Ex Parte 7,239,760 B2 et al

Patent Trial and Appeal Board

Sep 26, 2016

95000682 (P.T.A.B. Sep. 26, 2016)

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.
95/000,682 08/17/2012 7,239,760 B2 13557-105153.R4 8518
23363 7590 09/27/2016
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/27/2016 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 2016-006116
Reexamination Control 95/000,682
Patent 7,239,760 B2
Technology Center 3900
____________

Before DENISE M. POTHIER, ANDREW J. DILLON, and
IRVIN E. BRANCH, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
This is a decision under 37 C.F.R. § 41.77(f). On June 26, 2015, we
reversed the Examiner’s final decision to confirm the patentability of: (1)
claim 8 based on Al-Kodmany and (2) claims 2, 3, 12–18, 21–26, 29, 32–37,
39–44, and 46–50 based on Shiffer and Yee. Google Inc. v. Patent of Vederi,
LLC, Appeal No. 2015-004309, 2015 WL 3958474 (June 26, 2015).1 We
entered new rejections against these claims and designated these rejections
new grounds. Opinion (“Op.”) 10, 15–17; Errata 2. On July 28, 2015,
pursuant to 37 C.F.R. § 41.77(b)(1), Patent Owner elected to reopen
prosecution before the Examiner and submitted: (1) amendments to some
claims, (2) new claim 51, and (3) new evidence, entitled “Drive around town
on your PC with GEOVISTA Visual Geographic Information.” Request to
Reopen Prosecution under 37 C.F.R. 41.77(b)(1) (“Request.”) In opposition,
Requester submitted comments. The Board issued an order on November
19, 2015, granting in part the Request and indicating the proceeding will be
remanded for the Examiner’s consideration of claims 39–44 and 46–50 and
newly-added claim 51.2 Order 5–6.
The instant reexamination proceeding, Control No. 95/000,682,
returns to the Board after the Examiner’s Determination (“Deter.”), entitled

1 On July 16, 2015, the Board supplemented the original Opinion, clarifying
that “[w]e reverse the Examiner's decision to confirm claim 8 and conclude
claims 2, 3, 12–18, 21–26, 29, 32–37, 39–44, and 46–50 are unpatentable
based on Shiffer and Yee.” Errata 2.
2 The Examiner mistakenly states the Board granted in part the request to
reopen prosecution for “claims 36-44 and 46-51.” Determination (“Deter.”)
2 (italics added). The order excluded claims 36–38 from the granted
Request. Order 6.
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Determination under 37 CFR 41.77(d) mailed January 8, 2016. Patent
Owner and Requester submitted comments (“PO Comments” and “3PR
Comments”) in response to the Examiner's Determination. Patent Owner
and Requester replied (“PO Reply” and “3PR Reply”) in response to the
comments.
Our new Opinion is deemed to incorporate the earlier Opinion,
including the Errata mailed July 16, 2015, except for any portion specifically
withdrawn. 37 C.F.R. § 41.77(f). For example, we maintain our position
concerning claims 2, 3, 8, 12–18, 21–26, 29, and 32–37, which are not
addressed by the Examiner’s Determination.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306 (pre-AIA).
Canceled claim 1, claim 8, and claim 39 are relevant to this appeal
and 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;
receiving a second user input specifying a navigation
direction relative to the first location in the geographic area;
determining a second location based on the user specified
navigation direction; and
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retrieving from the image source a second image
associated with the second location.

8. The method of claim 1, wherein the retrieving of the image
corresponding to the first or second location comprises:
identifying a street segment including the first or second
location;
identifying a position on the street segment
corresponding to the first or second location; and
identifying an image associated with said position.

39. (Currently Amended) The method of claim 8, wherein the
first and second image frames are each a composite image
created by processing pixel data of a plurality of the image
frames, and wherein the determining the second location is
further based on the first location.

The ’760 patent, 15:57–16:9, 16:38–45, Deter. 4, PO Comments 2–3
(underlining indicating amended language).
A. Discussed Prior Art
The Examiner relies on the following as evidence of unpatentability:
Michael J. Shiffer, Augmenting Geographic Information with Collaborative
Multimedia Technologies, 11 Proc. of Auto Carto 367–376 (1993)
(“Shiffer”).

Frank Yee, GPS & Video Data Collection in Los Angeles County: A Status
Report, Position Location and Navigation Symposium, IEEE Position
Location and Navigation Symp. 338–393 (1994) (“Yee”).

