7,577,316 B2 et al.

Patent Trials and Appeals Board

Jun 1, 2021

2018007271 (P.T.A.B. Jun. 1, 2021)

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.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,683 08/17/2012 7,577,316 B2 13557-105153.R2 1052
23363 7590 06/01/2021
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/01/2021 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GOOGLE INC.
Requester

v.

Patent of VEDERI, LLC.
Patent Owner
____________________

Appeal 2018-007271
Reexamination Control 95/000,683
Patent 7,577,316 B2
Technology Center 3900
__________________

Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF CASE
This proceeding returns to us on remand from the Federal Circuit,
vacating our previous decisions for this proceeding mailed August 15, 2016
and September 28, 2018. See Vederi, LLC v. Google LLC, 813 F. App’x
499, 501, 505 (Fed. Cir. 2020).
As background, Requester requested an inter partes reexamination
(“the Request”) of U.S. Patent No. 7,577,316 B2 (“the ’316 patent”). The
’316 patent claims priority to U.S. Applications: (1) 11/130,004 (now U.S.
Patent No. 7,239,760 B2), filed May 16, 2005, and (2) 09/758,717 (now
U.S. Patent No. 6,895,126 B2), filed on January 11, 2001. The ’316 patent,
code (60). Pursuant to 35 U.S.C. § 154(a)(2), the term of the ’316 patent
ended twenty (20) years from the filing date (i.e., January 11, 2001) of the
earliest application (i.e., U.S. Application No. 09/758,717) for which a
benefit is claimed under 35 U.S.C. §§ 120 and 121. See 35 U.S.C.
§ 154(a)(2) (2013); see also the Manual of Patent Examining Procedure
(MPEP) § 2701(I). Thus, the ’316 patent expired on January 11, 2021.1
“No amendment may be proposed for entry in an expired patent.” 37
C.F.R. § 1.530(j); see also 37 C.F.R. § 1.121(j) (referring to § 1.530). That
is, “[a]lthough the Office actions will treat proposed amendments [during a
reexamination proceeding] as though they have been entered, the proposed
amendments will not be effective until the reexamination certificate is issued

1 The MPEP states the Office should “refuse to express to any person any
opinion as to . . . the expiration date of any patent, except to the extent
necessary to carry out: . . . (C) a . . . reexamination proceeding to reexamine
the patent.” MPEP § 1701 (9th ed. rev. 10.2019 June 2020) (emphases
added).
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and published.” 37 C.F.R. § 1.530(k). Notably, “no amendment, other than
the cancellation of claims, will be incorporated into the patent by a
certificate issued after the expiration of the patent.” 37 C.F.R. § 1.530(j).
Accordingly, the reexamination proceeding will now be based on the
original patent claims of the ’316 patent. Thus, Patent Owner proposed
amendments (see, e.g., the April 22, 2013 Amendment (“Apr. 2013
Amendment”)) to the claims, including new claims 36–43 (Apr. 2013
Amendment 9–10), are improper at this time. See MPEP § 2666.01. On the
other hand and even though the ’316 patent has expired, Patent Owner’s
proposed claim amendments to cancel claim (i.e., claims 1, 6–10, 16, 17, 26,
and 29 (see Apr. 2013 Amendment 4–8)) are permitted. See MPEP
§ 2666.01. Additionally, claims 2–5, 11, 12, 14, 15, 25, 27, 28, and 30–35
are not subject to reexamination. See RAN 1 (box 1b).2 Based on the
foregoing, the reexamination proceeding will be based on original patent
claims 13 and 18–24.

2 Throughout this Opinion, we refer to: (1) the Action Closing Prosecution
(ACP) mailed September 24, 2013, (2) the Right of Appeal Notice (RAN)
mailed June 4, 2014, (3) Patent Owner’s Appeal Brief (PO Appeal Br.) filed
September 3, 2014, (4) Requester’s Respondent Brief (3PR Resp. Br.) filed
October 2, 2014, (5) Patent Owner’s Rebuttal Brief (PO Reb. Br.) filed May
22, 2015, (6) Requester’s Appeal Brief (3PR Appeal Br.) filed September 8,
2014, (7) Patent Owner’s Respondent Brief (PO Resp. Br.) filed October 9,
2014, (8) Requester’s Rebuttal Brief (3PR Reb. Br.) filed May 21, 2015, (9)
the Examiner’s Answer (Ans.) mailed April 21, 2015, (10) Patent Owner’s
Request to Reopen Prosecution Under 37 C.F.R. 41.77(b)(1) (PO Reopen
Request) filed September 16, 2016, and (11) the Examiner’s Determination
(Ex. Deter.) mailed February 8, 2018.
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Upon review, we REVERSE the rejections adopted by the Examiner
but present a new ground of rejection for patent claims 13 and 18–24
pursuant to 37 C.F.R. § 41.77(b).
Related Matters
The parties indicate that the ’316 patent was the subject of the
following litigation: Vederi, LLC v. Google Inc., Case No. 2:10-CV-07747
(C.D. Cal.), Vederi, LLC v. Google Inc., Case No. 13-1057 (Fed. Cir.), and
Vederi, LLC v. Google Inc., Case No. 13-1296 (Fed. Cir.).3 PO Appeal Br. 2;
3PR Appeal Br. 1, 22 (Related Proceedings App.). Additionally, the parties
indicate that this appeal may be related to: (1) U.S. Patent No. 7,805,025 B2
(“the ’025 patent”), which is the subject of inter partes reexamination
assigned Control No. 95/000,681, (2) U.S. Patent No. 7,239,760 B2 (“the
’760 patent”), which is the subject of inter partes reexamination assigned
Control No. 95/000,682, and (3) U.S. Patent No. 7,813,596 B2, which is the
subject of inter partes reexamination assigned Control No. 95/000,684.4 PO
Appeal Br. 2; 3PR Resp. Br. 1. The opinions in these proceedings were
similarly vacated. Vederi, 813 F. App’x 501.

3 Cases Nos. 13-1057 and 13-1296 were decided on March 14, 2014, and
concerned U.S. Patent Nos. 7,239,760, 7,577,316, 7,805,025, and 7,813,596.
Vederi, LLC v. Google Inc., 744 F.3d 1376 (Fed. Cir. 2014), rh’g en banc
and cert denied. The Federal Circuit reversed the claim construction of the
district court, vacated the judgement, and remanded for further proceedings.
See id. at 1384; see also PO Appeal Br. 2. The disputed claim language
addressed by the Federal Circuit differs from the instant appeal.
4 The court also discussed the phrase “web page for the retail establishment”
within the phrase “accessing a web page for the retail establishment; and
invoking by the computer system a display of the web page on the display
screen.” Id. at 504–505. This phrase is not found in the claims of the ’316
patent being reexamined in this proceeding.
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Parties Appeals
Patent Owner appealed the decision in the RAN rejecting claims 13
and 18–24 of the ’316 patent. PO Appeal Br. 3. Requester responded, and
Patent Owner rebutted. See generally 3PR Resp. Br.; PO Reb. Br.
Requester cross-appealed the decision in the RAN determining a
now-improper claim (i.e., claim 42) of the ’316 patent is patentable. 3PR
Appeal Br. 2. Patent Owner responded, and Requester rebutted. See
generally PO Resp. Br.; 3PR Reb. Br.
The Examiner’s Answer incorporates the RAN by reference (Ans. 1),
which rejected claims 13 and 18–24.
An oral hearing was conducted on April 27, 2016. The transcript of
the oral hearing has been made of record.
After the August 2016 Decision, Patent Owner requested reopening
prosecution. See PO Reopen Request 9. We granted this request and
remanded to the Examiner for consideration of a now-improper claim. May
23, 2017 Order 3–4. The Examiner determined that the rejection of the
now-improper claim was not overcome. Ex. Deter. 2. We subsequently
rendered a second opinion on September 28, 2018.
The Federal Circuit vacated our decisions. Vederi, 813 F. App’x at
501. The court in Vederi construed two phrases found in the claims of the
’025 patent. Vederi, 813 F. App’x at 501–504. These disputed phrases are:
(1) “composite image” and (2) “moving” within the phrase “image frames
acquired by an image recording device moving along a trajectory.”
Specifically, the court agreed with how the panel construed the phrase
“composite image” (Vederi, 813 F. App’x at 503) but did not fully adopt
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how the panel construed the phrase “moving” (id. at 503–504).5
Given the claim construction addressed in Vederi, we reevaluate the
rejections of claims 13 and 18–24 of the ’316 patent. In reaching our
decision, we consider the record as a whole.

