Ex Parte 7,813,596 B2 et alDownload PDFPatent Trial and Appeal BoardJan 31, 201995000684 (P.T.A.B. Jan. 31, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,684 08/17/2012 7,813,596 B2 7571 23363 7590 02/01/2019 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 02/01/2019 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 VERDERI, LLC Patent Owner ____________________ Appeal 2018-007745 Reexamination Control No. 95/000,684 Patent No. 7,813,596 B2 Technology Center 3900 __________________ Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON REHEARING Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 2 These proceedings involve U.S. Patent No. 7,813,596 B2 (âthe â596 patent), issued October 12, 2010 to Enrico Di Bernardo and Luis F. Concalves. On September 28, 2018, we rendered a Decision Under 37 C.F.R. § 41.77(f) (âDecision 2â) on the Examinerâs Determination Under 37 C.F.R. § 41.77(d) (âDeter.â) mailed May 17, 2018. Decision 2 presented new grounds of rejection for certain claims under 37 C.F.R. § 41.77(b). Decision 2, p. 27. Decision 2 is also subsequent to and incorporates a Decision dated August 15, 2016,1 (âDecision 1â) in which other new grounds of rejection were entered under 37 C.F.R. § 41.77(b). On October 29, 2018, Patent Owner requested rehearing under 37 C.F.R. § 41.79 (âReq. Rehâgâ). Requester responded pursuant to 37 C.F.R. § 41.79(c) (â3PR Commentsâ) on November 27, 2018. As further background, in response to the new grounds of rejection in Decision 1, Patent Owner reopened prosecution, amending certain claims and adding a new claim2 for consideration. Request to Reopen Prosecution Under 37 C.F.R. § 41.77(b)(1) (âPO Req. Reopenâ) 1â33 (September 16, 2016). Requester responded, urging the new grounds of rejection be maintained. See generally Requesterâs Comments in Opposition to Patent Ownerâs Request to Reopen Prosecution (October 14, 2016). In Decision 2, we presented additional new 1 In Decision 2, we state âOur new Decision is deemed to incorporate the earlier Decision, except for those portions specifically withdrawn. 37 C.F.R. § 41.77(f).â Decision 2, p. 3; see also 37 C.F.R. § 41.77(f). 2 In our remand order, dated May 23, 2017, we granted Patent Ownerâs request to reopen prosecution for amended claims 72 and 73 and new claim 76. Order Remanding Inter Partes Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner (âRemand Orderâ) 3â5. We indicated claim 76 can be considered a substitute for claim 69. Remand Order 4. Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 3 grounds of rejection for (1) claim 72 under 35 U.S.C. § 103 based on (a) Yee3 and Dykes4 and (b) Ishida5 and Dykes; (2) claim 73 under (a) 35 U.S.C. § 112, second paragraph and (b) 35 U.S.C. § 103 based on Yee and Lachinski6 (Interpretation 2); and (3) claim 767 under 35 U.S.C. § 103 based on Yee and Dykes. Decision, p. 27. We also affirmed the Examinerâs decision to maintain the rejections of (a) claims 72 and 73 (Interpretation 1) based on Yee under § 102 and (b) claim 76 based on Ishida and Dykes. Decision 2, p. 27.8 Patent Owner sets forth reasons why we allegedly misapprehended or overlooked points in presenting the new grounds of rejection of claims 72, 73, and 76 presented in Decisions 1 and 2. Below, we address each claim separately. 3 Frank Yee, GPS & VIDEO DATA COLLECTION IN LOS ANGELES COUNTY: A STATUS REPORT, POSITION LOCATION AND NAVIGATION SYMPOSIUM, IEEE Position Location and Navigation Symp. 388â393 (1994) (âYeeâ). 4 J. Dykes, AN APPROACH TO VIRTUAL ENVIRONMENTS FOR VISUALIZATION USING LINKED GEO-REFERENCED PANORAMIC IMAGERY, COMPUTERS, ENVIRONMENT AND URBAN SYSTEMS, 24 Computers, Envât and Urb. Systems 127â152 (2000) (âDykesâ). 5 Tom Ishida et al., DIGITAL CITY KYOTO: TOWARDS A SOCIAL INFORMATION INFRASTRUCTURE, 1652 Lecture Notes in Artificial Int. from Intâl Workshop on Cooperative Info. Agents 34â46 (1999) (âIshidaâ). 6 U.S. Patent No. 5,633,946 (May 27, 1997) (âLachinskiâ). 7 As noted in the Remand Order (Remand Order 4) and Decision 2 (Decision 2, p. 5), claim 76 substitutes for claim 69. 