J. Dykes, An Approach to Virtual Environments for Visualization Using
Linked Geo-referenced Panoramic Imagery, 24 Computers, Env’t and Urb.
Systems 127–152 (2000) (“Dykes”).

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B. Pending Rejections
The Examiner maintains and presents the following grounds of
rejection:
Reference(s) Basis Claim(s) Determination
Shiffer and Yee § 103(a) 39
3–44,
46–48, 50 7, 10–19
112, ¶ 1 42, 49,4 51 10, 15, 17–19
Deter. 7, 10.

II. ISSUES ON APPEAL
We review the appealed rejections for error based upon the issues
identified by 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 briefs permitted under this

3 The Examiner mistakenly refers to claims 36–38 and 49. Deter. 7, 10.
Notably, the Examiner does not include claims 36–38 as “the following
claims [] involved in this determination.” Deter. 4; Deter. 5. The Examiner
also states the amendment overcomes the art rejection of claim 49. See
Deter. 13, 17. Patent Owner summarizes the rejection based on Shiffer and
Yee as to claims 39–44 and 46–50. PO Comments 2. We view the inclusion
of claims 36–38 and 49 as harmless error and presume these claims are not
included as part of this rejection for purposes of the Opinion.
4 Although initially stating claim 47 is rejected under 35 U.S.C. § 112, ¶ 1
(Deter. 10), the Examiner later discusses claim 49 regarding this rejection
(Deter. 17–18). For purposes of this rejection, we presume that the reference
to claim 47 was a typographical error and that the Examiner intended to refer
to claim 49.
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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. § 41.66(c)(1)(vii).
Based on the disputed errors presented by Patent Owner, the main
issues on appeal are:
(1) Did the Examiner err by maintaining the rejection of claims 39,
42, and 47 and presenting a rejection for new claim 51 based on Shiffer and
Yee under 35 U.S.C. § 103(a) and
(2) Did the Examiner err in presenting a new rejection based on 35
U.S.C. § 112, paragraph 1 for amended claims 42, 49, and 51?

III. ANALYSIS
A. Obviousness Rejection of Shiffer and Yee
As a general matter, Patent Owner continues to disagree with our
construction of claim 1. PO Comments 3. We are not persuaded for the
reasons discussed in our earlier Opinion.
1. Claims 39, 40, 41, 48, and 50
Claim 39 has been amended to recite “[t]he method of claim 8,
wherein the first and second images are each a composite image created by
processing pixel data of a plurality of the image frames and wherein the
determining the second location is further based on the first location.”
Deter. 4 (underlining indicating amended language).
Patent Owner contends that the scope of amended claim 39 differs
from claim 1. PO Comments 3; PO Reply 3–4. In particular, Patent Owner
argues that Shiffer teaches the arrows at different locations on a map in
Figure 3 point in a viewing direction without regard to the first location. PO
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Comments 4; PO Reply 4. As such, Patent Owner asserts Shiffer does not
teach a new selection “‘based on the user specified navigation direction’”
(PO Comments 4) or “based on the first location” as newly recited (PO
Comments 5).
We are not persuaded. As the Examiner and Requester indicate, the
additional language now in claim 39 does not differ sufficiently from claim
8, which recites “determining a second location based on the user specified
navigation direction.” See Deter. 12 and 3PR Comments 3–4. That is, claim
8 requires determining a second location and that second location is based
on the user specified navigation direction, which is a navigation direction
relative to the first location in geographic area. Newly-amended claim 39
now adds that the “determining a second location” step “is further based on
the first location.” Yet, as noted above, claim 8 already recites the
“determining a second location” step is based on a navigation direction that
relates to the first location.
To the extent the phrase “relative to the first location” in claim 8
differs from the phrase “based on the first location” in claim 39, we are not
persuaded that Shiffer/Yee system fails to teach the amended language of
claim 39. Specifically, Patent Owner asserts that the selection of an arrow in
Shiffer’s Figure 3 does not select a location and that the selection of any
arrows in Shiffer are “without regard to the previously selected ‘first
location.’” PO Comments 4 and PO Reply 4 (italics in original). But, this
argument does not consider fully the explanation in our earlier decision and
the Examiner’s response to the amended language in claim 39. Op. 11–12;
Deter. 11–12.
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That is, when discussing claim 8’s language of “receiving a second
user input specifying a navigation direction relative to the first location in
the geographic area” (“the Navigation Direction Limitation”), the earlier
Opinion discusses not only Figure 3, as discussed by Patent Owner (PO
Comments 4), but additionally Shiffer’s Figure 2 concerning the navigation
images. Op. 11–13. As explained, there are three main shot types discussed
in Shiffer, including navigation shots, which are different from fixed
position and 360-degree axial view shots. Op. 11–12 (citing Shiffer 371).
Shiffer explains that the navigation shots or images shown in Figure 2,
entitled “Visual Analysis using Aerial Images,” allow the user to drive or fly
through a study area and enable a user to view a geographic area from a
moving perspective such as when traveling through a region. Shiffer 372,
cited in Op. 12, Deter. 11 and 3PR Comments 4. These shots are illustrated
as large arrows in Figure 2. Shiffer 372; 3PR Reply 3–4 (discussing and
reproducing Figure 2 with large arrows).
Shiffer further states that in Figure 2 the user can determine the
camera angle by selecting one of the iconic buttons at the right side of the
“Aerial Views” window and the controller allows the user to control the
direction of flight (e.g., forward or reverse) from a given camera angle by
sliding the pointer toward either end of the controller. See Shiffer 373, cited
in and discussed at Op. 12. These teachings illustrate two different
scenarios, where (1) “determining a second location [is] based on the user
specified navigation direction,” which is a navigation direction relative to
the first location in geographic area, and (2) “the determining the second
location is further based on the first location” as recited in claim 39.
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First, Shiffer teaches a first user input where the user selects an iconic
button at the right side which indicates the camera angle. Shiffer 373,
discussed at Deter. 11. According to the Patent Owner, selecting an iconic
button only achieves a selection of the camera angle. PO Comments 6; PO
Reply 5. In particular, Patent Owner states that “the ‘iconic buttons’ select a
camera angle and not a ‘first location.’” PO Comments 6. However, when
discussing Figure 3, Patent Owner acknowledges that each arrow in Shiffer
“is shown as being in a different location on the map” and the perspective
view is “from the location corresponding to the arrow.” PO Comments 4.
We determine the same can be said of arrows in Figure 2— each arrow
selection is shown as being at a given location on the map and the view is
from the arrow’s location. As such, when the users selects an arrow on the
map in Figure 2, the user selects a location (e.g., a first location in a
geographic area) from which the camera angle is taken. As described in
Shiffer, a second location can then be selected relative to this first location
or based on this first location by controlling the direction of the flight (e.g.,
forward or reverse from this location), such as sliding the pointer toward
either end of the controller. Shiffer 372–73, cited in and discussed at Op. 12
and 3PR Comments 4.
Second, presuming that the iconic button selection is not considered
an input specifying a first location, Requester indicates and we agree that
sliding the controller itself from one location to another along a given
camera angle includes receiving both a first user input specifying a first
location in a geographic area (e.g., moving the controller forward) and a
second user input specifying a navigation direction relative to and based on
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the first location (e.g., controlling the flight direction by moving the
controller either more forward or in reverse from the first selected location).
3PR Comment 4 (quoting Shiffer 372–73); 3PR Reply 5.
Thus, regardless of Patent Owner’s disagreement concerning our
analysis of Figure 3 (PO Comments 3–5; PO Reply 3–4), the above
discussion of Figure 2 provides at least two scenarios where Shiffer teaches
the newly added limitation of “the determining the second location is further
based on the first location” recited in claim 39.
Additionally, as explained above, we disagree that sliding the
controller forward or reverse “merely controls the playback of a video” (PO
Comments 7; PO Reply 5) and does not involve receiving a second user
input specifying a navigation direction relative to a first location in a
geographic area (PO Comment 6–7). In fact, Patent Owner states that the
pointer movement is “constrained by the currently selected route” (PO
Comments 7), which implies sliding the controller forward or reverse would
limit the selected locations along the controller ends to those that are relative
to each other and based on each other (e.g., based on the selected route). We
therefore disagree with Patent Owner that one skilled in the art “would not
have combined the teachings of Shiffer and Yee to arrive at claim 39.” PO
Comments 5 (bolding and underlining omitted).  
For the above reasons, we determine the Examiner has not erred in
rejecting claim 39 based on Shiffer and Yee and dependent claims 40, 41,
48, and 50, not separately argued.

