7,813,596 B2 et al.

Patent Trials and Appeals Board

Jun 1, 2021

2018007745 (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.
95/000,684 08/17/2012 7,813,596 B2 7571
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 2018-007745
Reexamination Control 95/000,684
Patent 7,813,596 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
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, September 28,
2018, and February 1, 2019. 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. 7,813,596 (“the ’596 patent”). The ’596 patent
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claims priority to U.S. Applications: (1) 11/761,361 (now U.S. Patent No.
7,577,316), filed June 11, 2007, (2) 11/130,004 (now U.S. Patent No. 7,239,760),
filed May 16, 2005, and (2) 09/758,717 (now U.S. Patent No. 6,895,126), filed on
January 11, 2001. The ’596 patent, code (60). Pursuant to 35 U.S.C. § 154(a)(2),
the term of the ’596 patent ended twenty (20) years from the filing date (i.e.,
January 11, 2001) of the earliest application 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 ’596 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 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 ’596 patent. Patent Owner’s proposed amendments
(see, e.g., the January 3, 2013 Amendment (“Jan. 2013 Amendment”)) to the
claims, including new claims 63–75 (Jan. 2013 Amendment 15–17; PO Reopen
Request 19), are thus improper at this time. See MPEP § 2666.01. On the other

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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hand and even though the ’596 patent has expired, Patent Owner’s proposed claim
amendments to cancel claims 1, 2, 10, 15, 16, 20, 23, 35, 40, 45, and 50 (see Jan.
2013 Amendment 4–7, 10–12) are permitted. See MPEP § 2666.01. Additionally,
claims 3, 5–9, 11–14, 17–19, 22, 24–34, 36–39, 41–44, 46–49, and 51–62 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 4 and 21.
Upon review, we REVERSE the rejections adopted by the Examiner but
present new grounds of rejection for patent claims 4 and 21 pursuant to 37 C.F.R.
§ 41.77(b).
Related Matters
The parties indicate that the ’596 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 Nos. 13-1057, and Vederi, LLC v. Google Inc.,
Case No. 13-1296.3 PO Appeal Br. 2; 3PR Appeal Br. 1, 20–21, Related

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) the Requester’s
Appeal Brief (3PR Appeal Br.) filed September 8, 2014, (7) the Examiner’s
Answer (Ans.) mailed April 21, 2015, (8) Patent Owner’s Request to Reopen
Prosecution (PO Reopen Request) filed September 16, 2016, (9) the Examiner’s
Determination Under 37 C.F.R. 41.77(d) (Ex. Deter.) mailed May 17, 2018, and
(10) the Request for Inter Partes Reexamination (“Request”) filed August 17,
2012.
3 Cases Nos. 13-1057 and 13-1296 were decided on March 14, 2014 and concerned
U.S. Patent Nos. 7,577,316 B2, 7,805,025 B2, and 7,239,760 and the ’596 patent.
Vederi, LLC v. Google, Inc., 744 F.3d 1376 (Fed. Cir. 2014). The Federal Circuit
reversed the claim construction of the district court, vacated the judgement, and
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Proceedings App. Additionally, the parties indicate that this appeal may be related
to: (1) U.S. Patent No. 7,805,025 B2, which is the subject of inter partes
reexamination having been assigned Control No. 95/000,681, (2) U.S. Patent No.
7,239,760 B2, which is the subject of inter partes reexamination having been
assigned Control No. 95/000,682, and (3) U.S. Patent No. 7,577,316 B2, which is
the subject of inter partes reexamination having been assigned Control No.
95/000,683. PO Appeal Br. 2; 3PR Appeal Br. 1. The opinions in these
proceedings were similarly vacated. Vederi, 813 F. App’x 501.

Parties Appeals
Patent Owner appealed the decision in the RAN rejecting claims 4 and 21.
See PO Appeal Br. 3, 6. Requester responded, and Patent Owner rebutted.
Requester cross-appealed the decision in the RAN determining now-
improper claims of the ’596 patent are patentable. 3PR Appeal Br. 2. Patent
Owner responded, and Requester rebutted.
The Examiner’s Answer incorporated the RAN (Ans. 1), which rejected
claims 4 and 21 on various grounds. RAN 1, 6–19.
An oral hearing was conducted on April 27, 2016. The transcript of the
hearing has been made of record.
After the August 2016 Decision, Patent Owner requested reopening
prosecution. See PO Reopen Request 1. The remand was granted in part for the
Examiner’s consideration of now-improper claims. May 23, 2017 Order 3–5. The
Examiner determined that the rejections of the now-improper claims were not

remanded for further proceedings. See id. at 1384; see also PO Appeal Br. 3. The
disputed claim language addressed by the Federal Circuit in this case differs from
the disputed language in the instant appeal.
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overcome. Ex. Deter. 2. We, subsequently, rendered a second opinion on
September 28, 2018, and a decision on rehearing on February 1, 2019.
The Federal Circuit vacated our decisions. Vederi, 813 F. App’x at 501. In
its opinion, the court construed three phrases found in the claims of U.S. Patent
No. 7,805,025 (“the ’025 patent”). Vederi, 813 F. App’x at 501–505. These
phrases are: (1) “composite image,” (2) “moving” within the phrase “image
frames acquired by an image recording device moving along a trajectory,” and (3)
“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.” The court specifically agreed with how the panel
construed the phrase “composite image” (id. at 503), did not fully adopt how the
panel construed the phrase “moving” (id. at 503–504), and disagreed with how the
panel construed the phrase “web page for the retail establishment” (id. at 504–
505).
Given the claim construction addressed in Vederi, we reevaluate the rejections
of claims 4 and 21. In reaching our decision, we consider the record as a whole.

Claimed Subject Matter
Canceled claim 1 and dependent claim 4 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
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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;
retrieving a map of at least a portion of the geographic area;
displaying the retrieved first image on a first display area of the
screen and the retrieved map on a second display area of the screen;
receiving a user selection of a position on the displayed map;
determining a second location based on the user selected
position; and
retrieving from the image source a second image associated
with the second location.

4. The method of claim 1,
wherein the first and second images are each a composite
image, wherein each composite image is created by processing pixel
data of a plurality of the image frames.

The ’596 patent 15:42–64 (emphasis added), 16:6–9 (emphasis added).

