7,239,760 B2 et al.Download PDFPatent Trials and Appeals BoardJun 1, 20212016006116 (P.T.A.B. Jun. 1, 2021) Copy Citation 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 06/01/2021 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 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 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 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 Court of Appeals for the Federal Circuit (“Federal Circuitâ€), vacating our previous decisions for this proceeding mailed June 26, 2015,1 July 16, 2015 (“Errataâ€2), and 1 At the time of this decision, the Appeal Number was 2015-004309. 2 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, Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 2 September 27, 2016. See Vederi, LLC v. Google LLC, 813 F. App’x 499, 501 (Fed. Cir. 2020). As background, Requester requested an inter partes reexamination of U.S. Patent No. 7,239,760 B2 (“the ’760 patentâ€). The ’760 patent claims priority to U.S. Application 09/758,717 (now U.S. Patent No. 6,895,126 B2), filed on January 11, 2001. Id., code (62). Pursuant to 35 U.S.C. § 154(a)(2), the term of the ’760 patent ended twenty (20) years from the filing date (i.e., January 11, 2001) of the earliest application (i.e., U.S. Application No. 09/758,717) for which a benefit is claimed under 35 U.S.C. §§ 120 and 121. See 35 U.S.C. § 154(a)(2) (2013); see also the Manual of Patent Examining Procedure (MPEP) § 2701(I). Thus, the ’760 patent expired on January 11, 2021.3 “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 21–26, 29, 32–37, 39–44, and 46–50 are unpatentable based on Shiffer and Yee.†Errata 2. 3 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). Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 3 C.F.R. § 1.530(j). Accordingly, the reexamination proceeding will now be based on the original patent claims of the ’760 patent. Although Patent Owner submitted proposed amendments (see, e.g., the January 8, 2013 Amendment (“Jan. 2013 Amendmentâ€) to the claims during this reexamination proceeding, these proposed amendments, including new claims 39–50 (id. at 10–12), are improper at this time. See MPEP § 2666.01. On the other hand and even though the ’760 patent has expired, Patent Owner’s proposed claim amendments to cancel claim (i.e., claims 1, 4, 5, 7, 20, and 38 (see the Jan. 2013 Amendment 4, 7, 10)) are permitted. See MPEP § 2666.01; 37 C.F.R. § 1.530(j). Additionally, claims 6, 9–11, 19, 27, 28, 30, and 31 are not subject to reexamination. See RAN 1 (box 1b).4 Based on the foregoing, the reexamination proceeding will be based on original patent claims 2, 3, 8, 12– 18, 21–26, 29, and 32–37. 4 Throughout this Opinion, we refer to: (1) Requester’s Appeal Brief (Appeal Br.) filed December 23, 2013, (2) the Examiner’s Answer (Ans.) mailed July 9, 2014, (3) Patent Owner’s Request to Reopen Prosecution Under 37 C.F.R. § 41.77(b)(1) (PO Reopen Request) filed July 27, 2015, (4) Requester’s Comments in Opposition to Patent Owner’s Request to Reopen Prosecution (Aug. 2015 3PR Comments) filed August 27, 2015, (5) the Examiner’s Determination (Ex. Deter.) mailed January 8, 2016, (6) Patent Owner’s Comments Under 37 C.F.R. § 41.77(d) (PO Comments) filed February 8, 2016, (7) Requester’s Comments Under 37 C.F.R. § 41.77(e) (Feb. 2016 3PR Comments) filed February 8, 2016, (8) Patent Owner’s Reply Under 37 C.F.R. § 41.77(e) to Requester’s Comments (PO Reply) filed March 8, 2016, (9) Requester’s Reply Under 37 C.F.R. § 41.77(e) to Patent Owner’s Comments (3PR Reply) filed March 8, 2016, (10) the Action Closing Prosecution (ACP) mailed June 21, 2013, and (11) the Right of Notice Appeal (RAN) mailed September 24, 2013. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 4 Upon review, we REVERSE the Examiner’s decision not to reject patent claims 2, 3, 8, 12–18, 21–26, 29, and 32–37 and present new grounds of rejection for these claims pursuant to 37 C.F.R. § 41.77(b). Related Matters Requester indicates that the ’760 patent is the subject to the following litigation: Vederi, LLC v. Google Inc., Civil No. 2:10-CV-07747 AK-CW (C.D. Cal.), Vederi, LLC v. Google Inc., Case No. 13-1057 (Fed. Cir.), and Vederi, LLC v. Google Inc., Case No. 13-1296 (Fed. Cir.).5 Appeal Br. 1, 47 (Related Proceedings App.). Additionally, Requester indicates that this appeal may be related to U.S. Patent No. 7,805,025 B2 (“the ’025 patentâ€), which is the subject of inter partes reexamination assigned Control No. 95/000,681 and which is a continuation of the ’760 patent. Id. at 1. The opinions in the proceeding for Control No. 95/000,681 were similarly vacated in Vederi. Vederi, 813 F. App’x at 501. Parties Appeals Requester appealed the decision in the Right of Appeal Notice confirming or finding claims 2, 3, 8, 12–18, 21–26, 29, and 32–37 patentable. Appeal Br. 1, 4. 5 Cases Nos. 13-1057 and 13-1296 were decided on March 14, 2014 and concerned U.S. Patent Nos. 7,239,760, 7,577,316, 7,805,025, and 7,813,596. Vederi, LLC v. Google Inc., 744 F.3d 1376 (Fed. Cir. 2014), rh’g en banc denied. The Federal Circuit reversed the claim construction of the district court, vacated the judgement, and remanded for further proceedings. See id. at 1384. The disputed claim language in the noted opinion differs from the instant appeal. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 5 The Examiner’s Answer relied on the RAN, incorporating it by reference. See Ans. 1. An oral hearing was conducted on May 13, 2015. The transcript of the hearing has been made of record. Another panel6 at the Patent Trial and Appeal Board reversed Examiner’s decision not to reject claims 2, 3, 8, 12–18, 21–26, 29, and 32– 37. June 2015 Opinion 16 (vacated); Errata 2 (vacated). The panel presented new grounds of rejection for these claims. Id. Patent Owner requested the proceeding be reopened. See generally PO Reopen Request (“the Requestâ€). The proceeding was remanded to the Examiner for consideration of claims now considered improper. See November 2015 Order 5 (remanding to consider claims 39–44 and 46–51); see also Ex. Deter. 6 (noting “only claims 39–44 and 46–51 are being considered here.