`
`UNITED STATES PATENT AND TRADEMARK OFF“ .‘F.
`
`['NITICD S'I'Am‘i DEPARTEHENT OF COMMERCE
`L'njtetl Stalls Patent and Trademark OII'Ice
`Addmss: COMMISSIONER 130R I’A'I‘IZN'l'S
`PI} Box [430
`Alexandria. \a’itginin 22113-1451!
`www.mplngnv
`
`APPLICA'HON N0.
`FILING DATE
`lilRS'I'NAMEI) INVENI‘OR
`A'E'I‘ORNEY DOCKET NO.
`CONFIRMATION N0.
`
`1 315911.854
`0812112012
`Niall R. Lynam
`[)ONm P— 1 852
`(>002
`
`‘
`,
`1
`hx \MlMaR
`(aardncr. 1.11111. Burkharl & [-‘lory. LLI’ —
`285l Charlemix [)r.
`AMARI. ALESSANDROV
`SE. Suite 20'!
`cm
`
`11149546 2371
`
`NIJ'I'D‘ltJA'l'ION DATE
`DELIVER ‘1' MODE
`
`()4!231201 3
`ELECTRONIC
`
`Please find below andfor attached an Office communication concerning this application or proceeding.
`
`The time period f01'rep1y, 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}:
`syt5111a@g[bf.com
`mason C0.) glbfcom
`patents @ glbfcont
`
`PTO] .—90A (Rev. 04M?)
`
`Patent Owner Magna - Ex. 2008, p. 1
`Patent Owner Magna - Ex. 2008, p. 1
`
`

`

`
`Application No.
`Applicantts)
`
` 131590.854 LYNAM, NIALL Ft.
`Office Action Summary
`Examiner
`Art Unit
`AIA (First Inventor to File)
`
`
`2872ALESSANDRO AMARI a?“
`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address —
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions ol time may be available under the provisions of 3? CFR 1.136(a}.
`In no evenI. however. may a reply be timely liled
`after SIX (6] MONTHS from the mailing da1e of this communication.
`If No period lot reply is specified above. the maximum statutory period will apply and will expire SIX (6‘; MONTHS from the mailing date of Ihis communication.
`Failure to reply within the set or extended period for reply will. by statute. cause the applicalion to become ABANDONED (35 USC. § 133}.
`Any reply received by the Olfice later than three months after the mailing date of thIs communication. even if timeiy filed. may reduce any
`earned patent term adjustment See 3? CFR 1.?04ib).
`
`-
`.
`
`Status
`
`1)[:| Responsive to communicationts) filed on _.
`I] A declarationtsiiaffidavit(si under 37 CFR 1.130(b) wasiwere filed on
`
`2mm This action is non—final.
`2a)[:] This action is FINAL.
`3“] An election was made by the appiicant in response to a restriction requirement set forth during the interview on
`_; the restriction requirement and election have been incorporated into this action.
`
`4)I:I Since this application is in condition tor allowance except for formal matters. prosecution as to the merits is
`closed in accordance with the practice under Ex parte Ouayie. 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5% Claim(s) fl isiare pending in the application.
`
`5a) Of the above claim(s)
`isiare withdrawn from consideration.
`
`Sit] Claim(s) _ isiare allowed.
`mtg Claimts)_t- it isiare rejected.
`Bit] Claim(s)_ isiare objected to.
`
`9):] Claim (5)
`are subject to restriction andror election requirement.
`* If any claims have been determined allowable. you may be eligibie to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding appiication. For more information. please see
`
`ht’ Lirwwwus to. out atentsiinit events!
`hiindexIs or send an inquiry to PPeredback-fi): usmogov.
`
`Application Papers
`toil] The Specification is objected to by the Examiner.
`1 HE The drawingts) flied on 21 August 20i2 isiare: aifi accepted or bilj objected to by the Examiner.
`Applicant may not request that any objection to the drawingts) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheetts) including the correction is required if the drawingis} is objected to. See 37 CFR 1.121 id).
`
`Priority under 35 U.S.C. § 119
`12”: Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(aJ-(di or (f).
`Certified copies:
`ailj All
`bit] Some ‘ oil] None of the:
`1.I:| Certified copies of the priority documents have been received.
`.
`2.[:I Certified copies of the priority documents have been received in Application No.
`3.1] Copies of the 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:
`
`ail] All bit] Some
`
`ciE] None of the:
`
`Interim copies of the priority documents have been received.
`
`Attachmentts)
`
`3} |:| meme“; Summary {PTO-413)
`1} X Notice of References Cited (PTO-892}
`Paper Noisiiiv'lail Date. _
`.
`.
`2) E information Disclosure Statemenflsi (PTorsaroa)
`I:I 01
`.
`Paper NorsyMaiI Date rarsrzcrz.
`4’
`“'3"—
`
`U S Palenl and Trademark Ollice
`PTOL-SQE‘I (Rev. 03-13)
`Office Action Summary
`Pan cl Paper NoJMail Date 20130417
`
`
`
`
`
`Patent Owner Magna - Ex. 2008, p. 2
`Patent Owner Magna - Ex. 2008, p. 2
`
`