Prior Art Relied Upon
The record relies on the following as evidence of unpatentability:

Name Reference Date
Lachinski4 US 5,633,946 May 27, 1997
Murphy US 6,282,362 B1 Aug, 28, 2001

4 Requester indicates that Lachinski was cited in its Comments to rebut Patent
Owner’s response and to explain how Yee’s four-view images are created. 3PR
Resp. Br. 2, 18–19 (citing page 27 of the “May Supplemental Third-Party
Comments”); see also RAN 19–20 (discussing Lachinski is properly cited under
37 C.F.R. §1.948(a)(2)).
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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,
Proc. IEEE Position Location and Navigation 388–393 (1994) (“Yee”).

Toru Ishida et al., Digital City Kyoto: Towards A Social Information
Infrastructure, 1652 Lecture Notes in Artificial Intelligence from Int’l Workshop
on Cooperative Info. Agents 23–355 (1999) (“Ishida”).

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”).

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 (July
2000) (“Bates”).
Current Rejections
The Examiner rejects the claims as follows:
Reference(s) Basis6 Claims RAN
Dykes § 102(a) 4 6–8
Yee § 102(b) 4 8–10
Al-Kodmany § 102(a) 4 10–12

5 Ishida is not numbered but we refer to the pages sequentially starting with page
23 like the Request. See, e.g., Request 16, 212–215.
6 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.
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Bates § 102(a) 4 12–13
Murphy and Yee § 103(a) 4 14–15
Shiffer and Yee § 103(a) 4 16–17
Ishida and Dykes § 103(a) 4, 21 17–19

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 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 record, the major issue on appeal is whether, as presented, the
Examiner erred in rejecting patent claims 4 and 21?

III. ANALYSIS
A. Claim Construction
As previously noted, the ’596 patent has expired. Because the ’596 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
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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 claims 1 and 15, claim 4, and
claim 21 of the ’596 patent in their briefings. PO Appeal Br. 6–23; see also 3PR
Appeal Br. 16–18; 3PR Resp. Br. 2–9. Although claims 1 and 15 are canceled (see
the Jan. 2013 Amendment 4, 6), claim 4 of the ’596 patent depends from canceled
claim 1 and claim 21 ultimately depends from claim 15. Thus, each appealed
claim includes either canceled claim 1’s or claim 15’s recitations.
1. The Image Frames Limitation of Canceled Claims 1 and 15
Canceled claims 1 and 15 recite “wherein the images are associated with
image frames acquired by an image recording device moving along a trajectory”
(the Image Frames Limitation7). The ’596 patent 15:52–54, 17:18–20. Patent
Owner’s arguments focus on the word “moving” in the Image Frames Limitation.
PO Appeal Br. 8–19. Specifically, Patent Owner contends that it is unreasonable
to construe this claim limitation broad enough to encompass situations where all
the images are captured while the image recording device is stationary. Id. at 9.
Patent Owner asserts that the claim term “moving” in this limitation should be
given “meaning, [such that] image frames must be acquired while the recording
device is in motion” (id.) and “along the trajectory at the time of the acquisition”
(id. at 10). Patent Owner further argues that this understanding is the only
construction consistent with the ’596’s patent disclosure. Id. at 10–17 (citing the

7 Requester refers to the quoted limitation as “the ‘Image Frames Limitation.’”
3PR Appeal Br. 16; 3PR Resp. Br. 2.
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’5968 patent, code (57), 2:27–31, 2:45–48, 3:54–60, 4:50–62, 5:18–22, 5:52–54,
6:56–62, 7:58–64, and U.S. Provisional App. No. 60/238,490 (“the ’490
provisional application”), pp. 8–9).
The Examiner and Requester disagree. RAN 21–26 (citing 3PR November
25, 2013 Comments (“3PR Nov. 2013 Comments”) 7, 9); 3PR Resp. Br. 2–7. The
Examiner explains that canceled claims 1 and 15 do not recite that “[the] image
frames [are] acquired by the device while moving along a trajectory (i.e., recording
and moving at the same time).” RAN 21 (underlining omitted); see id. at 25–26
(referring to 3PR Nov. 2013 Comments 14–15). The Examiner asserts that the
claims and Patent Owner’s admission “embrace alternate embodiments [as]
disclosed in the [’596] patent,” including those of both recording while moving and
stopping along a trajectory. Id. at 21; see id. at 21–24 (citing 3PR Nov. 2013
Comments 8–11; the ’596 patent 3:58–60, 5:52–6:23, Fig. 9; the ’490 provisional
application, pp. 8–9); 3PR Resp. Br. 3–4, 7 (citing the ’596 patent 3:51–53, 4:56–
58, 4:61–5:8, 7:55–64, 10:15–19, Fig. 9; the ’490 provisional application 8–9;
ACP 20).
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

8 Patent Owner refers to “the ’316 patent.” PO Appeal Br. 10–11. We presume
that Patent Owner intended to refer to the ’596 patent.
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other times).” Id. at 504. Each of canceled claims 1 and 15 of the ’596 patent
includes the same recitation as claim 21 of the ’025 patent addressed by the court.
Compare the ’025 patent 17:51–53, with the ’596 patent 15:52–54, 17:18–20.
Accordingly and as explained below, we apply a similar claim construction for the
Image Frames Limitation in canceled claims 1 and 15 of the ’596 patent.
The Vederi court applied the “broadest reasonable interpretation” to the
claims at issue, 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 ’596 patent at issue in this appeal.
In particular, the Specification states “an image recording device moves
along a path recording images of objects along the path” (the ’596 patent 2:27–29),
“[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 ’596 patent, Fig. 9.
When read in view of the Specification of the ’596 patent, we determine that
the ordinary and customary meaning of “moving” within the Image Frames
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Limitation in canceled claims 1 and 15 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.
Also, “Patent Owner agrees that the ‘trajectory’ [recited in the Image Frames
Limitation of canceled claims 1 and 15] need not be preplanned.” PO Appeal Br.
19; see id. at 18–19. The Examiner and Requester similarly agree. RAN 25; see
also 3PR Resp. Br. 3 n.1 (noting that Patent Owner concedes the “trajectory” need
not “be preplanned”9); 3PR Appeal Br. 17. Patent Owner also contends that “when
the images are being retrieved in response to a user input, the trajectories of the
image acquisition device are known.” PO Appeal Br. 19. Requester contends the
Image Frames Limitation does not require a known or specific trajectory. 3PR
Appeal Br. 17–18; see also 3PR Resp. Br. 3 n.1.
The ’596 patent describes a trajectory as synonymous with a path. The ’596
patent 3:56 (describing cameras “moving along a trajectory/path.”). The ’596
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; see also id. at 7:58–64,
Fig. 9. Even presuming, without agreeing, that the path of streets in this example
(e.g., 110 in Figure 9) may have been known prior to recording, we note that there
exists a level of randomness when driving down a street, such as lane shifting,