Claimed Subject Matter
Canceled claim 1 and dependent claim 13 are reproduced below:
1. (Canceled) In a system including an image source and a user
terminal having a screen and an input device, a method for
enabling visual navigation of a geographic area from the user
terminal, the method comprising:
receiving a first user input specifying a first location in the
geographic area;
retrieving from the image source a first image associated
with the first location, the image source providing a plurality of
images depicting views of objects in the geographic area, the
views being substantially elevations of the objects in the
geographic area, wherein the images are associated with image
frames acquired by an image recording device moving along a
trajectory;
displaying an icon associated with an object in the
geographic area;
receiving a user selection of the icon; and
identifying a second location based on the user selection.

5 The court also discussed the phrase “web page for the retail establishment”
within the phrase “accessing a web page for the retail establishment; and
invoking by the computer system a display of the web page on the display
screen.” Id. at 504–505. This phrase is not found in the claims of the ’316
patent being reexamined in this proceeding.
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13. The method of claim 1,
wherein the first image is a composite image created by
processing pixel data of a plurality of the image frames.

The ’316 patent 15:41–57, 16:37–39 (emphases added).

Prior Art Relied Upon
The record relies on the following as evidence of unpatentability:
Name Reference Date
Lachinski6 US 5,633,946 May 27, 1997
Murphy US 6,282,362 B1 Aug. 28, 2001

Michael J. Shiffer, Augmenting Geographic Information with Collaborative
Multimedia Technologies, 11 Proc. Auto Carto. 367–376 (1993) (“Shiffer”).

Frank Yee, GPS & Video Data Collection In Los Angeles County: A Status
Report, Position Location And Navigation Symposium, Proc. IEEE Position
Location and Navigation 388–393 (1994) (“Yee”).

J. Dykes, An Approach To Virtual Environments For Visualization Using
Linked Geo-referenced Panoramic Imagery, 24 Computers, Env’t & Urb.
Sys. 127–152 (2000) (“Dykes”).

Kheir Al-Kodmany, Using Web-Based Technologies and Geographic
Information Systems in Community Planning, 7 J. Urb. Tech. 1–31 (2000)
(“Al-Kodmany”).

6 Requester indicates that Lachinski was cited in its comments to rebut
Patent Owner’s response and explain how Yee’s four-view images are
created. 3PR Resp. Br. 21–22; May 22, 2013 3PR Comments 27–28.
Although not relying on Lachinski in the rejection, the Examiner discusses
Lachinski, indicating the reference was properly cited under 37 C.F.R.
§ 1.948(a)(2). See RAN 20.
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Nada Bates-Brkljac & John Counsell, Issues in Participative Use of an
Historic City Millennial Web Site, IEEE Proc. Int’l Conf. Info. Visualization
119–125 (2000) (“Bates”).

Current Rejections
The Examiner maintained the following proposed rejection, for which
Patent Owner appeals:
Reference(s) Basis7 Claims RAN
Dykes § 102(a) 13 6–8
Al-Kodmany § 102(a) 13 8–10
Bates § 102(a) 13 10–12
Yee, Dykes § 103(a) 13, 18–24 12–15
Murphy, Yee § 103(a) 13, 188–24 16–17
Shiffer, Yee § 103(a) 13, 18–24 18–19
PO Appeal Br. 5.

II. MAIN ISSUE ON APPEAL
We review the appealed rejections for error based upon the issues
identified by Patent Owner, and in light of the arguments and evidence

7 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 112, 102, 103, and 305. Changes to
§§ 102 and 103 apply to applications filed on or after March 16, 2013.
Because this application has an effective filing date before March 16, 2013,
we refer to the pre-AIA versions of §§ 102 and 103.
8 Both the Examiner and Patent Owner include claims 16 and 17 in this
rejection as well as the rejection based on Shiffer and Yee. PO Appeal Br.
5; RAN 16, 18. Because claims 16 and 17 have been canceled, we presume
these inclusions are typographical errors and render the errors harmless.
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produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
“Any arguments or authorities not included in the brief permitted under this
section or [37 C.F.R.] §§ 41.68 and 41.71 will be refused consideration by
the Board, unless good cause is shown.” 37 C.F.R. § 41.67(c)(1)(vii).
Based on the disputed errors presented by the parties, the main issue on
appeal is, as currently presented, did the Examiner err in rejecting patent
claims 13 and 18–24?

III. ANALYSIS
A. Claim Construction
As noted above, the ’316 patent has expired. Because the ’316 patent
has expired, we give its claims’ recitations “their ordinary and customary
meaning” as would have been understood by “a person of ordinary skill in
the art in question at the time of the invention.” Phillips v. AWH Corp., 415
F.3d 1303, 1312–13 (Fed. Cir. 2005); see also MPEP § 2258(I)(G) (citing
Phillips, 415 F.3d at 1316; Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI
Dec. 23, 1986)). Additionally, “[c]laims ‘must be read in view of the
specification, of which they are a part’” (Phillips, 415 F.3d at 1315 (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
(en banc))), and “the specification ‘is always highly relevant to the claim
construction analysis’” (id. (quoting Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996))).
The parties discuss limitations of canceled claim 1 and claims 13, 18,
20, and 23 of the ’316 patent in their respective briefings. PO Appeal Br.
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5–23; see 3PR Appeal Br. 18–20. Although claim 1 is canceled (see the
Apr. 2013 Amendment 4), claims 13 and 18–24 of the ’316 patent ultimately
depend from canceled claim 1. Thus, each appealed claim includes canceled
claim 1’s recitations.
1. The Image Frames Limitation of Canceled Claim 1
All the claims on appeal ultimately depend from canceled claim 1 and
recite “wherein the images are associated with image frames acquired by an
image recording device moving along a trajectory” (“the Image Frames
Limitation”9). The Examiner finds this phrase is not limited to the
embodiment in the ’316 patent and includes “a video recorder or still camera
that records image frames.” RAN 23; see id. at 22–27 (citing the ’316 patent
3:58–60, 4:12–15, 5:9–12, 5:52–6:23, Figs. 2, 9). Requester agrees,
contending that the Examiner correctly construed the Image Frames
Limitation. 3PR Appeal Br. 18; see also 3PR Resp. Br. 3–7.
Patent Owner argues that the Examiner unreasonably construed the
term “moving” within the Image Frames Limitation to mean “in motion or
not in motion.” PO Appeal Br. 7, 12–16 (citing RAN 23–24, 26, 28; the
’316 patent 3:36–60, 5:55–46). Patent Owner contends the phrase “image
frames are acquired by an image recording device moving along a
trajectory” to mean “that the image frames are acquired by an image
recording device that is in motion along the trajectory at the time of the
acquisition.” Id. at 9; see id. at 8–9 (citing Oxford Dictionaries; Webster’s
Third New International Dictionary (defining “moving”); Exs. A–B). Patent

