Ofstad, Andrew

Patent Trials and Appeals Board

May 28, 2020

13658794 - (D) (P.T.A.B. May. 28, 2020)

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.
13/658,794 10/23/2012 Andrew Ofstad 31730/15293-00 3005
12716 7590 05/28/2020
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
GOOD JOHNSON, MOTILEWA
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
05/28/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW OFSTAD
Appeal 2019-001722
Application 13/658,794
Technology Center 2600
Before KRISTEN L. DROESCH, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–16, and 18–20. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Google Inc. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to displaying textual information related to
geolocated images. Spec. Title, ¶ 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method in a computing device for providing
information about geographic locations, the method comprising:
providing, using one or more processors, an interactive
three-dimensional (3D) display of geolocated imagery for a
geographic area via a user interface of the computing device,
including generating a view of the geolocated imagery from a
perspective of a notional camera having a particular camera pose,
wherein the camera pose is associated with at least position and
orientation;
receiving, via the user interface, a selection of a location
within the interactive display;
automatically identifying a symbolic location
corresponding to the selected location, wherein at least textual
information is available for the symbolic location;
in response to receiving the selection of the location within
the interactive display, displaying an expandable overlay
window with a textual description of the symbolic location;
receiving, via the user interface, a selection of the
expandable overlay window; and in response to receiving the
selection of the expandable overlay window, automatically and
without further input via the user interface, (i) moving the
position of the notional camera so as to directly face the selected
location, and (ii) providing an expanded overlay window that
includes a link to additional information related to the symbolic
location.
REJECTIONS
Claims 8–13 stand rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as indefinite for failing to particularly point out and distinctly
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claim the subject matter which the applicant regards as the invention. Final
Act. 2.
Claims 1, 2, 4–16, and 18–20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over the combination of Meier et al. (US
2011/0276556 A1, published Nov. 10, 2011) (“Meier”), Douris et al. (US
2009/0289955 A1, published Nov. 26, 2009) (“Douris”), Chen et al.,
Automatic Detection and Recognition of Signs from Natural Scenes, IEEE
Transactions on Image Processing, Vol. 13, No. 1, January 2004, pages 87–
99 (“Chen”), Kohli et al. (US 2012/0257814 A1, published Oct. 11, 2012)
(“Kohli”), and Khan (US 2004/0001110 A1, published Jan. 1, 2004). Final
Act. 2–11.
Claims 1, 2, 4–16, and 18–20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hamynen et al. (US
2007/0162942 A1, published July 12, 2007) (“Hamynen”) and Snavely et al.
(US 2007/0110338 A1, published May 17, 2007) (“Snavely”). Final Act.
11–21.
ANALYSIS
Rejection of Claims 8–13 Under 35 U.S.C. § 112, Second Paragraph
Claim 8 recites, in part, “receiving a selection of an expandable
window overlaying the photographic image.” Appeal Br. A-2. The Examiner
concluded that, because claim 8 fails to disclose an expandable window
overlay, the claim is indefinite. Final Act. 2.
In the Appeal Brief, Appellant did not address the indefiniteness
rejection. Any arguments Appellant could have made, but chose not to
make, in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
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Accordingly, we affirm pro forma the Examiner’s rejection of claims
8–13 under 35 U.S.C. § 112, second paragraph.

