DETAILED ACTION
*Note in the following document:
1. Texts in italic bold format are limitations quoted either directly or conceptually from claims/descriptions disclosed in the instant application.
2. Texts in regular italic format are quoted directly from cited reference or Applicant’s arguments.
3. Texts with underlining are added by the Examiner for emphasis.
4. Texts with
5. Acronym “PHOSITA” stands for “Person Having Ordinary Skill In The Art”.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 December 2025 has been entered.
Status of Claims
This is in response to applicant’s amendment/response file on 30 December 2025, which has been entered and made of record. Claims 1 and 11 has/have been amended. Claims 6-7 has/have been added or cancelled. No Claim has been added. Claims 1-5 and 8-13 are pending in the application.
Response to Arguments
Applicant’s arguments, see p.5, filed on 30 December 2025, with respect to 35 U.S.C. §112(f) Claim Interpretation have been fully considered but they are not persuasive. Since Applicant fails to either (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, the previous 35 U.S.C. §112(f) Claim Interpretation is maintained.
Applicant’s arguments, see p.5-7, filed on 30 December 2025, with respect to the rejection(s) of Claim(s) 1 and its dependent claims under 35 USC §103 have been fully considered but are moot because the arguments do not apply to any of the references being used in the current rejection. The newly amended independent Claim(s) 1 is/are now rejected under 35 USC §103 as being unpatentable over Dubey et al. (US 2018/0188531 A1) in view of Desai et al. (US 2021/0073357 A1). See detailed rejections below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: visibility setting unit in claim 1-3 and 8-13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 9-10 and 13 are rejected under 35 U.S.C. 102(a)(a) as being anticipated by Dubey et al. (US 2018/0188531 A1) in view of Desai et al. (US 2021/0073357 A1).
Regarding Claim 1, Dubey discloses a vehicle display apparatus ([0027]: the present specification discloses a vehicle with the aforementioned transparent display) comprising:
a transparent display that is installed on a window of a vehicle ([0027]: In one embodiment, the transparent display is attached to a window of the vehicle and a power input of the display controller is connected to a power supply of the vehicle) and displays an image comprising visual content ([0054]: A selection of a privacy mode in which the displayed contents on the primary side cannot be seen on the secondary side. Dubey does not explicitly use the phrase visual content. However it would have been obvious to a PHOSITA before the effective filing date of the claimed invention that the display content is a visual content since the content is to be displayed on the transparent display);
a mask unit that is disposed to overlap the transparent display and is capable of changing a visibility of a display region of the image as viewed from outside the vehicle ([0002]: The current disclosure relates to a transparent display with a self-emissive display and a controllable masking display, wherein the displays are arranged back-to-back); and
a visibility setting unit that sets a visibility of the mask unit in response to the visual content of the image ([0054]: A selection of a privacy mode in which the displayed contents on the primary side cannot be seen on the secondary side. This is achieved by controlling the masking display accordingly. In particular, an absorption of the masking display may be adjusted such that the contents of the self-emissive display are no longer visible from the outside).
Dubey further discloses wherein the visibility setting unit reduces the visibility of the mask unit when the visual content are a target of privacy protection ([0063]: In the first mode, which is also referred to as “privacy mode” light from the OLED display is blocked out such that the displayed information is no longer visible from the secondary side).
But Dubey fails to explicitly recite the visibility setting unit that automatically sets a visibility of the mask unit in response to the visual content of the image, wherein when the visual content includes a target of privacy protection or a target of confidentiality, the visibility setting unit automatically reduces the visibility via the mask unit.
However Desai disclose automatically setting visibility of the mask unit in response to the visual content of the image, wherein when the visual content includes a target of privacy protection or a target of confidentiality, the visibility setting unit automatically reduces the visibility via the mask unit ([0024]: Implementations of the subject technology described herein provide a CGR system that provides restriction of content in a given CGR recording based at least in part on determining objects that correspond to protected content and/or user profile information including information indicating privacy preferences. In this manner, the subject system enables segmenting out particular components of a scene in the CGR recording that are restricted. Such components include physical objects and/or virtual objects that correspond to restricted components in the scene. The subject system can modify the CGR recording to filter or obscure the restricted components and provide the CGR recording for playback on a given host application. [0045]: In an implementation, the secure recording analyzer 260 analyzes recordings to identify protected items for determining restrictions in CGR content. Such protected items can be pre-tagged as being protected, or based on whether a user viewing a CGR recording has sufficient access privileges to a given item (e.g., paid content, age-restricted content, violent content, etc.), or whether persons detected in a CGR recording have a privacy flag enabled. The secure recording analyzer 260 may return information based on the analysis to the recording framework 230 (or alternatively a given editing tool) to facilitate generating a modified CGR recording. In an example, using this information, the recording framework 230 determines which virtual items to not include in a scene and/or physical objects to be obfuscated and/or not included in the scene in order to generate the modified CGR recording…). Desai further discloses computer-generated reality (CGR) can be displayed on a window of a vehicle ([0023]: There are many different types of electronic systems that enable a person to sense and/or interact with various CGR environments. Examples include mobile devices, tablet devices, projection-based systems, heads-up displays (HUDs), head mounted systems, vehicle windshields having integrated display capability, windows having integrated display capability …). Therefore it would have been obvious to a PHOSITA before the effective filing date to incorporate the teaching of Desai into that of Dubey and to include the limitation of a visibility setting unit that automatically sets a visibility of the mask unit in response to the visual content of the image, wherein when the visual content includes a target of privacy protection or a target of confidentiality, the visibility setting unit automatically reduces the visibility via the mask unit in order to provide a secure display environment to users of the transparent display.