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2. Claims 42–44 and 46
Amended claim 42 recites “[t]he method of claim 39, wherein the
image recording device is one of a plurality of image recording devices
mounted on a vehicle, the image recording devices being configured to
acquire the image frames while the image recording devices are in motion.”
Deter. 4 (underlining indicating amended language). This claim and
dependent claims 43, 44, and 46 are rejected both under (1) 35 U.S.C. § 112,
first paragraph and (2) 35 U.S.C. § 103(a) as being unpatentable based on
Shiffer and Yee. Deter. 13–15.
a. Rejection Under 35 U.S.C. § 112, First Paragraph
Patent Owner urges claim 42 to be construed such that at least some
image frames, but not all, are acquired “while the image recording devices
are in motion.” PO Comments 7–8, PO Reply Br. 6. The Examiner agrees
with this construction at least “[a]t first blush.” Deter. 13. The Examiner
later states that
Assuming instead that the amendment aims at defining the
image frames as exclusively gathered in-motion, the
amendment would not be sufficiently supported by the Patent
disclosure and thus would fail to comply with the written
description requirement under 35 USC§ 112, first paragraph,
and would thereby attempt to add new matter to the claims.
Deter. 15. Agreeing with the Examiner’s latter statement, Requester argues
claim 42 “requir[es] that the images must always be captured (or
alternatively, can only be captured) when the vehicle is in motion.” 3PR
Comments 5 (bolding omitted).
We agree with Patent Owner’s and the Examiner’s initial claim
construction. Canceled independent claim 1 and claim 8, from which claim
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42 indirectly depends, both recite the transitional phrase “comprising” or
“comprises.” These transitional phrases are inclusive or open-ended and do
not exclude additional, unrecited elements or method steps. See, e.g., Mars
Inc. v. H.J. Heinz Co., 311 F.3d 1369, 1376 (Fed. Cir. 2004) and Georgia-
Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999); see
also PO Comments 7 (stating “claim 42 is open ended.”) Applying this
construction to dependent claim 42, the claim also recites an open-ended
method that has essential steps, but that other elements or steps may be
added and still be within the scope of the claim. As such, the scope of claim
42 includes that the image recording device is configured to acquire the
recited image frames while the image recording devices are in motion, but
that other, unrecited image frames can be acquired while the image
recording devices are not in motion.
Our claim construction is also supported by the ’760 patent. The ’760
patent discusses camera(s) 10 recording video images of a location while
moving along a path by using a moving base, platform, or motor vehicle.
The ’760 patent 4:52–65, 5:55–57. This discussion illustrates sufficient
detail that one skilled in the art would have reasonably concluded that the
inventor had possession that image frames are acquired while the image
recording devices are in motion. Additionally, as noted by the Examiner,
various cited portions of the ’760 patent do not state that the image frames
are only acquired during motion. See Deter. 13–14 (citing the ’760 patent
3:47–50, 4:52–55, 5:20–21, 6:63–7:3). And the ’760 patent discusses an
embodiment in Figure 9 where the camera is moved along a path making
right turns at intersections and filming in opposite directions until blocks 112
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and 114 have been filmed on each side of the path. The ’760 patent 7:63–
8:5, Figs. 8–9. In such a scenario, the vehicle will encounter street lights,
stop signs, and traffic, and thus, the vehicle will not be moving on some
occasions while acquiring images. As such, one skilled in the art reading the
disclosure would have determined that the Specification has support for
some image frames, but not all images, are acquired while the image
recording devices are in motion, and thus claim 42 satisfies the written
description requirement under § 112, first paragraph.
For the above reasons, we do not sustain the Examiner’s rejection of
claim 42 under 35 U.S.C. § 112, first paragraph, as failing to satisfy the
written description requirement.5
b. Obviousness Rejection Based on Shiffer and Yee
Turning to the art rejection, the Examiner states that Yee teaches the
recitations in claim 42. Deter. 14–15. Namely, Yee teaches dynamically
acquiring street/surrounding images as a van travels as fast as 40–50 mph
down a street or the “‘driving the road’ technique of data collection.” Yee
392, 389–90, cited in Deter. 14–15; 3PR Comments 6 (citing Yee 390, 392).
Yee further teaches various front and rear mounted cameras. Yee 389–91,
Fig. 2. Moreover, 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 address zoom, 4-
view; and composites of them.” Yee 389 (emphasis added).

