`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`WWW. USspto,gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`12/911,274
`
`10/25/2010
`
`Niall R. Lynam
`
`DONOS P-1651
`
`9837
`
`10/31/2011
`7590
`28101
`VAN DYKE, GARDNER, LINN & BURKHART, LLP
`SUITE 207
`2851 CHARLEVOIX DRIVE,S.E.
`
`GRANDRAPIDS, MI 49546 ART UNIT
`
`
`ANE
`SAMIR
`AMARI, ALESSANDRO V
`PAPER NUMBER
`
`2872
`
` MAIL DATE
`
`10/31/2011
`
`PAPER
`
`DELIVERY MODE
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Patent Owner Magna - Ex. 2004, p. 1
`Patent Owner Magna- Ex. 2004, p. 1
`
`

`

`
`Applicant(s)
`Application No.
`12/911,274 LYNAM, NIALL R.
`
`
`Office Action Summary
`Art Unit
` Examiner
`
`
`ALESSANDRO AMARI
`2872
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFA 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`-
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133)
`Any reply received by the Office later than three monthsafter the mailing date of this communication, even if timelyfiled, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`Status
`
`1)EX] Responsive to communication(s)filed on 01 August 2011.
`2a)L Thisaction is FINAL.
`2b)X] This action is non-final.
`3)L] An election was madebythe applicant in responseto a restriction requirementsetforth during the interview on
`
`; the restriction requirement and election have been incorporatedinto this action.
`4) Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)—X] Claim(s) 20-29 and 39-65 is/are pendingin the application.
`
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)L] Claim(s)__is/are allowed.
`7)EX] Claim(s) 20-29 and 39-65is/are rejected.
`8)L] Claim(s)___is/are objected to.
`
`9) Claim(s)
`are subjectto restriction and/or election requirement.
`
`Application Papers
`
`10)( Thespecification is objected to by the Examiner.
`11) The drawing(s) filed on 25 October 2010is/are: a) accepted or b)] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`12) The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`13) Acknowledgmentis madeofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f).
`a)LIAll b)L] Some*c)L] Noneof:
`
`1.0] Certified copies of the priority documents have beenreceived.
`2.0] Certified copiesof the priority documents have been receivedin Application No.
`3.0] Copiesof the certified copies of the priority documents have beenreceivedin 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.
`
`
`
`
`
`Attachment(s)
`1) & Notice of References Cited (PTO-892)
`2) CL Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) BX] information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date 12/7/2070.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 03-11)
`
`4) | Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __
`5) [] Notice of Informal Patent Application
`6) oO Other:
`
`Otfice Action Summary
`
`Part of Paper No./Mail Date 20111026
`
`Patent Owner Magna - Ex. 2004, p. 2
`Patent Owner Magna- Ex. 2004, p. 2
`
`

`

`Application/Control Number: 12/911,274
`Art Unit: 2872
`
`Page 2
`
`DETAILED ACTION
`
`Election/Restrictions
`
`Applicant’s election without traverse of GroupIV in the reply filed on 1 August
`
`2011 is acknowledged.
`
`The nonstatutory double patenting rejection is based onajudicially created
`
`Double Patenting
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or impropertimewise 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 wherethe conflicting claims
`
`are not identical, but at least one examinedapplication 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., In re Berg, 140
`
`F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29
`
`USPQd2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645(Fed. Cir.
`
`1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422
`
`F.2d 438, 164 USPQ 619 (CCPA 1970); and /n re Thorington, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
`
`may be used to overcomean 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
`
`

`

`Application/Control Number: 12/911,274
`Art Unit: 2872
`
`Page 3
`
`be commonly ownedwith 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 signa
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.73(b).
`
`Claims 20, 26, 43-45, 49-51, 52 and 59 are rejected on the ground of
`
`nonstatutory obviousness-type double patenting as being unpatentable overclaims 1,
`
`15, 25 and 26 of U.S. Patent No. 7934843. Although the conflicting claims are not
`
`identical, they are not patentably distinct from each other because claims 20, 26, 43-45,
`
`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 madeto utilize a mirror
`
`housing and have the auxiliary non-plano curved element be defined by a spherical
`
`radius of curvature so as to provide for protection from the elements andto provide for
`
`an improvedfield of view to the user.
`
`Claim 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 underthis section madein 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
`
`

