`
`UNITED STATES PATENT AND TRADEMARK OFF“ .‘F.
`
`['NITICD S'I'Am‘i DEPARTEHENT (1F CDMMISRCE
`L'njtetl Stalls Patent and Trademark OII'Ice
`Addicss: (.‘OMMESSIONER 130R I’A'I‘IZN'l'S
`PI} Box [430
`Alexandria. vugimu 22113-145”
`wwwllsplngnv
`
`APPLICA'HON N0.
`FILING DATE
`lilRS'I'NAMEI) INVENI‘OR
`A'E'I‘ORNEY DOCKET NO.
`CONFIRMATION N0.
`
`12:91 1,2?4
`lnrzfirlmo
`Niall R. Lynam
`[)ONm P—lfiSl
`98.1?
`
`10mm“
`7590
`23101
`VAN DYKE, GARDNER LINN 3: BURKI-[AR'R LLP
`S [.1 I'll": 20?
`285! (.‘i-lARI.HVOIX DRIVE. $.13.
`gms M149546
`
`:
`
`a
`
`,1
`
`AMARI. ALESSANDRO v
`
`2371
`
`MAEI. DATE
`DELIVERY MODE
`
`EDI} 1 201 |
`PA PIER
`
`Please find below andfor attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any. is set in the attached communication.
`
`PTO] .—90A (Rev. 04M?)
`
`Patent Owner Magna - Ex. 2004, p. 1
`Patent Owner Magna - Ex. 2004, p. 1
`
`

`

`
`Application No.
`Applicantts}
`
`i2i'91 1,2?4 LYNAM. NIALL R.
`
`
`Examiner
`Office Action Summary
`
`ALESSANDRO AMARI
`
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S} OR THIRTY (30) DAYS.
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions at time may be available under the provisions of 3? CFR 1.136taj
`In no event. however. may a reply be timely tiled
`atler Six {6} MONTHS lrom the mailing date of this communication.
`If NO period for reply is speciiied above. the maximum statutory period will apply and will expire Six [6) MONTHS irorn the mailing date of this communication.
`Failure to reply within the set or extended period for reply will. by statute. cause lhe application to become ABANDONED {35 Ll.S.C. § 133]
`Any reply received by the Office later 1han three mon1l'is alter the mailing da1e of this communication. even iI timely filed. may reduce any
`earned patent ten'n adjustment. See 3? CFR 1.704113}.
`Status
`
`-
`-
`
`HE Responsive to communication(s} tiled on 01 August 201 t.
`2aiC| This action is FINAL.
`2cm This action is non—final.
`BjEI An election was made by the applicant in response to a restriction requirement set forth during the interview on
`_: the restriction requirement and election have been incorporated into this action.
`4”] Since this appiication is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle. 1935 CD. 11.453 0.8. 213.
`
`Disposition of Claims
`
`SHE Claimisj 20-29 and 39-65 isiare pending in the application.
`5a} 01 the above ciaimisj _ isiare withdrawn from consideration.
`
`Bil] Claimis) _ isiare allowed.
`HE Claimis} 20—29 and 39—65 isiare rejected.
`Bil] Claimlsj _ isiare objected to.
`9H] Claimisj _ are subject to restriction andior election requirement.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`'ltjfi The diawing(s) filed on 25 October 2010 isiare: ajE accepted or kill] objected to by the Examiner.
`Applicant may not request that any objection to the drawingisj be held in abeyance. See 3? CFR 1.85(a).
`Replacement drawing sheetis) including the correction is required if the drawingts) is objected to. See 37 CFR 1.121(d).
`
`i2}I:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or term PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13)|:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(aj-(dj or (f).
`ajCj All oil] Some ‘ c)|:| None or:
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No. _
`3.I:I Copies of the certified copies ot the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`' See the attached detailed Office action for a list of the certified copies not received.
`
`Attachmentis}
`
`
`
`
`
`4} El Interview Summary tPTO~413j
`1) E Notice of References Cited {PTO-892}
`Paper Noisi‘rMa-l' Dam- _
`2) I] Notice of Draftsperson’s Patent Drawing Review (PTO-948}
`a) E lni‘om'tatjon Disclosure Statementts) (PTOisBiosi
`5} El Notice of InformalI Patent Application
`Paper Nolsjiiv'lail Date 12/702010.
`6} I] Other:
`
`U 5 Patent and Trademark Ollie!
`PTOL-326 (Rev. 03-11)
`
`Oflioe Action Summary
`
`Part 01' Paper NuiMail Date 20111026
`
`Patent Owner Magna - Ex. 2004, p. 2
`Patent Owner Magna - Ex. 2004, p. 2
`
`