8 We also affirmed (1) the rejections of (a) claims 4, 63â66, 68, 70, 71, and 74 based on Yee, and (b) claims 4, 21, and 75 over Ishida and Dykes, (2) the Examinerâs decision determining claim 67 is patentable, and (3) the Examinerâs decision to maintain the rejection of (a) claims 72 and 73 (Interpretation 1) under § 102 based on Yee and (b) claim 76 under § 103 based on Ishida and Dykes. Decision 2, p. 27. Decision 2 also indicates claim 69 (for which claim 76 substitutes) is rejected under 35 U.S.C. § 103 based on Ishida and Dykes. Id. Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 4 I. Claim 72 Amended claim 72 recites The method of claim 4, wherein the image source comprises substantially all the static objects in the geographic area, and wherein the first and second images each provide a panoramic view of objects at respectively the first and second locations to allow a user to visually navigate the area from the user terminal. PO Req. Reopen 18 (underlining added language). Also, base claims 1 and 4 to claim 72 recite: 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; retrieving a map of at least a portion of the geographic area; displaying the retrieved first image on a first display area of the screen and the retrieved map on a second display area of the screen; receiving a user selection of a position on the displayed map; determining a second location based on the user selected position; and retrieving from the image source a second image associated with the second location. 4. (Original) The method of claim 1, wherein the first and second images are each a composite image, Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 5 wherein each composite image is created by processing pixel data of a plurality of the image frames. PO Req. Reopen 2â3. A. 35 U.S. C. § 102 - Yee In Decision 1, we newly rejected claim 72 under 35 U.S.C. § 102 based on Yee. Decision 1, pp. 34â37, 41. In Decision 2, we affirmed the Examinerâs decision to maintain this rejection. Decision 2, pp. 5â9, 27. Patent Owner argues Yee fails to disclose its images provide âa panoramic viewâ as recited in claim 72. Req. Rehâg 3â7. Patent Owner asserts Yeeâs composites include multiple images that are not contiguous, but rather are âtwo disconnected segmentsâ (Req. Rehâg 4), failing to provide the recited âpanoramic views.â Req. Rehâg 4â7 (citing Decision 2, pp. 8â9 and Yee 391). For the following reasons, we are not persuaded. Initially, we note Patent Owner fails to dispute our claim construction of âa panoramic viewâ (Req. Rehâg 4), which includes âa wide or sweeping view, which may or may not be a full 360° view, and can be made by joining images.â Decision 2, pp. 7â8, noted in Req. Rehâg 3. As such, Patent Owner has not persuaded us that we have not overlooked or misapprehended a point related to how this recited term should be construed.9 Concerning whether a composite in Yee encompasses a locationâs wider field of view as disputed by Patent Owner (Req. Rehâg 4â7), we note that the 9 Although Patent Owner states it âreserves the right to argue for a different constructionâ (Req. Rehâg 4), 37 C.F.R. §§ 41.77(b)(2) and 41.79(b)(1) requires the request for rehearing to address the new grounds of rejection and to state points believed to have been misapprehended or overlooked in entering the new grounds. See also 37 C.F.R. §§ 41.79(a)(1), (a)(2), and (b)(3). Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 6 above claim construction of âa panoramic viewâ does not require a wider field of view of a location but rather âwide or sweeping viewâ (including a view that is not a full 360° view) at a first and second location. In this regard, we adopt Requesterâs explanation of how Yee discloses the âpanoramic viewâ as recited in claim 72. 3PR Comments 4â7. To elaborate, Yee teaches capturing images using cameras that âgo from wide angle to a zoomed-in view.â Yee 391, quoted in Decision 2, p. 8; see also 3PR Comments 4 (stating ââwide angleâ views correspond to âpanoramic viewsâ as the Board concluded.â). Patent Owner does not dispute or address that Yeeâs cameras capture wide-angle views. See generally Req. Rehâg 3â7; see also 3PR Comments 6 (citing Yee 391 and stating Patent Owner âdisregards the first basis âthat Yee discloses that its cameras can also capture âwide angleâ views.