) as being anticipated by FR 359. Ground 2 is non-cumulative to Ground 1 at least because FR 359 discloses an illumination device provided on an automobile (i.e., a bumper of an automobile as shown in FIG. 4), whereas Johnson discloses a lighting system on a truck. To the extent that claims 1, 2, 11 and 22 require a light emitting panel assembly mounted on an automobile, FR 359 discloses exactly those features. See Ex at page 3, left col., ll Moreover, whereas Johnson discloses a light source 28 indirectly attached to an edge of the light guides 13 and 14, FR 359 discloses an incandescent lamp 11 directly attached to a light input surface of a body 10 of the illumination device. See Ex at page 2, right col., ll as discussed below in more detail. This is yet another reason why Ground 2 is non-cumulative to Ground Brief Overview Of FR 359 As shown in FIG. 1 below, FR 359 pertains to an exterior lamp as an illumination device for motor vehicles. The illumination device of FR 359 includes an incandescent lamp 11 as a light source, an illumination body 10 20

26 translucent to light, and a means (i.e., a molding 15 as shown in FIG. 3 below) for attaching the illumination body 10 and the incandescent lamp 11 to the exterior body of a motor vehicle. See Ex at page 1, left col., ll Similar to the 563 patent, FR 359 discloses that conventional illumination devices for vehicles are shock sensitive even in the process of attachment, and thus the illumination devices must always conform to the shape of the vehicle body at the considered location. Ex at page 1, left col., ll FR 359 discloses an illumination device to obviate these disadvantages. Light from the light source (i.e. the incandescent lamp 11) propagates through the full extent of the body, which is made from flexible synthetic material and includes curved parts or angles. Ex at 1: 31 2: 4. FR 359 also explains that the illumination device may be used advantageously for indicating or warning. Ex at page 1, right col., ll Claims 1, 2, 11 and 22 Are Anticipated by FR 359 As indicated in the discussion and claim charts below and the Declaration of Dr. Carome (Ex. 1016), FR 359 discloses all limitations of claims 1, 2, 11 and

27 As in the 563 patent, FR 359 discloses an illumination device for motor vehicles including an incandescent lamp 11 as a light source and a body 10 of the illumination device. Referring to Figs. 3 and 4, FR 359 discloses different embodiments of bodies 16 and 21 of the illumination device, each of the bodies 16 and 21 includes at least two surfaces, a first flat surface facing decorative molding 15 or bumper 18, and a second surface opposing the first surface through which light from the incandescent lamp 11 exits bodies 16 and 21. These first and second surfaces correspond to the claimed top and bottom surfaces (claims 1, 11 and 22). As shown in Figs. 1, 3 and 4, FR 359 teaches providing the body of the illumination device with a longitudinal extension substantially greater than its transverse extension or depth. Ex at page 1, right col., ll FR 359 discloses that the light source (i.e. incandescent lamp 11) may be mounted in any manner; however, FIG. 1 shows a particular embodiment in which the body 10 includes a recess 12 at one end where light source 11 is inserted into the recess extending in the longitudinal direction. Ex at page 3, left col., ll Thus, the recess 12 of body 10 includes at least one light input surface provided at an edge thereof for receiving light from the incandescent lamp 11. Light is then directed through body 10 longitudinally from the edge and emitted therefrom. 22

28 Further, as shown in annotated FIG. 1 reproduced below, light source 11 contacts at least one light input surface of the body 10, and the light source 11 is thus attached to the light input surface of the body 10. In the embodiments shown in Figs. 3 and 4, the panel is in the shape of a strip having a width that is greater than its thickness. See annotated FIG. 3 below. FIG. 4 of FR 359 (reproduced in the tables below) shows that outer edges of a bumper 18, typically provided on a front or rear of a vehicle, are embraced by the strip-shaped body 21 of the illumination device. Ex at page 3, left col., ll Thus, the body 21 is located on an exterior surface of the vehicle. Further, FR 359 describes that the illumination device may be used on a vehicle as 23

29 an indicator or warning light and may be mounted advantageously, turning around the four corners of the motor vehicle. Ex at page 2, right col., ll CLAIM 1 FR 359 [1(a)] A light emitting panel The invention relates to an illumination assembly mounted on a body device, in particular an exterior lamp for motor portion of a vehicle, said panel vehicles, consisting of a light source in the assembly comprising form of at least one incandescent lamp or similar apparatus, an illumination body translucent to light, and means for attaching the whole illumination device, e.g., to the exterior body of a motor vehicle. Ex at page 1, left col., ll. 1 7 (emphasis added) ; see also FIG. 1. [1(b)] at least one solid light emitting panel member having top and bottom surfaces and A body 16 of an illumination device is fitted or inserted into this mortise, acquiring the shape of a strip in the assembly, and attaining substantially a cross-sectional lens shape. Ex at page 3, left col., ll According to Fig. 4, the bumper 18 of an automobile is attached in a per-se known and typical manner, the details of which are immaterial here, on a support 19 of the vehicle. On its exterior, the bumper 18 has a substantially T-shaped core 20, whose two outer edges are embraced by the strip-shaped body 21 of the illumination device, at its exterior inwardly bent ribs 22. Ex at page 3, left col., ll