`

`Applicatioanontrol Number: 121911274
`Art Unit: 2872
`
`Page 2
`
`DETAILED ACTION
`
`Election/Restrictions
`
`Applicant's election without traverse of Group 1V in the reply filed on 1 August
`
`2011 is acknowledged.
`
`Double Paten ting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the "right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory
`
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`
`are not identical, but at least one examined application claim is not patentably distinct
`
`from the reference claim(s) because the examined application claim is either anticipated
`
`by. or would have been obvious over, the reference claim(s). See, e.g., fn re Berg, 140
`
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998): in re Goodman, 11 F.3d 1046, 29
`
`USPQ2d 2010 (Fed. Cir. 1993); in re Longf, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`
`1985); in re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); fn re Vogef, 422
`
`F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1989).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(0) or 1.321 (d)
`
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`Patent Owner Magna - Ex. 2004, p. 3
`Patent Owner Magna - Ex. 2004, p. 3
`
`

`

`ApplicationfControl Number: 121911.274
`Art Unit: 2872
`
`Page 3
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement.
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.730;).
`
`Claims 20. 26, 43-45, 49-51, 52 and 59 are rejected on the ground of
`
`nonstatutory obviousness—type double patenting as being unpatentable over claims 1.
`
`15, 25 and 26 of US. Patent No. 7934843. Although the conflicting claims are not
`
`identical, they are not patentably distinct from each other because claims 20, 26, 4345,
`
`49-51, 52 and 59 recite essentially the same subject matter as claims 1, 15, 25 and 26
`
`in US 7934843 except for a mirror housing and a spherical or single radius of curvature
`
`of the curved mirror element which are known in the art.
`
`It would have been obvious to
`
`one of ordinary skill in the art at the time the invention was made to utilize a mirror
`
`housing and have the auxiliary non-piano curved element be defined by a spherical
`
`radius of curvature so as to provide for protection from the elements and to provide for
`
`an improved field of view to the user.
`
`Cfafm Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`{e} the invention was described in (1) an application for patent. published under section 122(b}, by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`
`Patent Owner Magna - Ex. 2004, p. 4
`Patent Owner Magna - Ex. 2004, p. 4
`
`

`

`ApplicationiControl Number: 121911.274
`Art Unit: 2872
`
`Page 4
`
`applicant for patent. except that an international application filed under the treaty defined in section
`351(a} shall have the effects lor purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21(2)
`oi such treaty in the English language.
`
`Claims 20-29, 39-42, 46-48, and 52-65 are reiected under 35 U.S.C. 102(e) as
`
`being anticipated by Lynam et al (hereafter “Lynam") US 20030072026.
`
`The applied reference has a common inventor with the instant application.
`
`Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art
`
`under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 102(9) might be overcome
`
`either by a showing under 37 CPR 1.132 that any invention disclosed but not claimed in
`
`the reference was derived from the inventor of this application and is thus not the
`
`invention “by another," or by an appropriate showing under 37 CFR 1.131.
`
`In regard to claims 20 and 26. Lynam discloses (see Figures 1-3, 5, 6, 8, 14) an
`
`exterior sideview mirror assembly suitable for vehicular use, said exterior sideview
`
`mirror assembly comprising: a mirror housing (40) defining a primary opening; a single
`
`mirror backing plate element {60) within said mirror housing and disposed adjacent to
`
`said primary opening; said single mirror backing plate element movable by an
`
`electrically-operable actuator (36) as described in paragraph [0042]; a main piano mirror
`
`element (50) fixedly secured to and supported by said single mirror backing plate
`
`element and disposed within said primary opening for providing a view rearward of a
`
`vehicle equipped with said exterior sideview mirror assembly through a first primary field
`
`of view as described in paragraphs [0041] and [0042]; an auxiliary non-piano curved
`
`mirror element (55) fixedly secured to and supported by said single mirror backing plate
`
`element and disposed adjacent to said main piano mirror element as described in
`
`Patent Owner Magna - Ex. 2004, p. 5
`Patent Owner Magna - Ex. 2004, p. 5
`
`