â). As such, our finding in Decision 2 that Yee discloses a camera capturing a wide angle view (e.g., a wide view of objects, which is not a full 360° view) at locations (e.g., panoramic view) as broadly recited in claim 72 remains undisputed. Additionally, as indicated in Decision 2, Yee teaches creating composites of various views (e.g., a curbside view, front and back, a street view, front and back, a real estate view left and right, and a real estate and address zoom). Yee 389, noted in both Decision 2, p. 8 and 3PR Comments 4. Patent Owner specifically disputes that âthere is no evidence that the separate views of Yee are amenable to being combined into panoramic viewsâ and thus Yeeâs composites are not âpanoramic.â Req. Rehâg 6 (citing Yee 391 and contending the captured views are ânon-adjacent and non-overlappingâ); see also Req. Rehâg 7. We are not persuaded. As noted by Requester, âPatent Owner cherry-picks [an] example of forming a composite using only the front and right views that do not overlapâ while Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 7 âdisregard[ing] that Yee actually teaches using ten cameras, with each of the tens cameras capturing a different 63 degree view.â 3PR Comments 6 (contrasting the diagram in Req. Rehâg 7 where each camera covers non-overlapping 63 degrees views with Yee 391). That is, Yee discloses ten cameras, âeach covering 63 degrees, would encompass an absolute total of 630 total degreesâ and that âsome of the cameras would necessarily have to overlap on the horizontal plane with the 63-degree views provided by some other cameras.â 3PR Comments 6 (citing Yee 391). We further note that each of Yeeâs ten camera will be located in different physical space, such that each camera necessarily captures a different field of view. Yee 391. Also, as noted by Requester, Decision 2 states [W]hen compositing [these views captured by the ten cameras], the resulting composite covers a wider front and back view of both the curb and streetâs perspective (e.g., a panoramic view). Also, when compositing at least one of the curbside or street views with a âreal estate view, left and right,â the resulting composite covers a wide expanse (e.g., front, back, left and right) or yet another âpanoramic viewâ as recited. Decision 2, p. 9, quoted in 3PR Comments 5; see also Yee 389, 391. We note, as does Requester (3PR Comments 6), that our findings related to Yee are that someânot allâof Yeeâs composite form a panoramic view. That is, when compositing some of the ten cameraâs wide-angle views captured at different physical locations (Yee 389, 391), some composites will necessarily create wider object views (e.g., a panoramic view). As such, Yee discloses embodiments that disclose claim 72âs âfirst and second images each provide a panoramic view of objects at respectively the first and second locations.â Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 8 For the above reasons, Patent Owner has not shown points that we overlooked or misapprehended in presenting the rejection for clam 72 under 35 U.S.C. § 102 based on Yee. B. 35 U.S. C. § 103 - Yee and Dykes In Decision 2, we newly rejected claim 72 under 35 U.S.C. § 103 based on Yee and Dykes. Decision 2, pp. 10â13, 27. We stated âto the extent Yee is viewed as suggesting, but not necessarily disclosing, composites that âprovide a panoramic view of objectsâ at a location as recited, we alternatively present a new ground of rejection for claim 72 under § 103 based on Yee and Dykes.â Decision 2, p. 10. That is, we cited Dykes to teach acquiring image frames of substantially all objects in an area and creating panoramas from these image frames (e.g., stitching) was known at the time of the invention. Decision 2, pp. 10â11. Patent Owner states âthe images captures by Yee are not suitable for stitchingâ and thus there is no reason why an ordinary artisan would combine Yee and Dykes to arrive at claim 72. Req. Rehâg 8. Essentially, Patent Owner repeats the argument that Yee fails to disclose any camera views that are adjacent and overlapping, such that one skilled in the art would not use Dykesâs stitching technique, which requires overlapping images, to form composites in Yee. See id. at 8â9. Patent Owner asserts applying Dykesâs stitching technique to Yee would result in âdiscontinuities.