7,577,316 B2 et al.Download PDFPatent Trials and Appeals BoardJun 1, 20212018007271 (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. 95/000,683 08/17/2012 7,577,316 B2 13557-105153.R2 1052 23363 7590 06/01/2021 Lewis Roca Rothgerber Christie LLP PO BOX 29001 Glendale, CA 91209-9001 EXAMINER FOSTER, ROLAND G 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 2018-007271 Reexamination Control 95/000,683 Patent 7,577,316 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 Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 2 I. STATEMENT OF CASE This proceeding returns to us on remand from the Federal Circuit, vacating our previous decisions for this proceeding mailed August 15, 2016 and September 28, 2018. See Vederi, LLC v. Google LLC, 813 F. App’x 499, 501, 505 (Fed. Cir. 2020). As background, Requester requested an inter partes reexamination (“the Request”) of U.S. Patent No. 7,577,316 B2 (“the ’316 patent”). The ’316 patent claims priority to U.S. Applications: (1) 11/130,004 (now U.S. Patent No. 7,239,760 B2), filed May 16, 2005, and (2) 09/758,717 (now U.S. Patent No. 6,895,126 B2), filed on January 11, 2001. The ’316 patent, code (60). Pursuant to 35 U.S.C. § 154(a)(2), the term of the ’316 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 ’316 patent expired on January 11, 2021.1 “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 1 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 2018-007271 Control 95/000,683 Patent 7,577,316 B2 3 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 C.F.R. § 1.530(j). Accordingly, the reexamination proceeding will now be based on the original patent claims of the ’316 patent. Thus, Patent Owner proposed amendments (see, e.g., the April 22, 2013 Amendment (“Apr. 2013 Amendment”)) to the claims, including new claims 36–43 (Apr. 2013 Amendment 9–10), are improper at this time. See MPEP § 2666.01. On the other hand and even though the ’316 patent has expired, Patent Owner’s proposed claim amendments to cancel claim (i.e., claims 1, 6–10, 16, 17, 26, and 29 (see Apr. 2013 Amendment 4–8)) are permitted. See MPEP § 2666.01. Additionally, claims 2–5, 11, 12, 14, 15, 25, 27, 28, and 30–35 are not subject to reexamination. See RAN 1 (box 1b).2 Based on the foregoing, the reexamination proceeding will be based on original patent claims 13 and 18–24. 2 Throughout this Opinion, we refer to: (1) the Action Closing Prosecution (ACP) mailed September 24, 2013, (2) the Right of Appeal Notice (RAN) mailed June 4, 2014, (3) Patent Owner’s Appeal Brief (PO Appeal Br.) filed September 3, 2014, (4) Requester’s Respondent Brief (3PR Resp. Br.) filed October 2, 2014, (5) Patent Owner’s Rebuttal Brief (PO Reb. Br.) filed May 22, 2015, (6) Requester’s Appeal Brief (3PR Appeal Br.) filed September 8, 2014, (7) Patent Owner’s Respondent Brief (PO Resp. Br.) filed October 9, 2014, (8) Requester’s Rebuttal Brief (3PR Reb. Br.) filed May 21, 2015, (9) the Examiner’s Answer (Ans.) mailed April 21, 2015, (10) Patent Owner’s Request to Reopen Prosecution Under 37 C.F.R. 41.77(b)(1) (PO Reopen Request) filed September 16, 2016, and (11) the Examiner’s Determination (Ex. Deter.) mailed February 8, 2018. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 4 Upon review, we REVERSE the rejections adopted by the Examiner but present a new ground of rejection for patent claims 13 and 18–24 pursuant to 37 C.F.R. § 41.77(b). Related Matters The parties indicate that the ’316 patent was the subject of the following litigation: Vederi, LLC v. Google Inc., Case No. 2:10-CV-07747 (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.).3 PO Appeal Br. 2; 3PR Appeal Br. 1, 22 (Related Proceedings App.). Additionally, the parties indicate that this appeal may be related to: (1) 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, (2) U.S. Patent No. 7,239,760 B2 (“the ’760 patent”), which is the subject of inter partes reexamination assigned Control No. 95/000,682, and (3) U.S. Patent No. 7,813,596 B2, which is the subject of inter partes reexamination assigned Control No. 95/000,684.4 PO Appeal Br. 2; 3PR Resp. Br. 1. The opinions in these proceedings were similarly vacated. Vederi, 813 F. App’x 501. 3 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 and cert denied. The Federal Circuit reversed the claim construction of the district court, vacated the judgement, and remanded for further proceedings. See id. at 1384; see also PO Appeal Br. 2. The disputed claim language addressed by the Federal Circuit differs from the instant appeal. 4 The court also discussed the phrase “web page for the retail establishment” within the phrase “accessing a web page for the retail establishment; and invoking by the computer system a display of the web page on the display screen.” Id. at 504–505. This phrase is not found in the claims of the ’316 patent being reexamined in this proceeding. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 5 Parties Appeals Patent Owner appealed the decision in the RAN rejecting claims 13 and 18–24 of the ’316 patent. PO Appeal Br. 3. Requester responded, and Patent Owner rebutted. See generally 3PR Resp. Br.; PO Reb. Br. Requester cross-appealed the decision in the RAN determining a now-improper claim (i.e., claim 42) of the ’316 patent is patentable. 3PR Appeal Br. 2. Patent Owner responded, and Requester rebutted. See generally PO Resp. Br.; 3PR Reb. Br. The Examiner’s Answer incorporates the RAN by reference (Ans. 1), which rejected claims 13 and 18–24. An oral hearing was conducted on April 27, 2016. The transcript of the oral hearing has been made of record. After the August 2016 Decision, Patent Owner requested reopening prosecution. See PO Reopen Request 9. We granted this request and remanded to the Examiner for consideration of a now-improper claim. May 23, 2017 Order 3–4. The Examiner determined that the rejection of the now-improper claim was not overcome. Ex. Deter. 2. We subsequently rendered a second opinion on September 28, 2018. The Federal Circuit vacated our decisions. Vederi, 813 F. App’x at 501. The court in Vederi construed two phrases found in the claims of the ’025 patent. Vederi, 813 F. App’x at 501–504. These disputed phrases are: (1) “composite image” and (2) “moving” within the phrase “image frames acquired by an image recording device moving along a trajectory.” Specifically, the court agreed with how the panel construed the phrase “composite image” (Vederi, 813 F. App’x at 503) but did not fully adopt Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 6 how the panel construed the phrase “moving” (id. at 503–504).5 Given the claim construction addressed in Vederi, we reevaluate the rejections of claims 13 and 18–24 of the ’316 patent. In reaching our decision, we consider the record as a whole. Claimed Subject Matter Canceled claim 1 and dependent claim 13 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; displaying an icon associated with an object in the geographic area; receiving a user selection of the icon; and identifying a second location based on the user selection. 5 The court also discussed the phrase “web page for the retail establishment” within the phrase “accessing a web page for the retail establishment; and invoking by the computer system a display of the web page on the display screen.” Id. at 504–505. This phrase is not found in the claims of the ’316 patent being reexamined in this proceeding. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 7 13. The method of claim 1, wherein the first image is a composite image created by processing pixel data of a plurality of the image frames. The ’316 patent 15:41–57, 16:37–39 (emphases added). Prior Art Relied Upon The record relies on the following as evidence of unpatentability: Name Reference Date Lachinski6 US 5,633,946 May 27, 1997 Murphy US 6,282,362 B1 Aug. 28, 2001 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”). J. Dykes, An Approach To Virtual Environments For Visualization Using Linked Geo-referenced Panoramic Imagery, 24 Computers, Env’t & Urb. Sys. 127–152 (2000) (“Dykes”). Kheir Al-Kodmany, Using Web-Based Technologies and Geographic Information Systems in Community Planning, 7 J. Urb. Tech. 1–31 (2000) (“Al-Kodmany”). 6 Requester indicates that Lachinski was cited in its comments to rebut Patent Owner’s response and explain how Yee’s four-view images are created. 3PR Resp. Br. 21–22; May 22, 2013 3PR Comments 27–28. Although not relying on Lachinski in the rejection, the Examiner discusses Lachinski, indicating the reference was properly cited under 37 C.F.R. § 1.948(a)(2). See RAN 20. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 8 Nada Bates-Brkljac & John Counsell, Issues in Participative Use of an Historic City Millennial Web Site, IEEE Proc. Int’l Conf. Info. Visualization 119–125 (2000) (“Bates”). Current Rejections The Examiner maintained the following proposed rejection, for which Patent Owner appeals: Reference(s) Basis7 Claims RAN Dykes § 102(a) 13 6–8 Al-Kodmany § 102(a) 13 8–10 Bates § 102(a) 13 10–12 Yee, Dykes § 103(a) 13, 18–24 12–15 Murphy, Yee § 103(a) 13, 188–24 16–17 Shiffer, Yee § 103(a) 13, 18–24 18–19 PO Appeal Br. 5. II. MAIN ISSUE 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 7 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. Because this application has an effective filing date before March 16, 2013, we refer to the pre-AIA versions of §§ 102 and 103. 8 Both the Examiner and Patent Owner include claims 16 and 17 in this rejection as well as the rejection based on Shiffer and Yee. PO Appeal Br. 5; RAN 16, 18. Because claims 16 and 17 have been canceled, we presume these inclusions are typographical errors and render the errors harmless. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 9 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 disputed errors presented by the parties, the main issue on appeal is, as currently presented, did the Examiner err in rejecting patent claims 13 and 18–24? III. ANALYSIS A. Claim Construction As noted above, the ’316 patent has expired. Because the ’316 patent has expired, we give its claims’ recitations “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.” 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))). The parties discuss limitations of canceled claim 1 and claims 13, 18, 20, and 23 of the ’316 patent in their respective briefings. PO Appeal Br. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 10 5–23; see 3PR Appeal Br. 18–20. Although claim 1 is canceled (see the Apr. 2013 Amendment 4), claims 13 and 18–24 of the ’316 patent ultimately depend from canceled claim 1. Thus, each appealed claim includes canceled claim 1’s recitations. 1. The Image Frames Limitation of Canceled Claim 1 All the claims on appeal ultimately depend from canceled claim 1 and recite “wherein the images are associated with image frames acquired by an image recording device moving along a trajectory” (“the Image Frames Limitation”9). The Examiner finds this phrase is not limited to the embodiment in the ’316 patent and includes “a video recorder or still camera that records image frames.” RAN 23; see id. at 22–27 (citing the ’316 patent 3:58–60, 4:12–15, 5:9–12, 5:52–6:23, Figs. 2, 9). Requester agrees, contending that the Examiner correctly construed the Image Frames Limitation. 3PR Appeal Br. 18; see also 3PR Resp. Br. 3–7. Patent Owner argues that the Examiner unreasonably construed the term “moving” within the Image Frames Limitation to mean “in motion or not in motion.” PO Appeal Br. 7, 12–16 (citing RAN 23–24, 26, 28; the ’316 patent 3:36–60, 5:55–46). Patent Owner contends the phrase “image frames are acquired by an image recording device moving along a trajectory” to mean “that the image frames are acquired by an image recording device that is in motion along the trajectory at the time of the acquisition.” Id. at 9; see id. at 8–9 (citing Oxford Dictionaries; Webster’s Third New International Dictionary (defining “moving”); Exs. A–B). Patent 9 Requester refers to the quoted limitation as “the ‘Image Frames Limitation.’” 3PR Appeal Br. 18. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 11 Owner contends the Specification of the ’316 patent confirms its understanding. Id. at 9–12 (citing the ’316 patent 2:26–30, 3:46–57, 4:50– 62, 5:18–22, 5:52–54, 6:56–62, 7:58–64, code (57)). 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 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 claim 1 of the ’316 patent includes 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 ’316 patent 15:51–53. As explained below, we apply a similar claim construction for the Image Frames Limitation in canceled claim 1 of the ’316 patent. The Vederi court applied the “broadest reasonable interpretation” to the claims and not the 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 passages to those cited by the court in the ’025 patent are found in the Specification of the ’316 patent. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 12 In particular, the Specification states “an image recording device moves along a path recording images of objects along the path” (the ’316 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 4:55–57), and “the camera 10 moves along the path” (id. at 5:18). See also id. at 4:51–53 (discussing a camera moving along a path); 5:53–54 (same), 6:59–61 (same). The Vederi court also states “the [S]pecification contemplates that some photos may be taken while the 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 ’316 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 claim 1, as understood by an ordinarily skilled artisan at the time of the invention, 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 construed the phrase “moving along a trajectory” in the Image Frames Limitation to include “moving along some path that is not known beforehand.” RAN 27 (citing Merriam Webster’s Collegiate Dictionary 1252 (10th ed. 1997); the ’316 patent, Fig. 9). The Examiner states Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 13 “[t]rajectory means a path, progression, or line of development . . . There is no requirement for the trajectory to be a known or preplanned path.” Id. Requester finds that the Examiner correctly construed the term “trajectory.” 3PR Appeal Br. 18 (citing RAN 23); id. at 18–20.10 “Patent Owner [also] agrees that the ‘trajectory’ need not be preplanned.” PO Appeal Br. 17. We agree with both parties and the Examiner that the recited “trajectory” in canceled claim 1 need not be preplanned. Although agreeing that the “trajectory” is not preplanned, Patent Owner contends “the trajectories of the image acquisition device are known.” PO Appeal Br. 17. Requester disagrees. 3PR Resp. Br. 18. Focusing on the term “moving” within the phrase “moving along a trajectory,” Patent Owner also argues “‘trajectory’ refers to the path of a moving object. A stationary object has no trajectory.” Id. at 16 (citing Merriam Webster’s Collegiate Dictionary 1252 (10th ed. 1997)). We agree with Requester that canceled claim 1 does not recite moving along a known trajectory. See 3PR Resp. Br. 18. Also, the ’316 patent describes a trajectory to be synonymous with a path. The ’316 patent 3:56 (describing cameras “moving along a trajectory/path.”). The ’316 patent further 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, 7:58–64, Fig. 9. 10 Requester notes that the Examiner took a contrary position in Control Nos. 95/000,681 and 95/000,682, where the Examiner found the Image Frames Limitation “require an image recording device to move a long a specified trajectory, i.e., a trajectory that is known or preplanned.” 