`

`Application/Control Number: 12/911,274
`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 for purposes of this subsection of an application filed in the United States
`onlyif the international application designated the United States and was published under Article 21(2)
`of such treaty in the English language.
`
`Claims 20-29, 39-42, 46-48, and 52-65 are rejected under 35 U.S.C. 102(e) as
`
`being anticipated by Lynam et al (hereafter “Lynam”) US 2002/0072026.
`
`The applied reference has a commoninventor with the instant application.
`
`Based uponthe 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(e) might be overcome
`
`either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in
`
`the reference was derived from the inventorof 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 adjacentto
`
`said primary opening; said single mirror backing plate element movable by an
`
`electrically-operable actuator (36) as described in paragraph [0042]; a main plano 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 plano mirror element as described in
`
`Patent Owner Magna - Ex. 2004, p. 5
`Patent Owner Magna- Ex. 2004, p. 5
`
`

`

`Application/Control Number: 12/911,274
`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 auxiliary 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 plano mirror
`
`element overlaps said second auxiliary field of view of said auxiliary non-piano curved
`
`mirror element as shownin 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 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
`
`elementis angled relative to said generally flat portion of said single mirror backing
`
`plate element for supporting said main plano mirror element in a mannersuchthat,
`
`whena driver of a vehicle equipped with said exterior side view mirror assembly aligns
`
`the rearwardfield of view of said main plano mirror element, the rearward field of view
`
`of said main plano mirror elementis 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 shownin Figure 6B; wherein said main piano mirror
`
`element comprises oneof (a) a generally flat glass substrate having a surface coated
`
`Patent Owner Magna - Ex. 2004, p. 6
`Patent Owner Magna- Ex. 2004, p. 6
`
`

`

`Application/Control Number: 12/911,274
`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 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); a main plano 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 plate element and disposed adjacent to said main plano mirror element,
`
`wherein said auxiliary non-piano curved mirror element comprisesa reflector-coated
`
`spherically curved substrate and has a spherical radius of curvature with substantially a
`
`single radius of curvature differing from said main plano 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
`
`

`

`Application/Control Number: 12/911,274
`Art Unit: 2872
`
`Page 7
`
`described in paragraphs [0042] and [0083], wherein saidfirst primary field of view of
`
`said main plano mirror element overlaps said second auxiliary field of view of said
`
`auxiliary non-piano curved mirror element as shownin 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 plano 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 plano mirror elementis fixedly secured to said generally flat 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 shownin Figures 3 and 6; wherein said curved portion of
`
`said single mirror backing plate elementfor supporting said auxiliary non-plano curved
`
`mirror element is angled relative 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 piano mirror elementis aligned downwardly relative to a vehicle body
`
`side to which said exterior side view mirror assembly is attached as describedin
`
`paragraphs [0059], [0072] — [0074] and as shownin Figure 6B; wherein said main plano
`
`mirror element comprises one of (a) a generally flat glass substrate having a surface
`
`Patent Owner Magna - Ex. 2004, p. 8
`Patent Owner Magna- Ex. 2004, p. 8
`
`

`

`Application/Control Number: 12/911,274
`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 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 elementradius of curvature
`
`substantially equal to said single radius of curvature as described in paragraph [0050].
`
`Regarding claims 21 and 27, Lynam disclosesincluding a divider (65) between
`
`said main plano mirror element and said auxiliary non-plano curved mirror element that
`
`demarcates said auxiliary non-plano curved mirror element from said main plano mirror
`
`elementvisually as described in paragraph [0042].
`
`Regarding claims 22, 54 and 61, Lynam discloses that said main plano 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 disclosesthat said wall generally circumscribes the
`
`circumferential edge of said auxiliary non-plano curved mirror element when said
`
`auxiliary non-piano curved mirror elementis 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
`
`

`

`Application/Control Number: 12/911,274
`Art Unit: 2872
`
`Page 9
`
`Regarding claims 25, 29, 55 and 62, Lynam discloses that said main plano 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 shownin 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 wall generally
`
`circumscribes the circumferential edge of said auxiliary non-piano curved mirror element
`
`when said auxiliary non-plano 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-plano curved mirror
`
`element comprises a reflector-coated multiradius curved substrate as shownin 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 planethatis
`
`substantially flat and wherein said curved portion of said single mirror backing plate
`
`elementis 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 elementis one of (a) substantially
`
`coplanar with said primary plane and (b) substantially rearward of said primary plane as
`
`shownin Figure 3.
`
`Patent Owner Magna - Ex. 2004, p. 10
`Patent Owner Magna- Ex. 2004, p. 10
`
`