9 Requester refers to the quoted limitation as “the ‘Image Frames
Limitation.’” 3PR Appeal Br. 18.
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Owner contends the Specification of the ’316 patent confirms its
understanding. Id. at 9–12 (citing the ’316 patent 2:26–30, 3:46–57, 4:50–
62, 5:18–22, 5:52–54, 6:56–62, 7:58–64, code (57)).
The court in Vederi construed the term “moving” within the phrase
“image frames acquired by an image recording device moving along a
trajectory” found in claim 21 of the ’025 patent. Vederi, 813 F. App’x at
501, 503–504. The court found “the claims to cover (1) image recording
devices that acquire images while moving; (2) image recording devices that
acquire images both while moving and while stationary,” but not “(3) image
recording devices that acquire images only while stationary (although the
image recording device moves along a trajectory at other times).” Id. at 504.
Canceled claim 1 of the ’316 patent includes the same recitation as claim 21
of the ’025 patent addressed by the court in Vederi. Compare the ’025
patent 17:51–53, with the ’316 patent 15:51–53. As explained below, we
apply a similar claim construction for the Image Frames Limitation in
canceled claim 1 of the ’316 patent.
The Vederi court applied the “broadest reasonable interpretation” to
the claims and not the ordinary and customary meaning as understood by an
ordinarily skilled artisan as set forth in Phillips. Vederi, 813 F. App’x at 504
(stating “[t]he broadest reasonable interpretation requires that the claim
construction be reasonable in light of the specification”). Even so, the court
considered the disclosure of the ’025 patent in arriving at its construction.
Id. (citing the ’025 patent 2:27–29, 3:47–49, 3:54–57, 4:50–53, 4:55–58,
5:18–19, 5:52–54, 6:58–61, Fig. 9). Similar passages to those cited by the
court in the ’025 patent are found in the Specification of the ’316 patent.
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In particular, the Specification states “an image recording device
moves along a path recording images of objects along the path” (the ’316
patent 2:26–28), “[m]ovement to the camera 10 is provided by a base,
platform, or motor vehicle moving at an average speed of preferably about
20 miles/hour” (id. at 4:55–57), and “the camera 10 moves along the path”
(id. at 5:18). See also id. at 4:51–53 (discussing a camera moving along a
path); 5:53–54 (same), 6:59–61 (same). The Vederi court also states “the
[S]pecification contemplates that some photos may be taken while the
vehicle is stopped, for example, at an intersection.” Vederi, 813 F. App’x at
504 (citing the ’025 patent, Fig. 9); see also the ’760 patent, Fig. 9.
When read in view of the Specification of the ’316 patent, we
determine that the ordinary and customary meaning of “moving” within the
phrase “the images are associated with image frames acquired by an image
recording device moving along a trajectory” in canceled claim 1, as
understood by an ordinarily skilled artisan at the time of the invention,
includes an image recording device that acquires images associated with
image frames (1) while moving and (2) both while moving and while
stationary as long as some images are associated with image frames acquired
while the image recording device is moving.
Additionally, although not addressed by the court in Vederi, the
Examiner construed the phrase “moving along a trajectory” in the Image
Frames Limitation to include “moving along some path that is not known
beforehand.” RAN 27 (citing Merriam Webster’s Collegiate Dictionary
1252 (10th ed. 1997); the ’316 patent, Fig. 9). The Examiner states
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“[t]rajectory means a path, progression, or line of development . . . There is
no requirement for the trajectory to be a known or preplanned path.” Id.
Requester finds that the Examiner correctly construed the term
“trajectory.” 3PR Appeal Br. 18 (citing RAN 23); id. at 18–20.10 “Patent
Owner [also] agrees that the ‘trajectory’ need not be preplanned.” PO
Appeal Br. 17. We agree with both parties and the Examiner that the recited
“trajectory” in canceled claim 1 need not be preplanned.
Although agreeing that the “trajectory” is not preplanned, Patent
Owner contends “the trajectories of the image acquisition device are
known.” PO Appeal Br. 17. Requester disagrees. 3PR Resp. Br. 18.
Focusing on the term “moving” within the phrase “moving along a
trajectory,” Patent Owner also argues “‘trajectory’ refers to the path of a
moving object. A stationary object has no trajectory.” Id. at 16 (citing
Merriam Webster’s Collegiate Dictionary 1252 (10th ed. 1997)).
We agree with Requester that canceled claim 1 does not recite moving
along a known trajectory. See 3PR Resp. Br. 18. Also, the ’316 patent
describes a trajectory to be synonymous with a path. The ’316 patent 3:56
(describing cameras “moving along a trajectory/path.”). The ’316 patent
further provides an “illustration of a trajectory” in Figure 9 where a camera
is moved along a path (e.g., 110 including streets or blocks) making turns at
intersections and circling around streets. Id. at 3:14–15, 7:58–64, Fig. 9.

10 Requester notes that the Examiner took a contrary position in Control Nos.
95/000,681 and 95/000,682, where the Examiner found the Image Frames
Limitation “require an image recording device to move a long a specified
trajectory, i.e., a trajectory that is known or preplanned.” 3PR Appeal Br.
19 (bolding omitted).
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Although the path of streets in this example (e.g., 110 in Figure 9) may have
been determined prior to recording, we note that, when driving down a
street, there exists a level of randomness, such as lane shifting, which
deviates from any purported, known path. Furthermore, the Figure 9
example in the disclosure is described as “an illustration” of a trajectory,
whereas the claim’s scope is not limited to this illustration. Compare the
’316 patent 15:51–53, with id. at 3:14–15 (stating “FIG. 9 is an illustration
of a trajectory”), 7:58–64 (describing Figure 9).
In summary, the phrase “wherein the images are associated with
image frames acquired by an image recording device moving along a
trajectory” in canceled claim 1 requires that the image recording device
moves along a path, course or route, but that the path need not be known or
preplanned, and that the image recording device acquires “[the] plurality of
images” that “are associated with image frames acquired by an image
recording device” (1) while moving and (2) both while moving and while
stationary, as long as some image frames are acquired while the image
recording device is moving.
2. Composite Image of Claims 13, 18, and 23
Claim 13 depends from claim 1 and recites “a composite image
created by processing pixel data of a plurality of the image frames.” The
’316 patent 16:37–39. Claims 18 and 23 indirectly depend from claim 1 and
recite similar limitations to claim 13. Id. at 16:56–58, 17:14–17.
The Examiner finds the phrase, “composite image,” includes
combining four images into a single image. See RAN 29–30 (incorporating
Requester’s November 25, 2013 Comments (“3PR Nov. 2013 Comments”)
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on pages 17 through 19). In the incorporated comments, Requester states
that (1) Yee’s four-view images are composite images under the broadest
reasonable interpretation standard; (2) Yee does not use “composites” to
refer to “side-by-side views” but rather composites of any of a “street view”
or “curbside view” for example; and (3) the recited “composite image” does
not require a single, new view. See 3PR Nov. 2013 Comments 17–19 (citing
Yee 389); see also 3PR Resp. Br. 8–9.
Patent Owner disputes how for the recited “composite image” is
construed. PO Appeal Br. 17–21; PO Reb. Br. 7–10. Patent Owner argues
that:
The composite image depicts a single new view of the objects
in the geographical area. The single new view is different from
any of the views depicted in any one of the image frames from
which the composite image is created, e.g., it can be a wider
view. Moreover, the new view is from a single location as if
the viewer was at that location.
PO Appeal Br. 17; see also id. at 19; PO Reb. Br. 7–8. Patent Owner cites
to Figure 2 of the ’316 patent and composite image 40 to support its
position. PO Appeal Br. 17–18. Patent Owner also contends that “[n]othing
in the ’316 patent suggests that two or more . . . images depicting separate
and distinct views of different objects is a ‘composite image’ as used in the
’316 patent simply because they are displayed simultaneously on a screen.”
Id. at 21.
When considering the disclosure, the ’316 patent discusses creating
“composite images” by synthesizing images, image data, or image frames
but does not address how the images are synthesized or combined. See the
’316 patent, code (57), 2:20–22, 2:33–35, 3:46–49, 5:45–47. This disclosure
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also states image data from each selected image frame 42 is extracted and
combined to form the composite image. Id. at 5:66–6:1. Although the ’316
patent provides a preference as to how to create a composite image (see id.
at 6:1–6), we decline to import this particular preference into the recitation
“composite image,” which fails to recite the image is created “on a column-
by-column basis” (id. at 6:4) or any of the other features of this preferred
image creation process (see id. at 6:1–15).
Also, the plain and ordinary meaning of “composite” includes
“something that is made up of different parts.”11 A single image consisting
of data from four reduced image frames is something made from different
parts (e.g., a composite). An ordinary meaning of (1) “synthesize”12
includes “to make (something) by combining different things” or “to
combine (things) in order to make something new,” and (2) “combine,”13
includes “to unite into a single number or expression.” Thus, the phrase
“composite image,” consistent with the disclosure and its ordinary meaning,
should be construed to mean a single image created by combining different
image data or by uniting image data.
The Federal Circuit agreed with this claim construction in Vederi,
determining the term “composite image,” similar to that found in claims 13,

11 Composite (noun), Merriam-Webster’s Online Dictionary, available at
http://www.merriam-webster.com/dictionary/composite.
12 Synthesize, Merriam-Webster’s Online Dictionary, available at
http://www.merriam-webster.com/dictionary/synthesize.
13 Combine, Merriam-Webster’s Online Dictionary, available at
http://www.merriam-webster.com/dictionary/combine (def. 1c).

