Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Inter Partes Review of:
`)
`
`U.S. Patent No. 8,267,534
`)
`
`Issued: September 18, 2012
`)
`
`Application No.: 13/336,018
`)
`
`
`For: Exterior Rearview Mirror Assembly
`
`FILED VIA E2E
`
`
`
`
`
`
`
`DECLARATION OF DR. JOSE SASIAN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,267,534
`
`
`
`SMR USA
`Exhibit 1002
`Page 001
`
`

`

`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION AND QUALIFICATIONS ............................................ 1
`I.
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED .......... 4
`II.
`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED
`IN THIS DECLARATION ........................................................................... 6
`IV. BACKGROUND LAW ................................................................................ 7
`A. Written Description ............................................................................ 7
`B.
`Incorporation By Reference ................................................................ 7
`C.
`Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness ................................................................................ 8
`SUMMARY OF OPINIONS ...................................................................... 11
`V.
`VI. THE ’534 PATENT .................................................................................... 12
`A.
`The ’534 Patent’s Disclosure ............................................................ 12
`B.
`Application For The ʼ843 Patent ...................................................... 13
`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR CLAIMS 1, 7, AND 13 OF THE ’534 PATENT ............ 14
`A. A POSA Would Not Understand The ’666 Patent Application
`To Incorporate With Particularity The Two-Mirror Assembly
`Of The ’712 And ’451 Patent Family ............................................... 21
`A POSA Would Not Understand The ’666 Application To
`Support The ’534 Patent’s Claims Even If The ’451 and ’712
`Patents Were Fully Incorporated By Reference ............................... 27
`The Claims Of The ’534 Patent Are Directed To A Two-
`Mirror System ................................................................................... 38
`VIII. CLAIM CONSTRUCTION ........................................................................ 40
`IX. THE PRIOR ART AND BACKGROUND EVIDENCE ........................... 41
`A.
`Prior Art Relied Upon For Anticipation ........................................... 41
`
`B.
`
`C.
`
`i
`
`SMR USA
`Exhibit 1002
`Page 002
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`1.
`
`B.
`
`
`
`X.
`
`U.S. Patent Application Publication No. 2002/0072026
`(the “’026 publication”) .......................................................... 41
`Prior Art Relied Upon For Obviousness Combinations ................... 41
`1.
`International Pub. No. WO 2001/44013 (“Henion”) ............. 42
`2.
`International Pub. No. WO 2001/81956 (“Platzer”) .............. 43
`Background Evidence ....................................................................... 43
`C.
`Claims 1-20 OF THE ’534 PATENT are ANTICIPATED BY the
`’026 Publication .......................................................................................... 44
`A.
`Claim 1 .............................................................................................. 45
`1.
`Preamble, [a], [b] .................................................................... 45
`2.
`[c] A Single Mirror Support ................................................... 49
`3.
`[d], [e] Mirrors ........................................................................ 52
`Independent Claim 7 ......................................................................... 58
`1.
`Claim elements 7[a]-[e] .......................................................... 58
`2.
`[f] Primary mirror includes a flat glass substrate ................... 59
`Independent Claim 13 ....................................................................... 60
`1.
`Preamble, 13[a]-[e] ................................................................ 60
`2.
`[f] Spotting Mirror Angle ....................................................... 62
`Claims 2, 8 and 14 - single mirror support ....................................... 66
`Claims 3, 4 , 9, 10, 15, and 16 – backing plate matches
`mirrors ............................................................................................... 68
`Claims 5, 11, 17: forward spotting mirror ........................................ 70
`F.
`Claims 6, 12, 18: rearward spotting mirror ...................................... 72
`G.
`Claim 19 - second field of view ........................................................ 73
`H.
`Claim 20 - spotting mirror angle ...................................................... 74
`I.
`XI. CLAIMS 13 AND 20 OF THE ’534 PATENT WOULD HAVE
`BEEN OBVIOUS OVER THE COMBINATION OF HENION
`AND PLATZER.......................................................................................... 75
`A.
`Claim 13 ............................................................................................ 75
`1.
`Preamble, [a] Bracket ............................................................. 75
`2.
`[b] Mirror Casing .................................................................... 77
`3.
`[c] Mirror Support .................................................................. 78
`4.
`[d] Primary Mirror .................................................................. 80
`5.
`[e] Spotting Mirror ................................................................. 83
`6.
`[f] Angled ............................................................................... 88
`7.
`[g] Flat Glass Substrate .......................................................... 89
`
`D.
`E.
`
`B.
`
`C.
`
`ii
`
`SMR USA
`Exhibit 1002
`Page 003
`
`

