Ex Parte Argasinski

Board of Patent Appeals and Interferences

Feb 23, 2009

09923645 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HENRY E. ARGASINSKI
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Appeal 2008-3200
Application 09/923,645
Technology Center 2400
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Decided:1 February 24, 2009
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Before ALLEN R. MACDONALD, STEPHEN C. SIU,
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 2-9, 11-13, 15-17, and 21-23. Claims 1, 10,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

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14, and 18-20 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing for this appeal was conducted on February 12, 2009.
We affirm.
STATEMENT OF THE CASE
THE INVENTION
Appellant’s invention relates to systems and methods of conveying
retail information to consumers. More particularly, Appellant’s invention
relates to a system and method for virtual window shopping. (Spec. 1, para.
[0001]).
Independent claim 21 is illustrative:
21. A method comprising:

transposing an actual image of a group of adjacent
storefronts along a city block as a navigable image within an
internet site;

allowing a user to scroll a point of view of said navigable
image left or right within said internet site by moving said point
of view of said navigable image in a direction along said city
block while maintaining said point of view directed toward said
group of adjacent storefronts; and

providing customer selectable links within said navigable
image.

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PRIOR ART
The Examiner relies upon the following references as evidence in
support of the anticipation rejection:
Ferreira US 2001/0034661 A1 Oct. 25, 2001
Ferreira2 US 60/182,282 filed Feb. 14, 2000

THE REJECTION
Claims 2-9, 11-13, 15-17, and 21-23 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Ferreira.3

2 We note that the Ferreira 60/182,282 reference is the provisional
application for the Ferreira utility patent application publication, US
2001/0034661 A1. We consider Ferreira’s 60/182,282 provisional
application available as prior art in accordance with Ex parte Yamaguchi,
http://www.uspto.gov/web/offices/dcom/bpai/ prec/fd074412.pdf, slip op. at
17 (BPAI Aug. 29, 2008) (precedential) (“In sum, the statutory scheme of
Title 35 indicates that Congress intended for "applications for patent" under
102(e) to apply to both regular utility applications and provisional
applications, particularly when considering §§ 111(b) and 102(e) together.
As a published "application for patent" under this statutory framework, a
provisional application  like a regular utility application  constitutes
prior art for all that it teaches and, as such, promotes the progress of the
useful arts.”) (Emphasis added).

3 Claims 21, 22, and 23 are the only independent claims on appeal.
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GROUPING OF CLAIMS
In the principal Brief, Appellant repeats the same argument for each
independent claim on appeal. We will, therefore, treat claims 2-9, 11-13,
15-17, and 21-23 as standing or falling with representative claim 21. See 37
C.F.R. § 41.37(c)(1)(vii).

APPELLANT’S CONTENTIONS
Regarding each claim on appeal, Appellant makes the following
contentions:
The Ferreira reference does not teach or suggest scrolling a
point of view of a navigable image left or right within an
internet site by moving the point of view in a direction along a
city block while maintaining the point of view directed toward
a group of adjacent storefronts of the city block. Rather,
Ferreira discloses simple rotational movement of a camera
around a stationary point. The Examiner's argument that the
rotational camera movement of Ferreira is anticipatory confuses
movement of the "point of view" along a city block with
rotational movement of a camera on a stationary point.
In Ferreira, the point of view is fixed during camera rotation.
The point of view is not moved left or right "along a city
block." The Examiner's interpretation ignores the claim's
recitation of movement of the "point of view" in a direction
"along a city block and incorrectly equates the recited
movement of the "point of view" with Ferreira's rotational
camera movement.

(App. Br. 7-8).

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EXAMINER’S RESPONSE
The Examiner maintains that the limitations argued by Appellant are
disclosed by the Ferreira provisional application (Ans. 9-10). The Examiner
also maintains that that the Declaration received on January 24, 2005 under
37 C.F.R. §1.131 is ineffective to overcome the Ferreira reference (US. Pat.
PUB No. 2001/0034661), since the effective date of Ferreira is February 14,
2000, according to provisional application 60/182282 (Ans. 11).