5 To the extent the Examiner intended to include dependent claims 43, 44,
and 46 with this rejection (see Deter. 15), we do not sustain the § 112, first
paragraph rejection of these claims.
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Patent Owner responds, asserting that one skilled in the art would not
have combined Shiffer and Yee to arrive at claim 42. PO Comments 8–14.
Patent Owner first repeats that Shiffer and Yee do not teach all the
limitations of claim 39, of which we are not persuaded for the above-
discussed reasons. Concerning claim 42 specifically, Patent Owner asserts
that Yee does not teach the recited “composite image” recited in claim 39.
PO Comments 9–12. Although this argument has not been presented for
claim 39, Patent Owner argues that construing the 4-view image in Yee to
encompass a “composite image” as recited would be inconsistent with the
’760 patent’s disclosure. Id. (citing the ’760 patent 1:48–52, Fig. 2 and
GEOVISTA’s “Street & Real Estate 4-way Composite View.”6) We find
this argument unavailing.
First, Yee explicitly discloses a composite image (i.e., “composites of
them”). Yee 389. Importantly, although identity of terminology is not
required, Yee actually discloses “composites.” See In re Bond, 910 F.2d 831
(Fed. Cir. 1990). Given how the language “composite of them” is separate
from the other described views, including the 4-view, Yee teaches the
images collected include composites that are separate from 4-view images.
Yee 389. Additionally, Yee discusses composites “of them,” which refers
back to the other views, including curbside, front and back, street, left and
right, real estate and address zoom. See id. For example, a composite of

6 Patent Owner indicates that the figure comes from the evidence submitted
with PO’s Request, entitled “Drive around town on your PC with
GEOVISTA Visual Geographic Information and get a better view.” PO
Comments 9 n.1. We refer to this reference as “GEOVISTA” and number
the pages sequentially 1 through 6.
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them taught by Yee includes composites of a curbside view with a front and
back view. For this reason, we disagree that Yee merely lists different views
“without describing their relationship to one another” (PO Comments 13)
and that Yee does not teach “the first and second images are each a
composite image” as recited (PO Comments 13–14).
Second, although the disclosure of the ’760 patent may inform our
construction of “a composite image,” we are careful not to import
embodiments into the claim. For example, as for cited Figure 2 and its
discussion, this embodiment is described as “an illustration of a composite”
but does not define what a composite is. The ’760 patent 2:63–64, 5:55–57,
Fig. 2. Granted, other portions of the ’760 patent state a preference that the
composite image provides a panoramic view or a field of view that is wider
than that of a single image acquired by an image recording device, or detail
how image data extracted from each image frame creates a composite image
on a column-by-column basis. Id. at Abstract, 2:35–38, 5:50–53, 6:4–9; Fig.
2. But, we stress that these portions describe preferences of a composite
image and do not define the recited “composite image” in claim 42. See id.
Other portions of the ’760 patent are more general, addressing
creating a composite image, stating the “composite images” are created by
synthesizing images, image data, or image frames. The ’760 patent,
Abstract, 2:18–22, 33–35, 3:47–50, 5:48–50. This disclosure also states
image data from each selected image frame 42 is extracted and combined to
form the composite image. Id. at 6:2–4. None of these discussions state that
the composite image is one significantly different from the 4-view image
described in Yee, as Patent Owner contends. PO Comments 10.
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Third, the plain and ordinary meaning of “composite” includes
“something that is made up of different parts.”7 A single image consisting
of data from four reduced image frames is something made from different
parts (e.g., a composite). Also, an ordinary meaning of (1) “synthesize” 8
includes “to make (something) by combining different things” or “to
combine (things) in order to make something new,” and (2) “combine,”9
includes “to unite into a single number or expression.” In other words, given
its broadest reasonable construction consistent with the disclosure, the
phrase “composite image” includes a single image created by combining
different image data or by uniting image data.
Accordingly, we determine that a 4-view image can be a “composite
image” as broadly as recited in claim 39 and claim 42 by virtue of its
dependency. For example, Yee teaches combining four views into a single
frame and that the data can be collected into a composite of “them,” which
includes a curbside and street view. Yee 389, 392. Contrary to Patent
Owner’s arguments, we are further not persuaded that the 4-view disclosed
in Yee (Yee 389) or the described “Street and Real Estate 4-way composite

7 Definition of “composite” (noun). Merriam-Webster’s Online Dictionary,
11th ed., available at http://www.merriam-
webster.com/dictionary/composite (last visited July 1, 2016).
8 Definition of “synthesize.” Merriam-Webster’s Online Dictionary, 11th
ed., available at http://www.merriam-webster.com/dictionary/synthesize
(last visited July 1, 2016).
9 Definition of “combine” (def. 1c). Merriam-Webster’s Online Dictionary,
11th ed., available at http://www.merriam-webster.com/dictionary/combine
(last visited July 1, 2016).