`

`ApplicationfControl Number: 121911.274
`Art Unit: 2872
`
`Page 5
`
`paragraph [0042], said auxiliary non-piano curved mirror element defined by a single
`
`radius of curvature differing from said main piano mirror element such that said auxiliary
`
`non—piano curved mirror element provides a second auxiiiary field of view rearward of
`
`the vehicle equipped with said exterior sideview mirror assembly as described in
`
`paragraph [0083]; wherein said first primary field of view of said main piano mirror
`
`element overlaps said second auxiliary field of view of said auxiliary non-piano curved
`
`mirror element as shown in Figure 14 and as described in paragraph [0076]: wherein
`
`said single mirror backing plate element comprises a generally rigid polymeric mofding
`
`able to support said main plano mirror element and said auxiliary non-plano curved
`
`mirror element as described in paragraph [0050]; wherein said single mirror backing
`
`plate element comprises a generally flat portion for supporting said main plano mirror
`
`element and a curved portion for supporting said auxiliary non-piano curved mirror
`
`element as described in paragraph [0050]; wherein said curved portion of said single
`
`mirror backing plate element for supporting said auxiliary non-piano curved mirror
`
`element is angled reiative to said generally flat portion of said single mirror backing
`
`plate element for supporting said main piano mirror element in a manner such that,
`
`when a driver of a vehicle equipped with said exterior side view mirror assembly aligns
`
`the rearward field of view of said main plano mirror element. the rearward field of view
`
`of said main plano mirror element is aligned downwardly relative to a vehicle body side
`
`to which said exterior side view mirror assembly is attached as described in paragraphs
`
`[0059], [0072] — [0074] and as shown in Figure BB; wherein said main piano mirror
`
`element comprises one of (a) a generally flat glass substrate having a surface coated
`
`Patent Owner Magna - Ex. 2004, p. 6
`Patent Owner Magna - Ex. 2004, p. 6
`
`

`

`Applicatioanontrol Number: 121911.274
`Art Unit: 2872
`
`Page 6
`
`with a metallic reflector coating and (b) a generally flat polymeric substrate having a thin
`
`glass element applied to a surface thereof and with an opposing surface thereof having
`
`a reflecting layer applied thereto as described in paragraph [0043]; and wherein said
`
`curved portion of said single mirror backing plate element defines an auxiliary non-piano
`
`curved mirror element backing plate element radius of curvature substantially equal to
`
`said single radius of curvature as described in paragraph [0050].
`
`In regard to claims 52 and 59, Lynam discloses (see Figures 1—3, 5, 6, 8, 14) an
`
`exterior sideview mirror assembly suitabie for vehicular use, said exterior sideview
`
`mirror assembly comprising: a mirror housing (40) defining a primary opening; a single
`
`mirror backing plate element (60) within said mirror housing and disposed adjacent to
`
`said primary opening; said single mirror backing plate element movable by an
`
`electrically-operable actuator (36); a main piano mirror element (50) fixedly secured to
`
`and supported by said single mirror backing plate element and disposed within said
`
`primary opening for providing a view rearward of a vehicle equipped with said exterior
`
`sideview mirror assembly through a first primary field of view; an auxiliary non-piano
`
`curved mirror element (55) fixedly secured to and supported by said single mirror
`
`backing ptate element and disposed adjacent to said main piano mirror element.
`
`wherein said auxiliary non-piano curved mirror element comprises a reflector-coated
`
`spherically curved substrate and has a spherical radius of curvature with substantially a
`
`single radius of curvature differing from said main piano mirror element such that said
`
`auxiliary non-piano curved mirror element provides a second auxiliary field of view
`
`rearward of the vehicle equipped with said exterior sideview mirror assembly as
`
`Patent Owner Magna - Ex. 2004, p. 7
`Patent Owner Magna - Ex. 2004, p. 7
`
`