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18, and 23 of the ’316 patent, can reasonably be construed to include “a
single image created by combining different image data or by uniting image
data.” Vederi, 813 F. App’x at 503 (citing the ’025 patent, 5:66–6:1). The
court also stated “[w]e are not persuaded by Vederi’s argument” that limits
the claimed “‘composite image’ to ‘a new image . . . that depicts a single
new view (from a single location) of the objects in the geographical area that
is different from any of the views depicted in any one of the image frames
from which the composite image is created.’” Vederi, 813 F. App’x at 503
(quoting both the ’025 patent, 5:66–6:1 and Personalized Media Commc’ns,
LLC v. Apple Inc., 952 F.3d 1336, 1343 (Fed. Cir. 2020)).
Accordingly, the recited “a composite image” in claims 13, 18, and 23
does not require the composite image to be an image having a single view
from one location, a new view, a different view, or a wider field of view
than any acquired image frame as argued by Patent Owner. Stated
differently, “although the specification often describes very specific
embodiments of the invention, [the Federal Circuit] ha[s] repeatedly warned
against confining the claims to those embodiments.” Phillips, 415 F.3d at
1323 (citing Nazomi Commc’ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364,
1369 (Fed. Cir. 2005); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
906–08 (Fed. Cir. 2004)). We thus will not confine our understanding of the
phrase, “composite image” found in claims 13, 18, and 23, to the exact
representations in the Specification.
Patent Owner also discusses the ’316 patent’s Figure 2 as a composite
image having “pixel values that are computed from pixel values of each of
the image frames from which the composite image is created.” PO Appeal
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Br. 18. Patent Owner further refers to the district court proceeding, Vederi,
LLC v. Google Inc., Case No. 2:10-CV-07747 (C.D. Cal.). Id. at 17 n.1.
According to Patent Owner, Patent Owner and Requester in that proceeding
agreed that a “a composite image created by processing pixel data of a
plurality of the image frames” means “an image formed by combining two
or more image frames at the pixel level.” Id.; see id. at 18–19 (discussing
the ’316 patent, Fig. 2 computes its pixel values “from pixel values of each
of the image frames”).
The court in Vederi found the phrase “by processing pixel data of a
plurality of the image frames,” similar to that found in claims 13, 18, and 23
of the ’316 patent, specifies “the image may be achieved by combining or
uniting image data, meaning at the level of pixel data.” Vederi, 813 F.
App’x at 503 (citing the ’025 patent, 19:6–14). But, this recitation does not
recite how the pixel data of the images frames are processed, such that pixel
values of the composite image are computed from pixel values of two or
more image frames. We stress that the ’316 patent states a preference for
the composite image to be created by extracting image data from each image
frame on a column-by-column basis. See the ’316 patent, code (57), 6:1–15,
Fig. 2. But, applying the ordinary meaning of “processing,” claim 13
requires no more than “combining or uniting image data, meaning at the
level of pixel data.” Vederi, 813 F. App’x at 503.
Accordingly, the limitation of “a composite image created by
processing pixel data of a plurality of the image frames” in claim 13, and
similarly recited in claims 18 and 23, means a single image that may be
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created by combing or uniting image data from a plurality of image frames
at the level of pixel data.
3. Arbitrary Address Limitation of Claim 20
Claim 20 depends from claim 1 and further recites “the first location
specified by the first user input is an arbitrary address entered via the first
user input, the entered arbitrary address specifying information selected
from a group consisting of street name, city, state, and zip code” (“the
Arbitrary Address Limitation”). The ’316 patent 16:62–66. The Examiner
determines that an “arbitrary address” does not require a database having
images of both assigned and unassigned addresses, but “means arbitrary to
someone’s perspective and that perspective may broadly and reasonably
belong to a user.” RAN 30. Requester further asserts that an “arbitrary
address” includes “an address selected from a group of addresses.” 3PR
Resp. Br. 9 (citing ACP 24); see also 3PR Reb. Br. 2–3.
Patent Owner, on the other hand, argues that the recited “arbitrary
address” means “any potential addresses (assigned and unassigned) in the
geographic area, not preselected or constrained by the system.” PO Appeal
Br. 21. Patent Owner argues that the ordinary meaning and the ’316 patent’s
disclosure support this understanding. Id. at 22–23 (citing the ’316 patent
2:45–49, 6:37–47, 7:15–20, 13:21–14:14). We disagree with Patent Owner.
First, cited column 7 of the ’316 patent does not discuss arbitrary
addresses but rather “an arbitrary value” for a time phase. The ’316 patent
7:15–20, cited at PO Appeal Br. 22. When discussing entering and
specifying an address, the Specification of the ’316 patent does not mention
that the address is arbitrary or unassigned by the system (see the ’316 patent
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11:45–46) as Patent Owner contends. See PO Resp. Br. 6–7. Rather, the
’316 patent discusses entering “an address of the location”— not some
random address—and returning a map corresponding to the address. The
’316 patent 11:45–46, 12:20–22, 12:32–35, 13:23, 13:28–29. Column 2,
lines 45 through 49 cited by Patent Owner also does not describe selecting a
potential address without one-to-one correspondence as argued. See PO
Appeal Br. 22 (citing the ’316 patent 2:45–49). Cited portions (column 13,
line 21 through column 14, line 14) by Patent Owner similarly do not
describe a user entering an address “regardless of whether that address
actually exists.” See id. at 23 (citing the ’316 patent 13:21–14:14).
Furthermore, the cited passage in column 6 by Patent Owner does not
address the recited “arbitrary address,” but rather discusses segmenting a
trajectory taken by a recording camera and generating images depicting
portions of the segment. See id. (citing the ’316 patent 6:37–47).
Second, one ordinary meaning of “arbitrary”14 includes those based on
the user’s preference or convenience. Thus, an ordinary understanding of
“arbitrary address” includes an address selected by users based on their
preferences or convenience. Also, although Patent Owner provides an
alternative ordinary meaning of “arbitrary something” to “refer[] to any
member of a set of potential or possible ‘somethings’” (PO Appeal Br. 22),
Patent Owner provides no supporting evidence of this understanding,