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View” demonstrated by GEOVISTA (GEOVISTA 2) fails to teach the
recited “composite image.” PO Comments 11–12.
As for the “4-view” example in Yee, Yee does not provide any more
details on how the view is formed. Yee 389. Presuming the example in
GEOVISTA is the only “4-view” described in Yee, Patent Owner argues this
is not “a composite image” as recited due to the “large gaps between their
fields of view” in Yee. PO Comments 14. Notably, GEOVISTA and
GEOSPAN are discussed in both the GEOVISTA and Yee references.
GEOVISTA 1–6; Yee 388–89, 391–93. Yet, there is insufficient evidence
that the “4-way” view in GEOVISTA demonstrates the only possible 4-view
that Yee creates. As such, we determine the 4-view described by
GEOVISTA is just an illustration but not the only type of 4-view that can be
produced by Yee. For this reason and those above, the argument concerning
Yee being incapable of capturing views to generate composite images due to
“large gaps between their fields of view” in Yee is unavailing. PO
Comments 13–14, PO Reply 9.
Lastly, Patent Owner disputes Yee individually and does not consider
the teachings of Shiffer. PO Comments 9–12 (citing Yee 389, Fig. 2). We
further note the discussion of Dykes (PO Reply 6–7) does not address the
rejection of Shiffer and Yee. As the Examiner and Requester note (Deter.
16; 3PR Reply 8), Shiffer teaches 360-degree views, further suggesting a
composite image, such as a panorama. Shiffer 371–72. This finding
remains undisputed. And when combined with Yee, the references
collectively suggest creating composite images as recited.
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Accordingly, we sustain the Examiner’s determination to reject claim
42 based on Shiffer and Yee and dependent claims 43, 44, and 46, not
separately argued.
3. Claim 47
Amended claim 47 depends from claim 39 and further recites
The method of claim 39, wherein the first image depicts a single view
of objects in the geographic area combining a first image frame of the
image frames and a second image frame of the image frames, the
single view having a wider field of view than the first image frame,
and wherein the first and second images each depict a wider field of
view than is depicted in any one of the image frames.
Deter. 5 (underlining indicating amended language). Although noted by
Requester that the Examiner mistakenly states the amendment to claim 47
overcomes the new ground of rejection (3PR Comments 6 n.4 (discussing
Deter. 20)), claim 47 is rejected under 35 U.S.C. § 103(a) as being
unpatentable based on Shiffer and Yee. Deter. 15–16 (citing Yee and
Shiffer 371–72). The Examiner further proposes modifying the Yee/Shiffer
method to obtain “sort of 360-degree axial shots of Shiffer” by noting that
creating panoramic imagery was known. See Deter. 16. Requester agrees.
3PR Comments 7.
Patent Owner first contends that Yee does not disclose the recited
“composite image” of claim 42 and repeats that Yee’s cameras cannot create
the recited composite image. PO Comments 14; PO Reply 10–11. For
previous reasons, we are not persuaded.
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Patent Owner next argues that Shiffer’s and Dykes’10 systems cannot
capture images while moving and are not suitable for generating composite
images. PO Comments 15. We disagree. Patent Owner attacks Shiffer
individually and fails to consider the collective teachings of Shiffer and Yee.
As stated previously, Yee teaches and suggests a camera for capturing
images while moving and creating composites from its data. Yee 389–90,
92. Additionally, presuming that Yee’s “composites” are not a “single view
composite image” as recited (see Deter. 15–16), the rejection additionally
turns to Shiffer, which further teaches or suggests creating a 360-degree
view or panoramic images. Shiffer 371–72, cited in Deter. 16. As such,
when combined, Shiffer and Yee collectively suggest the recited “single
view composite image” in order to obtain a 360-degree axial shot discussed
in Shiffer. See Deter. 16.
Moreover, the Examiner states that combining individual images was
common and was a known method of obtaining the 360-degree imagery, like
that discussed in Shiffer. Deter. 16. Although not cited in the rejection’s
heading, the Examiner further discusses Dykes as evidence of this
“common” knowledge. Deter. 16. Requester further discusses Dykes’
teachings concerning a known panoramic view created by stitching. 3PR
Comments 7. That is, accounting for the background knowledge possessed
by an ordinarily skilled artisan, an obvious analysis need not include precise
teachings directed to the specific subject matter of claim 47, for the analysis