`

`ApplicationfControl Number: 121911.274
`Art Unit: 2872
`
`Page 7
`
`described in paragraphs [0042] and [0083], wherein said first primary field of view of
`
`said main plano mirror element overiaps said second auxiliary field of view of said
`
`auxiliary non-piano curved mirror element as shown in Figure 14 and as described in
`
`paragraph [0076]; wherein said single mirror backing plate element comprises a
`
`generally rigid polymeric molding able to support said main piano mirror element and
`
`said auxiliary non-piano curved mirror element as described in paragraph [0050];
`
`wherein said single mirror backing plate element comprises a generally flat portion for
`
`supporting said main piano mirror element and a curved portion for supporting said
`
`auxiliary non-piano curved mirror element as described in paragraph [0050]; wherein
`
`said main piano mirror element is fixedly secured to said generally fiat portion of said
`
`single mirror backing plate element and said auxiliary non-piano curved mirror element
`
`is fixedly secured to said curved portion of said single mirror backing plate as described
`
`in paragraph [0050] and as shown in Figures 3 and 6; wherein said curved portion of
`
`said singie mirror backing plate element for supporting said auxiliary non-piano curved
`
`mirror element is angled relative to said generally flat portion of said single mirror
`
`backing piate element for supporting said main piano mirror element in a manner such
`
`that. when a driver of a vehicle equipped with said exterior side view mirror assembly
`
`aligns the reanrvard field of view of said main piano mirror element, the rearward fieid of
`
`view of said main piano mirror element is atigned downwardly relative to a vehicle body
`
`side to which said exterior side view mirror assembly is attached as described in
`
`paragraphs [0059], [0072] — [0074] and as shown in Figure GB; wherein said main piano
`
`mirror element comprises one of (a) a generally flat gfass substrate having a surface
`
`Patent Owner Magna - Ex. 2004, p. 8
`Patent Owner Magna - Ex. 2004, p. 8
`
`

`

`ApplicationfControl Number: 12911274
`Art Unit: 2872
`
`Page 8
`
`coated with a metallic reflector coating and (b) a generally flat polymeric substrate
`
`having a thin glass element applied to a surface thereof and with an opposing surface
`
`thereof having a reflecting iayer applied thereto as described in paragraph [0043]; and
`
`wherein said curved portion of said single mirror backing plate element defines an
`
`auxiliary non—piano curved mirror element backing plate element radius of curvature
`
`substantially equal to said single radius of curvature as described in paragraph [0050].
`
`Regarding claims 21 and 27, Lynam discloses including a divider (65) between
`
`said main piano mirror element and said auxiliary non-piano curved mirror element that
`
`demarcates said auxiliary non~plano curved mirror element from said main plano mirror
`
`element visually as described in paragraph [0042].
`
`Regarding claims 22, 54 and Si, Lynam discloses that said main piano mirror
`
`element comprises a generally flat glass substrate having a surface coated with a
`
`metallic reflector coating as described in paragraph [0047].
`
`Regarding claim 23, Lynam discloses that said single mirror backing plate
`
`element includes a molded wall extending from a surface thereof and wherein said
`
`divider comprises at least a portion of said molded wall as described in paragraph
`
`[0051].
`
`Regarding claim 24, Lynam discloses that said wail generally circumscribes the
`
`circumferential edge of said auxiliary non-piano curved mirror element when said
`
`auxiliary non-piano curved mirror element is supported by said single mirror backing
`
`plate element as described in paragraph [0051].
`
`Patent Owner Magna - Ex. 2004, p. 9
`Patent Owner Magna - Ex. 2004, p. 9
`
`