`

`Application/Control Number: 12/911,274
`Art Unit: 2872
`
`Page 10
`
`Regarding claims 42, 48, 58 and 65, Lynam discloses whereinafirst part of said
`
`curved portion of said single mirror backing plate element is substantially coplanar with
`
`said primary plane and a second partof said curved portion of said single mirror
`
`backing plate elementis substantially rearward of said primary plane as shownin 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 includingall of the limitations of the base
`
`claim and anyintervening 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 functionalfilm applied at a surface thereof, and wherein said
`
`Patent Owner Magna - Ex. 2004, p. 11
`Patent Owner Magna- Ex. 2004, p. 11
`
`

`

`Application/Control Number: 12/911,274
`Art Unit: 2872
`
`Page 11
`
`substantially transparent functionalfilm provides at least one of (a) an anti-abrasion
`
`function, (b) a hydrophobic function and (c) a hydrophilic function, and wherein said
`
`functionalfilm comprises an ultrathin glass material which is sufficiently flexible to be
`
`provided in a reel or roll, and wherein said functionalfilm is sufficiently flexible to
`
`conform to said generally flat polymeric substrate of said main plano mirror element,
`
`and said main plano 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. Claims 44, 45, 50 and 51 are allowable
`
`dueto their dependence on claims 43 and 49.
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALESSANDRO AMARI whosetelephone numberis
`
`(571)272-2306. The examiner can normally be reached on Monday-Friday 8:00 AM to
`
`5:30 PM.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner's
`
`supervisor, Stephone B. Allen can be reached on (571) 272-2434. The fax phone
`
`numberfor 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
`
`

`

`Application/Control Number: 12/911,274
`Art Unit: 2872
`
`Page 12
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) 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 moreinformation about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Alessandro Amari/
`Primary Examiner, Art Unit 2872
`
`Patent Owner Magna - Ex. 2004, p. 13
`Patent Owner Magna- Ex. 2004, p. 13
`
`

`

`PATENT
`DONO9 P-1651
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Group
`Examiner
`Applicant
`Serial No,
`Filing Date
`For
`
`2872
`:
`: Alessandro V. Amari
`: Niall R, Lynam
`:
` 12/911,274
`: October 25, 2010
`:
`EXTERIOR SIDEVIEW MIRROR SYSTEM
`
`Mail Stop Amendment
`Commissionerfor Patents
`P.O, Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`REQUEST FOR RECONSIDERATION
`
`Responsive to the Office Action mailed October 31, 2011, Applicants wish to
`
`submit the following:
`
`Remarksbegin on page 2 ofthis paper.
`
`A Terminal Disclaimeris attached.
`
`A Declaration under Rule 131(a) is attached,
`
`Patent Owner Magna - Ex. 2004, p. 14
`Patent Owner Magna- Ex. 2004, p. 14
`
`

`

`Applicant
`SerialNo.
`Page
`
`: Niall R. Lynam
`:
`12/911,274
`2
`2
`
`Remarks:
`
`The amendments and remarks presented herein are believed to be fully responsive
`
`to the Office Action dated October 31, 2011. 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 underthe judicially created
`
`doctrine of obviousness-type double patenting as being unpatentable over claims 1, 15, 25 and 26 of
`
`U.S. Patent No. 7,934,843, Enclosed herewith is a Terminal Disclaimer with respectto U.S,
`
`Patent No. 7,934,843. The basis for the double-patenting rejection is obviated. Accordingly,
`
`withdrawalofthe 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 drawnto 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 Lynam, U.S. Publication No. US 2002/0072026 ("Lynam '026"). Applicant
`
`respectfully traverses.
`
`Patent Owner Magna - Ex. 2004, p. 15
`Patent Owner Magna- Ex. 2004, p. 15
`
`

`

`Applicant
`Serial No.
`Page
`
`: Niall R. Lynam
`:
` 12/911,274
`:
`3
`
`Applicant submits that Lynam '026is not prior art under 35 U.S.C. §102(e).
`
`Lynam '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 60/471,872),
`
`Thus, Lynam '026 published priorto the priority date of the presently claimed invention and
`
`Lynam '026 cannot becited as prior art under 35 U.S.C. §102(e).
`
`Also, because the present application has a priority date of May 20, 2003thatis
`
`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 inatleast
`
`the independentclaims prior to the effective date of Lynam '026, Applicant respectfully submits
`
`that Lynam '026is also not prior art under 35 U.S.C. §102(a).
`
`The present application is a continuation of U.S. patent application Ser. No.
`
`12/851,045, filed August 5, 2010, now U.S. Pat. No. 7,934,843, which is a continuation of U.S.
`
`patent application Serial No. 12/197,666,filed August 25, 2008, now U.S. Patent No. 7,842,154,
`
`whichis a division of U.S. patent application Serial No. 10/709,434,filed May 5, 2004, now U.S.
`
`Patent No. 7,420,756, which claimsthe benefit of U.S. provisional application, Serial No.
`60/471,872,filed May 20, 2003.
`
`The present application incorporates by reference U.S. 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 elementreflective element substrate. The reflective
`element 12 may providea field ofview similar to the plano-auxiliary
`reflective element assembly disclosed in U.S. Pat. Nos. 6,522,451 and
`6,717,712, which are hereby incorporated herein by reference.
`
`With respectto the priority provisional application Serial No. 60/471,872, this application
`
`similarly incorporates by reference U.S. Patent No. 6,522,451 and U.S. patent application Serial
`
`No. 09/745,172,filed December 20, 2000. U.S. patent application Serial No. 09/745,172 issued
`
`
`
`Patent Owner Magna - Ex. 2004, p. 16
`Patent Owner Magna- Ex. 2004, p. 16
`
`