`

`
`
`B.
`
`Claim 20 ............................................................................................ 92
`1.
`Three Degree Angle ............................................................... 92
`XII. CONCLUSION ........................................................................................... 97
`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`iii
`
`SMR USA
`Exhibit 1002
`Page 004
`
`

`

`
`I.
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`I have been retained by SMR Automotive Systems USA Inc.
`
`(“SMR”) to provide my opinion concerning the validity of U.S. Patent No.
`
`8,267,534 (attached to the accompanying Petition and henceforth referred to as
`
`“the ’534 patent”) in support of SMR’s Petition for Inter Partes Review of U.S.
`
`Patent No. 8,267,534.
`
`2.
`
`I have extensive academic and industry experience with optical
`
`engineering. Specifically, I have over thirty years of academic and industry
`
`experience in the field of optical sciences and optical engineering in general,
`
`including optical instrumentation, optical design, and optical fabrication and
`
`testing.
`
`3.
`
`I am currently a full-time, tenured Professor of Optical Sciences at
`
`the College of Optical Sciences at the University of Arizona in Tucson, Arizona,
`
`a position I have held since 2002. As a professor, I teach and perform research in
`
`the field of optical design. For example, I teach my students how to design lenses
`
`and mirrors and how to think about light so that they can design useful optical
`
`systems.
`
`4.
`
`As part of my academic and research responsibilities I am frequently
`
`involved with the design, fabrication, and testing of optical devices. Prior to
`
`receiving tenure, I was an Associate Professor of Optical Sciences at the
`
`1
`
`SMR USA
`Exhibit 1002
`Page 005
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`University of Arizona from 1995 to 2001. Prior to joining the University of
`
`Arizona faculty, I was a member of the technical staff of AT&T Bell
`
`Laboratories from 1990 to 1995. From 1984 to 1987, I was a Research Assistant,
`
`and from 1988 to 1990, I was a Research Associate, in the Optical Sciences
`
`Center at the University of Arizona. From 1976 to 1984, I was an optician at the
`
`Institute of Astronomy at the University of Mexico.
`
`5.
`
`I received a Bachelor of Science degree in Physics from the
`
`University of Mexico in 1982, a Master of Science degree in Optical Sciences
`
`from the University of Arizona in 1987, and a Ph.D. degree in Optical Sciences
`
`from the University of Arizona in 1988. My research areas include optical design,
`
`fabrication, and testing of optical instruments, astronomical optics, diffractive
`
`optics, opto-mechanical design, light in gemstones, lithography optics, and light
`
`propagation.
`
`6.
`
`At the University of Arizona, I have taught the courses Lens Design
`
`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
`
`Advanced Lens Design OPTI 595A (2008, 2012, 2017), Illumination Optics
`
`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001,
`
`2003, 2004, 2005) and Optical Shop Practices OPTI 597A (1996-present). I
`
`teach students how to design mirrors, including their field of view specifications,
`
`how to grind, polish, and test aspheric mirrors, how to mount mirrors properly so
`
`2
`
`SMR USA
`Exhibit 1002
`Page 006
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`that their physical integrity is preserved under a variety of loads, and how to align
`
`mirrors. I have experience in flat, curved, and aspheric mirror fabrication and
`
`mounting, and in the chemical and vacuum deposition of reflective metals on
`
`substrates.
`
`7.
`
`I have directed several theses and dissertations in the areas of lens
`
`and mirror design. I have lectured regarding my work, and have published, along
`
`with students and colleagues, over one hundred scientific papers in the area of
`
`optics. These include technical papers, patents, and thesis research done under
`
`my direction, related to lens and mirror design. For example, “Two-mirror
`
`telescope design with third-order coma insensitive to decenter misalignment,”
`
`“Double-curvature Surfaces in Mirror System Design,” "Four-mirror optical
`
`system for large telescopes," and "Flat-field, anastigmatic, four-mirror optical
`
`system for large telescopes."
`
`8.
`
`As part of my research responsibilities at the University of Arizona,
`
`I am often involved in projects that have included automotive optics, and mirrors
`
`and prism in periscopic systems.
`
`9.
`
`Since 1995, I have been a consultant and have provided to industry
`
`solutions to a variety of projects that include flat and curved mirrors and opto-
`
`mechanics design. I also have consulted in the area of plastic optics. I hold
`
`several patents and patent applications related to optical mirrors.
`
`3
`
`SMR USA
`Exhibit 1002
`Page 007
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`10.
`
`I have been a topical editor and reviewer for the peer-reviewed
`
`
`
`journal Applied Optics. I am a fellow of the International Society for Optics and
`
`Photonics (SPIE), a fellow of the Optical Society of America (OSA), and a
`
`lifetime member of the Optical Society of India.
`
`11.
`
`I have served as a co-chair for the conferences "Novel Optical
`
`Systems: Design and Optimization" (1997-2006), "Optical systems alignment,
`
`tolerancing, and verification" (2007-2017), and “International Optical Design
`
`Conference,” (2002). I have taught in Japan (2014, 2016, and 2017) the course:
`
`Advanced Lens Design: Art and Science.
`
`12.
`
`I have been an editor of approximately 17 published conference
`
`proceedings from SPIE. I am the author of the book, "Introduction to
`
`Aberrations in Optical Imaging Systems," by Cambridge University Press, 2013.
`
`I am named as an inventor on approximately 12 U.S. patents.
`
`13. My curriculum vitae, which includes a more detailed summary of
`
`my background, experience, and publications, is attached to the accompanying
`
`Petition.
`
`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED
`14. The opinions contained in this Declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. In forming
`
`the opinions expressed in this Declaration, I reviewed the following documents:
`
`4
`
`SMR USA
`Exhibit 1002
`Page 008
`
`