â€). Under 37 C.F.R. § 41.77(f), we maintained our decision to reject claims 2, 3, 8, 12–18, 21–26, 29, and 32–37. Sept. 2016 Opinion 26 (vacated). Our decisions were vacated. Vederi, 813 F. App’x at 501. Here, we reevaluate claims 2, 3, 8, 12–18, 21–26, 29, and 32–37 and the non-adoption of the proposed rejections of these claims based on the claim construction discussed in Vederi. Appeal Br. 7–34. In reaching our decision, we consider the record as a whole. 6 The panel consisted of Administrative Patent Judges Pothier, Dillon, and Branch. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 6 Claimed Subject Matter Canceled claim 1 and claim 8 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 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. The ’760 patent, 15:57–16:9, 16:38–45 (emphasis added). Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 7 Prior Art Relied Upon Prior to withdrawing the rejections, the Examiner relied on the following as evidence of unpatentability: Name Reference Date Lachinski7 US 5,633,946 May 27, 1997 Michael J. Shiffer, Augmenting Geographic Information with Collaborative Multimedia Technologies, 11 Proc. Auto Carto. 367–376 (1993) (“Shifferâ€). Frank Yee, GPS & Video Data Collection in Los Angeles County: A Status Report, Position Location and Navigation Symposium, Proc. IEEE Position Location and Navigation 388–393 (1994) (“Yeeâ€). Kheir Al-Kodmany, Using Web Based Technologies and Geographic Information Systems in Community Planning, 7 J. Urb. Tech. 1–30 (2000) (“Al-Kodmanyâ€). Withdrawn Rejections The Examiner withdrew the following proposed rejections, for which Requester appeals: Reference(s) Basis Claim(s) Al-Kodmany § 102(a)8 8 RAN 11–12 (referring to 7 Requester indicates that Lachinski was cited in its February 6, 2013 Comments to explain how Yee’s four-view images are created and is proper under 37 C.F.R. § 1.948(a)(2). Appeal Br. 34. 8 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIAâ€), 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. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 8 ACP 10–11); Appeal Br. 7–9 Shiffer, Yee § 103(a) 2, 3, 8, 12–18, 21–26, 29, 32–37 RAN 13–15 (referring to ACP 12–14); Appeal Br. 9–34 Appeal Br. 2–3. II. MAIN ISSUES 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 main issues on appeal are: (A) Did the Examiner err by failing to construe properly the recitation, “wherein the images are associated with image frames acquired by an image recording device moving along a trajectory†found in all the claims on appeal; and (B) Did the Examiner err in withdrawing the rejection of patent claim 8 based on Shiffer and Yee? Because the ’760 patent has an effective filing date before March 16, 2013, we refer to the pre-AIA versions of §§ 102 and 103. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 9 III. ANALYSIS A. Claim Construction As noted above, the ’760 patent has expired. We generally give claims’ recitations in expired patents 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.†See Phillips v. AWH, Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005); see also MPEP § 2258(I)(G) (citing Phillips, 415 F.3d at 1316; Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI Dec. 23, 1986)). Additionally, “[c]laims ‘must be read in view of the specification, of which they are a part’†(Phillips, 415 F.3d at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc))), and “the specification ‘is always highly relevant to the claim construction analysis’†(id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))). Requester discusses the limitation of canceled claims 1 and 20 of the ’760 patent in its appeal brief. Although these claims are canceled (see the Jan. 2013 Amendment), claims 2, 3, 8, and 12–18 of the ’760 patent ultimately depends from canceled claim 1, and claims 21–26, 29, and 32–37 of the ’760 patent ultimately depend from canceled claim 20. Thus, each appealed claim includes either canceled claim 1’s or canceled claim 20’s recitations. The Image Frames Limitation of canceled claims 1 and 20 All the claims on appeal ultimately depend from one of canceled claims 1 and 20 as noted above, and recite “wherein the images are Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 10 associated with image frames acquired by an image recording device moving along a trajectory†(the Image Frames Limitation9). Although noting the phrase, “‘moving along a trajectory’ does not obviate the overall requirement that the image acquisition device travel[s] along the claimed trajectory†(RAN 7), the Examiner states that one skilled in the art would have understood the image recording device will stop, such as lights or stop signs, during its movement along a trajectory and that images can be acquired while the device is not in motion. See id. (citing the ’760 patent 5:55–6:27); see id. at 7–8. We do not disagree with the Examiner, for the Federal Circuit’s construction of the phrase “image frames acquired by an image recording device moving along a trajectory in canceled claims 1 and 20 includes an image recording device that acquires images both while moving and while stationary. See Vederi, 813 F. App’x at 504. We disagree, however, to the extent the Examiner has determined (see RAN 6–8) that the Image Frames Limitation should be construed to include “image recording devices that acquire images only while stationary (although the image recording device moves along a trajectory at other times).†Vederi, 813 F. App’x at 504. 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 9 Requester refers to the quoted limitation as “the ‘Image Frames Limitation.’†Appeal Br. 2. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 11 acquire images both while moving and while stationary,†but not “(3) image recording devices that acquire images only while stationary (although the image recording device moves along a trajectory at other times).†Id. at 504. Canceled claims 1 and 20 of the ’760 patent include the same recitation as claim 21 of the ’025 patent addressed by the court in Vederi. Compare the ’025 patent 17:51–53, with the ’760 patent, 15:67–16:2, 17:41–43. As explained below, we apply a similar claim construction for the Image Frames Limitation in canceled claims 1 and 20 of the ’760 patent. The Vederi court applied the “broadest reasonable interpretation†to the claims and not an 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 specificationâ€). 