30 [1(c)] a greater cross sectional width than thickness, According to another embodiment of the invention, the body of the illumination device is provided substantially in the shape of a strip. Ex at page 1, right col., ll [1(d)] said panel assembly having at least one light input surface for receiving light from at least one light source and [1(e)] 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, The incandescent bulb 11 is inserted into a recess 12 situated at the end of body 10 of the illumination device, and extending in its longitudinal axis. This may involve an incandescent lamp of a conventional design, which may be connected in a novel way to the vehicle s lighting system. Ex at page 3, left col., ll The incandescent bulb 11 is engaged in a recess 12 which is at the end of the body 10 of the lighting device and which extends in its longitudinal axis. Ex at page 3, left col., ll In order to solve this problem with the illumination devices mentioned in the preamble, the invention essentially consists in the fact that the body of the illumination device is made of a flexible synthetic material, which receives, at least at one location, an illumination source, whose light illuminates 25

31 [1(f)] said panel member being located on an exterior surface of said body portion [1(g)] with said panel member wrapped around a corner of said vehicle to provide illumination around said corner. the full extent of the body. Ex at page 1, left col., The invention relates to an illumination device, in particular an exterior lamp for motor vehicles, consisting of a light source in the form of at least one incandescent lamp or similar apparatus, an illumination body translucent to light, and means for attaching the whole illumination device, e.g., to the exterior body of a motor vehicle. Ex at page 1, left col., 1, ll. 1 7 (emphasis added) Besides, it is independent of the exterior profile of the section supporting it, i.e., the body of the illumination device may be adapted to the different shapes of this structural component. Ex at page 1, left col., ll (emphasis added) According to Fig. 4, the bumper 18 of an automobile is attached in a per-se known and typical manner, the details of which are immaterial here, on a support 19 of the vehicle. On its exterior, the bumper 18 has a substantially T-shaped core 20, whose two outer edges are embraced by the strip-shaped body 21 of the illumination device, at its exterior inwardly bent ribs 22. Ex at page 3, left col., ll Moreover, it has the advantage that the light emanating from an illumination source propagates in the body of the illumination device, and also around curved parts or angles, so to speak. Ex at page 1, right col., ll.1 5. It may be used on a motor vehicle, e.g., as an indicator or warning light, in which case, it may be mounted advantageously, turning around the four corners of the motor vehicle. 26

32 Ex at page 2, right col., ll CLAIM 2 FR 359 [2(a)] The assembly of claim 1 [2(b)] wherein said panel member is located at least at one of a rear corner and a front corner of said vehicle. See [1(a)] [1(g)] Moreover, it has the advantage that the light emanating from an illumination source propagates in the body of the illumination device, and also around curved parts or angles, so to speak. Ex at page 1, right col., ll It may be used on a motor vehicle, e.g., as an indicator or warning light, in which case, it may be mounted advantageously, turning around the four corners of the motor vehicle. Ex at page 2, right col., ll CLAIM 11 FR 359 [11(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [11(b)] at least one solid light emitting panel member having top and bottom surfaces and [11(c)] a greater cross sectional width than thickness, [11(d)] said panel assembly having at least one light input surface for receiving light from at least one light source and [11(e)] 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, See [1(a)] See [1(b)] See [1(c)] See [1(d)] See [1(e)] 27

33 [11(f)] said panel member being located on an exterior surface of said body portion [11(g)] with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile See [1(f)] Moreover, it has the advantage that the light emanating from an illumination source propagates in the body of the illumination device, and also around curved parts or angles, so to speak. Ex at page 1, right col., ll It may be used on a motor vehicle, e.g., as an indicator or warning light, in which case, it may be mounted advantageously, turning around the four corners of the motor vehicle. Ex at page 2, right col., ll CLAIM 22 FR 359 [22(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [22(b)] at least one solid light emitting panel member having top and bottom surfaces and [22(c)] a greater cross sectional width than thickness, [22(d)] 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 See [11(a)] See [11(b)] See [11(c)] The incandescent bulb (11) is engaged in a recess (12) which is at the end of the body (10) of the lighting device and which extends in its longitudinal axis. Ex at page 3, left col., ll

34 [22(e)] 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(f)] said panel member being located on an exterior surface of said body portion [22(g)] with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile. See [11(e)] See [11(f)] See [11(g)] C. Ground 3: Claims 22 and 23 Are Obvious Under 35 U.S.C. 103(a) by Johnson and DE 094 Claims 22 and 23 are unpatentable under 35 U.S.C. 103(a) as being obvious by Johnson in view of DE 094. Ground 3 is non-cumulative to Grounds 1 and 2 at least because it addresses a different claim (i.e. claim 23) from the claims discussed in Grounds 1 and 2. DE 094 discloses that said light source is connected to a printed circuit board as required in dependent claim 23. Further, as for claim 22, in comparison with Grounds 1 and 2, DE 094 expressly discloses 29