9 Requester indicates that the Examiner took a contrary position in the proceedings
for Control Nos. 95/000,681 and 65/000,682 when construing the term “trajectory”
for the claims in the ’025 patent and U.S. Patent No. 7,239,760. 3PR Resp. Br. 3
n.1; see also 3PR Appeal Br. 17–18.
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which deviates from any purported, known or specific path. Furthermore, the
Figure 9 example in the Specification is described as “an illustration” of a
trajectory, whereas the claim’s scope is not limited to this illustration. Compare
the ’596 patent 15:54, with id. at 3:14–15 (stating “FIG. 9 is an illustration of a
trajectory”), 7:58–64 (describing Figure 9). Thus, under its ordinary meaning and
consistent with the Specification of the ’596 patent, the recited “trajectory” in
canceled claims 1 and 15 need not be a preplanned, specific, or known trajectory.
In sum, we find that the Image Frames Limitation (“wherein the images are
associated with image frames acquired by an image recording device moving along
a trajectory”) in canceled claims 1 and 15 requires the image recording device
moves along a path or route, which is not necessarily preplanned, specific, or
known, and that the image recording device acquires images that “are associated
with image frames acquired by an image recording device” (1) while moving or (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 Claim 4
Claim 4 depends from claim 1 and adds “the first and second images are
each a composite image, wherein each composite image is created by processing
pixel data of a plurality of the image frames.” The ’596 patent 16:6–9. The
Examiner finds the phrase, “composite image,” includes synthesizing multiple
images and combining four images into a single image. See RAN 28 (citing
Lachinski 5:25–31). For support, the Examiner also refers to the Requester’s
Comments filed November 25, 2013. Id. (citing 3PR Nov. 2013 “Comments” 5–6,
17–19). In these comments, Requester argues Patent Owner improperly imported a
particular embodiment found in the ’596 patent’s Specification into the claims.
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3PR Nov. 2013 Comments 18; see also 3PR Resp. Br. 8 (stating that Patent
Owner’s construction “improperly imports limitations from Figure 2”). Requester
also states a plain meaning of “composite image” does not require a single, new
view and can include a four-view image. 3PR Nov. 2013 Comments 18–19; see
also 3PR Resp. Br. 8.
Patent Owner argues the Examiner’s interpretation is unreasonable. PO
Appeal Br. 19–2310; see also PO Reb. Br. 7–10. Specifically, 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. 19; see also id. at 20–21 (reproducing the ’596 patent, Figs. 2, 16
(in part); U.S. Provisional Application No. 60/238,490, Fig. 11) (citing U.S.
Provisional Application No. 60/238,490, p. 8), 23; PO Reb. Br. 7 (citing the ’596
patent 1:50–54, 1:58–60). Patent Owner further contends that “[n]othing in the
’596 patent suggests that two or more separate and independent images depicting
separate and distinct views of different objects is a ‘composite image’ as used in
the ’596 patent simply because they are displayed simultaneously on a screen.”
PO Appeal Br. 23.
When considering the disclosure, the ’596 patent discusses creating
“composite images” by synthesizing images, image data, or image frames but does

10 Patent Owner refers to claims 13, 18, 23, and 36 when discussing the “composite
images” limitation. PO Appeal Br. 19. Notably, claims 13, 18, and 36 are not the
subject of this reexamination, and claim 23 has been canceled. RAN 1.
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not disclose how the images are synthesized or combined to form the composite
image. The ’596 patent, code (57), 2:22–24, 2:34–36, 3:46–49, 5:45–47. The
Specification also states image data from each selected image frame 42 in Figure 2
is extracted and combined to form the composite image. Id. at 5:66–6:1, Fig. 2.
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 Specification 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,” such as that found in claim 4 of the ’596
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

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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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 the ’025 patent, 5:66–6:1; Personalized Media
Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1343 (Fed. Cir. 2020)).
Accordingly, “a composite image” in claim 4 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 do not confine our understanding of the phrase,
“composite image” in claim 4, to the exact representations in the Specification.
Patent Owner also discusses “the patent infringement suit” between Patent
Owner and Requester. PO Appeal Br. 19 n.1; see also id. at 20 (stating “a
composite image 40 . . . has pixel values that are computed from pixel values of
each of the image frames from which the composite image is created”). According
to Patent Owner, the parties in that proceeding “agreed that ‘a composite image
created by processing pixel data of a plurality of the image frames’ meant ‘an
image formed by combining two or more image frames at the pixel level.’” Id. at
19 n.1 (citing “Joint Construction of Agreed Terms, Joint Exhibit C to Plaintiff
Vederi, LLC's Opening Claim Construction Brief, Exhibit D hereto”).
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The court in Vederi found the phrase “by processing pixel data of a plurality
of the image frames,” similar to that found in claim 4 of the ’596 patent (the ’596
patent 16:8–9), 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 ’596 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 ’596 patent, code (57), 6:1–15, Fig. 2. But, applying the ordinary meaning of
“processing,” claim 4 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” and “each composite
image is created by processing pixel data of a plurality of the image frames” in
claim 4 collectively means a single image created by combining different image
data or uniting image data of image frames at the level of pixel data.
3. Web page for the retail establishment in claim 21
Claim 21 ultimately depends from canceled claim 15 and adds “wherein the
particular one of the objects is a retail establishment, the method further
comprising: accessing a web page for the retail establishment; and invoking by the
computer system a display of the web page on the display screen.” The ’596
patent 18:7–12. Neither party disputes this claim or how this claim should be
construed in this proceeding.
However, we note the court in Vederi stated “[t]he Board limited a ‘web
page for the retail establishment’ to web pages belonging to, owned by, or operated
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by the retail establishment.” Vederi, 813 F. App’x at 504 (citing Google Inc. v.
Vederi, LLC, No. 95/000,681, 2016 WL 792285, at *2–3 (PTAB Feb. 26, 2016)).
The court found this characterized interpretation as “unduly narrow.” Id. The
court indicated “an online Yellow Pages directory may be a web page for a retail
establishment in that it shows particular information about the retail establishment
for the convenience of a consumer” (id. at 505) and further states “a web page,
such as an online Yellow Pages directory, may be associated with a particular retail
establishment, but not owned or controlled by that establishment” (id. (citing the
’025 patent 12:53–56)).
The Specification of the ’596 patent does not describe an online Yellow
Pages directory but does discuss “business establishments” (the ’596 patent 12:48),
stating that “the establishment” can be “associated with a particular Web page” (id.
at 12:53–54). Consistent with the Specification, an ordinary meaning of the recited
“web page for the retail establishment” in claim 21 as understood by an ordinarily
skilled artisan at the time invention would have included a web page in which a
business or retail establishment is associated. See id. This web page thus may
include more than those belonging to, owned by, or operated by the retail
establishment. See id.; see also Vederi, 813 F. App’x at 504.
Although the court did not provide us an explicit claim construction for the
phrase “web page for the retail establishment” found in claim 21, we understand
the ordinary meaning of this phrase to include a web page that (1) shows particular
information about the retail establishment or (2) is associated with a particular
retail establishment.