â Id. at 9. We are not persuaded and refer to the above discussion addressing Yee as well as those reasons set forth by Requester. 3PR Comments 7. We underscore this rejection is an obvious rejection, which does not require the cited references to disclose what is claimed. Rather, Yee need only suggest to one skilled in the art that some of its images captured by its ten cameras would be adjacent or overlap, Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 9 such that when combined into a composite, the resulting image forms âa panoramic viewâ as claim 72 recites. Based on the above discussion when addressing Yee, Yee at least suggests to one skilled in the art that some of its images captured by its ten cameras would be adjacent or overlap, such that its disclosed composites (Yee 389) formed with adjacent or overlapping images would predictably result in âa panoramic view of objectsâ at locations as recited in claim 72. Moreover, one skilled in the art would have recognized applying Dykesâs stitching technique to Yee would be one known manner of forming Yee's composites (see Decision 2, p. 10â11) and would yield the predictable results of ââprovid[ing] a panoramic view of objectsâ at a first and second location as recited in claim 72â (Decision 2, p. 11). See KSR Intâl Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we disagree with Patent Owner that Decision 2 does not provide âany plausible explanation why a person of ordinary skill in the art would have combined the teachings of Yee and Dykes.â Req. Rehâg 8. Patent Owner argues Dykesâs captured images that populate an âimage sourceâ do not capture âsubstantially all static objects in the geographic area.â Req. Rehâg 9â10. This argument essentially repeats contentions presented previously by Patent Owner and addressed in Decision 2. See Decision 2, pp. 11â12. We remain persuaded. First, the rejection relies on both Yee and Dykes. Decision 2, pp. 11â12 (citing Yee 389â90 and Dykes 134â35, 140â42); see also Decision 1, p. 36 (quoting Yee 389, 391â92). Patent Owner does not dispute (see Req. Rehâg 9-10) that Yee teaches collecting data (e.g., an image source) on street locations, street names, infrastructure (e.g., power poles, street lights, traffic signals, guard rails, highway striping), speed limits, speed zones, one way street data, street signs, centerlines, and pavement edges as well as data that locates Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 10 hidden objects to create a comprehensive view (e.g., substantially all static objects in the geographic area). Yee 389â90, noted in Decision 2, p. 11; see also 3PR Comments 10â11 (citing Yee 391â92 and noting â[t]here is no dispute that Yee discloses this limitation because it describes collective images using a GeoVan.â). Thus, even presuming, without agreeing, that Dykesâs museum example does not teach claim 72âs âsubstantially all static objectsâ limitation, Yee teaches this limitation and no âhindsight reasoningâ has been used in concluding the references teach claim 72âs limitations. Req. Rehâg 10. Regarding Dykes, we adopt Requesterâs comments as our own. 3PR Comments 7â10 (citing Dykes 134, 141â46, Fig. 6). Specifically, Dykes teaches that âextensive data sets of panoramic images areâ produced for âmuseums displaying their holdingsâ (Dykes 134, quoted in 3PR Comments 7â8), and these taught âpanoramic imagesâ in Dykes would encompass many museum objects beyond its âholdingsâ contrary to Patent Ownerâs contentions. 3PR Comments 8. Also, in Decision 1, we stated âclaim 72 requires the image source to have a considerable number of static objectsâ but not allâin the geographic area to allow a user to visually navigate the area from the user terminal.