14Arbitrary, Merriam-Webster Online Dictionary, available at
https://www.merriam-webster.com/dictionary/arbitrary (def. 1b) (defining
“arbitrary” as “based on or determined by individual preference or
convenience rather than by necessity or the intrinsic nature of
something”).
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amounting to no more than attorney argument. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (attorney argument is not evidence). Likewise, Patent Owner
asserts that the district court construed the term “arbitrary” to mean
“assigned and unassigned addresses” without supporting evidence. See PO
Appeal Br. 21–22. Moreover, claim 20 does not recite showing an image of
the location along a street where the address would be located “[i]f the
selected address does not correspond to an address assigned to an actual
building” as argued. Id. at 22.
Based on the record, we agree that the recited “arbitrary address” in
claim 20 does not “exclude pre-selected or assigned addresses” (3PR Reb.
Br. 3) and can include “one from the group of tagged images” (RAN 30).
We disagree that the phrase “arbitrary address” in claim 20 must be any
potential addresses (assigned and unassigned) in the geographic area, which
is not constrained by the system as Patent Owner argues. See PO Appeal Br.
22–23. Accordingly, we determine “an arbitrary address entered via the first
user input,” as claim 20 recites, can be various addresses, including an
assigned address and an address selected from a group associated with
tagged images.
B. Pending Rejections
Claim 13 is rejected under 35 U.S.C. § 102(a) based on (1) Dykes, (2)
Al-Kodmany, and (3) Bates. RAN 6–12. Claims 13 and 18–24 are rejected
under 35 U.S.C. § 103(a) based on: (4) Yee and Dykes, (5) Murphy and Yee,
and (6) Shiffer and Yee. RAN 12–19. These rejection were presented on
the claims as amended and prior to the ’316 patent’s expiry. We reverse the
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rejections given the particular circumstances of this proceeding, which
include that the dependencies of the claims have changed since the ’316
patent’s expiry, the Federal Circuit provided intervening claim construction
for claim terms in the ’025 patent, and the claims are now construed under
Phillips as opposed to the broadest reasonable construction. Compare
Phillips, 415 F.3d at 1312–13, with Personalized Media Commc’ns, 952
F.3d at 1340.
C. New Ground of Rejection
Pursuant to 37 C.F.R. § 41.77(b), we present a new ground of
rejection for claims 13 and 18–24 under 35 U.S.C. § 103(a) based on Yee,
Lachinski, and Dykes.
We note that Patent Owner argues that the citation to Lachinski by
Requester is improper and should be excluded from consideration because
Lachinski was “introduced . . . for what Lachinski discloses in itself; it is not
explaining another reference.” PO Appeal Br. 30; see also id. at 30–31; PO
Reb. Br. 10–11. Requester contends that its reliance on and discussion of
Lachinski is proper under 37 C.F.R. § 1.948(a)(2). See 3PR Resp. Br. 21–22
(contending Lachinski was cited to explain Yee’s teachings, including its
mobile mapping system) (citing May 22, 2013 3PR Comments 27); see also
RAN 20. But, the propriety of whether a reference was properly submitted
under § 1.948 is a petitionable matter. Because this issue is not appealable,
the Board lacks jurisdiction to decide this issue. See MPEP §§ 1002 and
1201; see also In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating
that there are many kinds of decisions made by examiners, “which have not
been and are not now appealable to the board or to this court when they are
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not directly connected with the merits of issues involving rejections of
claims, but traditionally have been settled by petition to the Commissioner”).
Nonetheless, we underscore here that “should the Board have
knowledge of any grounds not raised in the appeal for rejecting any pending
claim, it may include in its opinion a statement to that effect with its reasons
for so holding, which statement shall constitute a new ground of rejection of
the claim.” 37 C.F.R. § 41.77(b).
1. All Claims (Claims 13 and 18–24)
Because claims 13 and 18–24 ultimately depend from canceled
claim 1, and thus, each of these claims includes the limitations found in
canceled claim 1, we adopt the findings and conclusions related to claim 1 in
the Request and by the Examiner for claims 13 and 18–24. See Request 98–
107 (citing Yee 389–92; Dykes 136–37, 139–41, 144, Fig. 4; Ex. CC-D; Ex.
OTH-B 59:18–19, 104:16–20; Ex. OTH-D 17:7–9), Ex. CC-D 1–8 (citing
Yee 389–92; Dykes 136–37, 139–41, 144, Fig. 4; Ex. OTH-B 59:18–19,
104:16–20; Ex. OTH-D 17:7–9); see also RAN 12–15 (citing Yee 389, 391–
92, Fig. 1; Dykes 139–40) (incorporating and adopting Request 98–128 and
Exhibit CC-D).
Patent Owner does not dispute that Yee discloses the recitation the
Image Frames Limitation found in canceled claim 1. See PO Appeal Br. 31–
34; see also 3PR Resp. Br. 2 (referring to the “Image Frames Limitation”).
We emphasize for completeness, that Yee discloses image frames captured
while an image recording device moves along a trajectory. Yee 389–91
(discussing a van collecting street and object data while the van moves down
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the road); see also 3PR Resp. Br. 13 (citing Yee 388–89) (stating Yee’s
GeoVan records as the van “is driven on streets”).
2. Claims 13, 18, and 23 – a Composite Image
Claim 13 depends from claim 1 and adds “the first image is a
composite image created by processing pixel data of a plurality of the image
frames” (the ’316 patent 16:37–39), which we have construed to mean a
single image that may be created by combining or uniting image data from a
plurality of image frames at the level of pixel data. Claims 18 and 23 recite
similar recitations. The ’316 patent 16:56–58, 17:14–16. Along with the
above discussion adopting the noted findings and conclusions related
canceled claim 1, we further adopt the findings and conclusions presented by
Requester when addressing claims 13, 18, and 23. Request 112–13 (citing
Yee 389; Ex. CC-D), 117–19 (citing Yee 389; Dykes 134–35, Fig. 2), 126–
27 (citing Yee 389); see also Ex. CC-D 12 (citing Yee 389), 16–17 (citing
Yee 389; Dykes 134–35, Fig. 2), 24 (citing Yee 389); 3PR Resp. Br. 11–12
(addressing the “composite image” limitation) (citing Dykes 140, 146), 13–
15 (further citing Yee 388–89, 391–92; Lachinski 5:25–40, 10:37–11:34;
ACP 12–13, 23–24; Request 98–99).
Patent Owner argues that the Examiner has relied upon Yee to define
the term “composites” and change the meaning of this term. PO Appeal
Br. 19–20; PO Reb. Br. 8–9. Specifically, Patent Owner contends that Yee
uses the term “composite” improperly to include side-by-side views and 4-
views. PO Appeal Br. 20 n.2 (citing a GeoSpan brochure15); see also id. at

15 Patent Owner refers to “the Geospan Brochure” as Exhibit C filed January
2, 2013. However, our records indicate Exhibit C was filed January 8, 2013
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20–21. Patent Owner asserts that the ’316 patent requires the composite
image be a single view and not “two or more separate and independent
images depicting separate and distinct views of different objects.” Id. at 21;
see also id. at 32; PO Reb. Br. 13–14.
We find these arguments unavailing. As discussed above in Section
(III)(A)(2), the court in Vederi agreed with our construction of the phrase
“composite image” to mean a single image created by combining different
image data or by uniting image data. See Vederi, 813 F. App’x at 503. This
construction does not require a single, new view as argued (PO Appeal
Br. 17). See 3PR Resp. Br. 14. Moreover, as for the remaining phrase that
the “image [is] created by processing pixel data of a plurality of the image
frames,” we determined that the recitation does not recite how the pixel data
of the images frames are processed, such that pixel values of the composite
image are computed from pixel values of two or more image frames.
Rather, claim 13 requires only combining or uniting image data from a
plurality of image frames at the level of pixel data to create the recited
“composite image.”
Based on this understanding, Yee teaches or suggests the recited
“composite image” limitation in claims 13, 18, and 23. Yee addresses
collected data made available with its product. Yee 389. The data includes
provided various views, including “curbside view, front and back,” “street
view, front and back,” “real estate view left and right,” “real estate and
addresss [sic] zoom, 4-view,” and “composites of them.” Id. Yee explicitly

as part of an Amendment submitted by Patent Owner and is entitled “Drive
around town on your PC with GEOVISTA – Visual Geographic
Information” (“GeoSpan brochure”).
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discloses “composites” (id.); and “them” refers back to the other discussed
views, including a curbside view, a street view, and a real estate view. Thus,
Yee teaches creating “composites” of these various views. For example, a
composite in Yee may combine or unite image data from (1) the curbside
view and the street view or (2) two different street views to produce the
disclosed “composite[] of them.” Id.; see also RAN 30 (discussing
synthesizing a curbside view with a front and back view). Additionally, an
ordinarily skilled artisan would have recognized Yee’s disclosed
“composites” (see Yee 389) would have involved combining or uniting the
noted views at the level of pixel data in some manner so as to form the
composites available to the user in Yee.
Patent Owner argues that Yee’s “composite” would be a side-by-side
view or “a 4-view display” (PO Appeal Br. 20 n.2 (citing January 8, 2013
Reply, Ex. C16)) and not “a single view of objects . . . where the composite
image is synthesized from multiple images” (id. at 21). See also id. at 20–
21; PO Reb. Br. 13–14. We are not persuaded because the language
“composite of them” in Yee is separate from the “4-view.” Yee 389
(discussing a “real estate and address[] zoom, 4-view” separate from
“composites of them”).
As for the “4-view” example in Yee, Yee does not provide details
concerning how the view is formed. Id. Even so, Patent Owner presumes
the example from “the GeoSpan Brochure” is the only “4-view” that Yee
envisions and argues this is not “a ‘composite image created by processing