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B. Pending Rejections
Claim 4 is rejected under: (1) 35 U.S.C. § 102(b) based on Yee and (2) 35
U.S.C. § 102(a) based on (a) Dykes, (b) Al-Kodmany, and (c) Bates. RAN 6–13.
Claim 4 is also rejected under 35 U.S.C. § 103(a) based on (3) Murphy and Yee,
(4) Shiffer and Yee, and (5) Ishida and Dykes. Id. at 14–19. Claim 21 is rejected
under 35 U.S.C. § 103(a) based on Ishida and Dykes. Id. at 17–19.
These rejections were presented on the claims as amended and prior to the
’596 patent’s expiry. We reverse the rejections given the particular circumstances
of this proceeding, which include that the dependencies of the claims have changed
since the ’596 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 Grounds of Rejection

Pursuant to 37 C.F.R. § 41.77(b), we present a new ground of rejection for:
(1) claim 4 under 35 U.S.C. § 103(a) based on Yee, Dykes, and Lachinski and (2)
claims 4 and 21 under 35 U.S.C. § 103(a) based on Ishida, Yee, and Dykes.
Of note, 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. 24; see also id. at 23–24; 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. 18–19 (contending Lachinski was
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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 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 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. Claim 4
Because claim 4 depends from canceled claim 1, we adopt the findings and
conclusions related to claims 1 and 4 by the Requester and the Examiner when
addressing Yee. See Request 79–88 (citing Yee 389–92; Ex. CC-B; Ex. OTH-B
104:16–20, 121:1–3; Ex. OTH-D 17:7–9); see also Ex. CC-B 1–8 (citing Yee 389–
92); RAN 8–9 (citing Yee 389, 391–92, Fig. 1) (incorporating Request 79–97, Ex.
CC-B); 3PR Resp. Br. 11–12 (citing Yee 388–89; Lachinski 5:25–40; ACP 22);
3PR Appeal Br. 5–12 (citing Yee 389–92, Abstract; ACP 7, 22; RAN 8–9, 27–28;
Lachinski 5:25–31). We highlight that Yee discusses acquiring images as the
vehicle, which houses its cameras, moves down the road or the recited “the images
are associated with image frames acquired by an image recording device moving
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along a trajectory” (the Image Frames Limitation) as canceled claim 1 recites. Yee
388–390 (describing the van is driving on the streets and recording images in all
four directions as the van travels); see also Request 84 (citing Yee 389–90). We
also highlight Yee’s “rolling video” or “single-frame images” (Yee 392) depict
objects’ elevations and its views in a geographic area, including curbside views,
street views, real estate views, houses, street lights, guard rails, and highway
striping (id. at 389). See also RAN 8–9 (noting the same). The Request also turns
to Yee’s discussion of various views, including “composite of them,” to teach the
recited “composite image” and how the image is created. Request 87–88 (quoting
Yee 389) (citing Ex. CC-B); see also Ex. CC-B 8 (quoting Yee 389).
Patent Owner disputes that Yee teaches the recited first or second
“composite image” of claim 4 when properly construed in light of the ’596 patent.
PO Appeal Br. 27–30; see also PO Reb. Br. 8–10, 12. Patent Owner refers to
“Section VII.A.3” of its brief, contending that Yee fails to disclose “a composite
image.” PO Appeal Br. 27. In Section VII.A.3, Patent Owner argues the
Examiner relies upon a changed meaning for composites in determining that Yee
anticipates claim 4. See id. at 21–22. Patent Owner asserts that the discussion in
Yee of composites includes “side-by-side views” or “multiple views, such as a 4-
view display.” Id. at 22. Patent Owner contends that each view is depicted in a
separate image and cannot be a composite as recited, which requires a single view
of objects. Id. at 22–23.
As discussed above in Section (III)(A)(2), we determine the phrase
“composite image” includes a single image created by combining different image
data or by uniting image data but does not have to be “a single new image with a
new view” as urged by Patent Owner. Id. at 28. Moreover, as for the remaining
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phrase that “each composite is created by processing pixel data of a plurality of the
image frames,” we found that the recitation requires only combining different
image data or uniting image data of image frames at the level of pixel data (see
Section (III)(A)(2)) but does not recite how the pixel data of the images frames are
processed.
We determine Yee teaches or suggests the recited “composite image”
recitation. Although identity of terminology is not required, Yee actually discloses
“composites.” That is, Yee states “[s]ome of the specific data to be collected and
made available . . . include: 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.” Yee 389 (emphasis added). This portion of Yee
explicitly discloses a composite image (i.e., “composite of them”). Id. Notably,
the language “composites of them” in Yee is separate from the other described
views, including the 4-view, and “them” refers back to the other discussed views,
including a curbside view, a street view, and a real estate view.
To illustrate, the Examiner identifies, and we agree “a composite display of
(for example) a curbside view with a front and back view is a new view
manipulated at the pixel level and synthesized from multiple images.” RAN 28.
As another 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.” See Yee 389. Additionally, an ordinarily
skilled artisan would have recognized Yee’s disclosed “composites” (see id.)
would have involved combining or uniting the views at the level of pixel data in
some manner so as to form the disclosed “composites” available to the user in Yee.
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We thus disagree with Patent Owner that the Examiner changes the meaning of
“composite” in determining Yee teaches the recited “composite image” in claim 4.
Patent Owner argues that Yee’s composites “teaches away from creating
composite images with its process.” PO Appeal Br. 28. This argument contrasts
directly with Yee’s explicit disclosure of a process that creates “composites” from
collected data. Yee 389.
As for Patent Owner’s assertion that Yee’s discussion of composites
includes “side-by-side views,” “multiple views,” or “a 4-view display” (PO Appeal
Br. 22–23; see also id. at 28 (addressing Lachinski)), this argument is unavailing.
As explained above, Yee discuses “composites of them” separate from its “4-
view.” Yee 389. This teaching at least suggests 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 (II)(A)(2).
To the extent that Yee’s “composites of them” are not considered to teach or
suggest “each composite image is created by processing pixel data of a plurality of
the image frames” as claim 4 recites (for which we do not agree), the rejection
further relies on Dykes. Dykes teaches a known technique for creating
“composites” by combining and uniting image data (e.g., stitching) to produce a
panoramic image. Dykes 132–36, Fig. 2. When substituting Dykes’s known
technique of forming a composite (e.g., a panoramic image) for Yee’s composite
image forming technique, “the combination must do more than yield a predictable
result.” KSR, 550 U.S. at 416. Additionally, Dykes teaches panoramic imagery (1)
can assist “with educational aims,” including making more sense of maps when
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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) provide an ability to navigate across the virtual space
and between recognized features (id. at 139), and (4) permit panning around the
landscape touring across the virtual environment (id. at 140). Thus, combining
Dykes’s teaching related to creating “a composite image” with Yee would have
improved on Yee’s system by providing educational information, evoking a visual
and engaging experience, and provide the ability to navigate across a virtual space.
See KSR, 550 U.S. at 417.
Also, Yee discloses a mobile mapping system for recording and storing
images of a geographic area in a visual interface system (VIS) for an end user to
locate and retrieve the collected video images. See Yee 391–92. Dykes discloses
its process of collecting composite image data is minimal and cheap. Dykes 136,
140, 148. Thus, combining Dykes with Yee to arrive at claim 4’s “composite
image” would have improved on Yee’s system by creating an environment that is
inexpensive and easy to set up due to minimizing the collected data but still
provides a spatial interface for a user to retrieve composite images (see id. at 134–
136). See KSR, 550 U.S. at 417.
Patent Owner further reproduces a 4-view example in its appeal brief,
asserting this is not a single view and thus not “a composite image” of claim 4.
Appeal Br. 22. In concluding that this type of view is not “[a] composite image . . .
created by processing pixel data of a plurality of the image frames” as claim 4
recites, Patent Owner presumes the example from “the GeoSpan Brochure”14 (PO