`

`ApplicationiControl Number: 12911274
`Art Unit: 2872
`
`Page 9
`
`Regarding claims 25, 29, 55 and 62, Lynam discloses that said main piano mirror
`
`element comprises a generally flat glass substrate having a surface coated with a
`
`metallic reflector coating as described in paragraphs [0043] and [0047] and including a
`
`bracket (38) configured for fixedly securing said exterior sideview mirror assembly to the
`
`vehicle body side as shown in Figure 2.
`
`Regarding claim 28, Lynam discloses that said single mirror backing plate
`
`element includes a molded wall extending from a surface thereof and wherein said
`
`divider comprises at least a portion of said molded wall and wherein said wail generally
`
`circumscribes the circumferential edge of said auxiliary non—piano curved mirror element
`
`when said auxiliary non-piano curved mirror element is supported by said single mirror
`
`backing plate element as described in paragraphs [0042] and [0051].
`
`Regarding claim 39, Lynam discloses that said auxiliary non-piano curved mirror
`
`element comprises a reflector-coated multiradius Curved substrate as shown in Figure 6
`
`and as described in paragraph [0042].
`
`Regarding claims 40, 46. 56 and 63, Lynam discloses that said generally flat
`
`portion of said single mirror backing plate element defines a primary plane that is
`
`substantially flat and wherein said curved portion of said single mirror backing plate
`
`element is substantially convex-curved as described in paragraph [0080].
`
`Regarding claims 41, 47. 57 and 64, Lynam discloses wherein a part of said
`
`curved portion of said single mirror backing plate element is one of (a) substantially
`
`copianar with said primary plane and (b) substantially rearward of said primary plane as
`
`shown in Figure 3.
`
`Patent Owner Magna - Ex. 2004, p. 10
`Patent Owner Magna - Ex. 2004, p. 10
`
`

`

`Applicatioanontrol Number: 12911274
`Art Unit: 2872
`
`Page 10
`
`Regarding claims 42, 48, 58 and 65, Lynam discloses wherein a first part of said
`
`curved portion of said singie mirror backing plate element is substantially coplanar with
`
`said primary plane and a second part of said curved portion of said single mirror
`
`backing piate element is substantially rearward of said primary plane as shown in Figure
`
`3.
`
`Regarding claims 53 and 60, Lynam discloses that said single mirror backing
`
`plate element includes a molded wall extending from a surface thereof, and wherein
`
`said wall generally circumscribes the circumferential edge of said auxiliary non-piano
`
`curved mirror element when said auxiliary non—piano curved mirror element is supported
`
`by said single mirror backing plate element as described in paragraph [0051].
`
`Allowable Subject Matter
`
`Claims 43-45 and 49-51 are objected to as being dependent upon a rejected
`
`base claim, but would be allowable (provided that the double-patenting rejection above
`
`is obviated) if rewritten in independent form including all of the limitations of the base
`
`claim and any intervening claims.
`
`Claims 43 and 49 are allowable for at least the reason, “comprises a generally
`
`flat polymeric substrate having a thin glass element applied to a surface thereof and
`
`with an opposing surface thereof having a reflecting layer applied thereto, and wherein
`
`said generally flat polymeric substrate is formed from an elongated sheet of substrate
`
`material comprising a polymeric resin material, and wherein said elongated sheet has a
`
`substantially transparent functional film applied at a surface thereof, and wherein said
`
`Patent Owner Magna - Ex. 2004, p. 11
`Patent Owner Magna - Ex. 2004, p. 11
`
`