`

`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`Ex. No. Description
`1001
`U.S. Patent No. 8,267,534 (“the ’534 patent”)
`1003
`Curriculum Vitae of Jose Sasian
`1007
`U.S. Patent Application No. 12/851,045 (“the ’045 publication”)
`1009
`File History for U.S. Patent No. 7,934,843 (the “’843 FH”)
`1011
`U.S. Patent Application Publication No. 2002/0072026 (“the ’026
`publication”)
`1012 WO 2001/44013 (“Henion”)
`1013 WO 2001/81956 (“Platzer”)
`1014
`U.S. Patent Application No. 12/197,666 (“the ’666 application”)
`1016
`U.S. Patent No. 6,522,451 (“the ’451 patent”)
`1017
`U.S. Patent No. 6,717,712 (“the ’712 patent”)
`1020
`Computer-generated document comparison showing differences in
`the ’045 and ’666 applications
`Excerpts from James Maxwell, Plastics in the Automotive Industry
`114 (Woodhead Publishing Limited 1994) (“Maxwell”)
`Excerpts from N.G. McCrum, C.P. Buckley, & C.B. Bucknall,
`Principles of Polymer Engineering (Oxford Science Publications 2d
`ed. 2011) (1997) (“Bucknall”)
`U.S. Patent No. 5,721,646 (“Catlin”)
`George Platzer, The Geometry of Automotive Rearview Mirrors -
`Why Blind Zones Exist and Strategies to Overcome Them, SAE
`Technical Paper 950601 (1995)
`NATIONAL HIGHWAY TRAFFIC SAFETY ADMINISTRATION, U.S. DEP’T
`OF TRANSPORTATION, DOC. NO. TP111V-00, LABORATORY TEST
`PROCEDURE FOR FMVSS 111 – REARVIEW MIRRORS (OTHER THAN
`SCHOOL BUSES) (October 28, 1999)
`
`15. My opinions are additionally guided by my appreciation of how a
`
`
`
`person of ordinary skill in the art would have understood the claims of the ’534
`
`5
`
`1032
`
`1033
`
`1034
`1039
`
`1040
`
`SMR USA
`Exhibit 1002
`Page 009
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`patent at the relevant time. As discussed herein, in my opinion, a person of
`
`ordinary skill in the art would not have understood the claims of the ’534 patent
`
`to be described in the ’666 application. Nevertheless, because I understand that
`
`the ’534 patent attempts to claim priority to the application for U.S. Patent No.
`
`6,717,712, filed in 2003, I was also asked to consider a date of 2003 for the
`
`purpose of determining how a person or ordinary skill would have understood the
`
`claims. The choice of 2003 vs. a later date did not affect my analysis of the
`
`meaning of the claim terms.
`
`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED IN
`THIS DECLARATION
`16. To analyze the level of skill in the art, I have considered the type of
`
`problems encountered in the art, prior art solutions, rapidity of innovation,
`
`sophistication of technology, and educational level of active workers in the field.
`
`17. The ’534 patent field of invention relates to side-view mirror
`
`assemblies for vehicles that include a main mirror and an auxiliary mirror. The
`
`problem addressed in the ’534 patent requires knowledge of geometrical optics,
`
`optical elements including flat and curved mirrors, optical specifications,
`
`alignment of optics, fabrication of optics, mechanical design, and visual optics.
`
`18. The relevant field, therefore, is comprised of people having an
`
`engineering degree or its equivalent. In particular, a person having ordinary skill
`
`6
`
`SMR USA
`Exhibit 1002
`Page 010
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`in this art (“POSA”) will have had at the time of invention a M.Sc. in Optics,
`
`Optical Engineering, or similar studies in a related field (e.g., Physics or
`
`Mechanical Engineering) with 2-3 years of experience in the optics/mechanical
`
`industry. This description is approximate, and a higher level of education or skill
`
`may make up for less experience, and vice-versa, e.g., a B.S. in the above fields
`
`with 4-6 years of experience in the industry.
`
`IV. BACKGROUND LAW
`A. Written Description
`19.
`I understand that a patent claim has sufficient written description
`
`support in a patent application when that application (including its as-filed
`
`claims) describes the claimed invention, with all of its limitations, in a manner
`
`that is understandable to one of ordinary skill in the art and therefore shows that
`
`the inventor actually invented the invention claimed. I also understand that
`
`describing an obvious variant of the claimed invention is not sufficient. The
`
`person of ordinary skill must conclude that the application itself (including its as-
`
`filed claims) fully sets forth the claimed invention, by describing it in words,
`
`figures, diagrams, and the like.
`
`B.
`Incorporation By Reference
`20. With respect to incorporation by reference in the context of patents
`
`and patent applications, I understand that in order for a first document to validly
`
`7
