`
`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. ISplo,gov
`
` APPLICATION NO.
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`Niall R. Lynam
`
`DONO9 P-1852
`
`6002
`
`13/590,854
`
`FILING DATE
`
`08/21/2012
`
`:
`
`.
`
`,
`
`2851 Charlevoix Dr.
`SE, Suite 207
`
`Gardner, Linn, Burkhart & Flory, LLP ne
`
`EXAMINER
`
`AMARI, ALESSANDRO V
`
`Coal nat Gale 2872
`
` NOTIFICATION DATE
`
`04/23/2013
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`sytsma@ elbf.com
`mason @ glbf.com
`patents @ gIbf.com
`
`PTOL-90A (Rev. 04/07)
`
`Patent Owner Magna - Ex. 2008, p. 1
`Patent Owner Magna- Ex. 2008, p. 1
`
`

`

`
`
`
`Application No.
`Applicant(s)
`13/590,854
`LYNAM, NIALL R.
`
`Examiner
`Art Unit
`AIA(First Inventorto File)
`ALESSANDRO AMARI
`2872
`iia
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`Office Action Summary
`
`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.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`-
`IPNO 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 months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`1)] Responsive to communication(s) filedon
`(] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a)C] This action is FINAL.
`2b)EX] This action is non-final.
`3)L Anelection was madebythe applicant in responseto a restriction requirement set forth during the interview on
`___; the restriction requirement and election have been incorporatedinto this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
`5)] Claim(s) 1-117 is/are pending in the application.
`5a) Of the aboveclaim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-17 is/are rejected.
`8)L] Claim(s)___ is/are objected to.
`
`9)0 Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
` h/index.isp or send an inquiry to PPHfeedback@uspto.aov.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)] The drawing(s)filed on 27 August 2012 is/are: a)[X] accepted or b)[J] 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).
`
`Priority under 35 U.S.C. § 119
`12)L] Acknowledgmentis madeof a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f).
`Certified copies:
`a)JL All
`b)L] Some* c)L] None of the:
`1.1 Certified copies of the priority documents have been received.
`2.1] Certified copies of the priority documents have been received in Application No.
`3.0] Copies ofthe certified copies of 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.
`Interim copies:
`a) All
`b)L) Some
`
`Interim copies ofthe priority documents have beenreceived.
`
`
`
`c)L] None of the:
`
`Attachment(s)
`1) 4 Notice of References Cited (PTO-892)
`‘
`:
`2) kK] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date 12/19/2012
`U.S, Patent and Trademark Office
`PTOL-326 (Rev. 03-13)
`
`3) CT] Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`Oo Other:
`her:_
`
`4)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20130417
`
`Patent Owner Magna - Ex. 2008, p. 2
`Patent Owner Magna- Ex. 2008, p. 2
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 2
`
`DETAILED ACTION
`
`Double Patenting
`
`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 notidentical, 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
`
`USPQ2d 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 timelyfiled 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
`
`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.
`
`Patent Owner Magna - Ex. 2008, p. 3
`Patent Owner Magna- Ex. 2008, p. 3
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 3
`
`Effective January 1, 1994, a registered attorney or agentof record may signa
`
`terminal disclaimer. A terminal disclaimer signed by the assignee mustfully comply with
`
`37 CFR 3.73(b).
`
`Claims 1, 4 and 7 are rejected on the ground of nonstatutory obviousness-type
`
`double patenting as being unpatentable overclaims 1, 2, 10 and 11 of U.S. Patent No.
`
`8,128,243 in view of Davis US 3,826,563.
`
`Claims 1, 4, 7 of the instant application are broader in scope than thoseof claims
`
`1, 2, 10 and 11 of US 8,128,243 and therefore teach the invention exceptfor the
`
`bracket. Davis teaches a bracket (14, Fig. 1) fixedly secured to a motor vehicle.
`
`It
`
`would have been obvious to one having ordinary skill in the art at the time the invention
`
`was madeto utilize the bracket as taught by Davis in combination with US 8,128,243in
`
`order to securely fasten the mirror to the vehicle.
`
`Claims 1, 4 and 7 are rejected on the ground of nonstatutory obviousness-type
`
`double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. US
`
`7,934,843 in view of Davis US 3,826,563.
`
`Claims 1, 4, 7 of the instant application are broader in scope than those of claims
`
`1 and 4 of US 7,934,843 and therefore teach the invention except for the bracket. Davis
`
`teaches a bracket(14, Fig. 1) fixedly secured to a motor vehicle.
`
`It would have been
`