35 the advantageous effects of mechanically and directly connecting a surface of the light source to a surface of the panel members, as discussed below. 1. Brief Overview Of DE 094 As with Johnson, DE 094 pertains to a motor vehicle signal lamp (e.g., tail light and/or brake light and [sic] and/ or blinker and/or rear backing up light ) having a housing and/or a fastening means for attaching the signal lamp to a motor vehicle body. See Ex page 4, left col., ll DE 094 teaches at least one transparent end plate and a number of light-emitting diodes (LED) as light sources. Ex at page 2, left col., ll As shown in FIG. 3 (reproduced below), in order to manufacture a signal lamp that is simple and economical, and has a high luminosity and a high signal and warning effect, DE 094 teaches a signal lamp in which a light emitting surface of an LED is attached to a light guide L via a light coupling surface LK for efficient utilization of the light from the light source (LED). See Ex page 5, left col., ll DE 095 discloses that the LEDs are arranged in rows and attached on a common printed circuit board LP as shown in FIG. 2 (reproduced below). See Ex. 30

36 1011 page 5, left col., ll By arranging the LEDs as described, the signal lamp may be especially simple and economical to produce. Ex at page 3, right col., ll Claims 22 and 23 Are Obvious over Johnson in view of DE 094 As indicated in the discussion and claim charts below and the Declaration of Dr. Carome (Ex. 1016), the combination of Johnson and DE 094 discloses all limitations of claims 22 and 23. For example, Johnson discloses the light guides 13 and 14 corresponding to the recited solid light emitting panel member and a light source 28 corresponding to the at least one light source provided inside a light source enclosure 26. Further, the light guides 13 and 14 are located on an exterior surface of the container body 11 where the light guides 13 and 14 include curved corner bends 29 and 30 to wrap around front corners of the container body 11 thereby conforming to a curved profile of the container body 11 of the vehicle 10 to provide illumination around the front corners. However, as shown in FIG. 6 (reproduced below), Johnson utilizes the light source 28 in combination with a double concave reflector 27 in order to focus the light flux shown with the arrows 31

37 to enter the light guides 13 and 14. To the extent that Johnson is not considered to disclose at least one light source attached to said light input surface [of said panel assembly], as recited in claim 22, DE 094 provides this feature. As shown in FIG. 3 of DE 094, DE 094 discloses a signal lamp where a light emitting surface of an LED is mechanically and directly attached to a light guide L via a light coupling surface LK for efficient utilization of the light from the light source (LED). See Ex at page 5, left col., ll DE 094 also discloses a plurality of LEDs to provide light to the light emitting panels. See Ex at FIGS. 1 and 2. According to DE 094, a signal lamp for motor vehicles is simple and economical, has a high luminosity and a high signal-and warning effect, and ensures an even illumination at a low current consumption, and is developed in an optimally flat and space-saving fashion. See Ex page 2, left col., ll Further, it was well known to persons of ordinary skill at the time of the invention that LED light sources operate at a substantially lower temperature than incandescent and other light sources (e.g. halogen lamps), and have a substantially longer lifetime Ex at para. #57. See for example JP 602, which discloses using LEDs, which produce less heat, to address the large heating 32

38 value of an incandescent bulb or the like. Ex at paras. [0003] & [0010]. Thus, it would have been obvious to modify Johnson to replace the reflector with multiple LEDs directly attached at the input surface of each light guide 13 and 14 by a light coupling surface, as in DE '094. CLAIM 22 JOHNSON + DE 094 [22(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [22(b)] at least one solid light emitting panel member having top and bottom surfaces and [22(c)] a greater cross sectional width than thickness, [22(d)] 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 [22(e)] 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(f)] said panel member being located on an exterior surface of said body portion with said panel member See [11(a)] of Ground 1 See [11(b)] of Ground 1 See [11(c)] of Ground 1 DE 094: For an optimal utilization of the light emitted by the light-emitting diode (LED), the form of the light coupling surface (LK) of the light guide element (L) is adapted to the form of the light emitting surface and the light radiating characteristic of the light-emitting diode (LED). Ex at page 5, left col., ll see also FIG. 3. See [11(e)] of Ground 1 See [11(f)] of Ground 1 33

39 [22(g)] conforming to a curved profile of said vehicle to provide illumination along said curved profile. See [11(g)] of Ground 1 CLAIM 23 JOHNSON + DE 094 [23(a)] The assembly of claim 22 [23(b)] wherein said light source is connected to a printed circuit board. See [22(a) 22(g)] DE 094: The light emitting diodes (LED) are arranged in rows and attached on a common printed circuit board (LP) with electrical contact. Ex at page 5, left col., ll (emphasis added). see also FIG. 2. D. Ground 4: Claims 22 and 23 are Obvious Under 35 U.S.C. 103(a) over FR 359 and DE 094 Claims 22 and 23 are unpatentable under 35 U.S.C. 103(a) as being obvious by FR 359 in view of DE 094. Ground 4 is non-cumulative to Grounds 1 and 2 at least because it addresses a different claim (i.e., claim 23). Further, Ground 4 is non-cumulative to Ground 3 for the same reasons Ground 2 is non-cumulative to Ground Claims 22 and 23 are Obvious Over FR 359 and DE 094 As indicated in the discussion and claim charts below and the Declaration of Dr. Carome (Ex. 1016), the combination of FR 359 and DE 094 discloses all the limitations of claims 22 and 23. To the extent that FR 359 is considered not to expressly disclose direct attachment of the light input surface and the light source, DE 094 expressly discloses this claimed feature. 34