`

`Applicatioanontrol Number: 13l590,854
`Art Unit: 2872
`
`Page 2
`
`DETAILED ACTION
`
`Double Parenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the "right to exclude" granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory
`
`obviousness-type double patenting rejection is appropriate where the conflicting claims
`
`are not identical, but at least one examined application claim is not patentably distinct
`
`from the reference claim(s) because the examined application claim is either anticipated
`
`by, or would have been obvious over, the reference claim(s). See, e.g., in re Berg, 140
`
`F.3d 1428, 46 USPO2d 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 USPO 619 (CCPA 1970); and in re Thorfngron, 418 F.2d 528, 163
`
`USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 3? CFR 1.321 (c) or 1 .321(d)
`
`may be used to overcome an actual or provisional rejection based on a nonstatutory
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`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
`
`

`

`ApplicationfControl Number: 13f590,854
`Art Unit: 2872
`
`Page 3
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.73(b).
`
`Claims 1. 4 and 7 are rejected on the ground of nonstatutory obviousness-type
`
`double patenting as being unpatentabie over claims 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 those of claims
`
`1, 2, 10 and 11 of US 8,128,243 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 made to utilize the bracket as taught by Davis in combination with US 8,128,243 in
`
`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 unpatentabie 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 made to
`
`utilize the bracket as taught by Davis in combination with US 7,934,843 in order to
`
`securely fasten the mirror to the vehicle.
`
`Patent Owner Magna - Ex. 2008, p. 4
`Patent Owner Magna - Ex. 2008, p. 4
`
`

`

`ApplicationtControl Number: 13f590,854
`Art Unit: 2872
`
`Page 4
`
`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 under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in 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 described in (1} an application for patent, published under section 122(1)), 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 tiled 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 2002t0072028.
`
`The applied reference has a common inventor with the instant application.
`
`Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art
`
`under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 102(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 inventor of this application and is thus not the
`
`invention "by another,” or by an appropriate showing under 37 CFR 1.131.
`
`In regard to claims 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)
`
`secured to 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
`
`

`

`Applicatioanontrol Number: 137590854
`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 shown in
`
`Figures 11, 12; wherein said spotting mirror is at an angle relative to said primary mirror
`
`as shown in Figure 12; a divider (65, 3308) extending between said 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 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 shown in Figures 12 and 13 and as described in [0074].
`
`Regarding claim 10, Lynam discloses that the second field 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 when said exterior rearview mirror
`
`assembly is attached to the motor vehicle as described in [0073] and [0074].
`
`Regarding claim 11, Lynam discloses that said spotting mirror is at an angle of at
`
`least about three degrees relative to said primary mirror as described in [0073] and
`
`[0074].
`
`Claims 1 and 3 are rejected under 35 U.S.C. 102(k)) as being anticipated by
`
`Davis US 3828583.
`
`Patent Owner Magna - Ex. 2008, p. 6
`Patent Owner Magna - EX. 2008, p. 6
`
`

`

`ApplicationiControl Number: 13i590,854
`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 shown in
`
`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 shown in Figure
`
`4, said primary mirror defining a primary plane; a spotting mirror (B) spaced apart from
`
`said primary mirror as shown in Figure 1, said spotting mirror extending through a
`
`secondary piane different from said primary plane as shown in Figure 2; and a divider
`
`(see 56 bracket in 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 reanivard of said
`
`primary plane as shown in Figures 1 and 2.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`torth in section 102 of this title, it 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 obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentabiiity 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(3) 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
`
`