3PR Appeal Br. 19 (bolding omitted). Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 14 Although the path of streets in this example (e.g., 110 in Figure 9) may have been determined prior to recording, we note that, when driving down a street, there exists a level of randomness, such as lane shifting, which deviates from any purported, known path. 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 ’316 patent 15:51–53, with id. at 3:14–15 (stating “FIG. 9 is an illustration of a trajectory”), 7:58–64 (describing Figure 9). In summary, the phrase “wherein the images are associated with image frames acquired by an image recording device moving along a trajectory” in canceled claim 1 requires that the image recording device moves along a path, course or route, but that the path need not be known or preplanned, and that the image recording device acquires “[the] plurality of images” that “are associated with 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. 2. Composite Image of Claims 13, 18, and 23 Claim 13 depends from claim 1 and recites “a composite image created by processing pixel data of a plurality of the image frames.” The ’316 patent 16:37–39. Claims 18 and 23 indirectly depend from claim 1 and recite similar limitations to claim 13. Id. at 16:56–58, 17:14–17. The Examiner finds the phrase, “composite image,” includes combining four images into a single image. See RAN 29–30 (incorporating Requester’s November 25, 2013 Comments (“3PR Nov. 2013 Comments”) Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 15 on pages 17 through 19). In the incorporated comments, Requester states that (1) Yee’s four-view images are composite images under the broadest reasonable interpretation standard; (2) Yee does not use “composites” to refer to “side-by-side views” but rather composites of any of a “street view” or “curbside view” for example; and (3) the recited “composite image” does not require a single, new view. See 3PR Nov. 2013 Comments 17–19 (citing Yee 389); see also 3PR Resp. Br. 8–9. Patent Owner disputes how for the recited “composite image” is construed. PO Appeal Br. 17–21; PO Reb. Br. 7–10. Patent Owner argues that: The composite image depicts a single new view of the objects in the geographical area. The single new view is different from any of the views depicted in any one of the image frames from which the composite image is created, e.g., it can be a wider view. Moreover, the new view is from a single location as if the viewer was at that location. PO Appeal Br. 17; see also id. at 19; PO Reb. Br. 7–8. Patent Owner cites to Figure 2 of the ’316 patent and composite image 40 to support its position. PO Appeal Br. 17–18. Patent Owner also contends that “[n]othing in the ’316 patent suggests that two or more . . . images depicting separate and distinct views of different objects is a ‘composite image’ as used in the ’316 patent simply because they are displayed simultaneously on a screen.” Id. at 21. When considering the disclosure, the ’316 patent discusses creating “composite images” by synthesizing images, image data, or image frames but does not address how the images are synthesized or combined. See the ’316 patent, code (57), 2:20–22, 2:33–35, 3:46–49, 5:45–47. This disclosure Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 16 also states image data from each selected image frame 42 is extracted and combined to form the composite image. Id. at 5:66–6:1. Although the ’316 patent provides a preference as to how to create a composite image (see id. at 6:1–6), we decline to import this particular preference into the recitation “composite image,” which fails to recite the image is created “on a column- by-column basis” (id. at 6:4) or any of the other features of this preferred image creation process (see id. at 6:1–15). Also, the plain and ordinary meaning of “composite” includes “something that is made up of different parts.”11 A single image consisting of data from four reduced image frames is something made from different parts (e.g., a composite). An ordinary meaning of (1) “synthesize”12 includes “to make (something) by combining different things” or “to combine (things) in order to make something new,” and (2) “combine,”13 includes “to unite into a single number or expression.” Thus, the phrase “composite image,” consistent with the disclosure and its ordinary meaning, should be construed to mean a single image created by combining different image data or by uniting image data. The Federal Circuit agreed with this claim construction in Vederi, determining the term “composite image,” similar to that found in claims 13, 11 Composite (noun), Merriam-Webster’s Online Dictionary, available at http://www.merriam-webster.com/dictionary/composite. 12 Synthesize, Merriam-Webster’s Online Dictionary, available at http://www.merriam-webster.com/dictionary/synthesize. 13 Combine, Merriam-Webster’s Online Dictionary, available at http://www.merriam-webster.com/dictionary/combine (def. 1c). Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 17 18, and 23 of the ’316 patent, can reasonably be construed to include “a single image created by combining different image data or by uniting image data.” Vederi, 813 F. App’x at 503 (citing the ’025 patent, 5:66–6:1). The court also stated “[w]e are not persuaded by Vederi’s argument” that limits the claimed “‘composite image’ to ‘a new image . . . that depicts a single new view (from a single location) of the objects in the geographical area that is different from any of the views depicted in any one of the image frames from which the composite image is created.’” Vederi, 813 F. App’x at 503 (quoting both the ’025 patent, 5:66–6:1 and Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336, 1343 (Fed. Cir. 2020)). Accordingly, the recited “a composite image” in claims 13, 18, and 23 does not require the composite image to be an image having a single view from one location, a new view, a different view, or a wider field of view than any acquired image frame as argued by Patent Owner. Stated differently, “although the specification often describes very specific embodiments of the invention, [the Federal Circuit] ha[s] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323 (citing Nazomi Commc’ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906–08 (Fed. Cir. 2004)). We thus will not confine our understanding of the phrase, “composite image” found in claims 13, 18, and 23, to the exact representations in the Specification. Patent Owner also discusses the ’316 patent’s Figure 2 as a composite image having “pixel values that are computed from pixel values of each of the image frames from which the composite image is created.” PO Appeal Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 18 Br. 18. Patent Owner further refers to the district court proceeding, Vederi, LLC v. Google Inc., Case No. 2:10-CV-07747 (C.D. Cal.). Id. at 17 n.1. According to Patent Owner, Patent Owner and Requester in that proceeding agreed that a “a composite image created by processing pixel data of a plurality of the image frames” means “an image formed by combining two or more image frames at the pixel level.” Id.; see id. at 18–19 (discussing the ’316 patent, Fig. 2 computes its pixel values “from pixel values of each of the image frames”). The court in Vederi found the phrase “by processing pixel data of a plurality of the image frames,” similar to that found in claims 13, 18, and 23 of the ’316 patent, specifies “the image may be achieved by combining or uniting image data, meaning at the level of pixel data.” Vederi, 813 F. App’x at 503 (citing the ’025 patent, 19:6–14). But, this recitation does not recite how the pixel data of the images frames are processed, such that pixel values of the composite image are computed from pixel values