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Has Appellant shown that the Examiner erred in finding that the
Ferreira provisional reference US 60/182,282 discloses the argued
limitations of scrolling a point of view of a navigable image left or
right within an Internet site by moving the point of view in a
direction along a city block while maintaining the point of view
directed toward a group of adjacent storefronts of the city block?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
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‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.”) (internal citations
omitted).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Briefs to show error in the
Examiner’s proffered prima facie case.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of facts (FF)
that are supported by a preponderance of the evidence:

THE FERREIRA PROVISIONAL US 60/182,282 REFERENCE
1. Ferreira discloses block-by-block navigation of a city block, as
disclosed in paragraph 1 and Figure 2 (p. 5).
2. Ferreira discloses that “[t]he central picture is not static. Far
from it. Web-surfers will be able to use their mouse (or the
arrows on their keyboard) to move the camera around. Simply
clicking on the image and holding down either the left or right
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mouse button will alter the camera's perspective and create the
appearance of movement. Camera functionality will include:
pan left, pan right, pan up, pan down, or any combination
thereof, and zoom in and out.” (Ferreira provisional
60/182,282, p. 5, ¶2).

ANALYSIS
We decide the question of whether Appellant has shown the Examiner
erred in finding that the Ferreira provisional reference US 60/182,282
discloses the argued limitations of scrolling a point of view of a navigable
image left or right within an Internet site by moving the point of view in a
direction along a city block while maintaining the point of view directed
toward a group of adjacent storefronts of the city block.
As acknowledged by Appellant “[i]n Ferreira, a user may rotate
the camera to move a viewing window left or right. See Ferreira utility
app., p. 6, [0071]; Ferreira provisional app., p. 5.” (App Br. 14, ¶ 4).
Appellant argues forcefully that “[i]n Ferreira, however, the point of
view is fixed and stationary while it rotates.” (Id.). Appellant
contends that the Examiner has incorrectly equated the fixed, rotating
point of view disclosed by Ferreira with Appellant’s claims that recite
movement of the “point of view” in a direction “along a city block.”
(App. Br. 15, ¶1).

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Claim Construction
We begin our analysis by broadly but reasonably construing the
claimed “point of view” in light of Appellant’s Specification. See In re
Bigio, 381 F.3d 1320, 1324. For convenience, we reproduce the pertinent
portion of paragraph [0015.1] of the Specification here:
Storefronts may be represented through three-
dimensional ("3-D") photographs or graphically,
and stitched together to form a city block or
section of a shopping mall or plaza. This
representation would have the ability to move the
point of view from left to right (or reverse) to give
the viewer an impression of walking down a street
or strolling through a mall.
(Spec., para. [0015.1] (added by amendment)).

We note that Appellant’s Specification, in pertinent part, provides for
the “ability to move the point of view from left to right (or reverse) to give
the viewer an impression of walking down a street or strolling through a
mall.” (Id.). In particular, we note that each of Appellant’s independent
claims recite scrolling (or moving) said point of view of said navigable
image (claims 21-23). Thus, as claimed, it is the point of view of the
navigable image that changes.
Therefore, as a matter of claim construction, we find nothing in
Appellant’s claims that requires the point of view to be limited to the point
of view of a physical camera that is moved along a city block while
maintaining a perpendicular view angle to the city block (as imputed by
Appellant’s arguments). There is no perpendicular or other angle claimed,
nor has Appellant claimed a moving camera. To the contrary, Appellant’s
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independent claims merely require that the point of view of the navigable
image be moved while being directed toward a group of adjacent storefronts
of the city block.
We note that Appellant could have amended the claims during
prosecution to limit the movable point of view to a perpendicular angle with
respect to the city block. Because “applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)).
This reasoning is applicable here. Therefore, we find Ferreira’s
disclosure of using a mouse to pan a camera left (or right) to navigate a city
block (FF 1-2) would have given the viewer an impression of “walking
down a street” in a manner consistent with that described in Appellant’s
Specification. (See Spec., para. [0015.1]). Accordingly, we find the
disclosure of the Ferreira provisional reference (FF 1-2) meets the argued
limitations of scrolling a point of view of a navigable image left or right
within an Internet site by moving the point of view in a direction along a city
block while maintaining the point of view directed toward a group of
adjacent storefronts of the city block.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellant has not established that the Examiner erred in rejecting
representative claim 21 (and claims 2-9, 11-13, 15-17, 22, and 23 that fall
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therewith) as being anticipated by Ferreira’s provisional application
60/182,282 under 35 U.S.C. § 102(e).

DECISION
We affirm the Examiner’s decision rejecting claims 2-9, 11-13, 15-17,
and 21-23.
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).

AFFIRMED

pgc

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