40 As shown in FIG. 3 of DE 094, DE 094 discloses a signal lamp where a light emitting surface of an LED is mechanically and directly attached to a light guide L via a light coupling surface LK for efficient utilization of the light from the light source (LED). See Ex at page 5, left col., ll DE 094 also discloses a plurality of LEDs to provide light to the light emitting panels. See Ex at FIGS. 1 and 2. Further, it was well known to persons of ordinary skill at the time of the invention that LED light sources operate at a substantially lower temperature than incandescent and other light sources (e.g., halogen lamps), and have a substantially longer lifetime Ex at para. #61. See for example JP 602, disclosing the use of LEDs, which produce less heat, to address the large heating value of an incandescent bulb or the like. Ex at paras. [0003] & [0010]. Therefore, it would have been obvious to modify FR 359 to replace the incandescent lamp 11 with multiple LEDs directly attached at the input surface of the body 10/16/21 by a light coupling surface, as in DE '094.. CLAIM 22 FR DE 094 [22(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [22(b)] at least one solid light emitting panel member having top and bottom surfaces and 35 See [11(a)] of Ground 2 See [11(b)] of Ground 2 [22(c)] a greater cross sectional width than See [11(c)] of Ground 2

41 thickness, [22(d)] 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 [22(e)] 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(f)] said panel member being located on an exterior surface of said body portion with said panel member [22(g)] conforming to a curved profile of said vehicle to provide illumination along said curved profile. CLAIM 23 See [22(d)] of Ground 3 See [11(e)] of Ground 2 See [11(f)] of Ground 2 See [11(g)] of Ground 2 [23(a)] The assembly of claim 22 See [22(a) 22(g)] of Ground 4 [23(b)] wherein said light source is connected to a printed circuit board. See [23(b)] of Ground 3 E. Ground 5: Claim 18 is Obvious under 35 U.S.C. 103(a) by FR 359 in view of Pristash Claim 18 is unpatentable under 35 U.S.C. 103(a) as being obvious by FR 359 in view of Pristash. Ground 5 is non-cumulative to Ground 1 at least because Pristash specifically discloses a film on a panel member, whereas Johnson discloses a light guide 13 including a core member 13a and a cladding 13b. To the extent that cladding 13b of Johnson is not considered a film or lens as required by claim 18, Pristash provides this feature. 36

42 1. Brief Overview of Pristash The first named inventor of the 563 patent, Jeffery R. Parker, is the second named inventor of Pristash. It is not surprising that many of the concepts in the 563 patent were previously disclosed by Pristash. For example, Pristash describes a thin panel illuminator including a solid transparent panel member for conducting light and an extractor means (e.g., coating, lens or film) for causing light conducted by the panel member to be emitted along the length thereof. See Ex at 1: The panel member directs light in a direction determined by its boundaries, whereas the extractor means causes the light to be emitted from the wave guide. See Ex at 6: 64 7:8. These are the same features described in the 563 patent. See Ex at FIG. 4 (disclosing a lens or film covering a panel member). Referring to FIG. 7 (reproduced above), Pristash discloses a light emitting panel 50 including a panel prismatic surface 52 (i.e., light transmitting panel member) and a prismatic film 60 (i.e., lens or film) that covers the panel prismatic surface 52 and is attached to an upper surface of the panel prismatic surface 52 by 37

43 epoxy 61. See Ex 1010 at 5: The prismatic film 60 is used to shift the angular emission of light toward a particular application. See Ex 1010 at 5: Claim 18 is Obvious under 35 U.S.C. 103(a) by FR 359 in view of Pristash As shown in the charts and discussion below, claim 18 of the 563 patent is obvious under 35 U.S.C. 103(a) by FR 359 in view of Pristash. As noted above, FR 359 discloses each and every element of claim 11 (from which claim 18 depends) including a body 16 of an illumination device as shown in FIG. 3, for example. As discussed in the Declaration of Dr. Carome (Ex. 1016), it would have been obvious from Pristash to use a panel member covered with a film as the body 16 in FIG. 3 of FR 359 to make and/or provide for better control over the light output from the panel. Ex 1010 at 1: Given this advantage, one of ordinary skill in the art would have implemented the Pristash teachings of a light emitting panel member including a film as taught by FR 359 to provide a more efficient light system. Ex at para. #69. CLAIM 18 [18(a)] The assembly of claim 11 FR PRISTASH See [11(a)] [11(g)] of Ground 2 38