of two or more image frames. We stress that the ’316 patent states a preference for the composite image to be created by extracting image data from each image frame on a column-by-column basis. See the ’316 patent, code (57), 6:1–15, Fig. 2. But, applying the ordinary meaning of “processing,” claim 13 requires no more than “combining or uniting image data, meaning at the level of pixel data.” Vederi, 813 F. App’x at 503. Accordingly, the limitation of “a composite image created by processing pixel data of a plurality of the image frames” in claim 13, and similarly recited in claims 18 and 23, means a single image that may be Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 19 created by combing or uniting image data from a plurality of image frames at the level of pixel data. 3. Arbitrary Address Limitation of Claim 20 Claim 20 depends from claim 1 and further recites “the first location specified by the first user input is an arbitrary address entered via the first user input, the entered arbitrary address specifying information selected from a group consisting of street name, city, state, and zip code” (“the Arbitrary Address Limitation”). The ’316 patent 16:62–66. The Examiner determines that an “arbitrary address” does not require a database having images of both assigned and unassigned addresses, but “means arbitrary to someone’s perspective and that perspective may broadly and reasonably belong to a user.” RAN 30. Requester further asserts that an “arbitrary address” includes “an address selected from a group of addresses.” 3PR Resp. Br. 9 (citing ACP 24); see also 3PR Reb. Br. 2–3. Patent Owner, on the other hand, argues that the recited “arbitrary address” means “any potential addresses (assigned and unassigned) in the geographic area, not preselected or constrained by the system.” PO Appeal Br. 21. Patent Owner argues that the ordinary meaning and the ’316 patent’s disclosure support this understanding. Id. at 22–23 (citing the ’316 patent 2:45–49, 6:37–47, 7:15–20, 13:21–14:14). We disagree with Patent Owner. First, cited column 7 of the ’316 patent does not discuss arbitrary addresses but rather “an arbitrary value” for a time phase. The ’316 patent 7:15–20, cited at PO Appeal Br. 22. When discussing entering and specifying an address, the Specification of the ’316 patent does not mention that the address is arbitrary or unassigned by the system (see the ’316 patent Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 20 11:45–46) as Patent Owner contends. See PO Resp. Br. 6–7. Rather, the ’316 patent discusses entering “an address of the location”— not some random address—and returning a map corresponding to the address. The ’316 patent 11:45–46, 12:20–22, 12:32–35, 13:23, 13:28–29. Column 2, lines 45 through 49 cited by Patent Owner also does not describe selecting a potential address without one-to-one correspondence as argued. See PO Appeal Br. 22 (citing the ’316 patent 2:45–49). Cited portions (column 13, line 21 through column 14, line 14) by Patent Owner similarly do not describe a user entering an address “regardless of whether that address actually exists.” See id. at 23 (citing the ’316 patent 13:21–14:14). Furthermore, the cited passage in column 6 by Patent Owner does not address the recited “arbitrary address,” but rather discusses segmenting a trajectory taken by a recording camera and generating images depicting portions of the segment. See id. (citing the ’316 patent 6:37–47). Second, one ordinary meaning of “arbitrary”14 includes those based on the user’s preference or convenience. Thus, an ordinary understanding of “arbitrary address” includes an address selected by users based on their preferences or convenience. Also, although Patent Owner provides an alternative ordinary meaning of “arbitrary something” to “refer[] to any member of a set of potential or possible ‘somethings’” (PO Appeal Br. 22), Patent Owner provides no supporting evidence of this understanding, 14Arbitrary, Merriam-Webster Online Dictionary, available at https://www.merriam-webster.com/dictionary/arbitrary (def. 1b) (defining “arbitrary” as “based on or determined by individual preference or convenience rather than by necessity or the intrinsic nature of something”). Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 21 amounting to no more than attorney argument. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Likewise, Patent Owner asserts that the district court construed the term “arbitrary” to mean “assigned and unassigned addresses” without supporting evidence. See PO Appeal Br. 21–22. Moreover, claim 20 does not recite showing an image of the location along a street where the address would be located “[i]f the selected address does not correspond to an address assigned to an actual building” as argued. Id. at 22. Based on the record, we agree that the recited “arbitrary address” in claim 20 does not “exclude pre-selected or assigned addresses” (3PR Reb. Br. 3) and can include “one from the group of tagged images” (RAN 30). We disagree that the phrase “arbitrary address” in claim 20 must be any potential addresses (assigned and unassigned) in the geographic area, which is not constrained by the system as Patent Owner argues. See PO Appeal Br. 22–23. Accordingly, we determine “an arbitrary address entered via the first user input,” as claim 20 recites, can be various addresses, including an assigned address and an address selected from a group associated with tagged images. B. Pending Rejections Claim 13 is rejected under 35 U.S.C. § 102(a) based on (1) Dykes, (2) Al-Kodmany, and (3) Bates. RAN 6–12. Claims 13 and 18–24 are rejected under 35 U.S.C. § 103(a) based on: (4) Yee and Dykes, (5) Murphy and Yee, and (6) Shiffer and Yee. RAN 12–19. These rejection were presented on the claims as amended and prior to the ’316 patent’s expiry. We reverse the Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 22 rejections given the particular circumstances of this proceeding, which include that the dependencies of the claims have changed since the ’316 patent’s expiry, the Federal Circuit provided intervening claim construction for claim terms in the ’025 patent, and the claims are now construed under Phillips as opposed to the broadest reasonable construction. Compare Phillips, 415 F.3d at 1312–13, with Personalized Media Commc’ns, 952 F.3d at 1340. C. New Ground of Rejection Pursuant to 37 C.F.R. § 41.77(b), we present a new ground of rejection for claims 13 and 18–24 under 35 U.S.C. § 103(a) based on Yee, Lachinski, and Dykes. We note that Patent Owner argues that the citation to Lachinski by Requester is improper and should be excluded from consideration because Lachinski was “introduced . . . for what Lachinski discloses in itself; it is not explaining another reference.” PO Appeal Br. 30; see also id. at 30–31; PO Reb. Br. 10–11. Requester contends that its reliance on and discussion of Lachinski is proper under 37 C.F.R. § 1.948(a)(2). See 3PR Resp. Br. 21–22 (contending Lachinski was cited to explain Yee’s teachings, including its mobile mapping system) (citing May 22, 2013 3PR Comments 27); see also RAN 20. But, the propriety of whether a reference was properly submitted under § 1.948 is a petitionable matter. Because this issue is not appealable, the Board lacks jurisdiction to decide this issue. See MPEP §§ 1002 and 1201; see also In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating that there are many kinds of decisions made by examiners, “which have not been and are not now appealable to the board or to this court when they are Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 23 not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner”). Nonetheless, we underscore here that “should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim.” 37 C.F.R. § 41.77(b). 