10 Although not relying on Dykes in the heading of the rejection, the
Examiner discusses the reference to support further the proposition that
combining images to produce a single panoramic image was known. Deter.
16 (citing Dykes 128, 134, 136–37, 139–41, 144–46, Fig. 2).
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can account for the inferences and background knowledge of an ordinarily
skilled artisan. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Patent Owner argues that an ordinarily skilled artisan would not
combine Shiffer and Yee or Dykes to generate “composite images” due to
the high costs and labor involved. PO Comments 15–16. In particular,
Patent Owner provides computations of how long it would take to create
panoramas in Yee. PO Comments 16. However, this argument amounts to
counsel’s arguments with insufficient support, which cannot take the place
of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139–40 (Fed. Cir. 1996). We, thus, are unpersuaded that the
combination of Shiffer and Yee would be too laborious and computationally
extensive to provide the recited “single view composite images.”
Accordingly, we sustain the Examiner’s determination to reject claim
47 based on Shiffer and Yee.
4. Claim 49
Amended claim 49 depends from claim 39 and further recites
The method of claim 39 wherein the image source further [comprises]
provides single view composite images depicting single views
combining image frames at least one of which is captured while the
image recording device is stationary, the single view composite
images depicting [comprising] views of substantially all the static
objects in the geographic area.
Deter. 5 (underlining and bracketing indicating amended and deleted
language respectively). The Examiner determines the amendment
overcomes the new art rejection. Deter. 17. Requester does not contest this
finding by the Examiner. See 3PR Comments 8; 3PR Reply 11–13.
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However, the Examiner presents a new rejection under 35 U.S.C.
§ 112 and adds that “there is insufficient support in the [’760] Patent
disclosure for” the above claim language. Deter. 17. In particular, the
Examiner determines that “the instant patent does not disclose any specific
steps of providing a single composite image which depicts views of all static
objects in the geographic area.” Id. Rather, in the Examiner’s view, the
image database provides a number of images that depict all the static objects
in an area. Id. The Examiner also states that the disclosure of the ’760
patent does not describe specifically using a stationary frame to create the
image as recited. Id. Requester agrees. 3PR Comments 8.
Patent Owner argues the ’760 patent’s disclosure supports the
amended claim language. PO Comments 18–19 (citing the ’760 patent
2:36–38, 6:2–4, 10:22–25); PO Reply 12–14. The Requester disagrees.
3PR Comments 8 (citing the ’760 patent 2:45–48); 3PR Reply 11–13. To
satisfy the written description requirement, a patent specification must
reasonably convey to those skilled in the art that the inventor had possession
of the claimed subject matter as of the filing date. See Ariad Pharms., Inc. v.
Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Thus, turning to the disclosure of the ’760 patent, the Summary of the
Invention section describes a preference for the composite image to provide
“a field of view of the location that is wider than the field of view provided
by any single image acquired the image recording device.” The ’760 patent
2:36–38. The ’760 patent further describes a preference to store a composite
image in an image database. The ’760 patent 6:19–23. As such, the ’760
patent describes in sufficient detail “single view composite images” (e.g.,
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composite images providing a field of view that is wider than the field of
view of any single, acquired image) captured by an image recording device.
Additionally, the ’760 patent discloses an image database that stores
composite images and thus an image source that can provide a single view
composite image. The ’760 patent 6:19–23.
The ’760 patent further discusses an image database (e.g., an image
source) that includes composite images of a geographic area that together
provides a visual representation of at least substantially all the static objects
in the entire area. The ’760 patent 2:45–53, 10:22–25. That is, the ’760
patent discusses the image database or source containing composite images
that collectively depict substantially all the static objects in a geographic
area. See 3PR Comments 8 (describing the entire image database stores
images that collectively depict substantially all the objects in the geographic
area). On the other hand, claim 49 recites “the single view composite
images”— not the image source —depict all the static objects as recited.
Patent Owner responds that the claim recites “single view composite
images” and not a single image depict views of substantially all the static
objects in the geographic area. PO Reply 13. We are not persuaded.
Patent Owner’s argument and Requester’s comments highlight the
breadth of claim 49. PO Reply 13; 3PR Comments 8. That is, as broadly
recited, the recitation “the single view composite images depicting views of
substantially all the static objects in the geographic area” can be construed,
such that the claim requires the recited “images” are all the images in the
database that depict views of substantially all the static objects in the
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geographic area. PO Reply 13. This claim language has support in the
disclosure. The ’760 patent 10:22–25.
However, the breadth of the claim includes that each single view
composite image depicts views of substantially all the static objects in the
geographic area. 3PR Comments 8; 3PR Reply 11–12. This scenario is not
supported by the disclosure. As recited in claim 49, the image source
provides “single view composite images depicting single views combining
image frames.” As such, although in the plural form, this portion of the
claim can be reasonably construed such that each single view composite
image depicts a single view combining image frames. And when claim 49
later recites “the single view composite images depicting views of
substantially all the static objects in the geographic area,” a reasonable
construction is that each single view composite image depicts substantially
all the static objects in the geographic area.
Using the latter claim construction, we find the ’760 patent’s
disclosure does not describe this embodiment in sufficient detail such that
one skilled in the art can reasonably conclude that the inventor had
possession of the claimed invention. See the ’760 patent 2:45–48, 10:22–25.
In fact, as Requester notes, the disclosure discusses how the user visually
navigates “the area” in order to view all the static objects in the geographic
area, indicating to one skilled in the art that a single view composite image
does not capture substantially all the static objects in a geographic area. 3PR
Reply 12 (citing the ’760 patent 2:45–48).
Moreover, the ’760 patent and claim 49 do not define “the geographic
area” in any detail. The ’760 patent 2:45–48, 10:22–25. If the geographic
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area is significantly small, the disclosure of the ’760 patent may support that
each single view composite image depicting substantially all the static
objects in the geographic area. On the other hand, when the geographic area
includes an area greater than one single composite image (or even multiple
composite images) can capture, the ’760 patent does not support the
embodiment where the single view composite image depicts a view of
substantially all the static objects in the geographic area. Accordingly, the
breadth of claim 49 encompasses embodiments that the ’760 patent’s
disclosure does not describe in sufficient detail such that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
invention in its entirety.
For the above reasons, we sustain the Examiner’s rejection of claim
49 under 35 U.S.C. § 112, first paragraph, failing to satisfy the written
description requirement.
5. Claim 51
New claim 51 depends from claim 1 and further recites
The method of claim 1, wherein the retrieving of the image
corresponding to the first or second location comprises:
identifying a street segment including the first or second
location;
identifying a position on the street segment corresponding to
the first or second location; and
identifying an image associated with said position,
wherein the image frames are captured while the image
recording device is in motion, and
wherein the determining the second location is further based
on the first location.
Deter. 5.
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In rejecting this claim, the Examiner determined this claim is
“essentially original claim 8 . . . with additional newly-added limitations of
the amendments to claims 39 and 42.” Deter. 18. Requester agrees with the
Examiner. 3PR Comments 9. Patent Owner does not dispute this
construction (see PO Comments 20–21) but rather focuses on “section I.A.
regarding claim 39” (PO Comments 21). For reasons previously discussed
when addressing claim 39, we are not persuaded, and we sustain the
Examiner’s rejection of claim 51 based on Shiffer and Yee.
The Examiner also rejected claim 51 as failing to satisfy the
written description requirement for essentially the same reasons as were
presented for claim 42. Deter. 19. Although this rejection is undisputed
by Patent Owner (PO Comments 20–21; PO Reply 14), we do not sustain
the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, for the
same reasons discussed above for claim 42.