Regarding Claim 2, Dubey discloses wherein the visibility setting unit changes the visibility by varying transparency of the mask unit ([0081]-[0083]: [0081] 1. A transparent display for a vehicle, the transparent display comprising: … a masking display, the masking display comprising an electronically adjustable absorption, and the masking display being arranged back-to-back with the self-emissive display).
Regarding Claim 3, Dubey discloses wherein the visibility setting unit reduces visibility by switching from a transparent screen to an opaque screen ([0009]: In particular, an electronically controllable absorption can refer to the switching between a transparent state and an opaque state. In other embodiments the absorption can be dimmed or assume states in between the opaque and the transparent state).
Regarding Claim 9, Dubey discloses wherein the visibility setting unit does not reduce the visibility of the mask unit when the visual content indicate information that complements a background that is visible to an occupant of a host vehicle through the transparent display, the information to be displayed assuming a state in which the background is visible ([0030]: For example, the data input may be connected to a cable to an electronic instrument cluster such that alert symbols and other information, which is displayed on the instrument cluster, can also be displayed on a car's windscreen. Thereby, a driver does not have to turn his attention away from observing the road in front of the car).
Regarding Claim 10, Dubey discloses wherein the visibility setting unit reduces the visibility of the mask unit when the visual content does not indicate information to be displayed assuming a state in which a background is visible to an occupant of a host vehicle through the transparent display ([0074]-[0075]: Depending on the ambient light conditions, the absorption of the masking display and the intensity of the OLED display is varied. For example, during fall season an evening sun glare may affect the vision negatively. In this case, the absorption of the LCD display is increased to filter out the sun radiation. In another case, an incident radiation of an oncoming car may dazzle the driver, especially when the oncoming car did not switch out the high beam. The LCD display can be controlled to filter out the head light of the oncoming car).
Regarding Claim 13, Dubey teaches the transparent display includes a selection of a privacy mode ([0054]). Therefore it would have been obvious to a PHOSITA before the effective filing date to incorporate the teaching of Dubey and to include the limitation of whether or not a visibility reduction needs to be performed by the mask unit is set for each application that displays the visual content, and the visibility setting unit sets the visibility reduction for the mask unit when setting indicating that the visibility reduction needs to be performed is provided for an application that displays the image of the visual content since it would have been obvious to a PHOSITA before the effective filing date of the claimed invention to have recognized that privacy mode could have been set by an application.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dubey et al. (US 2018/0188531 A1) in view of Desai et al. (US 2021/0073357 A1) as applied to Claim 3 above, and in view of Iwakawa et al. (US 2016/0104437 A1).
Regarding Claim 4, Dubey discloses a transparent display switches between transparent and opaque ([0009]: In particular, an electronically controllable absorption can refer to the switching between a transparent state and an opaque state. In other embodiments the absorption can be dimmed or assume states in between the opaque and the transparent state).
But Dubey modified by Desai does not explicitly recite wherein the opaque screen is a screen of a predetermined color.
However Iwakawa, in the same field of endeavor (Abstract: A window display device includes a display screen provided in a transparent rear window glass pane of a vehicle, an operating device adapted to detect an action for operating the display screen, and a control device, which displays a shade on the display screen. The shade is movable to selectively open and close the display screen based on an action performed on the operating device), discloses wherein the opaque screen is a screen of a predetermined color ([0034]: The entirety of the screen 61 can be changed among a transparent state, an opaque black state, and a translucent grey state).
Therefore it would have been obvious to a PHOSITA before the effective filing date to incorporate the teaching of Iwakawa into that of Dubey as modified and to include the limitation of wherein the opaque screen is a screen of a predetermined color in order to allow allows a shade to be freely drawn out onto and retracted from a display screen provided on a vehicle window as suggested by Iwakawa ([0002]).
Regarding Claim 5, Iwakawa further discloses wherein the predetermined color is black ([0034]: The entirety of the screen 61 can be changed among a transparent state, an opaque black state, and a translucent grey state). The same reason to combine as that of Claim 4 is applied.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Dubey et al. (US 2018/0188531 A1) in view of Desai et al. (US 2021/0073357 A1) as applied to Claim 1 above, and further in view of Yang et al. (US 2024/0036372 A1).
Regarding Claim 8, Dubey fails to disclose wherein the visibility setting unit reduces the visibility of the mask unit when the visual content is a target of external viewing.
However Yang discloses a vehicle smart window 405 that includes a dual-sided transparent LC display ([0052]). Yang discloses the vehicle smart window 405 prompting a user (e.g., a car-sharing customer), via a displayed outside image 410, to enter a rider code to gain entry to the vehicle (not shown). And at the same time the vehicle smart window 405 displays a completely different image 415 to one or more occupants inside the vehicle as illustrated in FIG. 7B ([0052]).