16 This exhibit, referred to as “the GeoSpan Brochure” (id. at 20 n.2), was
not included with Patent Owner’s Appeal Brief.
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pixel data of a plurality of image frames.’” PO Appeal Br. 20–21, 32.
Patent Owner further relies on an example in Lachinski17 when arguing that
Yee’s “4-view” is not a composite image as recited. Id. at 32.
We are not persuaded. The view in the described GeoSpan Brochure
is just one image example of data acquired by GeoSpan Corporation
discussed in Yee. See, e.g., Yee 389 (describing that data collected). As
noted above, Yee separately teaches the collected data includes composites
of different views, which refer back to the various described views (e.g.,
curbside, street, and real estate views) (Yee 389), which at least suggest to
an ordinarily skilled artisan that each of Yee’s “composites of them” is a
single image that may be created by combining or uniting image data from a
plurality of image frames (e.g., street and curbside views) at the level of
pixel data, as we construed the phrase “composite image” in Section
(III)(A)(2).
Nonetheless, some similarities exist between what is shown in Patent
Owner’s example of Yee’s 4-view (PO Appeal Br. 20) and what Yee and
Lachinski disclose. Yee discusses “images can be displayed as rolling video
of four views in a frame.” Yee 392. Lachinski further states:
The four-view generator 62 has four inputs 82, allowing
signals from four of the video cameras 50 to be input
simultaneously. The generator 62 reduces the image represented
by each signal to one-fourth of its original size and then
combines the reduced images to form a single video image by
placing each of the reduced images into one of the four corners
of an output image.

17 Notably, Patent Owner disputes whether Lachinski should be considered.
Id. at 30–31.
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Lachinski 5:25–31 (emphasis added), cited in 3PR Resp. Br. 13; Fig. 3. This
supports that the “4-view” discussed in Yee (Yee 389) is produced as a
single image that combines four reduced images, one in each of four corners
that is reduced in size. Lachinski 5:25–31; Fig. 3. As such, combining
Lachinski’s teaching with Yee, Yee’s 4-view image yields a single image
that combines image data from a plurality of image frames (e.g., four
reduced images).
Moreover, Yee teaches that data from the four images, which include
their pixel data, are used to create the reduced-sized images. Each of the
“four views in a frame” discussed in Yee (Yee 392) or the “single video
image” with four-views, each one-fourth of its original size that form
“reduced images,” as further explained in Lachinski (Lachinski 5:25–31), is
a single image that is made up of different parts or image frames (e.g., image
data from multiple views) and combines pixel image data from each of the
different view image frames collectively to create the taught single 4-view
image. Yee, as evidenced by Lachinski, teaches yet another example of “a
composite image” as claims 13, 18, and 23 recite and as we construed this
phrase in Section (III)(A)(2).
Patent Owner further argues that Yee’s composite “teaches away from
creating composite images with its process.” PO Appeal Br. 32–33. This
argument contrasts with Yee’s explicit disclosure of a process that creates
“composites” from collected data. Yee 389. Also, Patent Owner contends
that Yee, including its GeoSpan system, would involve “manually
review[ing] the raw image frames,” “select[ing] the most appropriate
image,” and “add[ing] the step of creating composite images,” which would
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amount to “multipl[ying] the manual labor costs, greatly slow[ing] the
process, and add[ing] another level of complexity.” PO Appeal Br. 33; see
also id. at 32–3418; PO Reb. Br. 14–15. There is insufficient evidence in the
record for these assertions. In any event, the limitation “a composite image
created by processing pixel data of a plurality of the image frames” in
claim 13 does not exclude inputting some data manually, and many of the
disputed features (e.g., slow, cost, precision, complexity) (PO Appeal
Br. 32–33) are not commensurate in scope with claims 13, 18, and 23. Also,
Lachinski, which addresses a GeoSpan system having similarities to Yee,
discusses that a manual process is not used to generate composites.
Lachinski 5:25–40 (discussing using generator 62 to form a single video
image), cited in 3PR Resp. Br. 14.
Patent Owner further argues that Requester did not provide a
motivation to combine Yee with Dykes (PO Appeal Br. 31) and one skilled
in the art would not have combined Dykes with Yee to arrive at claim 13’s
invention (id. at 32, 34). See also PO Reb. Br. 14. Patent Owner asserts
Dykes concerns 360 degree panoramas and thus does not teach “the
desirability of acquiring image frames for creating composite images ‘by an
image recording device moving along a trajectory.’” PO Appeal Br. 32.
Patent Owner contends that Dykes does not cure the deficiencies of Yee and
“there is no rational reason why a person of skill in the art would have