`

`ApplicationiControl Number: 12911274
`Art Unit: 2872
`
`Page 11
`
`substantially transparent functional film provides at least one of (a) an anti-abrasion
`
`function, (b) a hydrophobic function and (c) a hydrophilic function. and wherein said
`
`functional film comprises an ultrathin glass material which is sufficiently flexible to be
`
`provided in a reel or roll, and wherein said functional film is sufficiently flexible to
`
`conform to said generally flat polymeric substrate of said main plano mirror element,
`
`and said main piano mirror element comprises a reflective film disposed at a surface of
`
`said generally flat polymeric substrate opposite said substantially transparent functional
`
`film" as set forth in the claimed combination. Ciaims 44, 45, 50 and 51 are allowable
`
`due to their dependence on cIaims 43 and 49.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALESSANDRO AMARI whose telephone number is
`
`(571)272-2306. The examiner can normally be reached on Monday-Friday 8:00 AM to
`
`5:30 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Stephone B. Allen can be reached on (571) 272-2434. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Patent Owner Magna - Ex. 2004, p. 12
`Patent Owner Magna - Ex. 2004, p. 12
`
`

`

`ApplicationiC0ntroI Number: 121911274
`Art Unit: 2872
`
`Page 12
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIFI) system. Status information for
`
`published applications may be obtained from either Private PAiR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http:trpair—direct.uspto.gov. Shouid
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 8662179197 (toll—free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated Information
`
`system, call 8007860199 (IN USA 0R CANADA) or 571-272—1000.
`
`fAIessandro Amarif
`
`Primary Examiner, Art Unit 2872
`
`Patent Owner Magna - Ex. 2004, p. 13
`Patent Owner Magna - Ex. 2004, p. 13
`
`

`

`PATENT
`DON09 P-l 651
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Group
`Examiner
`
`Applicant
`Serial No.
`Filing Date
`For
`
`2872
`:
`: Alessandro V. Amari
`
`: Niall R. Lynam
`:
`123911274
`: October 25, 2010
`:
`EXTERIOR SHDEVIBW MIRROR SYSTEM
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`REQUEST FOR RECONSTDERATION
`
`Responsive to the Office Action mailed October 3] , 201 l , Applicants wish to
`
`submit the following:
`
`Remarks begin on page 2 of' this paper.
`
`A Terminal Disclaimer is attached.
`
`A Declaration under Rule 131(a) is attached.
`
`Patent Owner Magna - Ex. 2004, p. 14
`Patent Owner Magna - Ex. 2004, p. 14
`
`

`

`Applicant
`Serial No.
`Page
`
`: Niall R. Lynarn
`:
`12.191 1,274
`:
`2
`
`Remarks:
`
`The amendments and remarks presented herein are believed to be fully responsive
`
`to the Office Action dated October 31, 201 1. Claims 20-29 and 39—65 are pending in the
`
`application.
`
`Double Patenting Claim Rejection:
`
`Claims 20, 26, 43-45, 49-51, 52 and 59 were rejected under the judicially created
`
`doctrine of obviousncss-typc double patenting as being wipatentable over claims 1 , 15, 25 and 26 of
`
`U.S. Patent No. 7,934,843. Enclosed herewith is a Terminal Disclaimer with respect to U.S.
`
`Patent No. 7,934,843. The basis for the double-patenting rejection is obviated. Accordingly,
`
`withdrawal of the rejection of claims 20, 26, 43-45, 49-51, 52 and 59 is respectfully requested.
`
`Applicant submits that the terminal disclaimer also disclaims the term of any patent that will
`
`issue from the present application beyond the term of U.S. Patent No. 6,522,451.
`
`Please charge Account No. 50-5553 for the $160 terminal disclaimer fee due and
`
`for any additional fees which may be due.
`
`Allowable Claims:
`
`Claims 43-45 and 49-51 were indicated as being drawn to allowable subject matter
`
`and would be allowed if rewritten in independent form. Because Applicant believes that claims 20-
`
`29, 39-42, 46-48 and 52-65 are allowable, as discussed below, Applicant has not amended claims
`
`43 and 49 to be in independent form.
`
`Claim Rejections Under 35 U.S.C. §102:
`
`Claims 20-29, 39-42, 46-48 and 52—65 were rejected under 35 U.S.C. §102(e) as
`
`being anticipated by Lynarn, U.S. Publication No. US 2002;007:1026 ("Lynam '026"). Applicant
`
`respeetfiilly traverses.
`
`Patent Owner Magna - Ex. 2004, p. 15
`Patent Owner Magna - Ex. 2004, p. 15
`
`