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Therefore it would have been obvious to a PHOSITA before the effective filing date to incorporate the teaching of Yang into that of Dubey and to include the limitation of wherein the visibility setting unit reduces the visibility of the mask unit when the visual content is a target of external viewing (Notice in Fig.7A/B users inside cannot see external image the rider is able to see) in order to allow the insider user to know the status of outside rider.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Dubey et al. (US 2018/0188531 A1) in view of Desai et al. (US 2021/0073357 A1) as applied to Claim 1 above, and further in view of Yoo et al. (US 2014/0139559A1).
Regarding Claim 11, Desai further teaches or suggests the mask unit is capable of changing a visibility of only a subpart of a display region of the transparent display, and the visibility setting unit reduces the visibility of the mask unit only for the subpart of the display region when the content to be displayed with a visibility reduction corresponds to the subpart of the display region ([0024]: Implementations of the subject technology described herein provide a CGR system that provides restriction of content in a given CGR recording based at least in part on determining objects that correspond to protected content and/or user profile information including information indicating privacy preferences. In this manner, the subject system enables segmenting out particular components of a scene in the CGR recording that are restricted. Such components include physical objects and/or virtual objects that correspond to restricted components in the scene. The subject system can modify the CGR recording to filter or obscure the restricted components and provide the CGR recording for playback on a given host application. [0045]: In an implementation, the secure recording analyzer 260 analyzes recordings to identify protected items for determining restrictions in CGR content. Such protected items can be pre-tagged as being protected, or based on whether a user viewing a CGR recording has sufficient access privileges to a given item (e.g., paid content, age-restricted content, violent content, etc.), or whether persons detected in a CGR recording have a privacy flag enabled. The secure recording analyzer 260 may return information based on the analysis to the recording framework 230 (or alternatively a given editing tool) to facilitate generating a modified CGR recording. In an example, using this information, the recording framework 230 determines which virtual items to not include in a scene and/or physical objects to be obfuscated and/or not included in the scene in order to generate the modified CGR recording…).
In addition, Yoo discloses the mask unit is capable of changing a visibility of a part of a display region of the transparent display, and the visibility setting unit reduces the visibility of the mask unit for the part of the display region when the content to be displayed with a visibility reduction corresponds to the part of the display region ([0049]: FIG. 6 shows a process of adjusting transmittance in response to a particular user function. If a security-related function such as a password input function is activated, the device 100 may block the exposure of information toward the rear of the transparent display unit 140 as shown at stages 601 and 603 by adjusting the transmittance of the transmittance adjustable panel 180 to an opaque state. Shown at stage 601 is the front of the device 100, and shown at stage 603 is the rear of the device 100. As shown at stage 603, the transmittance adjustable panel 180 may have a dim state, i.e., a less opaque state, such that information displayed on the transparent display unit 140 can be partially seen from the rear. Such adjustment of transmittance may depend on a default or user setting).
Therefore it would have been obvious to a PHOSITA before the effective filing date to incorporate the teaching of Yoo into that of Dubey as modified and to include above in order to block the exposure of information as suggested by Yoo.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dubey et al. (US 2018/0188531 A1) in view of Desai et al. (US 2021/0073357 A1) as applied to Claim 1 above, and further in view of Butts et al. (US 2015/0220991A1).
Regarding Claim 12, Dubey does not disclose wherein the visual content is associated with metadata indicating whether or not a visibility reduction needs to be performed by the mask unit, and the visibility setting unit sets the visibility of the mask unit based on the metadata.
However Butts, in the same field of endeavor, discloses the visual content is associated with metadata indicating whether or not a visibility reduction needs to be performed by the mask unit, and the visibility setting unit sets the visibility of the mask unit based on the metadata ([0013]: For example, for a target user driving vehicle 1, embodiments disclosed herein may determine that vehicle 2 is in front of vehicle 1. Vehicle 2 may be identified by any feasible method, …. Once vehicle 2 is identified as a "display vehicle," embodiments disclosed herein may determine the advertising context based one or more of the locations of the vehicles, a profile of the driver of vehicle 1, the driver's preferences, and other metadata of the driver. For example, the vehicles may be at a stop sign outside of a sporting complex, and the driver of vehicle 1 may have profile metadata indicating he enjoys soccer. Therefore, embodiments disclosed herein may display a soccer advertisement on the rear windshield of vehicle 2). Therefore it would have been obvious to a PHOSITA before the effective filing date to incorporate the teaching of Butts into that of Dubey and to include the limitation of wherein the visual content is associated with metadata indicating whether or not a visibility reduction needs to be performed by the mask unit, and the visibility setting unit sets the visibility of the mask unit based on the metadata in order to decide whether to activate the transparent display to display related advertisement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YINGCHUN HE whose telephone number is (571)270-7218. The examiner can normally be reached M-F 8:00-5:00 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao M Wu can be reached at 571-272-7761. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YINGCHUN HE/Primary Examiner, Art Unit 2613