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 discussions to those cited by the court in the ’025 patent are found in the Specification of the ’760 patent. In particular, the Specification states “an image recording device moves along a path recording images of objects along the path†(the ’760 patent 2:26–28), “[m]ovement to the camera 10 is provided by a base, platform, or motor vehicle moving at an average speed of preferably about 20 miles/hour†(id. at 4:58–60), and “the camera 10 moves along the path†(id. at 5:20). See also id. at 4:54–55 (discussing a camera moving along a path); 5:56–57 (same), 6:66–7:2 (same). The Vederi court also states “the [S]pecification contemplates that some photos may be taken while the Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 12 vehicle is stopped, for example, at an intersection.†Vederi, 813 F. App’x at 504 (citing the ’025 patent, Fig. 9); see also the ’760 patent, Fig. 9. When read in view of the Specification of the ’760 patent, we determine that the ordinary and customary meaning of “moving†within the phrase “the images are associated with image frames acquired by an image recording device moving along a trajectory†in canceled claims 1 and 20 as understood by an ordinarily skilled artisan includes an image recording device that acquires images associated with image frames (1) while moving and (2) both while moving and while stationary as long as some images are associated with image frames acquired while the image recording device is moving. Additionally, although not addressed by the court in Vederi, the Examiner states one cited reference (e.g., Al-Kodmany) “does not describe any specific ‘trajectory’ along which these images are acquired.†RAN 12. The Examiner further states “that pictures at locations are taken, with no description of the process or timing or path (trajectory) that the image acquiring device takes.†Id. In other words, the Examiner concluded that the recited “trajectory†in the Image Frames Limitation of claim 1 requires the image recording device to move along a specified path or has a specific process or timing. See id. Requester disagrees (Appeal Br. 4–7), arguing that the Examiner erred in requiring that the recited trajectory be “a specified trajectory[.]†Id. at 4 (underlining omitted) (citing RAN 8); see id. at 6. We agree with Requester that claims 1 and 20 do not recite moving along a specified trajectory. The ’760 patent describes a trajectory to be synonymous with a path. The ’760 patent 3:57 (describing cameras Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 13 “moving along a trajectory/path.â€). The ’760 patent also provides an “illustration of a trajectory†in Figure 9 where a camera is moved along a path (e.g., 110 including streets or blocks) making turns at intersections and circling around streets. Id. at 3:14–15, 7:66–8:5, Fig. 9. Although this path of streets (e.g., 110) may have been determined prior to recording in this example, we note that, when driving down a street, there exist a level of unpredictability or randomness, such as lane shifting, which deviates from any purported, specified path. See Appeal Br. 6 (stating “[a] POSITA would understand that ‘down a street’ does not require a ‘specified’ trajectory or a ‘description of the path,’ as movement down a street frequently requires changes in route due to detours, accidents, heavy traffic, and other issues.â€) Furthermore, the Figure 9 example in the disclosure is described as “an illustration†of a trajectory, whereas the claim’s scope is not limited to this illustration. Compare the ’760 patent 15:67–16:2, with id. at 3:14–15 (stating “FIG. 9 is an illustration of a trajectoryâ€); see also id. at 7:66–8:5 (describing Figure 9). In summary, we find that the phrase “wherein the images are associated with image frames acquired by an image recording device moving along a trajectory†in canceled claims 1 and 20 requires that the image recording device moves along a path, course or route, but that the path need not be predetermined or specified, and that the image recording device acquires the “plurality of images†that “are associated with the image frames acquired by an image recording device†(1) while moving and (2) both while moving and while stationary as long as some image frames are acquired while the image recording device is moving. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 14 B. Proposed Rejections Requester appeals the Examiner’s decision finding claims 2, 3, 8, 12– 18, 21–26, 29, and 32–37 patentable or confirmed. Appeal Br. 1. Patent Owner did not submit a respondent brief. As explained below, we present a new ground of rejection for patent claims 2, 3, 8, 12–18, 21–26, 29, and 32–37 pursuant to 37 C.F.R. § 41.77(b). 1. Shiffer and Yee a. All Claims Claims 2, 3, 8, and 12–18 ultimately depend from canceled claim 1; claims 21–26, 29, and 32–37 ultimately depend from canceled claim 20. For each of claims 2, 3, 8, 12–18, 21–26, 29, and 32–37, we adopt the following Requester’s and Examiner’s findings and conclusions related to canceled claims 1 and 20 as our own. See Appeal Br. 9–14 (addressing the Navigation Direction Limitation10 found in canceled claims 1 and 20) (citing Request 123–134); see also Request for Inter Partes Reexamination 121– 134 (addressing canceled claim 1) (citing Shiffer 369–73, Fig. 3; Yee 389– 90; Ex. CC-F; OTH-B 104:16–20, 121:1–3; OTH-D 17:7–9); Ex. CC-F 1– 10 (citing Shiffer 369–73, Fig. 3; Yee 389–90; OTH-B 104:16–20; OTH-D 17:7–9); Nov. 2012 Non-Final Act. 9–11 (addressing canceled claim 1) (citing Shiffer 369–73, Fig. 3; Yee 389–90, Fig. 1; Request 121–23); Aug. 2015 3PR Comments 9–13 (addressing Shiffer, Yee, and the Navigational 10 Requester refers to the recitation “receiving a second user input specifying a navigation direction relative to the first location in the geographic area†found in canceled claim 1 and 20 (the ’760 patent 16:3–5, 17:48–50) as the “Navigation Direction Limitation.†Appeal Br. 2. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 15 Direction Limitation found in canceled claims 1 and 20) (citing Shiffer 372– 73, Figs. 2–3). In withdrawing the rejection of amended claim 811 (now improper), which depended from canceled claim 1, based on Shiffer and Yee, the Examiner states: Clicking on one arrow [in Figure 3 of Shiffer] may provide a pannable rendering (which is not an image obtained by a recording device in motion but appears to be computer- generated) or a video obtained at a specific location (again, not obtained by a recording device in motion, Shiffer at 371 noting “fixed-position shotsâ€), but in either case selecting another arrow for a second video or rendering is not read as a step of providing input of a direction relative to the first, rather it is merely clicking locations on map, only wherein the locations are shown as arrows that show the camera angle of a new image do not specify a navigation direction relative to the first. Yee fails to disclose the second selection as noted above; rather Yee discloses selecting various locations on a map, without providing a navigation direction relative to a first. Thus Shiffer in view of Yee fails to disclose receiving a second user input specifying a navigation direction relative to the first location in the geographic area and the rejection was withdrawn. RAN 15 (reproducing Shiffer, Fig. 3) (emphasis omitted). The Examiner thus stated two reasons for withdrawing the rejection based on Shiffer and Yee. First, the Examiner found that Shiffer does not teach obtaining images by a recording device in motion. Id. Second, the Examiner determined that neither Shiffer nor Yee teaches the step of “receiving a second user input specifying a navigation direction relative to 11 At the time of withdrawal, claim 8 depended from claim 1, and claims 2, 3, and 12–18 ultimately depended from claim 8. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 16 the first location in the geographic area†as recited in canceled claims 1 and 20 (the Navigation Direction Limitation). RAN 15. We address the Navigational Direction Limitation first. In disputing the Examiner’s conclusion, Requester argues that “[t]he Examiner is incorrect because Shiffer teaches receiving successive user selection of locations on a map to display images of the those [sic] locations. A POSITA[12] would understand that Shiffer teaches the Navigation Direction Limitation.†Appeal Br. 11. More specifically, Requester focuses on the discussion in Shiffer of “providing navigation images.†Id. (citing Shiffer 371–72). Shiffer discusses “three main shot types,†including “fixed position,†“360 degree axial view,†and “navigation.†Shiffer 371. Fixed shots are described as allowing a user to view a video clip “from a fixed camera angle. They are symbolized on the visual quality map as arrows that match the direction of the camera angle.†Shiffer 371–72, cited in Appeal Br. 11. In contrast and separate from the fixed position and 360 degree axial view shots in Shiffer, navigation shots or images are disclosed as: [A]llow[ing] users to drive or fly through the study area. They are designed to aid visual navigation by enabling the user to view a geographic area from a moving perspective such as that experienced when traveling through a region. Navigation images are represented on the map as linear symbols that represent the routes available to the user. They are illustrated as large arrows in the lower right window of Figure 2. Id. at 372. 12 Person of Ordinary Skill In The Art. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 17 Shiffer further states: The controller at the left edge of the “Aerial Views†window, (the upper left window), allows the user to control the direction of flight (forward or reverse), as well as the speed of flight, by sliding the pointer towards either end of the controller. The user can determine the camera angle by selecting one of the iconic buttons at the right side of the “Aerial Views†window. The arrows on the icons represent the direction the camera was pointing with respect to the subject (in this case, the subject is the street). The user can determine the camera angle by selecting one of the iconic buttons at the right side of the "Aerial Views" window. The arrows on the icons represent the direction the camera was pointing with respect to the subject (in this case, the subject is the street). Id. at 372–73. To illustrate visually, Figure 2 is reproduced below: Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 18 Above, Figure 2 of Shiffer discloses a “Visual Analysis using Aerial Images†that contains an “Aerial Views†window (upper left) and a “Neighborhood†window (lower right). Id. at 372, Fig. 2. The “Neighborhood†window has a map of a geographic area containing linear symbols shown as large arrows representing the routes available to the user. The “Aerial Views†window also has a map of a geographic area, but this window contains (1) a controller bar (left edge) with up and down arrows used to control the forward/reverse directions within the area by sliding the pointer toward either end of the controller and (2) iconic buttons (right edge) used to select a camera angle within the area. Id. at 372–73. Additionally, when addressing Figure 3, Shiffer teaches “users [can] inspect the proposed site,†including “by selecting appropriate arrows linked to the map.†Id. at 373, Fig. 3. Thus, similar to Figure 3, the above discussions in Shiffer related to Figure 2 teach or suggest that a user can first select a particular linear symbol (shown as a long arrow) found in Figure 2’s “Neighborhood†window, which are placed at various locations within the window’s map (see id. at 372–33) (e.g., “receiving a first user input specifying a first location in the geographic area†as recited in canceled claims 1 and 20), and then sliding the pointer towards a controller’s end found in “Aerial Views†window in Figure 2 to either forward or reverse direction (e.g., a navigation direction) from the originally selected location (e.g., the first location) (e.g., “receiving a second user input specifying a Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 19 navigation direction relative to the first location in the geographic areaâ€). Shiffer further teaches by sliding the controller’s pointer (shown in Figure 2 above) in a forward or reverse direction, a user can “drive or fly through the study area.