`

`Applicant
`SerialNo.
`Page
`
`: Niall R. Lynam
`:
`12/911,274
`:
`4
`
`as U.S. Patent No. 6,717,712. Thus, the present application and each ofthe 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 Applicantpriorto the
`
`publication date ofLynam '026, namely, June 13, 2002. The specification and drawings (Exhibit
`
`A) of U.S. patent application Serial No. 09/478,315, which was filed on January 6, 2000 by Niall
`
`R. Lynam (the sole named inventorof the present application), along with U.S. Patent No.
`
`6,522,451 (Exhibit B), which issued to Lynam from U.S. patent application Serial No.
`
`09/478,315, are submitted with the Declaration as corroborative evidence that the present
`
`invention was reduced to practice prior to the Lynam '026 publication date of June 13, 2002 (and
`
`prior to the December 20, 2000 filing date ofthe 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 reducedto practice well prior to June
`
`13, 2002, the publication date ofLynam '026, and prior to December 20, 2000,the filing date ofthe
`
`application that published as Lynam '026.
`
`Accordingly, the rejections 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
`
`respectfully requested.
`
`Patent Owner Magna - Ex. 2004, p. 17
`Patent Owner Magna- Ex. 2004, p. 17
`
`

`

`Applicant
`Serial No.
`Page
`
`: Niall R. Lynam
`:
` 12/911,274
`:
`5
`
`Claims 20-29 and 39-65 are pending in the application. Applicantrespectfully
`
`submits that claims 20-29 and 39-65 are in condition for allowance and a notice to that effect is
`
`earnestly and respectfully requested.
`
`Respectfully submitted,
`
`NIALL R. LYNAM
`
`By: Gardner, Linn, Burkhart & Flory, LLP
`
`Date: November3,2011. JeTimothyA;
`
`Flory
`Registration No. 42 540
`2851 Charlevoix Drive, 8.E., Suite 207
`P.O. 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
`DONO9 P-1651
`
`Group
`Examiner
`Applicant
`Serial No.
`Filing Date
`For
`
`2872
`:
`: Alessandro V. Amari
`> Niall R. Lynam
`:
` 12/911,274
`: October 25, 2010
`:
`EXTERIOR SIDEVIEW MIRROR SYSTEM
`
`Mail Stop Amendment
`Commissioner for Patents
`Washington, D.C. 20231
`
`
`DECLARATION UNDER RULE131 (a)
`
`Niall R. Lynam, the inventor and Applicant in the above referenced patent application,
`declares as follows:
`
`l.
`
`Prior to June 13, 2002, the inventor and Applicant conceived ofthe claimed
`
`inventionofat least the independentclaimsasfiled in the present application. For
`
`example, and with reference to claim 20 of the present application, the inventor and
`
`Applicant conceived of an exterior sideview mirror system comprising:
`
`a, amirror housing defining a primary opening;
`
`b. asingle mirror backing plate element within said mirror housing and disposed
`adjacent to said primary opening;
`
`c.
`
`said single mirror backing plate element movable by anelectrically-operable
`actuator;
`
`d. amain 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 througha first primary field of view;
`
`e.
`
`an auxiliary non-plano curved mirror element fixedly secured to and supported
`by said single mirror backing plate element and disposed adjacent to said main
`plano mirror element, said auxiliary non-plano curved mirror element defined
`by a single radius ofcurvature differing from said main plano mirror element
`
`Patent Owner Magna - Ex. 2004, p. 19
`Patent Owner Magna- Ex. 2004, p. 19
`
`

`

`Applicant
`Serial No.
`Page
`
`Niall R. Lynam
`12/911,274
`2
`
`such that said auxiliary non-plano curved mirror element provides a second
`auxilia