1. All Claims (Claims 13 and 18–24) Because claims 13 and 18–24 ultimately depend from canceled claim 1, and thus, each of these claims includes the limitations found in canceled claim 1, we adopt the findings and conclusions related to claim 1 in the Request and by the Examiner for claims 13 and 18–24. See Request 98– 107 (citing Yee 389–92; Dykes 136–37, 139–41, 144, Fig. 4; Ex. CC-D; Ex. OTH-B 59:18–19, 104:16–20; Ex. OTH-D 17:7–9), Ex. CC-D 1–8 (citing Yee 389–92; Dykes 136–37, 139–41, 144, Fig. 4; Ex. OTH-B 59:18–19, 104:16–20; Ex. OTH-D 17:7–9); see also RAN 12–15 (citing Yee 389, 391– 92, Fig. 1; Dykes 139–40) (incorporating and adopting Request 98–128 and Exhibit CC-D). Patent Owner does not dispute that Yee discloses the recitation the Image Frames Limitation found in canceled claim 1. See PO Appeal Br. 31– 34; see also 3PR Resp. Br. 2 (referring to the “Image Frames Limitation”). We emphasize for completeness, that Yee discloses image frames captured while an image recording device moves along a trajectory. Yee 389–91 (discussing a van collecting street and object data while the van moves down Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 24 the road); see also 3PR Resp. Br. 13 (citing Yee 388–89) (stating Yee’s GeoVan records as the van “is driven on streets”). 2. Claims 13, 18, and 23 – a Composite Image Claim 13 depends from claim 1 and adds “the first image is a composite image created by processing pixel data of a plurality of the image frames” (the ’316 patent 16:37–39), which we have construed to mean a single image that may be created by combining or uniting image data from a plurality of image frames at the level of pixel data. Claims 18 and 23 recite similar recitations. The ’316 patent 16:56–58, 17:14–16. Along with the above discussion adopting the noted findings and conclusions related canceled claim 1, we further adopt the findings and conclusions presented by Requester when addressing claims 13, 18, and 23. Request 112–13 (citing Yee 389; Ex. CC-D), 117–19 (citing Yee 389; Dykes 134–35, Fig. 2), 126– 27 (citing Yee 389); see also Ex. CC-D 12 (citing Yee 389), 16–17 (citing Yee 389; Dykes 134–35, Fig. 2), 24 (citing Yee 389); 3PR Resp. Br. 11–12 (addressing the “composite image” limitation) (citing Dykes 140, 146), 13– 15 (further citing Yee 388–89, 391–92; Lachinski 5:25–40, 10:37–11:34; ACP 12–13, 23–24; Request 98–99). Patent Owner argues that the Examiner has relied upon Yee to define the term “composites” and change the meaning of this term. PO Appeal Br. 19–20; PO Reb. Br. 8–9. Specifically, Patent Owner contends that Yee uses the term “composite” improperly to include side-by-side views and 4- views. PO Appeal Br. 20 n.2 (citing a GeoSpan brochure15); see also id. at 15 Patent Owner refers to “the Geospan Brochure” as Exhibit C filed January 2, 2013. However, our records indicate Exhibit C was filed January 8, 2013 Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 25 20–21. Patent Owner asserts that the ’316 patent requires the composite image be a single view and not “two or more separate and independent images depicting separate and distinct views of different objects.” Id. at 21; see also id. at 32; PO Reb. Br. 13–14. We find these arguments unavailing. As discussed above in Section (III)(A)(2), the court in Vederi agreed with our construction of the phrase “composite image” to mean a single image created by combining different image data or by uniting image data. See Vederi, 813 F. App’x at 503. This construction does not require a single, new view as argued (PO Appeal Br. 17). See 3PR Resp. Br. 14. Moreover, as for the remaining phrase that the “image [is] created by processing pixel data of a plurality of the image frames,” we determined that the recitation does not recite how the pixel data of the images frames are processed, such that pixel values of the composite image are computed from pixel values of two or more image frames. Rather, claim 13 requires only combining or uniting image data from a plurality of image frames at the level of pixel data to create the recited “composite image.” Based on this understanding, Yee teaches or suggests the recited “composite image” limitation in claims 13, 18, and 23. Yee addresses collected data made available with its product. Yee 389. The data includes provided various views, including “curbside view, front and back,” “street view, front and back,” “real estate view left and right,” “real estate and addresss [sic] zoom, 4-view,” and “composites of them.” Id. Yee explicitly as part of an Amendment submitted by Patent Owner and is entitled “Drive around town on your PC with GEOVISTA – Visual Geographic Information” (“GeoSpan brochure”). Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 26 discloses “composites” (id.); and “them” refers back to the other discussed views, including a curbside view, a street view, and a real estate view. Thus, Yee teaches creating “composites” of these various views. For example, a composite in Yee may combine or unite image data from (1) the curbside view and the street view or (2) two different street views to produce the disclosed “composite[] of them.” Id.; see also RAN 30 (discussing synthesizing a curbside view with a front and back view). Additionally, an ordinarily skilled artisan would have recognized Yee’s disclosed “composites” (see Yee 389) would have involved combining or uniting the noted views at the level of pixel data in some manner so as to form the composites available to the user in Yee. Patent Owner argues that Yee’s “composite” would be a side-by-side view or “a 4-view display” (PO Appeal Br. 20 n.2 (citing January 8, 2013 Reply, Ex. C16)) and not “a single view of objects . . . where the composite image is synthesized from multiple images” (id. at 21). See also id. at 20– 21; PO Reb. Br. 13–14. We are not persuaded because the language “composite of them” in Yee is separate from the “4-view.” Yee 389 (discussing a “real estate and address[] zoom, 4-view” separate from “composites of them”). As for the “4-view” example in Yee, Yee does not provide details concerning how the view is formed. Id. Even so, Patent Owner presumes the example from “the GeoSpan Brochure” is the only “4-view” that Yee envisions and argues this is not “a ‘composite image created by processing 16 This exhibit, referred to as “the GeoSpan Brochure” (id. at 20 n.2), was not included with Patent Owner’s Appeal Brief. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 27 pixel data of a plurality of image frames.’” PO Appeal Br. 20–21, 32. Patent Owner further relies on an example in Lachinski17 when arguing that Yee’s “4-view” is not a composite image as recited. Id. at 32. We are not persuaded. The view in the described GeoSpan Brochure is just one image example of data acquired by GeoSpan Corporation discussed in Yee. See, e.g., Yee 389 (describing that data collected). As noted above, Yee separately teaches the collected data includes composites of different views, which refer back to the various described views (e.g., curbside, street, and real estate views) (Yee 389), which at least suggest to an ordinarily skilled artisan that each of Yee’s “composites of them” is a single image that may be created by combining or uniting image data from a plurality of image frames (e.g., street and curbside views) at the level of pixel data, as we construed the phrase “composite image” in Section (III)(A)(2). Nonetheless, some similarities exist between what is shown in Patent Owner’s example of Yee’s 4-view (PO Appeal Br. 20) and what Yee and Lachinski disclose. Yee discusses “images can be displayed as rolling video of four views in a frame.” Yee 392. Lachinski further states: The four-view generator 62 has four inputs 82, allowing signals from four of the video cameras 50 to be input simultaneously. The generator 62 reduces the image represented by each signal to one-fourth of its original size and then combines the reduced images to form a single video image by placing each of the reduced images into one of the four corners of an output image. 