`obvious to one having ordinary skill in the art at the time the invention was madeto
`
`utilize the bracket as taught by Davis in combination with US 7,934,843 in orderto
`
`securely fasten the mirror to the vehicle.
`
`Patent Owner Magna - Ex. 2008, p. 4
`Patent Owner Magna- Ex. 2008, p. 4
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 4
`
`Claim Rejections - 35 USC § 102
`
`Thefollowing 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 —
`
`(b) the invention was patented or describedin a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`(e) the invention was describedin (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
`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
`only if the international application designated the United States and was published under Article 21 (2)
`of such treaty in the English language.
`
`Claims 1, 2, 4, 5, 7, 8, 10 and 11 are rejected under 35 U.S.C. 102(e) as being
`
`anticipated by Lynam et al US 2002/0072026.
`
`The applied reference has a common inventor with the instant application.
`
`Based upontheearlier 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 claimedin
`
`the reference wasderived 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 1, 4 and 7, Lynam discloses (see Figs. 2, 5, 6, 8) an exterior
`
`rearview mirror assembly for a motor vehicle, said exterior rearview mirror assembly
`
`comprising: a bracket (38) fixedly secured to the motor vehicle; a mirror casing (40)
`
`securedto said bracket, said mirror casing defining a primary opening; a primary mirror
`
`(50) disposed within said primary opening for providing a view rearward of the motor
`
`vehicle through a primary field of view, said primary mirror defining a primary plane; a
`
`Patent Owner Magna - Ex. 2008, p. 5
`Patent Owner Magna- Ex. 2008, p. 5
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 5
`
`spotting mirror (55) spaced apart from said primary mirror, said spotting mirror
`
`extending through a secondary plane different from said primary plane as shownin
`
`Figures 11, 12; wherein said spotting mirror is at an angle relative to said primary mirror
`
`as shownin Figure 12; a divider (65, 3306) extending betweensaid primary mirror and
`
`said spotting mirror to separate said primary and secondary mirrors visually; and
`
`wherein said primary mirror comprises oneof (a) a generally flat glass substrate having
`
`a surface 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 [0043] and
`
`[0047].
`
`Regarding claims 2, 5 and 8, Lynam discloses that said spotting mirror is forward
`
`of said primary plane as shownin Figures 12 and 13 and as describedin [0074].
`
`Regarding claim 10, Lynam discloses that the secondfield of view of said
`
`spotting mirror is generally directed at least one of outwardly and downwardly with
`
`respect to the longitudinal axis of the motor vehicle whensaid exterior rearview mirror
`
`assembly is attached to the motor vehicle as described in [0073] and [0074].
`
`Regarding claim 11, Lynam disclosesthat said spotting mirror is at an angle of at
`
`least about three degreesrelative to said primary mirror as described in [0073] and
`
`[0074].
`
`Claims 1 and 3 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`Davis US 3826563.
`
`Patent Owner Magna - Ex. 2008, p. 6
`Patent Owner Magna- Ex. 2008, p. 6
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 6
`
`In regard to claim 1, Davis discloses (see Figures 1-5, 7) an exterior rearview
`
`mirror assembly for a motor vehicle, said exterior rearview mirror assembly comprising:
`
`a bracket (14 - Fig. 1) fixedly secured to the motor vehicle; a mirror casing (12 — Fig. 1)
`
`secured to said bracket, said mirror casing defining a primary opening as shownin
`
`Figures 1 and 2; a primary mirror (A) disposed within said primary opening for providing
`
`a view rearward of the motor vehicle through a primary field of view as shownin Figure
`
`4, said primary mirror defining a primary plane; a spotting mirror (B) spaced apart from
`
`said primary mirror as shownin Figure 1, said spotting mirror extending through a
`
`secondary plane different from said primary plane as shownin Figure 2; and a divider
`
`(see 56 bracketin Fig. 7 which includes divider) extending between said primary mirror
`
`and said spotting mirror to separate said primary and secondary mirrors visually.
`
`Regarding claim 3, Davis discloses that said spotting mirror is rearward of said
`
`primary plane as shownin Figures 1 and 2.
`
`Claim Rejections - 35 USC § 103
`
`Thefollowing is a quotation of 35 U.S.C. 103(a) which forms thebasisfor all
`
`obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 ofthistitle, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obviousatthe time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`Claims 4, 6, 7, 9 and 11 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Davis US 3826563 in view of Edelman US 5005962.
`
`Patent Owner Magna - Ex. 2008, p. 7
`Patent Owner Magna- Ex. 2008, p. 7
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 7
`
`In regard to claims 4 and 7, Davis teaches (see Figures 1-5, 7) an exterior
`
`rearview mirror assembly for a motor vehicle, said exterior rearview mirror assembly
`
`comprising: a bracket (14 - Fig. 1) fixedly secured to the motor vehicle; a mirror casing
`
`(12 — Fig. 1) secured to said bracket, said mirror casing defining a primary opening as
`
`shownin Figures 1 and 2; a primary mirror (A) disposed within said primary openingfor
`
`providing a view rearward of the motor vehicle through a primary field of view as shown
`
`in Figure 4, said primary mirror defining a primary plane; a spotting mirror (B) spaced
`
`apart from said primary mirror as shownin Figure 1, said spotting mirror extending
`
`through a secondaryplane different from said primary plane as shownin Figure 2;
`
`wherein said spotting mirror is at an angle relative to said primary mirror as shownin
`
`Figures 1 and 2; and a divider (see 56 bracketin Fig. 7 which includesdivider)
`
`extending betweensaid primary mirror and said spotting mirror to separate said primary
`
`and secondary mirrors visually. However, in regard to claims 4 and 7, Davis does not
`
`teach that said primary mirror comprises one of (a) a generally flat glass substrate
`
`having a surface 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.
`
`In regard to claims 4 and 7, Edelman teaches (see Fig. 4) (a) a primary mirror
`
`comprising a generally flat glass substrate having a surface 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 describedin col. 2, lines 48-55.
`
`Patent Owner Magna - Ex. 2008, p. 8
`Patent Owner Magna- Ex. 2008, p. 8
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 8
`
`It would have been obviousto one having ordinary skill in the art at the time the
`
`invention was madeto have a mirror comprise oneof a generally flat glass substrate
`
`having a surface coated with a metallic reflector coating (5) and (b) a generallyflat
`
`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 taught by Edelman
`
`for the primary mirror of Davis in order to provide a clear, highly reflective surface for
`
`optimum visual results.
`
`Regarding claims 6 and 9, Davis discloses that said spotting mirror is rearward of
`
`said primary plane as shownin Figures 1 and 2.
`
`Regarding claim 11, Davis teaches that said spotting mirror is at an angle of at
`
`least about three degreesrelative to said primary mirror as describedin col. 3, lines 6-
`
`Te:
`
`Claims 1-3 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Platzer, Jr. US 7097312 in view of Davis US 3826563.
`
`In regard to claim 1, Platzer, Jr. teaches (see for example, Figs. 16, 20-22, 26-
`
`28) an exterior rearview mirror assembly for a motor vehicle, said exterior rearview
`
`mirror assembly comprising: a primary mirror (76, 88) disposed within said primary
`
`opening for providing a view rearward of the motorvehicle through a primaryfield of
`
`view, said primary mirror defining a primary plane as shownin Figures 21 and 22;a
`
`spotting mirror (78, 90) spaced apart from said primary mirror, said spotting mirror
`
`extending through a secondary planedifferent from said primary plane as shownin
`
`Patent Owner Magna - Ex. 2008, p. 9
`Patent Owner Magna- Ex. 2008, p. 9
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 9
`
`Figures 21 and 22; and a divider (98) extending betweensaid primary mirror and said
`
`spotting mirror to separate said primary and secondary mirrors visually as described in
`
`col. 10, lines 49-67, and col. 11, lines 1-62.
`
`However, in regard to claim 1, Platzer, Jr. does not teach a bracketfixedly
`
`securedto the motor vehicle; a mirror casing secured to said bracket, said mirror casing
`
`defining a primary opening.
`
`In regard to claim 1, Davis teaches (see Fig. 1) a bracket (14) fixedly secured to
`
`the motor vehicle; a mirror casing (12) secured to said bracket, said mirror casing
`
`defining a primary opening as shownin Figures 1 and 2.
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was madeto incorporate the bracket and mirror casing of Davis with the mirror
`
`of Platzer, Jr., in order to provide for a secure attachmentof the mirror to the automobile
`
`and to provide for protection for the mirror from road hazards.
`
`Regarding claim 2, Platzer, Jr. teaches that said spotting mirror is forward of said
`
`primary plane as shownin Figures 21 and 22 and as described in col. 10, lines 49-67.
`
`Regarding claim 3, Platzer, Jr. teaches that said spotting mirror is rearward of
`
`said primary plane as shownin Figures 26-28 and as describedin col. 10, lines 49-67.
`
`Claims 4-11 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Platzer, Jr. US 7097312 in view of Davis US 3826563 and further in view of Edelman