44 [18(b)] further comprising a lens or film covering one of said top and bottom surfaces of said panel member. Pristash: In addition, the panel 50 includes a second prismatic film 60 disposed in close proximity to the panel prismatic surface 52 to shift the angular emission of light toward a particular application. The second prismatic film 60 may be separated from the first prismatic film or wave guide 51 by air or an epoxy filled gap 61.. Also, multiple prismatic films may be used in place of the single prismatic film 60, or the prismatic film 60 may be replaced by a diffuser or lenticular lens or the like. Ex at 5:22 33 (emphasis added); see also FIG. 7. F. Ground 6: Claims 1, 2, 11, 18 and 22 are Obvious Under 35 U.S.C. 103(a) by JP 234 in view of JP 004 Claims 1, 2, 11, 18 and 22 are unpatentable under 35 U.S.C. 103(a) as being obvious by JP 234 and JP 004. Ground 6 is non-cumulative with respect to Grounds 1-5 at least because JP 234 discloses in FIG. 2 a panel member with a substantially rectangular cross-sectional area having top and bottom surfaces (claims 1, 11 and 22). 1. Brief Overview Of JP 234 and JP 004 JP 234 FIGS. 2, 4, 5 and 6 of JP 234 disclose a semi-transparent plate 1 positioned over vehicle headlamps and tail lamps. Ex at page 2 ll ; page 3, ll The headlamps and tail lamps include various lamps 2, 2', 2" of different sizes, and these lamps are visible from the front and rear of the vehicle. See Ex at page 2, ll ; FIG. 1. To improve the appearance of the headlamps and tail lamps, JP 234 teaches using the semi-transparent plate 1 so that the lamps 2 39

45 cannot be seen from the outside except when the lamps 2 are turned on. Ex at page 5, ll JP 004 In FIG. 7 (reproduced below) of JP 004, which JP 004 indicates is admitted prior art, discloses that light from bulb 6 enters light guiding plate 4 and travels toward a distal end portion 4b, and the light attenuates as the light approaches the distal end portion 4b. See Ex at page 2, ll JP 004 is designed to avoid this attenuation, in order to provide sufficient light and uniform illumination to a side portion of the vehicle. JP 004 accomplishes this by increasing the density of the stipples 16 (see FIG. 3(b) below) from a front space 12a to a forward end portion of the side space 12b. See Ex at page 4, l. 15 page 5, l

46 JP 004 specifically discloses a vehicle lamp having a stippling light guiding plate 14 enclosed by an outer lens 10, the light guiding plate guiding light from a bulb 13 to a side portion of a vehicle, as shown in FIG. 1 (reproduced below). 2. Claims 1, 2, 11, 18 and 22 are Obvious by JP 234 in view of JP 004 As indicated in the discussion and claim charts below and the Declaration of Dr. Carome (Ex. 1016), the combination of JP 234 and JP 004 discloses all limitations of claims 1, 2, 11, 18 and 22. JP 234 discloses every element of claims 1, 11 and 22 except for describing said panel member wrapped around a corner of said vehicle to provide illumination around said corner (claim 1) or with said 41

47 panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile (claims 11 and 22). JP 234 discloses vehicle headlamps and tail lamps with a semi-transparent plate 1 corresponding to the recited solid light emitting panel member (claims 1, 11 and 22). Referring to the annotated FIG. 2 of JP 234 reproduced below, the semitransparent plate 1 includes at least two flat surfaces, a first ( bottom ) surface facing a plurality of the lamps 2, 2', 2" and a second ( top ) surface opposing the first surface through which light exits the semi-transparent plate 1. A width of the semi-transparent plate 1, corresponding to the claimed cross sectional width, is greater than a thickness of the semi-transparent plate 1, corresponding to the claimed thickness. As shown in FIG. 6, JP 234 also discloses an edge portion 6 of the semitransparent plate 1 corresponding to the at least one light input surface. Light is directed through the semi-transparent plate 1 from the edge portion 6 and emitted from the front ( top ) surface of the semi-transparent plate 1 (claims 1, 11 and 22). 42

48 FIG. 4 of JP 234 (reproduced above) discloses a light source 5 for the semitransparent plate 1 provided at the edge portion 6 of the semi-transparent plate 1 (Ex 1006 at page 4, ll. 1 2), and thus is attached to the edge portion 6 of the semi-transparent plate 1 (claim 22). JP 234 does not explicitly disclose that the semi-transparent plate 1 is wrapped around a corner of said vehicle to provide illumination around said corner (claim 1) or that the transparent plate 1 conform[s] to a curved profile of said vehicle to provide illumination along said curved profile (claims 11 and 22). However, FIG. 6 of JP 234 does show the semi-transparent plate 1 disposed on an exterior surface of the vehicle, and that the semi-transparent plate 1 can be bent (i.e., curved) rearwardly. See Ex at page 3, ll JP 004 teaches that the outer lens 2 (FIG. 7) and lens 10 (FIG. 1), as well as the light guide 4 (FIG. 7) and light guide 14 (FIG. 1), are curved or bent to wrap around corners of the vehicle, in order to conform to the profile of the vehicle, and in order to provide sufficient illumination at the lamp vehicle side portion, thereby avoiding poor visibility at the side portion of the lamp device.. See Ex at page 2, l., 19 page 3, l. 2 and FIGS. 1 and 7. Given the teachings of JP 004 (in which a light guide is curved around the corner of a vehicle for the above stated purposes), the artisan of ordinary skill would have also found it obvious to wrap JP 234 s transparent plate 1, capable of being bent as shown in FIG. 6, around the 43

49 corner of the vehicle. Modifying JP 234 in this way (i.e. wrapping the transparent plate 1 around the corner of the vehicle) would provide the same benefits of providing sufficient illumination at the lamp vehicle side portion, thereby avoiding poor visibility at the side portion of the lamp device. Ex 1016 at para. #80. CLAIM 1 JP JP 004 [1(a)] A light emitting panel JP 234: The present invention relates to a assembly mounted on a body lamp cover, and more specifically, to lamp portion of a vehicle, said panel covers of vehicle headlamps and vehicle tail assembly comprising lamps. Ex at page 2, ll JP 234: (1) is a semitransparent plate, and (2), (2) and (2) are general lamps. Ex at page 3, ll. 7 8; see also FIG. 1. [1(b)] at least one solid light emitting panel member having top and bottom surfaces and JP 234: According to this embodiment, the semitransparent plate (1) is a sheet of glass, but may be others such as a semitransparent plastic that has light transmitting property. Ex at page 3, ll (emphasis added) JP 234: when electric current is applied to the light source (5) so that the light source (5) is turned on, light entered into the semitransparent plate (1) from the edge portion (6) is refracted at each groove portion (4) and is reflected only at the groove portion (4) to diffuse light. According to this embodiment, because the groove portions (4) are formed as a plurality of grooves parallel to the edge portion (6) and reaching both end portions, the light is diffused 44

50 by being reflected in lines parallel to the edge portion (6). Ex at page 4, ll [1(c)] a greater cross sectional width than thickness, [1(d)] said panel assembly having at least one light input surface for receiving light from at least one light source and See annotated FIG. 2 of [1(b)]. (5) is the light source, and provided at the edge portion (6) of the semitransparent plate (1). According to this embodiment, the light source (5) is a light bulb, but an optical fiber may be used. The edge portion (6) of the semitransparent plate (1) is, as is apparent from Fig. 4 showing the enlarged view of the edge portion (6), formed to have a shape that half surrounds the light source (5). Ex at page 4, ll (emphasis added) [1(e)] 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, when electric current is applied to the light source (5) so that the light source (5) is turned on, light entered into the semitransparent plate (1) from the edge portion (6) is refracted at each groove portion (4) and is reflected only at the groove portion (4) to diffuse light. According to this embodiment, because the groove portions (4) are formed as a plurality of grooves parallel 45

51 [1(f)] said panel member being located on an exterior surface of said body portion [1(g)] with said panel member wrapped around a corner of said vehicle to provide illumination around said corner. to the edge portion (6) and reaching both end portions, the light is diffused by being reflected in lines parallel to the edge portion (6). Ex at 4: 10 16; see also FIG. 2 The present invention relates to a lamp cover, and more specifically, to lamp covers of vehicle headlamps and vehicle tail lamps. Ex at page 2, ll (1) is a semitransparent plate, and (2), (2) and (2) are general lamps. Ex at page 3, ll. 7 8; see also FIG. 1 in [1(a)]. JP 234: However, as shown in Fig. 6, 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 an edge portion (6) at the rear end thereof. Ex at page 3, ll JP 004: In Fig. 1, a light guiding space 12 is defined by an outer lens 10, which is a front surface lens, and a lamp body 11. This light guiding space 12 is composed of a front space 12a situated in front of a bulb 13 and a side space 12b situated by the side of the bulb 13, and extends in a substantially L-shaped sectional configuration. Ex at page 3, l. 22 page 4, l. 1. (emphasis added) 46

52 JP 004: Thus, due to the stippling reflection portion 15, much light is guided to the side portion 10a of the outer lens 10, and the quantity of light in the entire lamp is made uniform; at the same time, the visibility at the side portion of the lamp, which has in particular been a problem to be solved, is satisfactory. Ex at page 4, l. 24 page 5, l. 3; see also FIG. 1. CLAIM 2 JP JP 004 [2(a)] The assembly of claim 1 [2(b)] wherein said panel member is located at least at one of a rear corner and a front corner of said vehicle. See [1(a)] [1(g)] JP 234: The present invention relates to a lamp cover, and more specifically, to lamp covers of vehicle headlamps and vehicle tail lamps. Ex at page 2, ll See FIG. 1 in [1(a)]. However, as shown in Fig. 6, the upper end of the semitransparent plate (1) may be bent rearward (rightward in the drawing), and a light 47

53 source (5) may be provided at an edge portion (6) at the rear end thereof. Ex at page 3, ll ; see also FIG. 6. JP 004: In Fig. 1, a light guiding space 12 is defined by an outer lens 10, which is a front surface lens, and a lamp device body 11. This light guiding space 12 is composed of a front space 12a situated in front of a bulb 13 and a side space 12b situated by the side of the bulb 13, and extends in a substantially L-shaped sectional configuration. Ex at page 3, l. 22 page 4, l. 1 (emphasis added); See also FIG. 1 in [1(g)]. CLAIM 11 JP JP 004 [11(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising [11(b)] at least one solid light emitting panel member having top and bottom surfaces and [11(c)] a greater cross sectional width than thickness, [11(d)] said panel assembly having at least one light input surface for receiving light from at least one light source and [11(e)] 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, See [1(a)] See [1(b)] See [1(c)] See [1(d)] See [1(e)] 48

54 [11(f)] said panel member being located on an exterior surface of said body portion [11(g)] with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile See [1(f)] JP 234: The present invention relates to a lamp cover, and more specifically, to lamp covers of vehicle headlamps and vehicle tail lamps. Ex at page 2. ll See also FIG. 1 in [1(a)]. See also [1(g)] regarding JP 004. CLAIM 18 JP JP 004 [18(a)] The assembly of claim 11 [18(b)] further comprising a lens or film covering one of said top and bottom surfaces of said panel member. See [11(a)] - [11(g)] JP 234: 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 surface, but such materials may be applied by coating, or a semilight-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 at page 3, ll (emphasis added) CLAIM 22 JP JP 004 [22(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising See [11(a)] 49

55 [22(b)] at least one solid light emitting panel member having top and bottom surfaces and [22(c)] a greater cross sectional width than thickness, [22(d)] 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 [22(e)] 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(f)] said panel member being located on an exterior surface of said body portion [22(g)] with said panel member conforming to a curved profile of said vehicle to provide illumination along said curved profile. See [11(b)] See [11(c)] JP 234: (5) is the light source, and provided at the edge portion (6) of the semitransparent plate (1). According to this embodiment, the light source (5) is a light bulb, but an optical fiber may be used. The edge portion (6) of the semitransparent plate (1) is, as is apparent from Fig. 4 showing the enlarged view of the edge portion (6), formed to have a shape that half surrounds the light source (5). Ex at page 4, ll. 1 5; See also FIG. 4 in [1(d)]. See [11(e)] See [11(f)] See [11(g)] 50

56 G. Ground 7: Claims 5 and 7-9 are Anticipated under 35 U.S.C. 102(b) by JP 234 Claims 5 and 7-9 are unpatentable under 35 U.S.C. 103(a) as being anticipated by JP 234. Ground 7 is the first proposed ground asserted against claims 5 and Additional Description Of JP 234 Referring now to FIG. 5 of JP 234 (reproduced below), JP 234 further discloses an embodiment of a semi-transparent plate 1 over motor vehicle headlamps or tail lamps 2. As described previously in Ground 6, JP 234 incorporates the semi-transparent plate 1 in front of the plurality of lamps 2, 2' and 2" of the headlamps / tail lamps with a light source 5, (i.e. an incandescent lamp), at an edge of the transparent plate 1 such that unless each lamp light source 7 for the plurality of lamps are turned on, the lamps light sources are not seen from the outside. By independently controlling the light source 5 for the semi-transparent plate 1 and the light source 7 for the plurality of lamps 2, 2' and 2", the exterior outlook of the semi-transparent plate 1 may be controlled as shown in FIGS Ex at page 5, ll

57 In addition, JP 234 discloses a vapor deposition or coating of aluminum, silver or carbon (FIG. 3 above) or a semi-light blocking film 3 (FIG. 5 above) on an inner surface (i.e., trans reflector) where the light from the light source 7 passes through the semi-transparent plate 1 and light from the outside is reflected (claim 9). See Ex at FIG. 5; page 3, ll Further, JP 234 at FIG. 5 discloses light source 7 as a bulb with a filament. A light bulb with a filament is an incandescent lamp (claim 9). See Ex at FIG. 5 and Ex at para. # Claims 5, 7 9 are anticipated by JP 234 As detailed in the discussion and claim charts below and the Declaration of Dr. Carome (Ex. 1016), JP 234 discloses all the limitations of claims 5, 7 9. CLAIM 5 JP 234 [5(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising The present invention relates to a lamp cover, 52

58 [5(b)]at least one solid light emitting panel member having top and bottom surfaces and and more specifically, to lamp covers of vehicle headlamps and vehicle tail lamps. Ex at page 2, ll (1) is a semitransparent plate, and (2), (2) and (2) are general lamps. Ex at page 3, ll.7 8; see also FIG. 1. According to this embodiment, the semitransparent plate (1) is a sheet of glass, but may be others such as a semitransparent plastic that has light transmitting property. Ex at page 3, ll (emphasis added) when electric current is applied to the light source (5) so that the light source (5) is turned on, light entered into the semitransparent plate (1) from the edge portion (6) is refracted at each groove portion (4) and is reflected only at the groove portion (4) to diffuse light. According to this embodiment, because the groove portions (4) are formed as a plurality of grooves parallel to the edge portion (6) and reaching both end portions, the light is diffused by being reflected in lines parallel to the edge portion (6). Ex at page 4, ll [5(c)]a greater cross sectional width than thickness, [5(d)]said panel assembly having at least one light input surface for receiving light from See FIG. 2 of [5(b)]. (5) is the light source, and provided at the edge portion (6) of the semitransparent plate (1). According to this embodiment, the light source 53