17 Notably, Patent Owner disputes whether Lachinski should be considered. Id. at 30–31. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 28 Lachinski 5:25–31 (emphasis added), cited in 3PR Resp. Br. 13; Fig. 3. This supports that the “4-view” discussed in Yee (Yee 389) is produced as a single image that combines four reduced images, one in each of four corners that is reduced in size. Lachinski 5:25–31; Fig. 3. As such, combining Lachinski’s teaching with Yee, Yee’s 4-view image yields a single image that combines image data from a plurality of image frames (e.g., four reduced images). Moreover, Yee teaches that data from the four images, which include their pixel data, are used to create the reduced-sized images. Each of the “four views in a frame” discussed in Yee (Yee 392) or the “single video image” with four-views, each one-fourth of its original size that form “reduced images,” as further explained in Lachinski (Lachinski 5:25–31), is a single image that is made up of different parts or image frames (e.g., image data from multiple views) and combines pixel image data from each of the different view image frames collectively to create the taught single 4-view image. Yee, as evidenced by Lachinski, teaches yet another example of “a composite image” as claims 13, 18, and 23 recite and as we construed this phrase in Section (III)(A)(2). Patent Owner further argues that Yee’s composite “teaches away from creating composite images with its process.” PO Appeal Br. 32–33. This argument contrasts with Yee’s explicit disclosure of a process that creates “composites” from collected data. Yee 389. Also, Patent Owner contends that Yee, including its GeoSpan system, would involve “manually review[ing] the raw image frames,” “select[ing] the most appropriate image,” and “add[ing] the step of creating composite images,” which would Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 29 amount to “multipl[ying] the manual labor costs, greatly slow[ing] the process, and add[ing] another level of complexity.” PO Appeal Br. 33; see also id. at 32–3418; PO Reb. Br. 14–15. There is insufficient evidence in the record for these assertions. In any event, the limitation “a composite image created by processing pixel data of a plurality of the image frames” in claim 13 does not exclude inputting some data manually, and many of the disputed features (e.g., slow, cost, precision, complexity) (PO Appeal Br. 32–33) are not commensurate in scope with claims 13, 18, and 23. Also, Lachinski, which addresses a GeoSpan system having similarities to Yee, discusses that a manual process is not used to generate composites. Lachinski 5:25–40 (discussing using generator 62 to form a single video image), cited in 3PR Resp. Br. 14. Patent Owner further argues that Requester did not provide a motivation to combine Yee with Dykes (PO Appeal Br. 31) and one skilled in the art would not have combined Dykes with Yee to arrive at claim 13’s invention (id. at 32, 34). See also PO Reb. Br. 14. Patent Owner asserts Dykes concerns 360 degree panoramas and thus does not teach “the desirability of acquiring image frames for creating composite images ‘by an image recording device moving along a trajectory.’” PO Appeal Br. 32. Patent Owner contends that Dykes does not cure the deficiencies of Yee and “there is no rational reason why a person of skill in the art would have 18 Patent Owner footnotes a reference entitled “GEN-2 City Tour BBC & CNBC 1995, January 1, 2004” and states the reference was submitted January 7, 2013. We are not able to locate this reference but did locate a reference entitled “City Tour – User Guide and Tutorial,” submitted January 8, 2013, copyrighted 1996 by GEOSPAN Corporation. However, this evidence was not part of Patent Owner’s Appeal Brief. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 30 combined Yee and Dykes to arrive at the embodiment of claim[] 13.” PO Appeal Br. 34. As for motivation, the Request explains “Yee discloses a mobile mapping system for recording images of a geographic area a visual interface system (VIS) for an end user to locate and retrieve the collected video images,” “Dykes discloses plotting symbols on a map to represent the locations where panoramic images are available,” and “Dykes’ teachings provide a spatial interface for an end user to locate and retrieve panoramic images.” Request 99. Based on these teachings, the Request explains one skilled in the art would have been “motivated to combine the teachings put forward by Yee and Dykes to provide a system and method that enables a user to navigate locations by visualizing the locations spatially as presented by symbols on a map.” Id. at 99–100; see also RAN 13–15 (citing Request 98–100; Dykes 139–40); 3PR Resp. Br. 14–15 (citing Request 98–99; Yee 391–92; Dykes 139–40; ACP 12–13, 24). We thus disagree that Requester did not provide a reason with a rational underpinning to combine Yee with Dykes. Also, contrary to Patent Owner’s assertion, Yee is not deficient in teaching “a composite image” as claims 13, 18, and 23 recite. Nonetheless, presuming, without agreeing, that Yee and Lachinski do not teach the recited “composite image,” Dykes teaches another known technique for creating “composites” by combining and uniting images (e.g., stitching) to produce a panoramic image. Dykes 132–36, Fig. 2. When substituting one known element for another known in the art (e.g., Yee’s composite technique for Dykes’ panoramic technique of forming a composite), “the combination Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 31 must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Additionally, Dykes teaches panoramic imagery (1) can assist “with educational aims,” including making more sense of maps when looking at panoramic landscape views, or with the urban planning (Dykes 134 (quoting Shiffer 365)), (2) can evoke a visual experience in an engaging virtual environment (id. at 136), (3) provides an ability to navigator across the virtual space and between recognized features (id. at 139), and (4) permits panning around the landscape and touring across its virtual environment configuration (id. at 140). Also, as noted above, both the Examiner and Requester have provided reasons with some rational underpinning to combine Dykes with Yee to arrive at claim 13’s invention, including creating an environment in Yee’s system that is easy to set up due to minimal data and metadata used. See also RAN 13–15 (citing Request 98–100; Dykes 139–40); 3PR Resp. Br. 14–15 (citing Request 98–99; Yee 391–92; Dykes 139–40). Accordingly, Yee, Lachinski, and Dykes teach or suggest the “composite image” limitations in claim 13, 18, and 23. 