â Decision 1, p. 36 (emphasis added), quoted in 3PR Comments 8. Claim 72âs language does not require each image provide a panoramic view capturing substantially all static objects in the geographic area but that âthe image sourceâ contains substantially all the objects in the geographic area. See 3PR Comments 8 (quoting the â596 patent 2:46â49 and stating âsubstantially all the static objectsâ in claim 72 means âthe image source must capture enough images so the user can visually navigate an area of interest.â). Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 11 For the above reasons, Patent Owner has not shown points that we overlooked or misapprehended in presenting the rejection for claim 72 under 35 U.S.C. § 103 based on Yee and Dykes. II. Claim 73 Amended claim 73 recites The method of claim 4, wherein 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, wherein the entered arbitrary address further specifies a requested street number; wherein the first location is calculated from the arbitrary address by: identifying a street segment from a plurality of street segments wherein the requested street number lies within a range defined by starting and ending street numbers of the identified street segment; and determining the first location in accordance with a distance of the requested street number from the starting street number of the identified street segment. PO Req. Reopen 18 (underlining added language). A. 35 U.S. C. § 112, Second Paragraph - Indefiniteness In Decision 2, we newly rejected claim 73 under 35 U.S.C. § 112, second paragraph as being indefinite. Decision 2, pp. 15â17, 27. Patent Owner contends âthe plain language of the claimâ is that the ârequested street numberâ is âa separate limitation so that [the requested street number] would not have been one the âalternativesâ listed in the Markush group.â Req. Rehâg 12; see also id. at 13. Patent Owner argues we are imported the Specificationâs disclosure improperly Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 12 into claim 73 by assuming the recited ârequested street numberâ must be part of the Markush group. Req. Rehâg 12. We are not persuaded. This argument is similar to that previously presented in response to the Examinerâs Determination and was addressed in Decision 2. Decision 2, pp. 15â16. As Requester indicates, Patent Owner does not dispute claim 73âs recitation âthe entered arbitrary address specifying information selected from a group consisting of street name, city, state, and zip codeâ is a closed Markush group. 3PR Comments 14. As such, the plain language of claim 73 includes a Markush group where the entered arbitrary addressâ information is âselected from a group consisting of street name, city, state, and zip codeâ (i.e., closed group consisting of street name, state, city, and zip code). See Decision 2, p. 16 (stating âthe claim recites the address âinformationâ as a closed Markush group (i.e., a street name, a city, a state, and a zip code), such that the claim must be closed to other address âinformation.ââ). Nor does Patent Owner dispute the further recitation to âthe entered arbitrary address specifies a requested street numberâ in claim 73 is âanother type of information (i.e., âstreet numberâ)â that is part of the âentered arbitrary address.â See 3PR Comments 14; see also id. at 14â15. That is, as previously stated, âPatent Owner never explains the distinction between these two types of information, and the plain language of the claim and the specification . . . contradict Patent Ownerâs position.â Decision 2, pp. 16 (quoting Requesterâs Comments in Opposition to Patent Ownerâs Comments Under 37 C.F.R. § 41.77(e), p. 10). Patent Owner argues we are importing improperly language from the disclosure into claim 73 when construing the additional recitation to the âentered arbitrary addressâ to be a part of the previously recited Markush group (i.e., âthe Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 13 entered arbitrary address specifying information selected from a group consisting of street name, city, state, and zip codeâ). Req. Rehâg 12. We disagree for reasons previously explained. Decision 2, pp. 15â16. Specifically, we did not import language from the disclosure into claim 73 but rather construed claim 73âs language, including its Markush group, in its broadest reasonable light consistent with the â596 patentâs disclosure. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). That is, we determined a âstreet numberâ along with a street name, a city, and a state are all examples of information that the entered arbitrary address specifies because the â596 patent discloses its address input fields 220 to include street number, street name, city and state of a location. Decision 2, pp. 16 (citing the â596 patent 12:17â22, Fig. 16); see also 3PR Comments 15â16. We therefore disagree that claim 73 recites âthe ârequested street numberâ . . . so that it would not have been one of the âalternativesâ listed in the Markush group.â Req. Rehâg 12. For the above reasons, we also disagree that our alternative interpretations (i.e., Interpretation 1 and Interpretation 2) of claim 73 are âimproper.â Req. Rehâg 12. Accordingly, Patent Owner has not shown points that we overlooked or misapprehended in presenting the rejection for claim 73 under 35 U.S.C. § 112, second paragraph. B. 35 U.S. C. § 102 â Yee (Interpretation 1) In Decision 1, we newly rejected claim 73 under 35 U.S.C. § 102 based on Yee. Decision 1, pp. 37â41. In Decision 2, we affirmed the Examinerâs decision to maintain this rejection. Decision 2, pp. 18â19, 27. Patent Owner asserts that, when claim 73 is âproperly construed,â Yee does not disclose claim 73âs limitations. Req. Rehâg 13. We disagree. Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 14 In Decision 2, we stated claim 73 has âtwo plausible constructionsâ given that the claim is indefinite. Decision 2, p. 17. The two constructions are: (1) Interpretation 1, where âthe additional limitations do not further limit the claimâ and (2) Interpretation 2, where âthe ârequested street number' [is] part of the closed Markush group.â Decision 2, p. 17. Interpretation 1 is a plausible construction, because as we have discussed above and in Decision 2 (Decision 2, pp. 15â17), claim 73 recites a closed Markush group for the âentered arbitrary addressâ that excludes âa requested street number.â Based on our understanding of claim 73 under Interpretation 1, Yee discloses claim 73âs limitations. Decision 2, p. 18 (citing Decision 1, pp. 37â40 and Deter. 2, 7â8). For the above reasons, Patent Owner has not shown points that we overlooked or misapprehended in presenting the rejection for claim 73 (Interpretation 1) under 35 U.S.C. § 102 based on Yee. C. 35 U.S. C. § 103 â Yee and Lachinski In Decision 2, we newly rejected claim 73 under 35 U.S.C. § 103 based on Yee and Lachinski. Decision 2, pp. 18â20, 27. Patent Owner argues Lachinski does not accept an arbitrary address (Req. Rehâg 14), relates to address range construction (Req. Rehâg 14â15), and relates to operations an operator performs when constructing a database (Req. Rehâg 14â15). Based on this understanding, Patent Owner concludes Lachinski does not teach claim 73âs limitations related to specifying a âfirst locationâ for retrieving a first image associated with a first location. Req. Rehâg 15. One cannot show non-obviousness by attacking references individually where the rejectionâas is hereâis based on Yee and Lachinski. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 15 Cir. 1986). Specifically, when addressing claim 4, from which claim 73 depends, the rejection relies on Yee to teach âreceiving a first user input specifying a first location in the geographic areaâ and âretrieving from the image source a first image associated with the first location.â Decision 1, pp. 21 (citing Request 79â97 and Claim Chart CC-B); Request 81â82 (citing Yee 391â92); Claim Chart CC-B, pp. 2â3 (citing same). Yee describes a user can point at a road segment or specific location on a map (e.g., receive a user input specifying a location in an area) and the selected segment is displayed (e.g., retrieving an image from an image source associated with the location). Yee 392. We further stated, when discussing claim 73 (Interpretation 2), that Yee also teaches âa â[s]treet address entryâ option that retrieves house images but does not state what its street address entry contains (Decision 2, p. 18 (citing Yee 392)) and Yee teaches every house on a street is tagged with its address (Decision 2, p. 19 (citing Yee 392)). Patent Owner does not dispute any of these findings and conclusions. We specifically turned to Lachinski in combination with Yee to teach the new limitations in claim 73 (Interpretation 2) of âidentifying a street segment from a plurality of street segments wherein the requested street number lies within a range defined by starting and ending street numbers of the identified street segmentâ and âdetermining the first location in accordance with a distance of the requested street number from the starting street number of the identified street segment.