`
`SMR USA
`Exhibit 1002
`Page 011
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`incorporate material by reference from a second document, the first document
`
`must state with detailed particularity what material is incorporated and identify
`
`where in the second document that material may be found. I further understand
`
`that the Board evaluates the particularity required for sufficient incorporation by
`
`reference from the point of view of a POSA: material is validly incorporated if a
`
`POSA would understand a document to sufficiently incorporate subject matter by
`
`reference.
`
`C. Understanding Of Legal Principles Relevant To Anticipation
`And Obviousness
`I understand that a prior art reference can anticipate a patent claim
`
`21.
`
`when the prior art’s disclosure renders the claim’s disclosure not novel. I
`
`understand that in order to anticipate a patent claim, a prior art reference must
`
`teach every element of the claim, expressly or inherently. In analyzing
`
`anticipation, I understand that it is important to consider the scope of the claims,
`
`the level of skill in the relevant art, the scope and content of the prior art, and the
`
`differences between the prior art and the claims.
`
`22.
`
`I understand that a prior art reference can render a patent claim
`
`obvious to one of ordinary skill in the art if the differences between the subject
`
`matter set forth in the patent claim and the prior art are such that the subject
`
`matter of the claim would have been obvious at the time the claimed invention
`
`8
`
`SMR USA
`Exhibit 1002
`Page 012
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`was made. In analyzing obviousness, I understand that it is important to consider
`
`the scope of the claims, the level of skill in the relevant art, the scope and content
`
`of the prior art, the differences between the prior art and the claims, and any
`
`secondary considerations.
`
`23.
`
`I understand that when the claimed subject matter involves
`
`combining pre-existing elements to yield no more than one would expect from
`
`such an arrangement, the combination would have been obvious. I also
`
`understand that in assessing whether a claim would have been obvious one must
`
`consider whether the claimed improvement is more than the predictable use of
`
`prior art elements according to their established functions. I understand that there
`
`need not be a precise teaching in the prior art directed to the specific subject
`
`matter of a claim because one can take account of the inferences and creative
`
`steps that a person of skill in the art would employ. I further understand that a
`
`person of ordinary skill is a person of ordinary creativity, not an automaton.
`
`24.
`
`I understand that obviousness cannot be based on the hindsight
`
`combination of components selectively culled from the prior art. I understand
`
`that in an obviousness analysis, neither the motivation nor the avowed purpose of
`
`the inventors controls the inquiry. Any need or problem known in the field at the
`
`time of the invention and addressed by the patent can provide a reason for
`
`combining elements. For example, I understand that it is important to consider
`
`9
`
`SMR USA
`Exhibit 1002
`Page 013
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`whether there existed at the time of the invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims. I understand
`
`that known techniques can have obvious uses beyond their primary purposes, and
`
`that in many cases a person of ordinary skill can fit the teachings of multiple
`
`pieces of prior art together like pieces of a puzzle.
`
`25.
`
`I understand that, when there is a reason to solve a problem and
`
`there are a finite number of identified, predictable solutions, a person of ordinary
`
`skill has good reason to pursue the known options within his or her technical
`
`grasp. I further understand that, if this leads to the anticipated success, it is likely
`
`the product not of innovation but of ordinary skill and common sense, which
`
`bears on whether the claim would have been obvious.
`
`26.
`
`I understand that secondary considerations can include, for example,
`
`evidence of commercial success of the invention, evidence of a long-felt need
`
`that was solved by an invention, evidence that others copied an invention, or
`
`evidence that an invention achieved a surprising result. I further understand that
`
`such evidence must have a nexus, or causal relationship to the elements of a
`
`claim, in order to be relevant. I am unaware of any such secondary
`
`considerations for the ’534 patent.
`
`10
`
`SMR USA
`Exhibit 1002
`Page 014
`
`