3. Claims 18 and 19 Claims 18 and 19 ultimately depend from canceled claim 1 and add “The method of claim 17, wherein the first image is a composite image created by processing pixel data of a plurality of the synchronized image frames” and “The method of claim 18, wherein the composite image depicts a wider field of view than is depicted in any one of the plurality of the synchronized image frames” respectively. Along with the above discussion adopting the noted findings and conclusions related to canceled claim 1, we Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 32 further adopt the findings and conclusions in the Request when addressing claims 18 and 19. Request 117–21 (citing Yee 389; Dykes 134–35, Fig. 2; Ex. CC-D); see also Ex. CC-D 16–19 (citing Yee 389; Dykes 134–35, Fig. 2). Additionally, Yee discusses Global Positioning System (GPS) and Geographic Information Systems working with video technology (Yee 388), its system is capable of obtaining accurate GPS positioning (id. at 390), and collecting and synchronizing images (id. at 391). Additionally, Dykes’s Figure 2 and its stitching technique suggest that the acquired image frames (e.g., the nine frames in the upper-left side) are synchronized with some type of position information in order to create the continuous panorama that is properly aligned as shown in Figure 2. See Dykes 135, 137, Fig. 2. Combining Yee’s GPS positioning/synchronizing image approach with Dykes’s technique to unite (e.g., synchronized) images based on position would have assisted in and improved upon producing the continuous image (e.g., a panorama) in Dykes by using Yee’s positioning data. See KSR, 550 U.S. at 417. Other than the arguments discussed above related to “a composite image” found in claim 18, Patent Owner does not separately argue Requester’s findings and conclusion related to claims 18 and 19. Accordingly, we determine Yee, Lachinski, and Dykes teach and suggest the recitations in claims 18 and 19. 4. Claim 20 – The Arbitrary Address Limitation Claim 20 depends from claim 1 and adds “wherein the first location specified by the first user input is an arbitrary address entered via the first Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 33 user input, the entered arbitrary address specifying information selected from a group consisting of street name, city, state, and zip code.” The ’316 patent 16:62–66. For this claim, we further adopt the findings and conclusions presented by Requester when addressing claim 20. Request 121–22 (citing Yee 391–92; Ex. CC-D); see also Ex. CC-D 19–20 (citing Yee 391–92); 3PR Resp. Br. 15–16 (citing Yee 391–92; Lachinski 13:10– 24; 14:49–58, 16:64–66, 17:14–20; ACP 24); 3PR Appeal Br. 10–11 (citing Yee 391–92, Abstract; Lachinski 16:64–66, 17:19–20; ACP 24); 3PR Reb. Br. 3–4 (citing Yee 391–92; Lachinski 16:64–66, 17:19–20). Based on Patent Owner’s argued claim construction of “arbitrary address” addressed in Section (III)(A)(3), Patent Owner argues Yee fails to disclose the recitations of claim 20. PO Appeal Br. 34–36. Specifically, Patent Owner argues that “Yee teaches only the retrieval of pre-selected addresses” or “those that have already been assigned and which have been correlated with a specific image.” Id. at 35; see also id. at 34–35 (citing Yee 392); PO Reb. Br. 15; PO Resp. Br. 6. Patent Owner further argues that the GeoSpan system described in Yee involves a user selected from a list of assigned (not unassigned) addresses tagged to an image. PO Appeal Br. 35; see also PO Resp. Br. 6–7. Patent Owner also argues that the Yee/Lachinski’s address parsing differs from the recited “arbitrary address” in claim 20 because the address parsing only involves a user-supplied address converted to a standard address by matching the address to a real address and cannot return a location corresponding to an unassigned address. Id. at 35–36 (citing Lachinski 16:33–17:50; ACP 21); see also PO Reb. Br. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 34 15 (citing Lachinski 17:19–20) (discussing a “coordinate pair”); PO Resp. Br. 7 (citing Lachinski 16:33–17:50). We are not persuaded. As explained above in Section (III)(A)(3), we disagree that the recited “arbitrary address” must exclude assigned addresses and include only unassigned addresses. See 3PR Reb. Br. 3 (noting “there is no support for limiting ‘arbitrary’ to exclude pre-selected or assigned addresses”). Unlike Patent Owner’s assertions (see PO Resp. Br. 6–8), the ’316 patent does not discuss that the address is arbitrary or unassigned when discussing entering an address or location into the system. For example, the ’316 patent describes a user can input a particular address (e.g., location or geographic coordinates), and this address is not described as an unassigned address in the system. See the ’316 patent 11:45–46, 12:20–26, 12:32–35, 13:21–24, 13:27–29. Additionally, claim 20 does not recite an image database or the retrieval of an arbitrary address; thus, Yee need not disclose “the retrieval of an arbitrary address” as argued. PO Appeal Br. 35. However, canceled claim 1, from which claim 20 ultimately depends, does recite “retrieving from the image source a first image associated with the first location” that “a first user input specif[ies].” The ’316 patent 15:45, 16:47–48. As previously discussed, Yee teaches this feature. See Request 102 (citing Yee 391–92; Ex. CC-D) (addressing Yee’s Visual Interface System that retrieves images and a user can enter a street address and retrieve images related to the address); see also Ex. CC-D 2–3 (citing Yee 391–92). We thus determine that Patent Owner’s contentions concerning the Yee system and Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 35 related documents fail to demonstrate that a user of the Yee system cannot enter an “arbitrary address” as claim 20 recites. As for teaching the “arbitrary address” limitation, Yee discusses a “[s]treet address entry” (Yee 392), street name recording, and individually tagging addresses. See Yee 391–92. Yee also states that “[a] user can point at a road segment or specific location on a computerized map and instantly display the video image(s) for that selected segment.” Id.; see also 3PR Reb. Br. 3 (citing Yee 391–92). Using the ordinary understanding of “arbitrary” discussed in Section (III)(A)(3), Yee’s entered address is an arbitrary address because the address is based on the user’s preference and convenience to enter a street address. See Yee 391–92. Additionally, Yee’s teachings, whether the user enters the address or points to a specific location on the map, do not specify the entered address is assigned. See id. Patent Owner further argues Lachinski and Dykes do not cure the purported deficiency of Yee. PO Appeal Br. 35–36. This argument is unavailing. As explained above, Yee does not have the alleged deficiency, and Dykes was not relied upon to teach the “arbitrary address” feature. Request 121–22; Ex. CC-D 19–20. However, to the extent that Requester relies on Lachinski to demonstrate claim 20’s “arbitrary address” limitation (see 3PR Resp. Br. 15–16; see 3PR Reb. Br. 3–4), we agree that Lachinski further teaches a process for permitting entry of both assigned (and unassigned addresses) and thus, provides another example of “the first user input is an arbitrary address entered via the first user input” as claim 20 recites. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 36 Specifically, Lachinski teaches a user can supply an address, and this address is converted into a standard address within its database for matching “to a real address range in the database.” Lachinski 16:66; id. at 16:63–66. Lachinski further teaches to recall an image for “any coordinate pair” the “process allows the retrieval of the nearest video image to a coordinate pair.” Id. at 17:19–20; id. at 17:15–21. When including this teaching with Yee, the Yee/Lachinski system permits a user to enter an address near or close to an address in the system (e.g., “an arbitrary address entered via the first user input”) and still retrieve an image associated with the location as canceled claims 1 and dependent claim 20 collectively recite. We thus disagree with Patent Owner that Yee/Lachinski’s address parsing process fails to teach or at least suggest the recited “arbitrary address” in claim 20. Accordingly, Yee, Lachinski, and Dykes teach or suggest claim 20 “arbitrary address” limitations. 