14 We are unable to locate this exhibit in the briefing. Patent Owner refers to
“Exhibit E hereto.” Appeal Br. 22 n.2. But, Exhibit E is an Opinion from the
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Appeal Br. 22 n.2) is the only “4-view” that Yee envisions and argues “each view
is depicted in a separate image” (id. at 22). See id. at 22–23, 27–28 (discussing
Lachinski when arguing that Yee’s “4-view” is not a composite image). Yet, the
views described and shown in the GeoSpan Brochure and in Lachinksi are just
examples of the data acquired and retrieved by the GeoSpan Corporation discussed
in Yee. See, e.g., Yee 389 (describing that data collected). In any event, Yee
discusses “images can be displayed as rolling video of four views in a frame” (Yee
392), which suggests a single frame with four views or a single image created by
combining different image data of image frames (e.g., from the four views) at the
level of pixel data.
To the extent that Yee’s “4-view” (Yee 389) is not considered “a composite
image” (for which we do not agree), the rejection further relies on Lachinski. Yee
discusses a “4-view” example but does not provide details concerning how the
view is formed. See id. at 389. Lachinski, which is a patent assigned to GeoSpan
Corporation (Lachinski, code (73)), explains:
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.

United States District Court for the Central District of California. We did locate a
submission on January 7, 2013 titled “Drive around town on your PC with
GEOVISTA” (GEOVISTA) with page 2 appearing to have a similar figure to that
reproduced on page 22 of Patent Owner’s Appeal Brief. In any event, the Geospan
brochure is not part of Patent Owner’s briefing. Patent Owner also refers to its
“January 2, 2013 Reply as Exhibit C” (id.), which is also not part of its briefing
before us.
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Id. at 5:25–31 (emphasis added), Fig. 3. Thus, the 4-view discussed in Yee (Yee
389) can be produced as a single image that combines four reduced images (e.g.,
different image data at the pixel data level), one in each of four corners that is
reduced in size as taught by Lachinski’s known technique.
Yee also teaches that data from the four images, which includes its pixel
data, are used to create the reduced-sized images into a single image. That is, each
of the “four views in a frame” discussed in Yee (Yee 392) or the “single video
image” with four reduced views (e.g., one-fourth of its original size that form
“reduced images” as 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 single 4-view image. Yee, as evidenced by
Lachinski, therefore teaches and suggests another example of “a composite image”
as claim 4 recites. Moreover, combining Lachinski’s known 4-view generator
technique with Yee would have predictably yielded a “4-view” image (Yee 389) as
a single image that combines image data from a plurality of image frames at the
level of pixel data (e.g., four reduced images) or the recited “each composite image
is created by processing pixel data of a plurality of the image frames” as claim 4
recites. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Patent Owner next contends that Yee, including its GeoSpan system, would
involve “manually review[ing] the raw image frames,” “select[ing] the most
appropriate image” (PO Appeal Br. 28) and “add[ing] the step of creating
composite images” (id. at 28–29), which would amount to “multiply[ing] the
manual labor costs, greatly slow[ing] the process, and add[ing] another level of
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complexity” (id. at 29). See also id. at 28–29.15 The record fails to support Patent
Owner’s contentions, which essentially rely on arguments of counsel. 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). Moreover, the
limitation “each composite is created by processing pixel data of a plurality of the
image frames” in claim 4 does not exclude inputting some data manually, and
many of the disputed features (e.g., slow, cost, precision, complexity) (PO Appeal
Br. 28–29) are not commensurate in scope with claim 4. In any event, 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); see also 3PR Resp. Br. 12 (citing
Lachinski 5:25–40; Yee 391).
Accordingly, claim 4 is newly rejected under 35 U.S.C. § 103(a) based on
Yee, Dykes, and Lachinski pursuant to 37 C.F.R. § 41.77(b).
2. Claims 4 and 21—Ishida, Yee, and Dykes
Because claim 4 depends from canceled claim 1, we adopt the findings and
conclusions related to claims 1 and 4 by Requester and the Examiner when
addressing Ishida and Dykes. See Request 210–222 (citing Ishida 26–28, 34, Fig.
1; Dykes 134–36, 139–41, 144, 146, Figs. 2, 4; Ex. CC-G; Ex. OTH-B 58:18–19,
104:16–20, 106; Ex. OTH-D 17:7–9); see also RAN 17–19 (discussing and citing
Ishida 26, Fig. 3; Dykes 142, 146–47; Request 211–12) (incorporating the Request
for claims 4 and 21; Claim Chart CC-G); 3PR Resp. Br. 17–18 (citing Request
210–12; Ishida 27, Abstract; Dykes 142, 146; ACP 15–16). Because claim 21