Rejection of Claims 1, 2, 4–16, and 18–20 Under 35 U.S.C. § 103(a)
Rejection Based on Meier, Douris, Chen, Kohli, Khan
We have reviewed the obviousness rejection of claims 1, 2, 4–16, and
18–20 over Meier, Douris, Chen, Kohli, and Khan in light of Appellant’s
arguments that the Examiner erred. We have considered in this decision only
those arguments Appellant actually raised in the Briefs. Any other
arguments Appellant could have made, but chose not to make, in the Briefs
are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer (Ans. 26–31) and in the Action from which this appeal
was taken (Final Act. 3–11). We provide the following explanation for
emphasis.
With respect to independent claim 1, Appellant contends the cited
portions of Meier and Douris do not teach or suggest the limitation “in
response to receiving the selection of the location within the interactive
display, displaying an expandable overlay window with a textual description
of the symbolic location,” as recited in claim 1. Appeal Br. 12–13. Appellant
contends that the Examiner relied on Douris as teaching the disputed
limitation. Id. at 13. Appellant argues that Douris “does not display an
expandable overlay window with a textual description of the symbolic
location in response to receiving a selection, via a user interface, of a
location within an interactive display.” Id.
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We are not persuaded that the Examiner erred. The Examiner found
that Meier teaches “receiving, via the user interface, a selection of a location
within the interactive display,” as recited in claim 1. Final Act. 3 (citing
Meier ¶ 99). We agree with the Examiner that Meier teaches or suggests
selecting a position on a virtual map in order to receive location-based
information related to the selected position. See Meier ¶ 99. The Examiner
further found that Douris teaches “displaying an expandable overlay window
with a textual description of the symbolic location,” as recited in claim 1.
Final Act. 5 (citing Douris ¶ 39). Paragraph 39 of Douris teaches supported
overlay information that identifies “entities such as physical locations,
buildings, or individuals, as well as information associated with these
entities.” See Douris ¶ 39.
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Here, Appellant attacks Douris
individually, even though the Examiner relied on the combination of Meier,
Douris, Chen, Kohli, and Khan in rejecting claim 1. In re Mouttet, 686 F.3d
1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)). Appellant has not persuaded us that the combined teachings of Meier
and Douris, relied on by the Examiner, would not have at least suggested the
disputed limitation to an artisan of ordinary skill.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combined teachings of Meier, Douris, Chen, Kohli, and
Khan teach or suggest “in response to receiving the selection of the location
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within the interactive display, displaying an expandable overlay window
with a textual description of the symbolic location,” as recited in claim 1.
Appellant next contends that the cited portions of the references fail to
teach or suggest the limitation “in response to receiving the selection of the
expandable overlay window, automatically and without further input via the
user interface, (i) moving the position of the notional camera so as to
directly face the selected location,” as recited in claim 1. Appeal Br. 14.
Appellant argues that, while Douris describes “overlay information ... with
respect to identified entities” (citing Douris ¶ 29) and that a user may place
an order by “virtually touch[ing] a ‘Start Order Now’ button” (citing Douris
¶ 51), “the system in Douris does not move the position of the notional
camera in response to receiving a selection of the ‘Start Order Now’ button.”
Appeal Br. 14. Appellant further argues that “none of Chen, Kohli, and
Khan mentions an expandable overlay window, much less moving the
position of the notional camera in response to receiving a selection of an
expandable overlay window.” Id. at 15.
We are not persuaded that the Examiner erred. The Examiner found
that Khan teaches that “the view from the view point is automatically faced
toward the model” (citing Khan ¶ 46) and “moving a view point of a camera
from two dimensional input such as a mouse stroke, stylus movement, etc.”
(citing Khan ¶ 47). Final Act. 6. We agree with the Examiner that Khan
teaches that a viewpoint of a view of a model is moved and then
automatically faced toward the model and appropriately distanced from the
model. See Khan ¶ 46.
Appellant argues that, by requiring the position of the notional camera
to be moved so as to directly face the selected location, the claim language at
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least implicitly requires the position of the notional camera to be moved
from a position that does not directly face the selected location to a position
that directly faces the selected location. Appeal Br. 15. Appellant argues that
Khan does not teach this type of movement, as the system in Khan is always
directly facing the model. Id.
Appellant, however, does not present persuasive argument or
objective evidence in support of Appellant’s argument. Rather, Appellant
cites various portions of Khan, including the Background section. Id. (citing
Khan ¶¶ 2, 12, 43). The cited portions, however, do not persuade us that the
Examiner erred in finding that Khan teaches or suggests “moving the
position of the notional camera so as to directly face the selected location,”
as recited in claim 1.
With regard to Appellant’s argument that Khan does not teach or
suggest “in response to receiving the selection of the expandable overlay
window,” as recited in claim 1, the Examiner found that Douris teaches in
Figures 5 and 7 that a user selects an action on the overlay window, which
then expands the presentation of information associated with the selected
location. Final Act. 5 (citing Douris Figs. 5, 7).
Appellant has not rebutted persuasively the Examiner’s findings. Nor
has Appellant addressed the combined teachings of Douris and Khan, relied
on by the Examiner. See Mouttet, 686 F.3d at 1333 (citing Keller, 642 F.2d
at 425) (“The test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”).
For these reasons, we are not persuaded that the Examiner erred in
finding that the combined teachings of Meier, Douris, Chen, Kohli, and
Khan teach or suggest the limitation “in response to receiving the selection