`

`
`V.
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`SUMMARY OF OPINIONS
`27. As I describe in further detail below, my opinion is that the claims of
`
`the ’534 patent, all of which are directed to an automotive exterior rear sideview
`
`mirror assembly containing a flat primary mirror and a curved auxiliary mirror,
`
`lack written description support in the application to which the ’534 patent claims
`
`priority – the ’666 application. The ’666 application is directed at a single mirror
`
`assembly rather than a two mirror assembly, but contains a brief statement of
`
`incorporation by reference relating to the ’712 patent, which discloses a two
`
`mirror assembly. As I describe herein, a POSA would not have understood this
`
`brief statement to constitute incorporation by reference of the ’712 patent’s two-
`
`mirror assembly. Further, even if the ’712 patent’s two mirror assembly were
`
`fully incorporated by reference into the ’666 application, a POSA would still not
`
`understand the ’666 application to provide sufficient written description support
`
`for a two-mirror assembly.
`
`28.
`
`It is also my opinion that certain claims of the ’534 patent are
`
`anticipated or rendered obvious by the prior art references disclosed herein.
`
`Specifically, it is my opinion that claims 1-20 are anticipated by the ’026
`
`publication; and claims 13 and 20 would have been obvious over Henion in view
`
`of Platzer.
`
`11
`
`SMR USA
`Exhibit 1002
`Page 015
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`VI. THE ’534 PATENT
`29.
`I have reviewed the ’534 patent. The ’534 patent is entitled to an
`
`effective filing date of August 5, 2010 or later because the claims of the ’534
`
`patent do not have written description support in the previous patent applications
`
`in the ’534 patent’s family, as discussed below.
`
`A. The ’534 Patent’s Disclosure
`30. The ’534 patent discloses a driver’s-side exterior sideview mirror
`
`system for automobiles. See, e.g., ’534 patent at 1:66-3:35 & Fig. 16. The
`
`system is comprised of an assembly containing two separate mirrors – a flat
`
`(plano-reflective) primary mirror for viewing areas rearward and sideward of the
`
`driver, and an auxiliary curved or secondary mirror providing a wide-angled field
`
`of view (“FOV”) capable of viewing into the area not covered by the primary
`
`mirror (the driver’s “blind spot”). ’534 patent at 1:66-3:35 & Figs. 11, 13-16.
`
`The primary and secondary mirrors may be at an angle relative to each other to
`
`provide the driver a wider total field of view. Id. at 1:66-3:35 & Figs. 11, 14.
`
`This angling may be accomplished by placing the primary and secondary mirrors
`
`on separate, angled portions of a molded plastic backing plate. Id. at 1:66-3:35 &
`
`Figs. 3, 6.
`
`12
`
`SMR USA
`Exhibit 1002
`Page 016
`
`