18 Patent Owner footnotes a reference entitled “GEN-2 City Tour BBC &
CNBC 1995, January 1, 2004” and states the reference was submitted
January 7, 2013. We are not able to locate this reference but did locate a
reference entitled “City Tour – User Guide and Tutorial,” submitted January
8, 2013, copyrighted 1996 by GEOSPAN Corporation. However, this
evidence was not part of Patent Owner’s Appeal Brief.
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combined Yee and Dykes to arrive at the embodiment of claim[] 13.” PO
Appeal Br. 34.
As for motivation, the Request explains “Yee discloses a mobile
mapping system for recording images of a geographic area a visual interface
system (VIS) for an end user to locate and retrieve the collected video
images,” “Dykes discloses plotting symbols on a map to represent the
locations where panoramic images are available,” and “Dykes’ teachings
provide a spatial interface for an end user to locate and retrieve panoramic
images.” Request 99. Based on these teachings, the Request explains one
skilled in the art would have been “motivated to combine the teachings put
forward by Yee and Dykes to provide a system and method that enables a
user to navigate locations by visualizing the locations spatially as presented
by symbols on a map.” Id. at 99–100; see also RAN 13–15 (citing Request
98–100; Dykes 139–40); 3PR Resp. Br. 14–15 (citing Request 98–99; Yee
391–92; Dykes 139–40; ACP 12–13, 24). We thus disagree that Requester
did not provide a reason with a rational underpinning to combine Yee with
Dykes.
Also, contrary to Patent Owner’s assertion, Yee is not deficient in
teaching “a composite image” as claims 13, 18, and 23 recite. Nonetheless,
presuming, without agreeing, that Yee and Lachinski do not teach the recited
“composite image,” Dykes teaches another known technique for creating
“composites” by combining and uniting images (e.g., stitching) to produce a
panoramic image. Dykes 132–36, Fig. 2. When substituting one known
element for another known in the art (e.g., Yee’s composite technique for
Dykes’ panoramic technique of forming a composite), “the combination
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must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). Additionally, Dykes teaches panoramic imagery
(1) can assist “with educational aims,” including making more sense of maps
when looking at panoramic landscape views, or with the urban planning
(Dykes 134 (quoting Shiffer 365)), (2) can evoke a visual experience in an
engaging virtual environment (id. at 136), (3) provides an ability to
navigator across the virtual space and between recognized features (id. at
139), and (4) permits panning around the landscape and touring across its
virtual environment configuration (id. at 140). Also, as noted above, both
the Examiner and Requester have provided reasons with some rational
underpinning to combine Dykes with Yee to arrive at claim 13’s invention,
including creating an environment in Yee’s system that is easy to set up due
to minimal data and metadata used. See also RAN 13–15 (citing Request
98–100; Dykes 139–40); 3PR Resp. Br. 14–15 (citing Request 98–99; Yee
391–92; Dykes 139–40).
Accordingly, Yee, Lachinski, and Dykes teach or suggest the
“composite image” limitations in claim 13, 18, and 23.
3. Claims 18 and 19
Claims 18 and 19 ultimately depend from canceled claim 1 and add
“The method of claim 17, wherein the first image is a composite image
created by processing pixel data of a plurality of the synchronized image
frames” and “The method of claim 18, wherein the composite image depicts
a wider field of view than is depicted in any one of the plurality of the
synchronized image frames” respectively. Along with the above discussion
adopting the noted findings and conclusions related to canceled claim 1, we
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further adopt the findings and conclusions in the Request when addressing
claims 18 and 19. Request 117–21 (citing Yee 389; Dykes 134–35, Fig. 2;
Ex. CC-D); see also Ex. CC-D 16–19 (citing Yee 389; Dykes 134–35,
Fig. 2).
Additionally, Yee discusses Global Positioning System (GPS) and
Geographic Information Systems working with video technology (Yee 388),
its system is capable of obtaining accurate GPS positioning (id. at 390), and
collecting and synchronizing images (id. at 391). Additionally, Dykes’s
Figure 2 and its stitching technique suggest that the acquired image frames
(e.g., the nine frames in the upper-left side) are synchronized with some type
of position information in order to create the continuous panorama that is
properly aligned as shown in Figure 2. See Dykes 135, 137, Fig. 2.
Combining Yee’s GPS positioning/synchronizing image approach with
Dykes’s technique to unite (e.g., synchronized) images based on position
would have assisted in and improved upon producing the continuous image
(e.g., a panorama) in Dykes by using Yee’s positioning data. See KSR, 550
U.S. at 417.
Other than the arguments discussed above related to “a composite
image” found in claim 18, Patent Owner does not separately argue
Requester’s findings and conclusion related to claims 18 and 19.
Accordingly, we determine Yee, Lachinski, and Dykes teach and suggest the
recitations in claims 18 and 19.
4. Claim 20 – The Arbitrary Address Limitation
Claim 20 depends from claim 1 and adds “wherein the first location
specified by the first user input is an arbitrary address entered via the first
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user input, the entered arbitrary address specifying information selected
from a group consisting of street name, city, state, and zip code.” The ’316
patent 16:62–66. For this claim, we further adopt the findings and
conclusions presented by Requester when addressing claim 20. Request
121–22 (citing Yee 391–92; Ex. CC-D); see also Ex. CC-D 19–20 (citing
Yee 391–92); 3PR Resp. Br. 15–16 (citing Yee 391–92; Lachinski 13:10–
24; 14:49–58, 16:64–66, 17:14–20; ACP 24); 3PR Appeal Br. 10–11 (citing
Yee 391–92, Abstract; Lachinski 16:64–66, 17:19–20; ACP 24); 3PR Reb.
Br. 3–4 (citing Yee 391–92; Lachinski 16:64–66, 17:19–20).
Based on Patent Owner’s argued claim construction of “arbitrary
address” addressed in Section (III)(A)(3), Patent Owner argues Yee fails to
disclose the recitations of claim 20. PO Appeal Br. 34–36. Specifically,
Patent Owner argues that “Yee teaches only the retrieval of pre-selected
addresses” or “those that have already been assigned and which have been
correlated with a specific image.” Id. at 35; see also id. at 34–35 (citing Yee
392); PO Reb. Br. 15; PO Resp. Br. 6. Patent Owner further argues that the
GeoSpan system described in Yee involves a user selected from a list of
assigned (not unassigned) addresses tagged to an image. PO Appeal Br. 35;
see also PO Resp. Br. 6–7. Patent Owner also argues that the
Yee/Lachinski’s address parsing differs from the recited “arbitrary address”
in claim 20 because the address parsing only involves a user-supplied
address converted to a standard address by matching the address to a real
address and cannot return a location corresponding to an unassigned address.
Id. at 35–36 (citing Lachinski 16:33–17:50; ACP 21); see also PO Reb. Br.
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15 (citing Lachinski 17:19–20) (discussing a “coordinate pair”); PO Resp.
Br. 7 (citing Lachinski 16:33–17:50).
We are not persuaded. As explained above in Section (III)(A)(3), we
disagree that the recited “arbitrary address” must exclude assigned addresses
and include only unassigned addresses. See 3PR Reb. Br. 3 (noting “there is
no support for limiting ‘arbitrary’ to exclude pre-selected or assigned
addresses”). Unlike Patent Owner’s assertions (see PO Resp. Br. 6–8), the
’316 patent does not discuss that the address is arbitrary or unassigned when
discussing entering an address or location into the system. For example, the
’316 patent describes a user can input a particular address (e.g., location or
geographic coordinates), and this address is not described as an unassigned
address in the system. See the ’316 patent 11:45–46, 12:20–26, 12:32–35,
13:21–24, 13:27–29.
Additionally, claim 20 does not recite an image database or the
retrieval of an arbitrary address; thus, Yee need not disclose “the retrieval of
an arbitrary address” as argued. PO Appeal Br. 35. However, canceled
claim 1, from which claim 20 ultimately depends, does recite “retrieving
from the image source a first image associated with the first location” that “a
first user input specif[ies].” The ’316 patent 15:45, 16:47–48. As
previously discussed, Yee teaches this feature. See Request 102 (citing Yee
391–92; Ex. CC-D) (addressing Yee’s Visual Interface System that retrieves
images and a user can enter a street address and retrieve images related to
the address); see also Ex. CC-D 2–3 (citing Yee 391–92). We thus
determine that Patent Owner’s contentions concerning the Yee system and
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related documents fail to demonstrate that a user of the Yee system cannot
enter an “arbitrary address” as claim 20 recites.
As for teaching the “arbitrary address” limitation, Yee discusses a
“[s]treet address entry” (Yee 392), street name recording, and individually
tagging addresses. See Yee 391–92. Yee also states that “[a] user can point
at a road segment or specific location on a computerized map and instantly
display the video image(s) for that selected segment.” Id.; see also 3PR
Reb. Br. 3 (citing Yee 391–92). Using the ordinary understanding of
“arbitrary” discussed in Section (III)(A)(3), Yee’s entered address is an
arbitrary address because the address is based on the user’s preference and
convenience to enter a street address. See Yee 391–92. Additionally, Yee’s
teachings, whether the user enters the address or points to a specific location
on the map, do not specify the entered address is assigned. See id.
Patent Owner further argues Lachinski and Dykes do not cure the
purported deficiency of Yee. PO Appeal Br. 35–36. This argument is
unavailing. As explained above, Yee does not have the alleged deficiency,
and Dykes was not relied upon to teach the “arbitrary address” feature.
Request 121–22; Ex. CC-D 19–20. However, to the extent that Requester
relies on Lachinski to demonstrate claim 20’s “arbitrary address” limitation
(see 3PR Resp. Br. 15–16; see 3PR Reb. Br. 3–4), we agree that Lachinski
further teaches a process for permitting entry of both assigned (and
unassigned addresses) and thus, provides another example of “the first user
input is an arbitrary address entered via the first user input” as claim 20
recites.
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Specifically, Lachinski teaches a user can supply an address, and this
address is converted into a standard address within its database for matching
“to a real address range in the database.” Lachinski 16:66; id. at 16:63–66.
Lachinski further teaches to recall an image for “any coordinate pair” the
“process allows the retrieval of the nearest video image to a coordinate pair.”
Id. at 17:19–20; id. at 17:15–21. When including this teaching with Yee, the
Yee/Lachinski system permits a user to enter an address near or close to an
address in the system (e.g., “an arbitrary address entered via the first user
input”) and still retrieve an image associated with the location as canceled
claims 1 and dependent claim 20 collectively recite. We thus disagree with
Patent Owner that Yee/Lachinski’s address parsing process fails to teach or
at least suggest the recited “arbitrary address” in claim 20.
Accordingly, Yee, Lachinski, and Dykes teach or suggest claim 20
“arbitrary address” limitations.
5. Claims 21–24
Claim 21 depends from claim 20 and adds:
segmenting the trajectory on which the image recording
devices move, into a plurality of segments;
correlating the plurality of segments to a plurality of street
segments in a geographic information database;
identifying one of the plurality of street segments based on
the arbitrary address;
retrieving the first image based on the identified one of the
plurality of street segments; and
outputting the first image onto an image display device.
The ’316 patent 16:67–17:9; Certificate of Correction 1. For claim 21, we
further adopt the findings and conclusions presented by Requester and the
Examiner when addressing claim 21. Request 123–25 (citing Yee 388–89,
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391–92; Ex. CC-D); see also Ex. CC-D 20–22 (citing Yee 388–89, 391–92);
3PR Resp. Br. 16–18 (citing Yee 389; Lachinski 2:47–50, 3:32–37, 9:42–46,
12:52–13:2, 13:56–63, 14:46–53, 16:40–47; ACP 24–25); ACP 24–25
(citing Yee 391–392 and “Lachinski evidence”); 3PR Nov. 2013 Comments
39–42 (citing Yee, Abstract, 388–89; Lachinski 2:47–50, 3:32–37, 9:42–46,
12:52–13:2, 13:56–63, 14:46–53, 16:40–47).
Patent Owner asserts that claim 21 “describes a method whereby the
houses and other structures do[ not] need to be individually tagged to an
image.” PO Appeal Br. 37. Yet, claim 21 does not include a limitation that
excludes tagging images. Also, we are not persuaded with this argument, as
previously discussed, to the extent that the assertions concern the argument
addressed above for claim 20 related to the recited “arbitrary address”
limitation purportedly excluding tagging. See, e.g., PO Appeal Br. 35–36.
By reciting “identifying one of the plurality of street segments based
on the arbitrary address,” Patent Owner also contends that claim 21’s
process associates first and second locations with a street segment and not a
specific image. Id. at 37. Patent Owner contends Yee is deficient, and
Lachinski does not disclose this step. Id. We disagree Yee is deficient and
refer to the Examiner’s and Requester’s explanations. RAN 15
(incorporating and adopting the rejection in Request 123–25 (citing Yee
388–89, 391–92)); see also 3PR Resp. Br. 16–18 (citing Yee 389; Lachinski
2:47–50, 3:32–37, 9:42–46, 12:52–13:2, 13:56–63, 14:46–53, 16:40–47;
ACP 24–25); ACP 24–25 (citing Yee 391–92). Yee explicitly discusses a
user can point to a road segment or specific location on a map and image(s)
are displayed for that selected segment. Yee 391–92.
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Patent Owner also argues that Yee, even when supplemented by
Lachinski, does not disclose “the three step retrieval process of claim 21.”
PO Appeal Br. 37. We find this argument unavailing given that claim 21
recites five steps and only one recited “retrieving.” We are not clear as to
what portion of claim 21 is the described “three step retrieval process.”
Other than the previously discussed argument concerning the “identifying”
step and Lachinski, Patent Owner does not articulate clearly any step in
claim 21 that the cited art fails to teach. See id. at 36–37.
In any event, we emphasized that Yee discloses images and locations
are processed by GeoVan software and loaded into its Geographic
Information System (GIS) systems because GeoSpan uses TIGER
(Topological Integrated Geographic and Referencing) file format to record
its data (e.g., images). Yee 390 (addressing using a GPS receiver for “image
reference location”), 391 (addressing TIGER file format). Lachinski further
explains the TIGER file format, indicating this format improves the accuracy
of coordinates (e.g., identify position data) within the files and adds
information (e.g., missing street and address information), which can assist
in (1) identifying and updating street segments related to a location and
position and (2) creating indirect relationships between the segments and
images for a variety of GIS applications. Lachinski 1:15–23, 2:16–20, 2:47–
50, 3:32–37, 9:36–45, 11:55–12:62, 13:56–63, 14:41–58, 16:33–17:38, Figs.
9–10.
Yee also teaches a user can point at a road segment or specific
location on a map and then display an image for that segment. Yee 391–92.
Lachinski discusses its street segment database can store large amounts of
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image sets that can be manipulated and managed using an indexing method.
Lachinski 13:51–55. Lachinski also describes a segment position “can be
expressed as an absolute position in terms of video images” (id. at 14:46–
49), making it “possible to determine the closest video image to any given
segment position” (id. at 14:50–51). One skilled in the art would have
recognized that including Lachinski’s process in the Yee’s system would
have improved coordinate accuracy with its system, and would have
permitted a large amount of images, which are associated with street
segments related to locations and positions, to be stored and managed. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Thus, as evidenced by Lachinski above and when combined with the
Yee/Dykes system, the resulting TIGER file format would have yielded a
process of “segmenting the trajectory on which the image recording devices
move, into a plurality of segments,” “correlating the plurality of segments to
a plurality of street segments in a geographic information database,”
“identifying one of the plurality of street segments based on the arbitrary
address,” “retrieving the first image based on the identified one of the
plurality of street segments,” and “outputting the first image onto an image
display device,” as claim 21 recites.
Accordingly, Yee, Lachinski, and Dykes teach or suggest claim 21
limitations.
As for claims 22–24, we further adopt the findings and conclusions in
the Request when addressing claims 22–24. Request 125–28 (citing Yee
389, 391–92; Ex. CC-D); see also Ex. CC-D 23–24 (citing Yee 389, 391–
92). Other than the arguments discussed above related to claims 20 and 21,
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for which claims 21–24 ultimately depend, Patent Owner does not separately
argue Requester’s findings and conclusion related to claims 22–24.
Accordingly, we determine Yee, Lachinski, and Dykes teach and
suggest the recitations in claims 22–24.
In sum, we newly reject claims 13 and 18–24 under 35 U.S.C.
§ 103(a) based on Yee, Lachinski, and Dykes.
D. Requester’s Cross Appeal
Requester appeals the Examiner’s decision not to adopt a proposed
rejection19 of a now improper claim (i.e., claim 42) based on Yee and Dykes.
3PR Appeal Br. 4; see also RAN 4. Because the appealed claim is presently
improper, Requester’s cross-appeal has been rendered moot.