†Id. at 372–73. Shiffer thus further teaches or suggests controlling the direction of movement or flight through a geographic area (e.g., the geographic area identified by the large arrows in the “Neighborhood†window in Figure 2) from one location (e.g., the originally selected location) to another location by sliding the controller’s pointer in a forward or reverse direction (e.g., a location forward or reverse from the original spot using controller’s sliding function shown in Figure 2’s “Aerial Views†window (left)). See id.; see also Aug. 2015 3PR Comments 9–10 (quoting Shiffer 372–73); Feb. 2016 3PR Comments 3–4 (citing Ex. Deter. 12–13; Shiffer 372–373); 3PR Reply 5 (citing Shiffer 372–73). As such, Shiffer teaches or suggests “determining a second location based on the user specified navigation direction,†which is “relative to the first location in the geographic area†as canceled claims 1 and 20 recite. As another example, a user can select a first location by sliding the controller’s pointer in forward direction in Shiffer’s Figure 2 (e.g., “receiving a first user input specifying a first location in the geographic areaâ€) and then, the user can specify a navigation direction (e.g., forward) relative to this first location by further sliding the controller’s pointer in the forward direction in Shiffer’s Figure 2 to control the flight direction through a region. See Shiffer 372–73, Fig. 2; see also Ex. Deter. 11–12 (quoting from vacating decision that discusses Shiffer 372–73 and sliding the pointer Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 20 in Figure 3). These above teachings in Shiffer suggest to one skilled in the art that a user can specify a navigation direction relative to a location and suggest the Navigational Direction Limitation found in canceled claims 1 and 20. We thus, disagree with the Examiner that Shiffer teaches merely selecting locations on a map that have “arrows that show the camera angle of a new image.†RAN 15. Additionally, as explained above, we disagree with Patent Owner 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 as argued (see PO Comment 4, 6–7). In fact, Patent Owner states that the pointer movement is “constrained by the currently selected route†(PO Comments 7), which implies that 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). Because Shiffer teaches or suggests the Navigation Direction Limitation and the recited “determining a second location based on the user specified navigation direction†in canceled claims 1 and 20 for previously explained reasons, any arguments related to this claimed feature and that one skilled in the art “would not have combined the teachings of Shiffer and Yee to arrive at claim†1 and 20 are unavailing. PO Comments 5 (bolding and underlining omitted); see also at 5–7; PO Reopen Request 22–23. As for Shiffer’s “navigation shots,†Patent Owner contends its “iconic button†determines a camera angle from the same location and thus does not Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 21 disclose the Navigation Direction Limitation. See PO Reopen Request 24 (citing Shiffer 371–73; June 2015 Op. 12–13). But, as discussed above, this argument is unavailing because the rejection relies on Shiffer’s controller and its sliding function, not the “iconic buttons,†found in Figure 2 to teach and suggest the Navigation Direction Limitation. See Aug. 2015 3PR Comments 10 (noting “the ‘iconic buttons’ are an extra feature in Shiffer, separate and apart from the navigation imagesâ€); see also id. at 10–11. Regarding Shiffer’s Figure 3, Patent Owner argues selecting arrows on its map access images associated with arrows and are unaffected by or without consideration of a previous selected location and thus do not disclose the Navigation Direction Limitation in canceled claim 1. PO Reopen Request 25–26 (citing Shiffer 371–73, Fig. 3; June 2015 Op. 13 (vacated)); see also PO Comments 4 (arguing Shiffer teaches arrows at different locations on a map in Figure 3 point in the direction of viewing “without regard to the previously selected ‘first location’†and “the new selection [in Shiffer] is not selected ‘based on the user specified navigation direction’â€); PO Reply 4. We are not persuaded. As discussed above, the rejection mainly relies on Shiffer’s Figure 2, not Figure 3 and its arrows, to teach and suggest the Navigation Direction Limitation disputed by Patent Owner. Thus, some of Patent Owner’s arguments addressing Figure 3’s features do not consider fully the scenarios discussed and explained above in more detail. Also, concerning Shiffer’s Figure 3, we do not agree entirely with Requester that one skilled in the art would have understood that selecting various arrows on the map this figure, which indicate the camera angle direction, would necessarily “specif[y] a Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 22 navigation direction relative to the first location in the geographic area†as recited. Appeal Br. 13. For example, a first camera angle directional arrow for a first location received by a first user input may point easterly (e.g., one of the left arrows in zoomed-in box of the “Neighborhood†window in Figure 3), and a second camera angle directional arrow for a second location received by a second user input may point north westerly (e.g., one of the right arrows in the zoomed-in box of the “Neighborhood†window in Figure 3). Shiffer 373, Fig. 3. In this scenario, one having ordinary skill in the art would have understood that the second user input (e.g., selecting the north westerly arrow after selecting the easterly arrow) does not necessarily specify a navigation direction relative the first location as recited. On the hand, Shiffer describes various options in Figure 3 to inspect a site, including: (1) the user ‘can view the proposal from various perspectives around the site by selecting appropriate arrows linked to the map†(id.) and (2) the user “can navigate around a specific rendering by zooming and panning with on-screen controls†(id.). The former option teaches or suggests “receiving a first user input specifying a first location in the geographic area†as recited in canceled claims 1 and 20, such as by selecting an arrow in Shiffer’s Figure 3 in its “Neighborhood†window. The latter option suggests that “a second user input†can “specif[y] a navigation direction relative to the first location†by navigating around an image using “on-screen controls†to zoom or pan the image. See id.; see also Aug. 2015 3PR Comments 13 (quoting Shiffer 373) (noting these options). Thus, Shiffer’s Figure 3 teaches and suggests yet another example of the Navigation Direction Limitation, recited in canceled claims 1 and 20. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 23 Patent Owner contends one skilled in the art would not “equate†Shiffer’s zooming and panning feature to “specifying a navigation direction†because the zooming feature “merely magnifies that portion of the image without changing locations†and “does not move the viewer any closer to the landmark.†PO Reopen Request 27 (citing June 2015 Op. 14 (vacated)). We are not persuaded. Notably, canceled claims 1 and 20 recite “determining a second location,†not changing or moving locations. In any event, Patent Owner provides no evidence that zooming magnifies an image without changing its location. See id. An ordinary understanding of zooming, as Shiffer teaches, includes simulating movement away from or towards a location13 and thus, an artisan of ordinary skill would have understood Shiffer’s zooming feature would specify a “navigation direction†relative to the original location (e.g., moves towards another location within the area as well as away from the original location). Additionally, Patent Owner disputes Shiffer’s zooming feature but does not dispute its panning feature fails to specify “a navigation direction†as recited. See id.; see also Aug. 2015 3PR Comments 12 (noting Patent Owner’s argument “ignores the ‘panning’ feature of Shiffer, as shown in Figure 3 and described on page 373â€). Furthermore, claim 15, which ultimately depends from claim 1, additionally recites that “a navigation button†(claims 12 and 14) “upon actuation†“retriev[es] the image associated with the second location†(claim 12) and “indicates direction of 13 Zoom, The American Heritage Dictionary, available at https://www.ahdictionary.com/word/search.html?q=zoom (def. 5) (“To simulate movement rapidly away from or toward a subject using a zoom lens or other optical deviceâ€) (last visited April 16, 2021). Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 24 motion†(claim 14), “includ[ing] . . . panning left or right†(claim 15). As such, consistent with the Specification of the ’760 patent, Shiffer’s panning feature suggests a navigation and moving direction or can “specify[] a navigation direction†as recited. In the event that selecting to zoom or pan an image as taught by Shiffer is not considered “receiving second user input specifying a navigation direction relative to the first location†as canceled claims 1 and 20 recite (for which we disagree), Shiffer’s Figure 2 and its discussed features as previously explained teach and suggest the Navigation Direction Limitation. Regarding the Examiner’s second reason for withdrawing the rejection based on Shiffer and Yee, Requester argues that Shiffer’s images are obtained by a recording device and are not computer generated. Appeal Br. 14 (citing Shiffer 373). The Examiner states that Shiffer’s images “appear[] to be computer-generated†and additionally, that Shiffer does not teach obtaining images by recording device in motion. RAN 15. We agree with Requester that Shiffer teaches and suggests to one skilled in the art that the images are acquired by image recording device. For example, Shiffer teaches “the direction of the camera’s angle†(Shiffer 372) and “the direction of the camera was pointing with respect to the subject (in this case, the subject is the street)†(id. at 373). One skilled in the art would have recognized that Shiffer’s teaching of the direction the camera was pointing teaches that a camera (e.g., an image recording device) was used to acquire images. See id. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 25 On the other hand, we agree with the Examiner that Shiffer does not disclose explicitly obtaining images by an image recording device in motion. RAN 15. Shiffer discusses shot types in the context of how the user is to view images (Shiffer 371–72) but is silent about whether these shots were acquired while in motion. See generally Shiffer. But, the prior art references must be considered in combination and in their entirety. See W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (1983), cited in Appeal Br. 13. Yee, which is part of the rejection, teaches a technique of acquiring images frames using an image recording device moving along a path. Yee 389 (stating “[t]he function of the van is to dynamically collect the real locations of streets and objects as it travels.â€) (second emphasis added), 390 (stating “the GeoVan, meeting the above conditions, can gather all that data in one drive over the project area. Globally, the ten cameras see everything . . . while moving down the roadâ€), 392 (discussing “the Geo Van on the road†and “this ‘driving the road'’ technique of data collectionâ€); see also Appeal Br. 29 (quoting from Yee 389, 391). When combining Yee’s image acquisition technique with Shiffer (see Request 122–23 (addressing reasons to combine, including that Yee “facilitates collecting images of a large geographic area in an efficient mannerâ€)), we determine that the Shiffer/Yee system teaches and suggests “the images are associated with image frames acquired by an image recording device moving along a trajectory†as canceled claims 1 and 20 recite and as this recitation (the Image Frames Limitation) is construed in Section (III)(A). For the above reasons, we determine that Shiffer and Yee teach or suggest canceled claim 1, for which each of claims 2, 3, 8, and 12–18 Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 26 depends, and canceled claim 20, for which each of claims 21–26, 29, and 32–37 depends. b. Claims 2, 3, 12–18, 21–26, 29, and 32–37 Along with the above discussion adopting the noted findings and conclusions related canceled claims 1 and 20 (see, e.g., Appeal Br. 9–14), we further adopt Requester’s additional findings and conclusions for claims 2, 3, 12–18, 21–26, 29, and 32–37. See id. at 14–34 (citing Request 123– 134; Shiffer 369–73, Fig. 3; Yee 389, 391–92). As previously stated, Patent Owner did not submit a respondent brief and thus did not respond to the findings and conclusions of these claims presented by Requester. Other than its continual disagreement with the claim construction of canceled claims 1 and 20 and the above-addressed arguments, Requester presents no specific arguments for these claims. See PO Reopen Request 22–27; see also PO Comments 3–7; PO Reply 3–5. In summary, claims 2, 3, 12–18, 21–26, 29, and 32–37 are newly rejected under 35 U.S.C. § 103(a) based on Shiffer and Yee pursuant to 37 C.F.R. § 41.77(b). c. Claim 8 – Additional Findings and Conclusions Claim 8 depends from claim 1 and adds “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.