Ex Parte 6199014 et al

Patent Trials and Appeals Board

Nov 28, 2014

95002031 - (D) (P.T.A.B. Nov. 28, 2014)

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.
95/002,031 06/26/2012 6199014 5186-WDIG-RI031 6192
27571 7590 11/28/2014
Ascenda Law Group, PC
84 W. Santa Clara St.
Suite 550
San Jose, CA 95113
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/28/2014 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.

INVENTOR HOLDINGS, LLC
Patent Owner and Appellant
________________

Appeal 2014-007365
Reexamination Control 95/002,031
Patent 6,199,014 B1
Technology Center 3900
________________

Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This proceeding arose from a request by Google, Inc. for an inter
partes reexamination of U.S. Patent 6,199,014, titled “System for Providing
Driving Directions with Visual Cues” (the ’014 patent). Patent Owner
appeals the Examiner’s decision to reject claims 1-6. PO App. Br. 1. Oral
arguments were heard on October 29, 2014.
The ’014 patent is involved in litigation. The case is captioned
Walker Digital LLC v. Google Inc. et al., Case No. 1:11cv309-UNA. PO
App. Br. 1.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm.

BACKGROUND
The ’014 patent describes “providing navigational instructions
including representations of photographs of geographical locations along the
route to be traveled.” Abstract. Claim 1, which is reproduced below, is
illustrative:
1. A system adapted to provide navigational instructions, the
system comprising:
a communication port adapted to:
receive signals representing location information including a
starting point and a destination point; and
transmit the navigational instructions;
a storage device having stored therein geographical information,
photographic information, route processing instructions and
photograph matching instructions, wherein:
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the photographic information includes representations of
photographs of actual geographic locations and photograph
orientation information;
for each representation of a photograph, the photographic
information includes coordinates of a location shown in the
representation of the photograph and a direction of view of the
representation of the photograph; and
the photograph matching instructions include instructions
adapted to match coordinates of a representation of a particular
photograph with a corresponding geographic location; and
a processor connected to the storage device and adapted to:
communicate with the storage device;
process the location information and the geographical
information in accordance with the route processing instructions to
obtain a route for travel to the destination point;
match geographic locations along the route with the
coordinates of representations of photographs thereof in accordance
with the photograph matching instructions; and
orient the representations of photographs based on the route
for travel, thereby determining the navigational instructions for
traveling the route including oriented representations of photographs,
wherein said processor outputs the navigational instructions using
said communication port, thereby providing a user with directions for
traveling the route and an oriented sequence of photographic
representations of the geographic locations along the route.

REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
i. US 5,559,707; issued Sept. 24, 1996 (“DeLorme ’707”).
ii. US 5,802,492; issued Sept. 1, 1998 (“DeLorme ’492”).
iii. US 6,195,122; issued Feb. 27, 2001 (“Vincent”).
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THE OBVIOUSNESS REJECTION OF CLAIMS 1, 2, 4, AND 5 BASED
ON DELORME ’707 AND VINCENT
CONTENTIONS
The Examiner finds DeLorme ’707 and Vincent combined teach all
limitations of claims 1, 2, 4, and 5. RAN 7-12; see also RAN 48-57. The
Examiner relies on DeLorme ’707’s matching actual locations along the
route with geographical coordinates for teaching claim 1’s recitation of
matching geographic locations along the route with the coordinates of
representations of photographs thereof. RAN 9 (citing DeLorme ’707, col.
3, ll. 19-31, 36- 41; col. 5, ll. 51-64; col. 42, ll. 19-25; col. 47, ll. 28-37).
The Examiner relies on Vincent’s storing a video image with data defining
the position and orientation of the camera, and the distance to the subject, for
teaching the claim 1’s recitation of orienting the representations of
photographs based on the route for travel. RAN 9 (citing Vincent, Abstract;
col. 2, ll. 20-25). The Examiner further relies on DeLorme ’707’s (Fig. 1N)
strip map for teaching the claim 1’s recitation of “wherein said processor
outputs the navigational instructions using said communication port, thereby
providing a user with directions for traveling the route and an oriented
sequence of photographic representations of the geographic locations along
the route.” RAN 8 (citing DeLorme ’707, col. 5, ll. 1-6; col. 15, ll. 42-52;
col. 17, ll. 49-61; Fig. 1N).
The Examiner reasons
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have combined the
photograph imagery with geographical coordinates, as disclosed
by DeLorme ’707, with the position and the orientation of
photographs, as disclosed by Vincent, as doing so would be
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nothing more than the combination of prior art elements (e.g.,
points of interest with photographs and coordinate locations and
images with position and orientation information; and
photograph imagery data and images with position and
orientation/view) according to known methods (e.g., modifying
a database structure) to yield predictable results (See MPEP
§ 2143(A)). Such a combination would predictably yield the
display of photographs of geographic locations or points of
interest according to position and orientation information.
RAN 9-10.
Patent Owner presents the following principal arguments:
i. “[I]t is the physical location of a [point of interest (POI)] that is
matched to a route in DeLorme ’707, not the coordinates of (or those
associated with) a representation of a photograph as required by claim 1.”
PO App. Br. 10.
ii. “While DeLorme ’707 describes a strip map that may be
oriented to reflect a direction of travel, DeLorme ’707 says nothing about
photographs, or photographic representations, of geographic locations
displayed on the strip map as being those that are determined to be oriented
along a travel route.” PO App. Br. 13. DeLorme ’707 “describes a system
that would provide only the same single view of a house or other POI (i.e., a
view ‘from the road’) regardless of whether the route of travel would pass
the POI in a northbound or southbound direction of travel.” PO Reb. Br. 2;
see DeLorme ’707, Fig. 1N (image of home at 115 Jones St. is “from the
road”).
iii.
[T]he spatial reference information of Vincent establishes the
relative position of the imaged subject to that of the camera so
that the images of the subject can be arranged relative to the
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camera. In doing so, a three-dimensional rendition of the
subject may be produced for viewing by a user whose
perspective would be (or mimic) that of the camera. Quite
simply, this is not what is claimed. Rather, claim 1 requires
representations of photographs to be oriented based on a route
for travel (vs. being organized based on a camera’s position
relative to that of a subject).
PO App. Br. 13. “There is no suggestion in Vincent that a user picks which
frames to ‘float’ in simulated three-dimensional space according to a route
of travel, much less that a processor orients a photographic representation,
based on a user’s desired route of travel, or determines a sequence of
oriented photographic representation[s].” PO Reb. Br. 4.
iv. The RAN fails to establish a sufficient basis for reaching the
conclusion of obviousness. PO App. Br. 14-16 (citing PO App. Br.
Evidence Appendix, Declaration of Scott T. Leutenegger, Ph.D.,
March 19, 2013, ¶¶ 10-17); see also PO Reb. Br. 3-4. “The singular focus of
DeLorme ’707 on [a view ‘from the road’] demonstrates an utter lack of
concern with defining the position and orientation of an image capturing
device for the purpose of rendering images in a three-dimensional system.”
PO Reb. Br. 4.
ANALYSIS
Contrary to Patent Owner’s argument (i), we agree with and adopt as
our own the Examiner’s explanation:
the claim rejections have equated actual geographic locations of
POIs (i.e., physical locations) with the claimed subject matter
“geographic locations,” and latitude/longitude geographical
coordinates of digital multimedia information (e.g., digital
photographs) in relation to said actual geographic locations of
POIs with the claimed subject matter “the coordinates of
representations of photographs thereof[.]”
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RAN 50 (citing DeLorme ’707, col. 5, ll. 51-64, col. 10, ll. 12-30).
DeLorme ’707 (col. 5, ll. 51-54) describes “[n]odes and waypoints for
routing, as well as POIs associated with multimedia information, are all
related in the GIS database to geographical coordinates corresponding to
particular locations on or adjacent to the earth’s surface.” DeLorme ’707
(col. 10, ll. 19-23) describes “the invention stores, manages and retrieves a
database of multimedia information in relation to specific places on or near
the surface of the earth, referred to herein as points of interest (POIs), or
geographical sites or locations.” DeLorme ’707 (col. 10, ll. 25-29) describes
“POI’s can be represented in both digital and print media cartography and
are situated or described by standard geographic coordinates such as latitude
and longitude.”
Thus, DeLorme ’707 teaches the recited matching of geographic
locations along the route (DeLorme ’707’s POIs) with the coordinates of
representations of photographs thereof (DeLorme ’707’s geographic
coordinates of digital multimedia information). RAN 9, 50; see also 3PR
Resp. Br. 6 (“multimedia information, including photographs, is associated
with POIs and is, therefore, also associated with geographic coordinates of
the POIs.”). Accordingly, we are not persuaded of error in the Examiner’s
findings.
Contrary to Patent Owner’s arguments (ii) and (iii), we agree with and
adopt as our own the Examiner’s explanation:
DeLorme ’707 teaches providing a user with directions for
traveling the route (i.e., providing a travel plan; See Delorme
’707, Fig. 1N, col. 5, lines 1-6, and col. 17, lines 49-61) and an
oriented sequence of photographic representations of the
geographic locations along the route (See Delorme ’707, col. 5,
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lines 1-6; “The strip map is vertically oriented with the travel
origin at the bottom of the strip map and travel destination
toward the top of the strip map. An advantage of this
arrangement is that the strip map and travel route are always
oriented in the direction of travel and the right and left
directions coincide with actual right and left directions.”), and
Vincent teaches orienting the representations of photographs
based on a route for travel (i.e., based on the position and the
orientation of the camera, and the distance to the subject for
each image), thereby determining navigational instructions for
traveling the route including oriented representations of
photographs (See Vincent, Abstract and col. 2, lines 20-25; “the
video images are later stored within a computer’s database
along with data defining the position and the orientation of the
camera, and the distance to the subject for each image. The
images may then be presented to a user in a three-dimensional
display in which the user can navigate through the images using
a joystick or a mouse.”).
RAN 52-53.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner relies on DeLorme ’707 for teaching the recited
match geographic locations along the route with the coordinates of
representations of photographs thereof (RAN 9 (citing DeLorme ’707, col. 3,
ll. 19-31, 36- 41; col. 5, ll. 51-64; col. 42, ll. 19-25; col. 47, ll. 28-37)). The
Examiner relies on Vincent for teaching the recited orient the representations
of photographs based on the route for travel (RAN 9 (citing Vincent,
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Abstract; col. 2, ll. 20-25)). And the Examiner relies on DeLorme ’707 for
teaching the recited providing a user with directions and an oriented
sequence of photographic representations (RAN 8 (citing DeLorme ’707,
col. 5, ll. 1-6; col. 15, ll. 42-52; col. 17, ll. 49-61; Fig. 1N)).
Although DeLorme ’707 describes a view “from the road”
(DeLorme ’707, Fig. 1N (image of home at 115 Jones St. is “from the
road”)), Vincent describes storing a video image with data defining the
position and orientation of the camera, and the distance to the subject
(Vincent, Abstract; col. 2, ll. 20-25). The combined teachings of DeLorme
’707 and Vincent teach the argued limitations. See RAN 9-10.
Accordingly, we are not persuaded of error in the Examiner’s findings.
We also find Patent Owner’s argument (iv) unpersuasive. DeLorme
’707 (col. 10, ll. 25-28) describes standard geographic coordinates such as
latitude and longitude for describing a POI. Vincent (Abstract; col. 2, ll. 20-
25) describes storing a video image with data defining the position and
orientation of the camera, and the distance to the subject. It would have
been readily apparent to a skilled artisan that DeLorme ’707 would benefit
from Vincent’s technique of storing position and orientation of the camera
with a video image.
We agree with and adopt as our own the Examiner’s reasoning that
combining DeLorme ’707’s photograph imagery with geographical
coordinates, with Vincent’s teachings of orientation information, would have
been a predictable use of prior art elements according to their established
functions—an obvious improvement. See RAN 9-10. As the U.S. Supreme
Court has explained, “[w]hen a work is available in one field of endeavor,
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design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int’l, Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
We also agree with Third Party Requester and adopt as our own
Third Party Requester’s explanation that DeLorme ’707’s “desire to provide
images ‘as seen from the road’ demonstrates a motivation to incorporate
Vincent’s orientation information into the POI database of DeLorme ’707 to
improve the accuracy of this functionality.” 3PR Resp. Br. 9; see also
Declaration of Scott Andrews, December 12, 2012, ¶ 18 (“A system
according to the combination would predictably allow the storage and
retrieval of photographs with position and orientation information.”)
We have considered Patent Owner’s arguments and evidence,
including the Declaration of Scott T. Leutenegger, Ph.D, and are not
persuaded of error for reasons explained above. Further, we agree with and
adopt as our own the Examiner’s explanation that Patent Owner’s arguments
do not clearly point out the patentable novelty which he or she
thinks the claims present in view of the state of the art disclosed
by the references cited or the objections made. Instead, the
Patent Owner merely alleges that the key feature of the
invention would not be shown until 7-10 years later after the
application filing date of the ’014 Patent, which is not relevant
to the issue of nonobviousness of the claimed subject matter
and provides no objective evidence thereof.
RAN 48-49.
We conclude that DeLorme ’707 and Vincent collectively teach the
limitations of claim 1, and the Examiner’s reasons to combine these
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teachings are supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
We, therefore, sustain the Examiner’s rejection of claim 1 based on
DeLorme ’707 and Vincent, as well as claims 2, 4, and 5, which are not
separately argued with particularity. See PO App. Br. 16.