`
`US 5005962.
`
`Patent Owner Magna - Ex. 2008, p. 10
`Patent Owner Magna- Ex. 2008, p. 10
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 10
`
`In regard to claims 4 and 7, Platzer, Jr. teaches (see for example, Figs. 16, 20-
`
`22, 26-28) an exterior rearview mirror assembly for a motor vehicle, said exterior
`
`rearview mirror assembly comprising: a primary mirror (76, 88) disposed within said
`
`primary opening for providing a view rearward of the motor vehicle through a primary
`
`field of view, said primary mirror defining a primary plane as shownin Figures 21 and
`
`22; a spotting mirror (78, 90) spaced apart from said primary mirror, said spotting mirror
`
`extending through a secondary plane different from said primary plane as shownin
`
`Figures 21 and 22; wherein said spotting mirror is at an angle relative to said primary
`
`mirror; as shownin Figures 21 and 22 and 27 and 28; and a divider (98) extending
`
`betweensaid primary mirror and said spotting mirror to separate said primary and
`
`secondary mirrors visually as describedin col. 10, lines 49-67, and col. 11, lines 1-62.
`
`However,in regard to claims 4 and 7, Platzer, Jr. does not teach a bracketfixedly
`
`securedto the motor vehicle; a mirror casing secured to said bracket, said mirror casing
`
`defining a primary opening.
`
`In regard to claims 4 and 7, Davis teaches (see Fig. 1) a bracket (14)fixedly
`
`secured to the motor vehicle; a mirror casing (12) secured to said bracket, said mirror
`
`casing defining a primary opening as shownin Figures 1 and 2.
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was madeto incorporate the bracket and mirror casing of Davis with the mirror
`
`of Platzer, Jr., in order to provide for a secure attachmentof the mirror to the automobile
`
`and to providefor protection for the mirror from road hazards.
`
`Patent Owner Magna - Ex. 2008, p. 11
`Patent Owner Magna- Ex. 2008, p. 11
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 11
`
`However,in further regard to claims 4 and 7, Platzer-Davis does not teach that
`
`said primary mirror comprises one of (a) a generally flat glass substrate having a
`
`surface 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.
`
`In regard to claims 4 and 7,
`
`Edelman teaches(see Fig. 4) (a) a primary mirror comprising a generally flat glass
`
`substrate having a surface 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 col. 2, lines 48-55.
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was madeto have a mirror comprise one of a generally flat glass substrate
`
`having a surface coated with a metallic reflector coating (5) and (b) a generallyflat
`
`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 taught by Edelman
`
`for the primary mirror of Platzer-Davis in orderto provide a clear, highly reflective
`
`surface for optimum visual results.
`
`Regarding claims 5 and 8, Platzer, Jr. teaches that said spotting mirror is forward
`
`of said primary plane as shownin Figures 21 and 22 and as describedin col. 10, lines
`
`49-67.
`
`Patent Owner Magna - Ex. 2008, p. 12
`Patent Owner Magna- Ex. 2008, p. 12
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 12
`
`Regarding claims 6 and 9, Platzer, Jr. teaches that said spotting mirror is
`
`rearward of said primary plane as shownin Figures 26-28 and as describedin col. 10,
`
`lines 49-67.
`
`Regarding claim 10, Platzer, Jr. teaches that the secondfield of view of said
`
`spotting mirror is generally directed at least one of outwardly and downwardly with
`
`respectto the longitudinal axis of the motor vehicle when said exterior rearview mirror
`
`assembly is attached to the motor vehicle as shownin Figure 3.
`
`Regarding claim 11, the Platzer, Jr. -Davis-Edelman combination teaches the
`
`invention as set forth above but does not teach that said spotting mirror is at an angle of
`
`at least about three degreesrelative to said primary mirror.
`
`It would have been obvious
`
`to one having ordinary skill in the art at the time the invention was made to have the
`
`spotting mirror be at an angle of at least about three degreesrelative to said primary
`
`mirror, since it has been held that where the general conditions of a claim are disclosed
`
`in the prior art, discovering the optimum or workable rangesinvolvesonly routine skill in
`
`the art. One would have been motivated to adjust the spotting mirror to be at an angle
`
`of at least about three degreesrelative to said primary mirror in order to provide for the
`
`optimum view of the blind spot area to the driver.
`
`/n re Aller, 220 F.2d 454, 456, 105
`
`USPQ 233, 235
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examinershould be directed to ALESSANDRO AMARI whosetelephone numberis
`
`Patent Owner Magna - Ex. 2008, p. 13
`Patent Owner Magna- Ex. 2008, p. 13
`
`