15 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.
PO Appeal Br. 28 n.3. This evidence is not in Patent Owner’s briefing.
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ultimately depends from canceled claim 15, we adopt the findings and conclusions
related to claims 15, 20, and 21 by Requester and Examiner when addressing
Ishida and Dykes. See Request 222–236 (citing Ishida 25–27, 30–31, 34, Figs. 1,
3; Dykes 136, 139–41, 144–46, Figs. 4, 6; Ex. CC-G; Ex. OTH-B 59:18–19,
61:23–25, 104:16–20, 106, 121:1–3; Ex. OTH-D 17:7–9); see also RAN 17–19
(discussing and citing Ishida 26, Fig. 3; Dykes 142, 146–47; Request 211–12)
(incorporating the Request for claims 4 and 21; Claim Chart CC-G); 3PR Resp. Br.
17–18 (citing Request 210–12; Ishida 27, Abstract; Dykes 142, 146; ACP 15–16).
Concerning claim 21, we repeat that the phrase “web page for the retail
establishment” includes a web page (1) that shows particular information about the
retail establishment or (2) associated with a particular retail establishment as
discussed in Section (III)(A)(3). See Vederi, 813 F. App’x at 505. Ishida teaches a
social information infrastructure for a city (e.g., Kyoto) that includes shopping,
business, transportation, education, and other information. See Ishida 23–24,
Abstract. This infrastructure integrates both World Wide Web archives and real-
time information related to the city into WEB and ftp interface (e.g., the interface
or second layer) on the Internet. See id. at 23–25, 28. Specifically, Ishida’s
Section 4 indicates the digital city integrates WEB and sensory data on a map,
which involves registering WEB pages with the digital city, determining the XY
coordinate of each WEB page, and retrieving WEB pages. Ishida 28–30. As an
example, sensors in Kyoto gather traffic data from buses that send location and
route data to the live digital city, and WEB pages for bus stops are retrieved and
displayed so that real-time bus data is displayed on the map of Kyoto. See Ishida
29–30, Fig. 5(b). As such, each of these web pages in Ishida (e.g., WEB and ftp
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interface) shows particular information (e.g., bus data) about or associated with a
retail establishment (e.g., a transportation company having a bus stop).
Ishida therefore teaches or suggests “the particular one of the objects is a
retail establishment” (e.g., a bus stop in geographic area,16 like Kyoto), “accessing
a web page for the retail establishment” (e.g., Kyoto’s or the digital city’s WEB/ftp
interface that contains web page information for the transportation company’s bus
stop) and “invoking by the computer system a display of the web page on the
display screen” (e.g., displaying the Kyoto bus stop’s real-time information using
the WEB/ftp interface) as claim 21 recites. To the extent that a transportation
company’s bus stop is not viewed as “a retail establishment,” Ishida also teaches
its interface retrieves data related to parking, shopping, and sightseeing (id. at 24),
which include information concerning parking lots (e.g., the nearest parking lot),
restaurant tables (e.g., whether one can reserve a table at a restaurant), and
shopping (e.g., what is on sale at a department store). See id. at 24, 30. Although
Ishida further notes that information related to parking lots and restaurants are
expected in the future (id. at 30), these teachings in Ishida at a minimum suggest “a
web page for the retail establishment” recitations in claim 28 as construed in
Section III(A)(3).
Turning to the arguments, Patent Owner contends that neither Ishida nor
Dykes acquires image frames by “an image recording device moving along a
trajectory.” PO Appeal Br. 40–41, 43; see PO Reb. Br. 14. Patent Owner asserts
that Dykes’s discussion of students taking images as they travel from one location