THE OBVIOUSNESS REJECTION OF CLAIMS 3 AND 6 BASED ON
DELORME ’707, VINCENT, AND DELORME ’492
Patent Owner argues DeLorme ’492 does not overcome the purported
deficiencies of the combination of DeLorme ’707 and Vincent.
PO App. Br. 17; PO Reb. Br. 4.
For reasons explained above when addressing claim 1, we are not
persuaded of any error in the Examiner’s findings and reasons with respect
to DeLorme ’707 and Vincent.
We, therefore, sustain the Examiner’s rejection of claim 3 and 6.

THE REMAINING REJECTIONS
Review of alternative prior art bases for rejection to claims, which
have already been determined to be appropriately rejected over the prior art,
is discretionary. See, e.g., In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir.
2009) (not reaching rejections based on obviousness when claims already
rejected as anticipated). We exercise our discretion and decline to reach the
merits of the remaining rejections.

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ORDER
The Examiner’s decision rejecting claims 1-6 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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.

AFFIRMED

Patent Owner:

Ascenda Law Group, PC
84 W. Santa Clara Street
Suite 550
San Jose, CA 95113

Third Party Requester:

Michael V. Messinger
Sterne Kessler Goldstein & Fox, PLLC
1100 New York Ave. NW
Washington, DC 20005