`

`Applicant
`SerialNo.
`Page
`
`: Niall R. Lynarn
`:
`123911374
`:
`3
`
`Applicant submits that Lynam "026 is not prior art under 35 U.S.C. §102(e).
`
`Lynarn '026 published June 13, 2002, and, as discussed below, the present application has an
`
`effective filing date of May 20, 2003 (the filing date of U.S. provisional application 601471872).
`
`Thus, Lynam ‘026 published prior to the priority date of the presently claimed invention and
`
`Lynarn 0% cannot be cited as prior art under 35 U.S.C. §102(e).
`
`Also, because the present application has a priority date of May 20, 2003 that is
`
`less than one year after the publication date of Lynam '026 (June 13, 2002), and because (as
`
`discussed below) Applicant conceived and reduced to practice the invention claimed in at least
`
`the independent claims prior to the effective date of Lynatn '026, Applicant respectfully submits
`
`that Lynam '026 is also not prior an under 35 U.S.C. §102(a).
`
`The present application is a continuation of US. patent application Ser. No.
`
`12851045, filed August 5, 2010, now US. Pat. No. 7,934,843, which is a continuation ofU.S.
`
`patent application Serial No. 12!] 97,666, filed August 25, 2008, new U.S. Patent No. 7,842,154,
`
`which is a division of U.S. patent application Serial No. 101709334, filed May 5, 2004, now U.S.
`
`Patent No. 7,420,156, which claims the benefit of US. provisional application, Serial No.
`
`60/471,872, filed May 20, 2003.
`
`'
`
`The present application incorporates by reference US. Patent Nos. 6,522,451 and
`
`6,717,712. See, for example, paragraph [0045] on page 6 of the present application (reproduced
`
`below).
`
`[0045} Reflective element 12 may comprise an aspheric or multi~radius or
`wide angle single element reflective element substrate. The reflective
`element 12 may provide a field of view similar to the plane-auxiliary
`reflective element assembly disclosed in US. Pat. Nos. 6,522,451 and
`6,717,712, which are hereby incorporated herein by reference.
`
`With respect to the priority provisional application Serial No. 60f471,8‘?2, this application
`
`similarly incorporates by reference US. Patent No. 6,522,451 and US. patent application Serial
`
`No. 09f745,172, filed December 20, 2000. US. patent application Serial No. 091745,172 issued
`
`
`
`Patent Owner Magna - Ex. 2004, p. 16
`Patent Owner Magna - Ex. 2004, p. 16
`
`