†The ’760 patent 16:38– 45. We further adopt Requester’s findings and conclusions related to claim 8 as our own. See Appeal Br. 10–14 (citing Request 123–134, 141–144; Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 27 Shiffer 371–73, Fig. 3); see also Request for Inter Partes Reexamination 141–144 (citing Shiffer 371, 373; Ex. CC-F); Ex. CC-F 16–18 (addressing claim 8) (citing Shiffer 371, 373); see also February 2013 3PR Comments 18–22 (citing Shiffer 369–71, 373; Yee 391–92, Abstract; Lachinski 3:32– 37, 5:25–31, 9:42–46, 12:52–13:2, 13:40–46, 13:56–63, 14:41–53 (explaining Yee/GEOSPAN’s mobile mapping system)). Additionally, when discussing an “Automobile Traffic Analysis†shown in Figure 1, Shiffer teaches accessing data “by pointing to an associated street link on the interactive map.†Shiffer 371. This at least suggests Shiffer accesses data related to a location involves “identifying a street segment including the first or second location†(e.g., a particular street on a map) and “identifying a position on [a] street segment corresponding to the first or second location†(e.g., the associated street link associated with the particular street) as claim 8 recites. Shiffer teaches, when addressing Figure 3, that “users can sequentially move through a series of site images while an associated arrow highlights on the map as each image is displayed†(id. at 373), also suggesting that this moving technique involves identifying street segments and positions related to a location and identifying an image associated with the position when retrieving an image corresponding to a location as the user moves through the images. See id. By applying these teachings to Shiffer’s Figure 2’s map and navigation images that allow a user to drive or fly through a study area (id. at 372, Fig. 2), an ordinary skilled artisan would have recognized that Shiffer suggests further “identifying an image associated with said position [on a street segment including a first or second location]†as claim 8 recites. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 28 Additionally, Yee discloses GeoSpan has developed a mobile mapping system, entitled GeoVan, that processes data for integration into a Geographic Information System (GIS). Yee 388. More specifically, Yee teaches data gathered by the GeoVan (e.g., images, locations, and selected information items) are processed by GeoVan software and loaded into GIS systems. Id. at 389, 391. Yee further teaches a Visual Interface System that stores, locates, and retrieves video images. Id. at 391. In particular, Yee discloses a user can point at a road segment or specific location on a map and then display an image for that segment. Id. at 391–92. Yee also teaches using a GPS receiver with the GeoVan “for image reference location.†Id. at 390. Thus, to the extent that Shiffer does not teach claim 8’s limitations, Yee’s teachings, when combined with Shiffer, further suggest a known process of “retrieving from an image source†(e.g., GeoVan’s mobile mapping system and GIS systems) an “image associated with [a] first†or “second location†(e.g., images related to a road segment or specific location) involving claim 8’s steps. See id. at 389, 391–92. Yee suggests its technique, when combined with Shiffer, such as its Figure 2 “Visual Analysis,†includes “identifying a street segment†(e.g., identifying a road segment) associated with a location (e.g., a specific location associated with a road segment), “identifying a position on the street segment†(e.g., using a GPS receiver’s stored data) related to a location, and “identifying an image associated with said position†(e.g., displaying an image for a road segment involves identifying the image associated with the relevant street segment’s position). See id. at 390–92. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 29 This resulting Shiffer/Yee system is a combination of familiar elements according to methods known to an ordinarily skilled artisan of “retrieving of the image†from an image source that include the steps recited in claim 8 and yields no more than the predictable result of obtaining a location’s image by identifying its street segment, a position on the segment, and the image associated with the segment’s location to permit a user to drive or fly through a study area as Shiffer provides. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Also, to the extent Shiffer and Yee’s image retrieving techniques differ, the proposed combination is also merely a substitution of one known element (e.g., Yee’s image retrieving technique) for another known in the field (e.g., Shiffer’s technique) and yields no more than predictable result of obtaining an image associated with an location specified by the user. See id. Yee further teaches GeoSpan uses TIGER (Topological Integrated Geographic and Referencing) file format to record its data (e.g., images) that are loaded into the GIS systems. Id. at 391. Lachinski explains the TIGER file format improves the accuracy of coordinates (e.g., identify position data) within the files and adds information (e.g., missing street and address information), which can assist in (1) identifying street segments related to a location and position and (2) creating relationships between the segments and images for a variety of GIS applications. Lachinski 1:15–23, 2:16–20, 3:32–37, 9:36–45,11:55–12:62, 