`

`
`
`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`B. Application For The ʼ843 Patent
`31.
`I have considered the application for the ’843 patent. I understand
`
`that the ’534 patent claims priority through the ’843 patent, which I understand to
`
`be important to understanding the ’534 patent’s priority date.
`
`32.
`
`I understand that the applicant filed the application for the ’843
`
`patent (Appl. No. 12/851/045, the “’045 application”) on August 5, 2010. ’843
`
`FH 1145. The application noted that it was a continuation of the application for
`
`the ’154 patent (the ’666 application). ’843 FH 1145.
`
`33.
`
`I am informed that the specification of the ’712 patent was copied
`
`into the ’045 application.
`
`34.
`
`I have reviewed a computer-generated comparison of the ’045 and
`
`’666 applications showing that the majority of the ’712 patent’s specification was
`
`copied into the ’045 application that is attached as an exhibit to the petition and
`
`listed the table of materials reviewed.
`
`35. This incorporation of the ’712 included the ’712 patent’s disclosure
`
`of an exterior automotive rearview mirror assembly comprised of two separate
`
`mirrors, one flat and one curved, whose combined FOVs provided a greater FOV
`
`to the driver of the automobile. ’712 patent at 3:2-5:6, Figs. 3, 5, 6, and 15.
`
`13
`
`SMR USA
`Exhibit 1002
`Page 017
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`36. This incorporated disclosure described an exterior sideview mirror
`
`
`
`system comprising two separate mirrors – the primary and auxiliary mirrors
`
`claimed by the ’843 patent.
`
`VII. THE ’666 APPLICATION LACKS WRITTEN DESCRIPTION
`SUPPORT FOR CLAIMS 1, 7, AND 13 OF THE ’534 PATENT
`37.
`I understand that the ’534 patent claims priority through the ’843
`
`patent, which claims priority through the ’154 patent. I understand that therefore,
`
`the application leading to the ’154 patent (App. No. 12/197,666 (the “’666
`
`application”)) must provide written description support for the claims of the ’534
`
`patent. Thus, throughout this discussion, I will also refer to the disclosures of the
`
`’666 application, in addition to the patents where appropriate.
`
`38. Reading the ’666 application, one of ordinary skill in the art would
`
`plainly recognize that the invention disclosed is drawn to mirror assemblies that
`
`use a single reflective element. There are many cues recognizable to one of
`
`ordinary skill in the art that leads to this conclusion. Specifically, the title of the
`
`application refers to a single “reflective element.” Additionally, one of ordinary
`
`skill in the art reading the ’666 application would expect and recognize that the
`
`Summary of the Invention section of the ’666 application (¶¶ 6-17) describes
`
`general aspects of the invention as a whole, while Description of the Preferred
`
`14
`
`SMR USA
`Exhibit 1002
`Page 018
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`Embodiments section (¶¶ 27-48) describes specific aspects of embodiments of
`
`the invention.
`
`39. The first sentence of the Summary of the Invention states: “The
`
`present invention provides a molded wide angle or multi-radius substrate for a
`
`reflective element.” ’666 application at ¶ 6. Consistent with the title of the
`
`application, the first sentence of the Summary of the Invention refers to a single
`
`substrate. The second sentence of the Summary of the Invention further makes
`
`the point, describing that the single “molded substrate” “comprises a polymeric
`
`optical resin transparent material and has a curved exterior surface, which may