IV. CONCLUSION
We have reviewed the entire record, including submissions by Patent
Owner and Requester, and the decision in Vederi.
Concerning the claims rejected by the Examiner or newly proposed
grounds, we determine:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
13 102(a) Dykes 13
13 102(a) Al-Kodmany 13
13 102(a) Bates 13
13, 18–
24
103(a) Yee, Dykes 13, 18–
24,

19 This rejection was proposed by Requester in comments after ACP on
November 25, 2013. 3PR Nov. 2013 Comments 49.
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13, 18–
24
103(a) Murphy, Yee 13, 18–
24,

13, 18–
24
103(a) Shiffer, Yee 13, 18–24
13, 18–
24
103(a) Yee, Lachinski,
Dykes
13, 18–
24
Overall
Outcome
13, 18–24 13, 18–
24

V. TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.77(b). Section 41.77(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.77(b) also provides that Patent Owner, within one month
from the date of the decision, must exercise one of the following two options
with respect to the new grounds of rejection to avoid termination of the
appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.
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In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37
C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of
this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
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timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

REVERSED
37 C.F.R. § 41.77

FOR PATENT OWNER:

LEWIS ROCA ROTHGERBER CHRISTIE LLP
PO BOX 29001
GLENDALE, CA 91209-9001

FOR THIRD-PARTY REQUESTERS:

O’MELVENY & MYERS LLP
IP&T CALENDAR DEPT LA-1005D
400 SOUTH HOPE STREET, 18TH FLOOR
LOS ANGELES, CA 90071-2899