13:56–63, 14:41–58, 16:33–17:38, Figs. 9– 10. Lachinski also discusses its street segment database can store large amounts of image sets that can be manipulated and managed using an indexing method. Id. at 13:51–55. Thus, as further evidenced by Lachinski, Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 30 Yee’s TIGER file format includes a process of retrieving images corresponding a location by “identifying a street segment including the . . . location†(e.g., disclosed street segment related to a location), “identifying a position on the street segment†corresponding to a location (e.g., the identified position data), and “identifying an image associated with said position†(e.g., the disclosed relationship between the street segments and images) as claim 8 recites. One skilled in the art would have recognized that including Lachinski’s process in the Shiffer/Yee system would have improved coordinate accuracy with its system, and would have permitted a large amount of images to be stored and managed. As previously stated, Patent Owner did not submit a respondent brief and thus did not respond to the findings and conclusions of these claims presented by Requester related to claim 8. Other than its continual disagreement with the claim construction of canceled claims 1 and 20 and the above-addressed arguments, Requester presents no specific arguments for this claim. Given the above discussion, we newly reject claim 8 under 35 U.S.C. § 103(a) based on Shiffer, Yee, and Lachinski pursuant to 37 C.F.R. § 41.77(b). 2. Other Proposed Ground for Claim 8 Requester further argues claim 8 should be rejected under 35 U.S.C. § 102(a) based on Al-Kodmany. Appeal Br. 7–9 (citing Request 76–85, 91, and 92). Requester argues that Al-Kodmany discloses the Image Frames Limitation found in canceled claims 1 and 20. Id. at 8–9. Requester further contends that even applying the Examiner’s improper narrow construction, Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 31 Al-Kodmany discloses that images are acquired by identifying street locations and then traveling along the street to the identified locations. Id. at 8 (citing Al-Kodmany 16). The Examiner initially adopted the proposed rejection of Al-Kodmany (November 7, 2012 Non-Final Act. 7–8 (citing Al-Kodmany 10, 16, 21, Figs. 5, 13) (referring to Exhibit CC-C)), but later withdrew the rejection (ACP 10–11). See also RAN 11–12. Al-Kodmany discusses how to create 360-degree panoramic movies. Specifically, Al-Kodmany states: For visualization of major nodes along 18th Street, we first identified points of interest such as major intersections, areas with a high level of activity, and significant architectural points. Then we took digital images of these nodes with a wide-angle lens and a tripod and created panoramic movies. The panoramic movie files were constructed with Apple’s Quicktime VR Authoring Studio. A total of 12 images per node were taken with a difference of 30 degrees. To encompass the whole area (360 degrees), the images were imported into the computer, retouched with Adobe Photoshop, and sewn together with Quicktime. On the map, the user saw a red circle icon, which indicated that there was a movie of this location available for viewing. Al-Kodmany 16. Al-Kodmany teaches identifying points of interest along a street (i.e., 18th Street) and, after identification, taking images at the nodes. See id. Al-Kodmany therefore discloses a trajectory or path formed by the points of interest (e.g., major nodes along 18th Street). Although Al-Kodmany discusses “visualization of major nodes along 18th Street,†this sentence in Al-Kodmany does not address movement of a camera along 18th Street. Id. (emphasis added). Al-Kodmany further states Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 32 “we took digital images of these nodes with a wide-angle lens and a tripod.†Id. By stating a wide-angle lens and a tripod are used to take the images “of these nodes,†this passage implies that the same lens and tripod (e.g., image recording device) was used to take the images at the different nodes (e.g., locations), and as such, discusses the camera moves from one node to another along 18th Street (e.g., a trajectory). Id. However, Al-Kodmany is silent regarding whether the camera acquires images while moving or both while moving and stationary as we construed the phrase “image frames acquired by an image recording device moving along a trajectory†found in canceled claim 1 and as discussed previously in Section (III)(A). In fact, Al- Kodmany discusses using a tripod to capture the images at the “nodes†(e.g., locations along 18th Street), which suggests to an ordinarily skilled artisan that the camera acquires images only while stationary rather than (1) while the camera (e.g., an image recording device) is moving or (2) both while the camera is moving and while stationary. Because Al-Kodmany does not disclose an image recording device acquiring images while moving or both while moving and stationary, Al- Kodmany does not disclose the Image Frames Limitations under 35 U.S.C. § 102 as proposed. We thus agree with the Examiner’s ultimate determination not to adopt the rejection of claim 8 under 35 U.S.C. § 102(a) based on Al-Kodmany. IV. CONCLUSIONS We have reviewed the entire record, including submissions by Patent Owner and Requester and the decision in Vederi. We conclude: Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 33 Claims Not Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 8 102(a) Al-Kodmany 8 2, 3, 8, 12–18, 21–26, 29, 32–37 103(a) Shiffer, Yee 2, 3, 8, 12–18, 21–26, 29, 32–37 2, 3, 12– 18, 21– 26, 29, 32–37 8 103(a) Shiffer, Yee, Lachinski 8 Overall Outcome 2, 3, 8, 12–18, 21–26, 29, 32– 37 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 form 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. Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 34 (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: . . . [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). Appeal 2016-006116 Reexamination Control 95/000,682 Patent 7,239,760 B2 35 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 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 Copy with citationCopy as parenthetical citation