16 Claim 21, from which claim 28 depends, recites “a plurality of images depicting
views of objects in the geographic area.” The ’025 patent, 17:48–49.
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to another, but that the camera is placed on a tripod and kept stationary. PO
Appeal Br. 25–26 (citing Dykes 134, 141, Fig. 4); PO Reb. Br. 11.
In Section (III)(A)(1), we determined the Image Frames Limitation requires
the image recording device moves along a path, course or route and that the image
recording device acquires images (1) while moving or (2) both while moving and
while stationary. Ishida teaches its digital city (e.g., Kyoto) interface can be built
from 3D Web technology that integrates photos mapped onto 3D blocks and 2D
planes to create a realistic 3DML (three-dimensional modeling language) space.
Ishida 26–27, cited in Request 214. However, Ishida is silent regarding how its
photos or image frames are obtained. Dykes provides a little more detail about
how its images are obtained. Dykes 146, cited in Request 216–17. Dykes teaches
students record images using a digital camera and obtain images at select locations
along a footpath’s slope. Id.; see id. at 127 (discussing data collection devices),
134 (discussing digital cameras capturing images). Although Patent Owner’s
assertion that Dykes “appears” to use a tripod and its camera is “stationary” (see
PO Appeal Br. 25 (citing Dykes 134)) is not found in Dykes, Dykes is silent
regarding whether the camera moves while acquiring images. See id. Thus, to the
extent the Request relies on Dykes to teach the Image Frames Limitation (see
Request 216–17), we determine the record does not demonstrate whether Dykes
teaches these images can be obtained by an image recording device (e.g., the
digital cameras) (1) while moving or (2) both while moving and while stationary.
But, as explained above in Section (III)(C)(1), Yee teaches a known
technique for obtaining image frames using cameras located on a van that travels
along roads (Yee 388–390 (describing the van is driving on the streets and
recording images in all four directions as the van travels)) in order to “see
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everything” and to “ensure[] no object is lost behind an obstruction” (see id. at
390). Given Ishida’s desire both to obtain images of city realistically and to
diminish modeling problems by using photos (see Ishida 26–27 (discussing
“us[ing] photos mapped onto 3D blocks and 2D planes” that “significantly
diminishes some of [the noted problems]”)), Yee provides a solution that collects
photos (e.g., images) completely and accurately for Ishida’s digital city interface.
Yee further discusses its system has accurate GPS three-dimensional positioning to
ensure accuracy and completeness of the data collected and where the user is
located. Yee 390. This teaching in Yee further assists Ishida’s process of
determining coordinates for images associated with WEB pages that are part of
Ishida’s digital city interface. See Ishida 29. As such, Yee, when combined with
Ishida, teaches or suggests the recited “an image recording device moving along a
trajectory” in canceled claims 1 and 15 so as to obtain a complete and accurate
digital interface for captured environment.
Patent Owner also argues that neither Ishida nor Dykes discloses
“determining a second location based on the user selected position,” as recited in
canceled claim 1 (and similarly recited in canceled claim 15) and refers to “Section
VII.C.1.b).” PO Appeal Br. 41. In Section VII.C.1.b) (id. at 26–27), Patent Owner
specifically argues that Dykes fails to teach another recitation of “receiving a user
selection of a position on the displayed map” in canceled claim 1 because the
selection is based on a hot-linked symbol within the panorama and not “on the
displayed map,” as recited. Id. at 26. Patent Owner further asserts that the
selecting of icons displayed on an overhead image discussed in Dykes is a two-step
process that fails to teach the three-step process in claim 1 that includes the above
disputed “determining” step. Id. at 26–27 (citing Dykes 142).
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We are not persuaded. The rejection proposes that Dykes, in combination
with Ishida, teaches the “receiving a user selection of a position on the displayed
map” in canceled claim 1. For example, Figure 4 of Dykes shows a map of Haytor
Down on the left (e.g., VFC panoraMap) and linked panoramas on the right (VCF
panoraMap:htd-018 and VCF panoraMap:mark58). Dykes 141. Dykes teaches a
user clicks on multiple symbols on this map to specify multiple locations (e.g., first
and second locations) and obtain multiple views associated with locations. Id. at
140–141, Fig. 4, cited in Request 218–219. These symbols on the panoraMap
identify different locations of the panoramas. Id. at 140–141. Each selection on
the map by a user thus constitutes “receiving a user selection of a position on the
displayed map” as canceled claims 1 and 15 recite.
When the symbols on a map are clicked in Dykes, a viewer is revealed (e.g.,
VCF panoraMap:htd-018 and VCF panoraMap:mark58 on the middle-right and
lower-right respectively) and more symbols within the viewer (e.g., down arrows)
provide links to other panoramic images. See id., Fig. 4; see also 3PR Resp. Br. 11
(discussing “user clicking on a symbol on the map”). The viewer (right in Figure
4) is separate and distinct from the panoraMap in Dykes (left in Figure 4) (Dykes
141, Fig. 4), which as explained above, permits multiple selections within the
displayed panorama. Dykes further discusses the “[s]ymbols on the map identify
the locations of panoramas, and reveal the view and angle of view when clicked.”
Dykes 139–40. Dykes discusses providing dynamic links between the map and
images and that “the direction of imagery is known instantly.” Dykes 140. Based
on these teachings, Dykes suggests to an ordinarily skilled artisan that its process
includes determining the location or position on the panoraMap associated with the
selected symbol in order to reveal the proper panorama. See id. at 139–41. Thus,
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when the user selects a position on panoraMap, Dykes at least suggests a location
is determined based on the position in order to retrieve the panorama (e.g.,
“determining a second location based on the user selected position” in canceled
claim 1 and similarly recited in claim 15).
Yee additionally teaches a visual interface feature that permits a user to
point at specific locations within a city’s map and provides images of the selected
location in an efficient manner. Yee 388, 391–92. As such, Yee, when combined
with Ishida and Dykes, further teaches or suggests the concept of “receiving a user
selection of a position on the displayed map,” “determining a second location
based on the user selected position,” and “retrieving from the image source a
second image associated with the second location” as canceled claim 1 recites.
As for the contention related to a two-step process in Dykes versus the three-
step process of the claims, we are not persuaded. We are not sure what three steps
Patent Owner refers to, as steps (1) and (3) of the three step process are described
the same. PO Appeal Br. 27 (describing both steps (1) and (3) as “retrieving from
the image source a second image associated with the second location.”) Also, as
explained above, we further disagree that Dykes does not teach “determining a
second location based on the user selected position” step in canceled claim 1 and
similarly recited in canceled claim 15.
Patent Owner further contends that the Examiner has not presented a reason
to combine Ishida and Dykes and that Dykes teaches away from a combination
with Ishida. PO Appeal Br. 42–43. Patent Owner argues Ishida concerns a two-
dimensional (2D) map with a three-dimensional (3D) model of city that a user can
navigate. Id. at 42 (citing Ishida 24). In Patent Owner’s view, Dykes concerns a
method of storing and displaying multimedia data in association with specific
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locations on map, which is distinct and incompatible with Ishida. Id. (citing Dykes
131; Ishida 27). Patent Owner further contends “that the systems disclosed in
Ishida and Dykes used distinct and incompatible methods of visualizing an area”
(id.) and “it is unclear how a person of ordinary skill in the art at the time [of] the
invention was made would have combined the 3D virtual environment of Ishida
with the student media database at specific locations (including panoramas) of
Dykes” (id. at 42–43).
We are not persuaded. As noted in In re Keller, 642 F.2d 413 (CCPA 1981):
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to
those of ordinary skill in the art.