`
`have a less curved/flatter or substantially flat inboard portion or surface and a
`
`more curved outboard portion or surface.” Id. Thus, the single molded substrate
`
`of the invention has two portions: one that is flatter, and one that is more curved
`
`at the outboard portion of the single substrate. See also id. at ¶ 10. These
`
`descriptions are regarding the “present invention.” Id. at ¶ 6. By contrast, other
`
`paragraphs within the Summary of the Invention refer to only to an “aspect” or
`
`“application” of the present invention. See id. at ¶¶ 7-8, 12-13. But at the end of
`
`the Summary of the Invention, the applicant against notes that “the present
`
`invention provides a molded wide angle or multi-radius single substrate for a
`
`rearview mirror assembly . . . .” Id. at ¶ 16 (emphasis added). Thus, one of
`
`ordinary skill in the art reading the ’666 application would recognize that the
`
`15
`
`SMR USA
`Exhibit 1002
`Page 019
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`applicant’s invention was about mirror assemblies using a single reflective
`
`element.
`
`40. The embodiments of the ’666 application are also consistent with
`
`this conclusion. For example, Figure 1, described as “a perspective view of an
`
`exterior rear view mirror assembly in accordance with the present invention,”
`
`shows that reflective element 12 is of a single piece. ’666 application at ¶ 18
`
`(emphasis added); Fig. 1. Figure 1 of the ’666 application is reproduced below.
`
`
`41. Similarly, Figure 2, described as “a perspective view of a wide angle
`
`or multi-radius reflective element in accordance with the present invention,”
`
`similarly shows “a single reflective element substrate 18.” Id. at ¶¶ 19, 27
`
`16
`
`SMR USA
`Exhibit 1002
`Page 020
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`(emphases added); Fig. 2. Figure 3 shows “a sectional view of the wide angle or
`
`multi-radius reflective element taken along the line III-III in FIG. 2.” Id. at ¶ 20.
`
`Figures 2 and 3 are reproduced below, showing that a single element is used, as
`
`no discontinuities or breaks are visible.
`
`
`
`
`
`42. The remaining portions of the specification’s text describe further
`
`aspects of this single substrate, and how to make it. “The substrate 18 of the
`
`17
`
`SMR USA
`Exhibit 1002
`Page 021
`
`

`

`Declaration of Dr. Jose Sasian In Support Of
`Petition for Inter Partes Review of USP 8,267,534
`
`
`reflective element 12 of the present invention may be formed (such as by casting,
`
`extrusion or injection molding) of a polymeric optical resin material . . . .” ’666
`
`application at ¶ 29. These processes of forming the single substrate allow it to be
`
`“molded or formed to a desired shape having a wide angle or multi-radius
`
`surface,” and therefore have the properties desired of the single substrate of the
`
`invention, such as its field of view. Id. at ¶¶ 29-31. As shown in Figure 3,
`
`surface 18c of the single substrate has “a substantially flat or slightly curved or
`
`less curved surface” with a fairly large radius of curvature. Id. at ¶ 30. By
`
`contrast, surface portion 18d of the single substrate “may be a more convex or
`
`curved surface, such that the substrate comprises a wide angle or multi-radius
`
`exterior substrate,” with significantly smaller radii of curvature compared to
`
`surface 18c. Id. at ¶ 31. Thus, while surface 18c of the single substrate may
`
`provide a field of view between 10 and 20 degrees, the more curved surface 18d
`
`provides the single substrate with a combined field of view between 25 and 45
`
`degrees. Id. at ¶¶ 30