CONCLUSION
As a result, we have considered the submissions by Patent Owner and
Requester in response to the new grounds of rejection set forth in the
Opinion and the Examiner’s Determination, and modify the Opinion to the
extent discussed above.
Accordingly, after re-considering the evidence of record, both for and
against a conclusion of obviousness and lack of written description support,
we remain of the opinion that claims 39–44, 46–48, 50, and 51 would have
been obvious over the prior art of record and claim 49 lacks written
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description support. However, we determine claims 42–44, 46, and 51 have
written description support in the ’760 patent as broadly as claimed.
However, we decline to otherwise modify the Opinion, and maintain
the Opinion’s new grounds of rejection of: claims 2, 3, 8, 12–18, 21–26, 29,
and 32–37 as obvious over Shiffer and Yee, and claim 8 as anticipated by or,
alternatively, obvious over Al-Kodmany.
In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” 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 (d) of this section,
and for submitting comments under paragraph (c) 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 (8th ed., Rev. 7, July 2008).

37 C.F.R. § 41.77(f)

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For PATENT OWNER:

LEWIS ROCA ROTHGERBER CHRISTIE LLP
PO Box 29001
Glendale, CA 91209-9001

For THIRD-PARTY REQUESTER:

STEPTOE & JOHNSON LLP
1330 Connecticut Avenue NW
Washington, DC 20036