`

`Application/Control Number: 13/590,854
`Art Unit: 2872
`
`Page 13
`
`(571)272-2306. The examiner can normally be reached on Monday-Friday 8:00 AM to
`
`5:30 PM.
`
`lf attempts to reach the examinerby telephone are unsuccessful, the examiner's
`
`supervisor, Thomas Pham can be reached on (571) 272-3689. The fax phone number
`
`for the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`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 more information 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. 2008, p. 14
`Patent Owner Magna- Ex. 2008, p. 14
`
`

`

`PATENT
`DONOS P-1852
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`2872
`Group Art Unit:
`Examiner
`: Alessandro V. Amari
`Inventor
`:
`Niall R. Llynam
`Serial No.
`:
`13/590,854
`Filed
`: August 21, 2012
`For
`:
`EXTERIOR REARVIEW MIRROR ASSEMBLY
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DearSir:
`
`RESPONSE
`
`Responsive to the Office Action mailed April 23, 2013, Applicant wishes to amend
`
`the application as follows:
`
`Amendmentsto the Claimsare reflected in thelisting of claims which begins on page
`
`2 of this paper.
`
`Remarksbegin on page7 of this paper.
`
`A Terminal Disclaimer is attached.
`
`A131 Declaration is attached.
`
`Patent Owner Magna - Ex. 2008, p. 15
`Patent Owner Magna- Ex. 2008, p. 15
`
`

`

`Inventor
`Serial No.
`Page
`
`:
`:
`:
`
`Niall R. Lynam
`13/590,854
`2
`
`Amendments to the Claims:
`
`Thislisting of claims will replace all prior versions andlistings of claims in the
`
`present application:
`
`1
`
`(currently amended): An exterior rearview mirror assembly for a motor vehicle, said
`
`exterior rearview mirror assembly comprising:
`
`a bracketfixedly secured to the motorvehicle;
`
`a mirror casing secured to said bracket, said mirror casing defining a primary
`
`opening;
`
`a primary mirror disposed within said primary opening for providing a view
`
`rearward of the motor vehicle through a primary field of view, said primary mirror
`
`defining a primary plane;
`
`a spotting mirror spaced apart from said primary mirror, said spotting mirror
`
`extending through a secondary plane different from said primary plane; ard
`
`wherein said primary mirror and said spotting mirror are supported on a mirror
`
`backing plate. and wherein saidprimary mirror is supported at a first portion of said
`
`mirror backing plate and said spotting mirror is supported at a second portion of said
`
`mirror backing plate;
`
`a divider_of said mirror backing plate extending between said primary mirror and
`
`said spotting mirror to separate said primary and secondary mirrors visually;
`
`wherein said divider extends from said mirror backing plate and demarcates said
`
`first portion of said mirror backing plate from said second portion of said mirror backing
`
`plate:
`
`wherein said first portion of said mirror backing plate, said second portion of said
`
`mirror backing plate and said divider are commonly injection molded to form said mirror
`
`backing plate: and
`
`Patent Owner Magna - Ex. 2008, p. 16
`Patent Owner Magna- Ex. 2008, p. 16
`
`