â Decision 2, p. 19â20 (citing Lachinski 3:27â29, 16:33â17:13); see also 3PR Comments 17. Also, we agree with Requester that Lachinski teaches an address can be âa user supplied addressâ and that address parsing/matching is achieved using a database. 3PR Comments 19 (citing Lachinski 16:63â17:3). Other passages in Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 16 Lachinski discuss using the database to retrieve images by image matching. 3PR Comments 19 (citing Lachinski 17:15â17). We thus disagree that Lachinski only teaches or suggests to one skilled in the art using its technique in âa preliminary step in the construction of address rangesâ as Patent Owner asserts. Req. Rehâg 14 (citing Lachinski 17:39â51). To the extent Patent Owner asserts Lachinskiâs entered addresses are not âarbitraryâ addresses because they preexist (see Req. Rehâg 14), we agree with Requester that this alleged claim interpretation was rejected in Decision 1. Decision 1, pp. 38â99, quoted in 3PR Comments 18. In particular, we found that the phrase âarbitrary address,â when construed in light of the â596 patentâs disclosure, is not any potential address, which is unconstrained by the system. Decision 1, pp. 38â39 (citing â596 patent 7:15â20, 11:45â56, 12:20â26, 12:32â35, 13:23â37, 13:55â61). Moreover, we further relied on Yee for this teaching. Decision 1, p. 39 (citing Yee 391â92). For the above reasons, Patent Owner has not shown points that we overlooked or misapprehended in presenting the rejection for claim 73 (Interpretation 2) under 35 U.S.C. § 103 based on Yee and Lachinski. III. Claim 76 New claim 76 recites The method of claim 69, wherein the first and second images provide overlapping panoramic views at the first and second locations. PO Req. Reopen 19. Base claim 69 recites Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 17 The method of claim 4, wherein the first and second images each provide a panoramic view of objects at respectively the first and second locations. PO Response 17. A. 35 U.S. C. § 103 â Yee and Dykes In Decision 2, we newly rejected claim 76 under 35 U.S.C. § 103 based on Yee and Dykes. Decision 2, pp. 25â27. Patent Owner refers to its discussion in âSection (II)(2)â in asserting that there is no reason why one skilled in the art would have combined Yee and Dykes to arrive at claim 76âs invention. Req. Rehâg 17â18; see also Req. Rehâg 18â19. We are not persuaded for previously stated reasons. See also 3PR Comments 25. We additionally note that Decision 2 provides a reason to combine Dykesâs technique with Yee, including (1) Dykesâs stitching technique is a known process for creating composites that provide panoramic views and an artisan would have recognized the technique can substitute for Yeeâs composite technique with predictable results and (2) Dykes provides an interface that allows a user to locate, retrieve, and navigate through panoramic images within a geographic area. Decision 2, p. 26 (citing Dykes 132â36, 139â41, Fig. 2); see also 3PR Comments 26. Moreover, despite Patent Ownerâs urging that some of our reasoning is not âconnected to the more salient feature of generating composite imagesâ (Req. Rehâg 18), our rationale is linked to the claimed feature that âthe first and second image provide . . . panoramic viewsâ by providing an interface that permits a user to retrieve panoramic images. For the above reasons, Patent Owner has not shown points that we overlooked or misapprehended in presenting the rejection for claim 76 under 35 U.S.C. § 103 based on Yee and Dykes. Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 18 B. 35 U.S. C. § 103 â Ishida and Dykes In Decision 1, we newly rejected claim 69, which was substituted by claim 76 as indicated above on remand, under 35 U.S.C. § 103 based on Ishida and Dykes. Decision 1, pp. 40â41. In Decision 2, we affirmed the Examinerâs decision to maintain this rejection. Decision 2, pp. 23â25, 27. Patent Owner first refers the argument in âsection (II)(2)â that Dykes does not teach âthe image source comprises substantially all the static objects in the geographic areaâ as recited in claim 72 to assert Ishida and Dykes fail to teach the recited âimage source providing a plurality of images depicting views of objects in the geographic areaâ as recited in claim 1, which claim 76 depends indirectly. Req. Rehâg 15. We are not persuaded because these two limitations are not commensurate in scope, including claim 1 does not include the âsubstantially all the static objectsâ limitation that is in claim 72. See 3PR Comments 21 (stating âit does not require providing images of âsubstantially all the static objectsâ as in claim 72.â). Moreover, we refer to our previous discussion of how Dykes teaches or suggests the disputed limitation in claim 1 (see also 3PR Comments 21) as well as note that Ishida is further discussed in this context (see Decision 1, p. 6 (citing RAN 17â19 for claim 4 dependent from claim 1 (incorporating Request 182â210 and Claim Chart CC-G)); see also RAN 17â18 (discussing Ishida and how it teaches the image source provides images in a geographic location) (citing Ishida 26, Fig. 3)). Patent Owner next argues Ishida and Dykes do not teach claim 76âs limitations. Req. Rehâg 15â17. Specifically, Patent Owner contends Dykesâs teaching of âmuseums displaying their holdingsâ (Dykes 134) would suggest numerous ways to capture images and âwould not necessarily results in âwherein the first and second images provide overlapping panoramic views at the first and Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 19 second locationsâ as recited in claim 76.â Req. Rehâg 16; see also id. at 17. We are not persuaded because how images are captured does not correspond directly to how the images create views in Dykes so as âto provide overlapping panoramic viewsâ as recited. We further agree with Requester that Dykes teaches âpanoramic imagesâ provide a visual tour of a museum (e.g., provide overlapping panoramic views) (3PR Comment 22 (citing Dykes 134)) and Dykes explicitly teaches a stitching technique involving images with âa small overlapâ (Dykes 135, Fig. 2, cited in Decision 2, p. 24). See also 3PR Comments 23â24 (citing Decision 2, pp. 24â25 (discussing Figure 4)). Patent Owner does not dispute the finding related to page 135 and Figure 2 in Dykes explicitly stating taken images have âa small overlapâ (Dykes 135). Req. Rehâg 16 (acknowledging Dykes discuses images âcaptured by a camera having a âsmall overlapâ so that they may be âstitchedâ to form a âseamless panorama.ââ). Patent Owner also contends Dykesâs technique is âlabor-intensiveâ and âwould have discouraged the capture of redundant information (e.g., multiple images of the same holdings) in the form of multiple overlapping panoramic images.â Req. Rehâg 17. This argument is speculative and without factually supported objective evidence. See In re Huang, 100 F.3d 135, 139â40 (Fed. Cir. 1996). Moreover, as previously stated, Dykes explicitly teaches forming panoramic images with overlap such that we disagree Dykes discourages capturing redundant information. For the above reasons, Patent Owner has not shown points that we overlooked or misapprehended in presenting the rejection for claim 76 under 35 U.S.C. § 103 based on Ishida and Dykes. Appeal 2018-007745 Control 95/000,684 Patent 7,813,596 B2 20 To summarize, we have considered the arguments raised by Patent Owner, but the arguments are not persuasive to find that Decision 1 or Decision 2 was in error. We have granted the Request for Rehearing to the extent that we have reconsidered Decision 1 and Decision 2, but we deny the request for hearing with respect to making any changes therein. REHEARING DENIED Copy with citationCopy as parenthetical citation