5. Claims 21–24 Claim 21 depends from claim 20 and adds: segmenting the trajectory on which the image recording devices move, into a plurality of segments; correlating the plurality of segments to a plurality of street segments in a geographic information database; identifying one of the plurality of street segments based on the arbitrary address; retrieving the first image based on the identified one of the plurality of street segments; and outputting the first image onto an image display device. The ’316 patent 16:67–17:9; Certificate of Correction 1. For claim 21, we further adopt the findings and conclusions presented by Requester and the Examiner when addressing claim 21. Request 123–25 (citing Yee 388–89, Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 37 391–92; Ex. CC-D); see also Ex. CC-D 20–22 (citing Yee 388–89, 391–92); 3PR Resp. Br. 16–18 (citing Yee 389; Lachinski 2:47–50, 3:32–37, 9:42–46, 12:52–13:2, 13:56–63, 14:46–53, 16:40–47; ACP 24–25); ACP 24–25 (citing Yee 391–392 and “Lachinski evidence”); 3PR Nov. 2013 Comments 39–42 (citing Yee, Abstract, 388–89; Lachinski 2:47–50, 3:32–37, 9:42–46, 12:52–13:2, 13:56–63, 14:46–53, 16:40–47). Patent Owner asserts that claim 21 “describes a method whereby the houses and other structures do[ not] need to be individually tagged to an image.” PO Appeal Br. 37. Yet, claim 21 does not include a limitation that excludes tagging images. Also, we are not persuaded with this argument, as previously discussed, to the extent that the assertions concern the argument addressed above for claim 20 related to the recited “arbitrary address” limitation purportedly excluding tagging. See, e.g., PO Appeal Br. 35–36. By reciting “identifying one of the plurality of street segments based on the arbitrary address,” Patent Owner also contends that claim 21’s process associates first and second locations with a street segment and not a specific image. Id. at 37. Patent Owner contends Yee is deficient, and Lachinski does not disclose this step. Id. We disagree Yee is deficient and refer to the Examiner’s and Requester’s explanations. RAN 15 (incorporating and adopting the rejection in Request 123–25 (citing Yee 388–89, 391–92)); see also 3PR Resp. Br. 16–18 (citing Yee 389; Lachinski 2:47–50, 3:32–37, 9:42–46, 12:52–13:2, 13:56–63, 14:46–53, 16:40–47; ACP 24–25); ACP 24–25 (citing Yee 391–92). Yee explicitly discusses a user can point to a road segment or specific location on a map and image(s) are displayed for that selected segment. Yee 391–92. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 38 Patent Owner also argues that Yee, even when supplemented by Lachinski, does not disclose “the three step retrieval process of claim 21.” PO Appeal Br. 37. We find this argument unavailing given that claim 21 recites five steps and only one recited “retrieving.” We are not clear as to what portion of claim 21 is the described “three step retrieval process.” Other than the previously discussed argument concerning the “identifying” step and Lachinski, Patent Owner does not articulate clearly any step in claim 21 that the cited art fails to teach. See id. at 36–37. In any event, we emphasized that Yee discloses images and locations are processed by GeoVan software and loaded into its Geographic Information System (GIS) systems because GeoSpan uses TIGER (Topological Integrated Geographic and Referencing) file format to record its data (e.g., images). Yee 390 (addressing using a GPS receiver for “image reference location”), 391 (addressing TIGER file format). Lachinski further explains the TIGER file format, indicating this 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 and updating street segments related to a location and position and (2) creating indirect relationships between the segments and images for a variety of GIS applications. Lachinski 1:15–23, 2:16–20, 2:47– 50, 3:32–37, 9:36–45, 11:55–12:62, 13:56–63, 14:41–58, 16:33–17:38, Figs. 9–10. Yee also teaches a user can point at a road segment or specific location on a map and then display an image for that segment. Yee 391–92. Lachinski discusses its street segment database can store large amounts of Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 39 image sets that can be manipulated and managed using an indexing method. Lachinski 13:51–55. Lachinski also describes a segment position “can be expressed as an absolute position in terms of video images” (id. at 14:46– 49), making it “possible to determine the closest video image to any given segment position” (id. at 14:50–51). One skilled in the art would have recognized that including Lachinski’s process in the Yee’s system would have improved coordinate accuracy with its system, and would have permitted a large amount of images, which are associated with street segments related to locations and positions, to be stored and managed. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, as evidenced by Lachinski above and when combined with the Yee/Dykes system, the resulting TIGER file format would have yielded a process of “segmenting the trajectory on which the image recording devices move, into a plurality of segments,” “correlating the plurality of segments to a plurality of street segments in a geographic information database,” “identifying one of the plurality of street segments based on the arbitrary address,” “retrieving the first image based on the identified one of the plurality of street segments,” and “outputting the first image onto an image display device,” as claim 21 recites. Accordingly, Yee, Lachinski, and Dykes teach or suggest claim 21 limitations. As for claims 22–24, we further adopt the findings and conclusions in the Request when addressing claims 22–24. Request 125–28 (citing Yee 389, 391–92; Ex. CC-D); see also Ex. CC-D 23–24 (citing Yee 389, 391– 92). Other than the arguments discussed above related to claims 20 and 21, Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 40 for which claims 21–24 ultimately depend, Patent Owner does not separately argue Requester’s findings and conclusion related to claims 22–24. Accordingly, we determine Yee, Lachinski, and Dykes teach and suggest the recitations in claims 22–24. In sum, we newly reject claims 13 and 18–24 under 35 U.S.C. § 103(a) based on Yee, Lachinski, and Dykes. D. Requester’s Cross Appeal Requester appeals the Examiner’s decision not to adopt a proposed rejection19 of a now improper claim (i.e., claim 42) based on Yee and Dykes. 3PR Appeal Br. 4; see also RAN 4. Because the appealed claim is presently improper, Requester’s cross-appeal has been rendered moot. IV. CONCLUSION We have reviewed the entire record, including submissions by Patent Owner and Requester, and the decision in Vederi. Concerning the claims rejected by the Examiner or newly proposed grounds, we determine: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 13 102(a) Dykes 13 13 102(a) Al-Kodmany 13 13 102(a) Bates 13 13, 18– 24 103(a) Yee, Dykes 13, 18– 24, 19 This rejection was proposed by Requester in comments after ACP on November 25, 2013. 3PR Nov. 2013 Comments 49. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 41 13, 18– 24 103(a) Murphy, Yee 13, 18– 24, 13, 18– 24 103(a) Shiffer, Yee 13, 18–24 13, 18– 24 103(a) Yee, Lachinski, Dykes 13, 18– 24 Overall Outcome 13, 18–24 13, 18– 24 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 that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.77(b) also provides that Patent Owner, within one month from 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. (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. Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 42 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). 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 Appeal 2018-007271 Control 95/000,683 Patent 7,577,316 B2 43 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 REQUESTERS: O’MELVENY & MYERS LLP IP&T CALENDAR DEPT LA-1005D 400 SOUTH HOPE STREET, 18TH FLOOR LOS ANGELES, CA 90071-2899 Copy with citationCopy as parenthetical citation