7,239,760 B2 et al.

Patent Trials and Appeals Board

Jun 1, 2021

2016006116 (P.T.A.B. Jun. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,682 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 Circuit”), vacating our previous decisions
for this proceeding mailed June 26, 2015,1 July 16, 2015 (“Errata”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,
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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 patent”). 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).
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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 Amendment”) 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.
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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 patent”),
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.
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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 Request”). 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.”). 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.
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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).

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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) (“Shiffer”).

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) (“Yee”).

Kheir Al-Kodmany, Using Web Based Technologies and Geographic
Information Systems in Community Planning, 7 J. Urb. Tech. 1–30 (2000)
(“Al-Kodmany”).

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) (“AIA”), amended 35 U.S.C. §§ 112, 102, 103, and 305. Changes to
§§ 102 and 103 apply to applications filed on or after March 16, 2013.
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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.
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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
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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.
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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 specification”). Even so, the court
considered the disclosure of the ’025 patent in arriving at its construction.
Id. (citing the ’025 patent 2:27–29, 3:47–49, 3:54–57, 4:50–53, 4:55–58,
5:18–19, 5:52–54, 6:58–61, Fig. 9). Similar 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
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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
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“moving along a trajectory/path.”). 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.”)
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 trajectory”); 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.
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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.
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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 shots”), 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.
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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.
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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:

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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
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navigation direction relative to the first location in the geographic
area”).
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
area”) 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
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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
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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 images”); 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’”); 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
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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.
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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 373”). 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 device”) (last visited April 16, 2021).
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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.
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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.”) (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 road”), 392 (discussing “the Geo Van
on the road” and “this ‘driving the road'’ technique of data collection”); 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 manner”)), 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
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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;
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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.
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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.
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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,
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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,
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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
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“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:
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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.

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(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