`

`Applicant
`Serial No.
`Page
`
`: Niall R. Lynam
`:
`12:91 1,274
`:
`4
`
`as U.S. Patent No. {$317,712. Thus, the present application and each of the priority applications
`
`incorporate by reference the same disclosures.
`
`With respect to the rejection in view of Lynam '026, and in accordance with 37
`
`CFR 1.131, Applicant Submits herewith a Declaration which declares that the invention claimed
`
`in at least independent claims 20, 26, 52 and 59 was invented by Applicant prior to the
`
`publication date ofLynaln ‘026, namely, June 13, 2002. The specification and drawings (Exhibit
`
`A) ofU.S. patent application Serial No. 09i478,315, which was filed on January 6, 2000 by Niall
`
`R. Lynam (the sole named inventor of the present application), along with U.S. Patent No.
`
`6,522,451 (Exhibit B), which issued to Lynarn fi'om U.S. patent application Serial No.
`
`09i478,315, are submitted with the Declaration as corroborative evidence that the present
`
`invention was reduced to practice prior to the Lynarn ‘026 publication date of J unc 13, 2002 (and
`
`prior to the December 20, 2000 filing date of the application that published as Lynam '026). The
`
`Declaration is signed by the named inventor (Niall R. Lynam) for the present application. The
`
`attached Specification and drawings of Exhibits A and B clearly corroborate that the inventions -
`
`claimed in at least independent claims 20, 26, 52 and 59 were reduced to practice well prior to June
`
`13, 2002, the publication date ofLynam '026, and prior to December 20, 2000', the filing date of the
`
`application that published as Lynam '026.
`
`Accordingly, the rcjcctibns of claims 20—29, 39-42, 46—48 and 52-65 under §102(e)
`
`in View of Lynam '026 are obviated, and reconsideration and withdrawal of these rejections is
`
`respectfillly requested.
`
`Patent Owner Magna - Ex. 2004, p. 17
`Patent Owner Magna - Ex. 2004, p. 17
`
`

`

`Applicant
`Serial No.
`Page
`
`: Niall R. Lynam
`:
`123911274
`:
`5
`
`Claims 20-29 and 39-65 are pending in the application. Applicant nespectfiflly
`
`submits that claims 20-29 and 39—65 are in condition for allowance and a notice to that effect is
`
`earnestly and reapectfully requested.
`
`Rcspcctfially submitted,
`
`NIALL R. LYNAM
`
`By: Gardner, Linn, Burkhart & Flory, LLP
`
`Date: November3, 2011. W_
`
`cry
`.
`Timoth
`Registration No. 42 540
`2851 Charlevoix Drive, 3.8., Suite 207
`PB. Box 888695
`
`Grand Rapids, Michigan 49588-8695
`(616) 975-5500
`
`Patent Owner Magna - Ex. 2004, p. 18
`Patent Owner Magna - Ex. 2004, p. 18
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`DON09 P-lfiSl
`
`Group
`Examiner
`
`Applicant
`Serial No.
`Filing Date
`For
`
`2872
`:
`: Alessandro V. Amari
`
`: Niall R. Lynam
`:
`12l911,274
`: October 25, 2010
`:
`EXTERIOR SIDEVIEW MIRROR SYSTEM
`
`Mail Stop Amendment
`Commissioner for Patents
`
`Washington, DC. 20231
`
`
`DECLARATION UNDER RULE 131(3)
`
`Niall R. Lynam, the inventor and Applicant in the above referenced patent application,
`declares as follows:
`
`[.
`
`Prior to June 13, 2002, the inventor and Applicant conceived of the claimed
`
`invention of at least the independent claims as filed in the present application. For
`
`example, and with reference to claim 20 of the present application, the inventor and
`
`Applicant conceived of an exterior sidevicw mirror system comprising:
`
`a.
`
`b.
`
`c.
`
`cl.
`
`e.
`
`a mirror housing defining a primary opening;
`
`a single mirror backing plate element within said mirror housing and disposed
`adjacent to said primary opening;
`
`said single mirror backing plate element movable by an electrically-Operable
`actuator;
`
`a main plano mirror element fixedly secured to and supported by said single
`mirror backing plate element and disposed within said primary opening for
`providing a view rearward of a vehicle equipped with said exterior sideview
`mirror assembly through a first primary field of view;
`
`an auxiliary non-plano curved mirror element fixedly secured to and supported
`by said single mirror backing plate element and disposed adiacent to said main
`plano mirror element, said auxiliary non-plano curved mirror element defined
`by a single radius of curvature differing from said main plano mirror element
`
`Patent Owner Magna - Ex. 200