Keller, 642 F.2d at 425. Thus, there is no requirement in an obviousness rejection
to show how to incorporate Dykes’s image database within Ishida’s 3D
environment. See 3PR Resp. Br. 18 (citing In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012)).
Additionally, Ishida teaches using 2D photographs to add texture and detail
to buildings in its 3D model. Ishida 27, cited in PO Appeal Br. 42. For example,
Ishida discusses a 3D interface that uses photos mapped onto 3D blocks and 2D
planes to build the Shijo Shopping Street 3DML (3D Modeling Language)
implementation. Ishida 27–28, Fig. 3. Based on the foregoing, Ishida obtains
photographs of a region that are used to create its 3D interface. See id. Dykes
teaches one such known technique for acquiring images of a region along a
trajectory that can be integrated with other data. Dykes 146. Similarly, as
explained above, Yee teaches yet another known image acquisition technique
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involving an image recording device that moves along a path or trajectory. Yee
388–90. As such, one skilled in the art would have recognized integrating Dykes’s
and Yee’s images with Ishida’s interface—not necessarily using Dykes’s database
or how Dykes visualizes an area as argued (see PO Appeal Br. 42–43)—is an
effective method for building Ishida’s 3D blocks and that using these techniques
with Ishida’s 3D interface would have yielded the predictable result of integrating
captured images with Ishida’s system in an efficient manner. See RAN 18; see
also 3PR Resp. Br. 18.
Furthermore, as explained above, Dykes is relied upon to teach and suggest
techniques for retrieving user inputs that specify a first and second location,
determining the location based on the selection, and retrieving the images from an
image source associated with the locations as canceled claims 1 and 15 recite. See
also Request 218–220. Thus, an ordinarily skilled artisan would have recognized
several additional reasons to combine Dykes’s teachings with Ishida, including to
“ensur[e] that [the system’s] data are stored spatially with a minimum of effort”
(Dykes 142; see also 3PR Resp. Br. 18 (citing ACP 16 (further citing Dykes 142)))
and to provide: (1) “[v]isualization [that] is a particularly suitable technique to
help. . . synthesise information and understand the spatial character of collected
data” (Dykes 140), (2) links between the map and images that create (a) “a
powerful technique and means that the direction of imagery is known” and (b)
“realistic pictures [that] can be synthesised with” the map (id. at 140), and (3) “an
additional reality check” for the images (id. at 143). Dykes further discusses the
images are “geo-referenced” (id. at 139), “geo-referenc[ing] collected data files”
(id. at 140), and “stor[ing] geo-referenced panoramas” (id. at 144). See also RAN
18 (citing Dykes 142) (discussing “geo-referencing system of Dykes . . . help[s]
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build the 3D models in Ishida.”). These teachings in Dykes, along with Yee’s
discussed above, further assist Ishida’s process of determining coordinates for
images associated with WEB pages that are part of Ishida’s digital city interface.
See Ishida 29.
The Request provides yet another reason to combine the teachings of Dykes
with Ishida in order to “provide[s] a system for creating a navigable digital city . . .
by providing navigation images.” Request 212; see also 3PR Resp. Br. 18 (stating
“a POSITA would be motivated to use the efficient photograph collection and geo-
referencing system of Dykes to help build the 3D models in Ishida.”). We find
each of the above-provided reasons has a rational underpinning to support an
obviousness rejection. See KSR, 550 U.S. at 418. We, thus, disagree that Ishida
and Dykes are incompatible.
Patent Owner also fails to demonstrate sufficiently that one skilled in the art
would not have recognized how to use the panoramic images taught by Dykes
within Ishida. See PO Appeal Br. 43. Such panoramic images would further
augment Ishida’s 3D interface by providing a greater angle of view of a block,
such as the Shijo Shopping Street, to the user. See Dykes 127, 132, 134, 139–41;
see Ishida 27–28. Accordingly, the record provides numerous reasons to combine
Dykes and Yee with Ishida.
Lastly, Patent Owner contends that “Ishida appears to discourage the use of
images” because problems exists when downloading GIF (Graphics Interchange
Format) or JPEG (Joint Photographic Experts Group) compressed photos. PO
Appeal Br. 43 (citing Ishida 27). However, this purported problem is described as
existing with “any site on the WEB using many graphics.” Ishida 27. Also,
neither Ishida nor Dykes requires compressed GIF or JPEG formats. Yet, even
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presuming without agreeing Patent Owner is correct that problems will exist, this
problem may render the combined system somewhat inferior if GIF or JPEG
images are used but does not teach away from the Ishida/Dykes combination. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 2008) (indicating a known product “does
not become patentable simply because it has been described as somewhat inferior
to some other product for the same use.”).
For the above reasons, we newly reject claims 4 and 21 based on Ishida,
Yee, and Dykes.
D. Requester’s Cross Appeal
Requester appeals the Examiner’s decision not to adopt a proposed rejection
of now improper claims (i.e., claims 72 and 73) based on Yee. 3PR Appeal Br. 2,
12–16. Because the claims appealed are improper at present, Requester’s cross-
appeal has been rendered moot.

IV. CONCLUSIONS
Concerning the claims rejected by the Examiner, we determine:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
4 102(a) Dykes 4
4 102(b) Yee 4
4 102(a) Al-Kodmany 4
4 102(a) Bates 4
4 103(a) Murphy, Yee 4
4 103(a) Shiffer, Yee 4
4, 21 103(a) Ishida, Dykes 4, 21
4 103(a) Yee, Dykes,
Lachinksi
4
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Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
4, 21 103(a) Ishida, Yee,
Dykes
4, 21
Overall
Outcome
4, 21 4, 21

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 “a new ground of rejection pursuant to this
paragraph 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.

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: . . .
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[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 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

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FOR PATENT OWNER:

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

FOR THIRD-PARTY REQUESTER:

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