`

`ApplicationiControl Number: 13590354
`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
`
`shown in 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 shown
`
`in Figure 4, said primary mirror defining a primary plane; a spotting mirror (B) spaced
`
`apart from said primary mirror as shown in Figure 1, said spotting mirror extending
`
`through a secondary plane different from said primary plane as shown in Figure 2;
`
`wherein said spotting mirror is at an angle relative to said primary mirror as shown in
`
`Figures 1 and 2; and a divider (see 56 bracket in Fig. 7 which includes divider)
`
`extending between said 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 described in col. 2, lines 48-55.
`
`Patent Owner Magna - Ex. 2008, p. 8
`Patent Owner Magna - EX. 2008, p. 8
`
`

`

`ApplicationiControl Number: 13f590,854
`Art Unit: 2872
`
`Page 8
`
`It wouid have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to have a mirror comprise one of a generally flat glass substrate
`
`having a surface coated with a metallic reflector coating (5) 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 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 shown in Figures 1 and 2.
`
`Regarding claim 11, Davis teaches that said spotting mirror is at an angle of at
`
`least about three degrees relative to said primary mirror as described in col. 3, lines 6-
`
`17.
`
`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 vehicie, said exterior rearview
`
`mirror assembly comprising: a primary mirror (76. 88) disposed within said primary
`
`Opening for providing a view reanivard of the motor vehicle through a primary field of
`
`view, said primary mirror defining a primary plane as shown in 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 shown in
`
`Patent Owner Magna - Ex. 2008, p. 9
`Patent Owner Magna - EX. 2008, p. 9
`
`

`

`ApplicationfControl Number: 13f590,854
`Art Unit: 2872
`
`Page 9
`
`Figures 21 and 22; and a divider (98) extending between said 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 bracket fixedly
`
`secured to 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 shown in Figures 1 and 2.
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to incorporate the bracket and mirror casing of Davis with the mirror
`
`of Platzer, Jr., in order to provide for a secure attachment of 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 shown in 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 shown in Figures 26-28 and as described in col. 10, lines 49-67.
`
`Claims 411 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
`
`

`

`Applicatioanontrol Number: 13f590,854
`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 shown in 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 shown in
`
`Figures 21 and 22; wherein said spotting mirror is at an angle relative to said primary
`
`mirror; as shown in Figures 21 and 22 and 27 and 28: and a divider (98) extending
`
`between said 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 claims 4 and 7, Platzer, Jr. does not teach a bracket fixedly
`
`secured to 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 shown in Figures 1 and 2.
`
`It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to incorporate the bracket and mirror casing of Davis with the mirror
`
`of Platzer, Jr., in order to provide for a secure attachment of the mirror to the automobile
`
`and to provide for protection for the mirror from road hazards.
`
`Patent Owner Magna - Ex. 2008, p. 11
`Patent Owner Magna - Ex. 2008, p. 11
`
`

`

`ApplicationfControl Number: 13f590,854
`Art Unit: 2872
`
`Page 11
`
`However, in further regard to claims 4 and 7, F’Iatzer-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 made to have a mirror comprise one of a generally flat glass substrate
`
`having a surface coated with a metallic reflector coating (5) 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 taught by Edelman
`
`for the primary mirror of Platzer-Davis in order to 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 shown in Figures 21 and 22 and as described in col. 10, lines
`
`49-67.
`
`Patent Owner Magna - Ex. 2008, p. 12
`Patent Owner Magna - Ex. 2008, p. 12
`
`

`

`Applicationi‘Control Number: 13i590,854
`Art Unit: 2872
`
`Page 12
`
`Regarding claims 6 and Q, Platzer, Jr. teaches that said spotting mirror is
`
`rearward of said primary plane as shown in Figures 26-28 and as described in col. 10,
`
`lines 49-67.
`
`Regarding claim 10, Platzer, Jr. teaches that the second field of view of said
`
`spotting mirror is generally directed at teast one of outwardly and downwardly with
`
`respect to the longitudinal axis of the motor vehicle when said exterior rearview mirror
`
`assembly is attached to the motor vehicle as shown in 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 degrees relative 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 degrees relative 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 ranges involves only 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 degrees relative to said primary mirror in order to provide for the
`
`optimum view of the blind spot area to the driver.
`
`in re Allen 220 F.2d 454, 456, 105
`
`USPQ 233, 235
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ALESSANDRO AMARI whose telephone number is
`
`Patent Owner Magna - Ex. 2008, p. 13
`Patent Owner Magna - EX. 2008, p. 13
`
`