59 at least one light source (5) is a light bulb, but an optical fiber may be used. The edge portion (6) of the semitransparent plate (1) is, as is apparent from Fig. 4 showing the enlarged view of the edge portion (6), formed to have a shape that half surrounds the light source (5). Ex at page 4, ll. 1 5 (emphasis added); see also FIG. 4. [5(e)]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(f)] 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. when electric current is applied to the light source (5) so that the light source (5) is turned on, light entered into the semitransparent plate (1) from the edge portion (6) is refracted at each groove portion (4) and is reflected only at the groove portion (4) to diffuse light. According to this embodiment, because the groove portions (4) are formed as a plurality of grooves parallel to the edge portion (6) and reaching both end portions, the light is diffused by being reflected in lines parallel to the edge portion (6). Ex at page 4, ll See FIG. 2 of [5(b)]. (7) is the light source for the lamp, and is provided to the rear (to the right in the drawing) of the semitransparent plate (1) via the lens (8) for the lamp. Ex at page 4, ll Specifically, when 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 54

60 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. Ex at page 5, ll (emphasis added) CLAIM 7 JP 234 [7(a)] The assembly of claim 5 [7(b)] wherein said other light source comprises at least one of: a light emitting diode, an incandescent lamp, and a halogen lamp. See [5(a)] [5(f)] See a lamp light source 7 having a filament in FIG. 5 of [5(f)]. CLAIM 8 JP 234 [8(a)] The assembly of claim 5 See [5(a)] [5(f)] [8(b)] 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. Specifically, when 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. 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 55

61 as shown in Fig. 11. Ex at page 5, ll (emphasis added). See FIGs CLAIM 9 JP 234 [9(a)] The assembly of claim 5 See [5(a)] [5(f)] [9(b)] further comprising a trans reflector on said panel member through which a portion of the light from said other light source passes 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 surface, but such materials may be applied by coating, or a semilight-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 at page 3, ll (emphasis added). See FIG. 5 of [5(f)]. H. Ground 8: Claims 5 and 7-9 are Anticipated under 35 U.S.C. 102(b) by JP 304 Claims 5 and 7-9 are unpatentable under 35 U.S.C. 103(a) as being anticipated by JP 304. Ground 8 is non-cumulative with respect to Ground 7 at least because JP '304 discloses a stop lamp that provides two different types of displaying (i.e., a stop warning and a message), while the panel member of JP '234 ensures that the lamps light sources are not seen from the outside. Ex 1013 at page 5, ll & Ex at page 5, ll Due to this distinction, JP '234 and JP '304 have different kinds of "trans reflectors" (claim 9). 1. Brief Description Of JP 304 FIG. 1 of JP '304 (reproduced below) discloses a display device which is disposed in a rear part of a vehicle body to issue a warning or the like to a 56

62 following vehicle. See Ex at 1: Industrial Field of Application. The display device includes a light guiding plate 10 corresponding to the "light emitting panel member," a second light source 12a corresponding to the "at least one light source" and a first light source 3 corresponding to the recited "other light source." See Ex 1013 at FIG. 1. Stippling dots on the surface of the light guiding plate 10 act as a trans reflector (i.e., both reflect and pass light). An entire surface of the light guiding plate 10 is illuminated as the light from the light source 3 passes through the light guiding plate 10, including the stippling dots of a display section 13, when the first light source 3 is lit. Alternatively, light from the light source 12 and is reflected to the front by the strippling dots, thereby illuminating the display section 13. Therefore, the single display device can selectively perform two different types of displaying. See Ex at page 4, l. 17 page 5, l Claims 5 and 7-9 are anticipated by JP 304 As detailed in the discussion and claim charts below and the Declaration of Dr. Carome (Ex. 1016), JP 234 discloses all the limitations of claims 5 and 7-9. CLAIM 5 JP 304 [5(a)] A light emitting panel assembly mounted on a body portion of a vehicle, said panel assembly comprising "The invention relates to a display device suitably implemented as a lamp such as that commonly referred to as a high mount stop lamp that is disposed in a rear part of a vehicle body to issue a warning or the like to a following vehicle." Ex at page 2, 57

63 [5(b)] at least one solid light emitting panel member having top and bottom surfaces and "Industrial Field of Application." " a light guiding plate 10 is disposed in front of a surface lens 2 in a front opening of a housing 1." See Ex at page 4, ll [5(c)] a greater cross sectional width than thickness, [5(d)] said panel assembly having at least one light input surface for receiving light from at least one light source [5(e)] 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 " second light sources 12a, 12b that differ from a light source (first light source) 3 for illuminating the surface lens 2 are respectively disposed in a right and left pair of incident sections 11a, 11b provided in a lower end surface of the light guiding plate 10." Ex at page 4, ll "In this case, the light emitted from each of the second light sources 12a, 12b respectively enters the light guiding plate 10 through each of the incident sections 11a, 11b, and the light is reflected to the front by each of the stippling dots. Accordingly, the display section 13 has a reflection characteristic, by which the display section 13 is configured to be illuminated." Ex. 58