`

`Inventor
`Serial No.
`Page
`
`:
`:
`:
`
`Niall R. Lynam
`13/590,854
`3
`
`wherein, when supported at said second portion of said mirror backingplate,
`
`said spotting mirror is tilted downwardly with respect to said primary mirror at an angle
`
`in a range of about 0.75 degrees to about 5 degrees.
`
`2 (original): An exterior rearview mirror assembly as setforth in claim 1 wherein said
`
`spotting mirror is forward of said primary plane.
`
`3 (original): An exterior rearview mirror assembly as setforth in claim 1 wherein said
`
`spotting mirror is rearward of said primary plane.
`
`4 (currently amended): An exterior rearview mirror assembly for a motor vehicle, said
`
`exterior rearview mirror assembly comprising:
`
`a bracketfixedly secured to the motor vehicle;
`
`a mirror casing secured to said bracket, said mirror casing defining a primary
`
`opening;
`
`a primary mirror disposed within said primary opening for providing a view
`
`rearward of the motor vehicle through a primary field of view, said primary mirror
`
`defining a primary plane;
`
`a spotting mirror spaced apart from said primary mirror, said spotting mirror
`
`extending through a secondary plane different from said primary plane;
`
`wherein said primary mirror and said spotting mirror are supported on a mirror
`
`backing plate, and wherein said primary mirror is supported at a first portion of said
`
`mirror backing plate and said spotting mirror is supported at a second portion of said
`
`mirror backing plate:
`
`a divider of said mirror backing plate extending betweensaid primary mirror and
`
`said spotting mirror to separate said primary and secondary mirrors visually; and
`
`wherein said primary mirror comprises one of (a) a generally flat glass substrate
`
`having a surface coated with a metallic reflector coating and (b) a generally flat
`
`Patent Owner Magna - Ex. 2008, p. 17
`Patent Owner Magna- Ex. 2008, p. 17
`
`

`

`Inventor
`Serial No.
`Page
`
`:
`:
`7
`
`Niall R. Lynam
`13/590,854
`4
`
`polymeric substrate having a thin glass element applied to a surface thereof and with
`
`an opposing surface thereof having a reflecting layer applied thereto;
`
`wherein said divider extends from said mirror backing plate and demarcates said
`
`first portion of said mirror backing plate from said second portion of said mirror backing
`
`plate:
`
`wherein said first portion of said mirror backing plate, said second portion of said
`
`mirror backing plate and said divider are commoniy injection molded to form said mirror
`
`backing plate; and
`
`wherein, when supported at said second portion of said mirror backing plate,
`
`said spotting mirror is tilted downwardly with respect to said primary mirror at an angle
`
`ina range of about 0.75 degrees to about 5 degrees.
`
`5 (original): An exterior rearview mirror assembly as setforth in claim 4 wherein said
`
`spotting mirror is forward of said primary plane.
`
`6 (original): An exterior rearview mirror assembly as setforth in claim 4 wherein said
`
`spotting mirror is rearward of said primary plane.
`
`7 (currently amended): An exterior rearview mirror assembly for a motor vehicle, said
`
`exterior rearview mirror assembly comprising:
`
`a bracketfixedly secured to the motorvehicle;
`
`a mirror casing secured to said bracket, said mirror casing defining a primary
`
`opening;
`
`a primary mirror disposed within said primary opening for providing a view
`
`rearward of the motor vehicle through a primary field of view, said primary mirror
`
`defining a primary plane;
`
`a spotting mirror spaced apart from said primary mirror, said spotting mirror
`
`extending through a secondary plane different from said primary plane;
`
`wherein said spotting mirror is at an angle relative to said primary mirror;
`
`Patent Owner Magna - Ex. 2008, p. 18
`Patent Owner Magna- Ex. 2008, p. 18
`
`

`

`Inventor
`Serial No.
`Page
`
`:
`:
`:
`
`Niall R. Lynam
`13/590,854
`6
`
`wherein said primary mirror and said spotting mirror are supported on a mirror
`
`backing plate. and wherein said primary mirror is supported at a first portion of said
`
`mirror backing plate and said spotting mirror is supported at a second portion of said
`
`mirror backing plate;
`
`a divider of said backing plate extending between said primary mirror and said
`
`spotting mirror to separate said primary and secondary mirrors visually