`

`ApplicationfControl Number: 13f590,854
`Art Unit: 2872
`
`Page 13
`
`(571)272-2306. The examiner can normally be reached on Monday-Friday 8:00 AM to
`
`5:30 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, tine examiner's
`
`supervisor, Thomas Pham can be reached on (571) 272-3689. The fax phone number
`
`for the organization where this 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 Pubiic PAIR.
`
`Status information for unpublished applications is avaitable through Private PAIR only.
`
`For more information about the PAIR system, see http:i'i’pair-direct.uspto.gov. Shouid
`
`you have questions on access to 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, Gail 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`EAIessandro Amarii’
`
`Primary Examiner, Art Unit 2872
`
`Patent Owner Magna - Ex. 2008, p. 14
`Patent Owner Magna - Ex. 2008, p. 14
`
`

`

`PATENT
`DONOQ P-1852
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`2872
`Group Art Unit :
`Examiner
`: Alessandro V. Amari
`
`Inventor
`Serial No.
`
`:
`:
`
`Niall R. Lynam
`13590354
`
`Filed
`For
`
`: August 21, 2012
`:
`EXTERIOR REARVIEW MIRROR ASSEMBLY
`
`Mail Stop Amendment
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`RESPONSE
`
`Responsive to the Office Action mailed April 23, 2018, Applicant wishes to amend
`
`the application as follows:
`
`Amendments to the Claims are reflected in the listing of claims which begins on page
`
`2 of this paper.
`
`Remarks begin on page 7 of this paper.
`
`A Terminal Disclaimer is attached.
`
`A 131 Declaration is attached.
`
`Patent Owner Magna - Ex. 2008, p. 15
`Patent Owner Magna - EX. 2008, p. 15
`
`

`

`Inventor
`Serial No.
`
`Page
`
`:
`:
`
`:
`
`Niall R. Lynam
`13590354
`
`2
`
`Amendments to the Claims:
`
`This listing of claims will replace all prior versions and listings 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 bracket fixedly 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; and
`
`wherein said primary mirror and said spotting mirror are supported on a mirror
`
`backirmje. 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 piate 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 piate and demarcates said
`
`first portion of said mirror backing piate from said second portion of said mirror backing
`
`m;
`
`wherein said first portion of said mirror backing piate. said second portion of said
`
`mirror backing plate and said divider are commoniy iniection molded to form said mirror
`
`backing piate; and
`
`Patent Owner Magna - Ex. 2008, p. 16
`Patent Owner Magna - EX. 2008, p. 16
`
`

`

`Inventor
`Serial No.
`
`Page
`
`:
`:
`
`:
`
`Niall R. Lynam
`13590.854
`
`3
`
`wherein, when suggorted at said second portion of said mirror backing giate,
`
`said spotting mirror is tilted downwardly with resgect to said grimary mirror at an angle
`
`in a range of about 0.75 degrees to about 5 degrees.
`
`2 (original): An exterior rearview mirror assembly as set forth in claim 1 wherein said
`
`spotting mirror is forward of said primary plane.
`
`3 (original): An exterior rearview mirror assembly as set forth 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 bracket fixedly 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 sgotting mirror are suggorted on a mirror
`
`backing glate, and wherein said grimary mirror is supported at a first gortion of said
`
`mirror backing glate and said sgotting mirror is suggorled at a second portion of said
`
`mirror backing glate;
`
`a divider of said mirror backing glaze extending between said 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
`
`:
`:
`
`:
`
`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
`
`m;
`
`wherein said first portion of said mirror backing plate, said second portion of said
`
`mirror backing plate and said divider are commonly iniection 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
`
`in a range of about 0.75 degrees to about 5 degrees.
`
`5 (original): An exterior rearview mirror assembly as set forth in claim 4 wherein said
`
`spotting mirror is forward of said primary plane.
`
`6 (original): An exterior rearview mirror assembly as set forth 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 bracket fixedly secured to the motor vehicle;
`
`a mirror casing secured to said bracket, said rnirror 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
`13590354
`
`5
`
`wherein said grimary mirror and said sgotting mirror are suggorted on a mirror
`
`backing glate: and wherein said grimary mirror is suggorted at a first go