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of the expandable overlay window, automatically and without further input
via the user interface, (i) moving the position of the notional camera so as to
directly face the selected location,” as recited in claim 1.
Next, Appellant contends that the cited portions of the prior art fail to
teach “in response to receiving the selection of the expandable overlay
window, automatically and without further input via the user interface ... ii)
providing an expanded overlay window that includes a link to additional
information related to the symbolic location,” as recited in claim 1.
Appellant argues that, even assuming that the additional billboards 702–706
in Douris Figure 7 can be mapped to an expanded overlay window that
includes a link to additional information related to the symbolic location
(“Learn More” links), the additional billboards 702–706 are not presented in
response to receiving a selection of an expandable overlay window, as claim
1 requires. Appeal Br. 18.
We are not persuaded of Examiner error. The Examiner found that
Douris teaches in Figures 5 and 7 that a user selects an action on the overlay
window, which then expands the presentation of information associated with
the selected location. Final Act. 5 (citing Douris Figs. 5, 7). Appellant’s
argument that Douris’s additional billboards in Figure 7 are not presented in
response to receiving a selection of an expandable overlay window is
unavailing. The Examiner concluded that it would have been obvious to an
artisan of ordinary skill that selecting “Learn More” on the expandable
overlay window in Douris Figure 7 “would expand information with a
search term associated with the selected location.” Final Act. 5–6. Appellant
has not persuasively rebutted the Examiner’s findings of fact and conclusion
of obviousness.
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For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Meier, Douris, Chen, Kohli, and Khan
teaches or suggests the limitation “in response to receiving the selection of
the expandable overlay window, automatically and without further input via
the user interface . . . ii) providing an expanded overlay window that
includes a link to additional information related to the symbolic location.”
Appellant also challenges the Examiner’s rationale for combining the
teachings of Douris and Khan, arguing that one of ordinary skill in the art
would not have combined the references. Appeal Br. 18. Appellant argues
that “a problem specifically solved by Khan of how to manipulate a three-
dimensional model with a single input to view different parts of the model
surface while keeping the model virtually facing the artist and at a constant
distance” does not occur in Douris or any of the other references. Id.
We are not persuaded that the Examiner erred. It is well settled that
the “use of patents as references is not limited to what the patentees describe
as their own inventions or to the problems with which they are concerned.”
In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983); see also KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 420 (2007). Moreover, a rejection based on
obviousness only needs to be supported by “some articulated reasoning with
some rational underpinning” to combine known elements in the manner
required by the claim. KSR, 550 U.S. at 418. Here, the Examiner has set
forth articulated reasoning with rational underpinnings for the combination.
Final Act. 7.
With regard to Appellant’s contention of improper hindsight (Appeal
Br. 18), Appellant has not identified any knowledge relied upon by the
Examiner that was gleaned only from Appellant’s disclosure and that was
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not otherwise within the level of ordinary skill in the art at the time of
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor
has Appellant provided objective evidence of secondary considerations,
which “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v.
Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir.
2013).
Appellant also argues that combining the teachings of Douris and
Khan is improper because it “would require a change in the principle of
operation of the Khan software.” Appeal Br. 19. Appellant argues that
combining Douris and Khan would require selecting the model in Khan and
changing Khan’s operation from moving a camera or brush about a model in
response to input to the left or the right of the model to a system that is able
to adjust the viewing angle based on a selection of the model itself. Id.
We are not persuaded that the Examiner erred in combining the
teachings of Douris and Khan. It is well settled that “a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332
(citations omitted). Nor is the test for obviousness whether a secondary
reference’s features can be bodily incorporated into the structure of the
primary reference. See Keller, 642 F.2d at 425.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claim 1, as well as the Examiner’s § 103(a) rejection of
independent claims 8 and 14, not argued separately with particularity.
Appeal Br. 11. We also sustain the Examiner’s § 103(a) rejection of
dependent claims 2, 4–7, 9–13, 15, 16, and 18–20, not argued separately
with particularity. Id. at 20.
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Rejection Based on Hamynen and Snavely
In the Appeal Brief, Appellant did not address the Examiner’s
§ 103(a) rejection of claims 1, 2, 4–16, and 18–20 over Hamynen and
Snavely. In the Reply Brief, Appellant addressed the Examiner’s rejection
for the first time. Reply Br. 2–6. Appellant, however, has waived arguments
directed to the rejection of the pending claims over Hamynen and Snavely
because Appellant presented the arguments for the first time in the Reply
Brief, without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2018);
accord Ex parte Borden, 93 USPQ2d 1473, 1473–74 (BPAI 2010
(informative opinion) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
Accordingly, we affirm pro forma the Examiner’s § 103(a) rejection
of claims 1, 2, 4–16, and 18–20 over Hamynen and Snavely.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 2, 4–16,
and 18–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8–13 112, second
paragraph
Indefiniteness 8–13
1, 2, 4–16,
18–20
103(a) Meier, Douris, Chen,
Kohli, Khan
1, 2, 4–16,
18–20

1, 2, 4–16,
18–20
103(a) Hamynen, Snavely 1, 2, 4–16,
18–20

Overall
Outcome:
1, 2, 4–16,
18–20

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED