Ex Parte 7,813,596 B2 et al

Patent Trials and Appeals Board

Jan 31, 2019

95000684 - (R) (P.T.A.B. Jan. 31, 2019)

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

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These proceedings involve U.S. Patent No. 7,813,596 B2 (“the ’596 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)
(“Decision 2”) on the Examiner’s Determination Under 37 C.F.R. § 41.77(d)
(“Deter.”) 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 (“Decision
1”) 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 (“Req. Reh’g”). Requester responded pursuant to 37 C.F.R.
§ 41.79(c) (“3PR Comments”) 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) (“PO Req. Reopen”) 1–33 (September 16, 2016). Requester
responded, urging the new grounds of rejection be maintained. See generally
Requester’s Comments in Opposition to Patent Owner’s Request to Reopen
Prosecution (October 14, 2016). In Decision 2, we presented additional new

1 In Decision 2, we state “Our new Decision is deemed to incorporate the earlier
Decision, except for those portions specifically withdrawn. 37 C.F.R. § 41.77(f).”
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 Owner’s 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 (“Remand Order”) 3–5. We indicated claim 76 can be considered a
substitute for claim 69. Remand Order 4.
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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 Examiner’s 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. 388–393 (1994) (“Yee”).
4 J. Dykes, AN APPROACH TO VIRTUAL ENVIRONMENTS FOR VISUALIZATION USING
LINKED GEO-REFERENCED PANORAMIC IMAGERY, COMPUTERS, ENVIRONMENT AND
URBAN SYSTEMS, 24 Computers, Env’t and Urb. Systems 127–152 (2000)
(“Dykes”).
5 Tom Ishida et al., DIGITAL CITY KYOTO: TOWARDS A SOCIAL INFORMATION
INFRASTRUCTURE, 1652 Lecture Notes in Artificial Int. from Int’l Workshop on
Cooperative Info. Agents 34–46 (1999) (“Ishida”).
6 U.S. Patent No. 5,633,946 (May 27, 1997) (“Lachinski”).
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, 63–66, 68, 70, 71, and 74
based on Yee, and (b) claims 4, 21, and 75 over Ishida and Dykes, (2) the
Examiner’s decision determining claim 67 is patentable, and (3) the Examiner’s
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.
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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,
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wherein each composite image is created by processing pixel
data of a plurality of the image frames.

PO Req. Reopen 2–3.
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. 34–37, 41. In Decision 2, we affirmed the Examiner’s
decision to maintain this rejection. Decision 2, pp. 5–9, 27. Patent Owner argues
Yee fails to disclose its images provide “a panoramic view” as recited in claim 72.
Req. Reh’g 3–7. Patent Owner asserts Yee’s composites include multiple images
that are not contiguous, but rather are “two disconnected segments” (Req. Reh’g
4), failing to provide the recited “panoramic views.” Req. Reh’g 4–7 (citing
Decision 2, pp. 8–9 and Yee 391). For the following reasons, we are not
persuaded.
Initially, we note Patent Owner fails to dispute our claim construction of “a
panoramic view” (Req. Reh’g 4), which includes “a wide or sweeping view, which
may or may not be a full 360° view, and can be made by joining images.”
Decision 2, pp. 7–8, noted in Req. Reh’g 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 location’s wider
field of view as disputed by Patent Owner (Req. Reh’g 4–7), we note that the

9 Although Patent Owner states it “reserves the right to argue for a different
construction” (Req. Reh’g 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).
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above claim construction of “a panoramic view” does not require a wider field of
view of a location but rather “wide or sweeping view” (including a view that is not
a full 360° view) at a first and second location. In this regard, we adopt
Requester’s explanation of how Yee discloses the “panoramic view” as recited in
claim 72. 3PR Comments 4–7.
To elaborate, Yee teaches capturing images using cameras that “go from
wide angle to a zoomed-in view.” Yee 391, quoted in Decision 2, p. 8; see also
3PR Comments 4 (stating “‘wide angle’ views correspond to ‘panoramic views’ as
the Board concluded.”). Patent Owner does not dispute or address that Yee’s
cameras capture wide-angle views. See generally Req. Reh’g 3–7; see also 3PR
Comments 6 (citing Yee 391 and stating Patent Owner “disregards the first basis
—that Yee discloses that its cameras can also capture ‘wide angle’ views.”). 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 “there is no evidence that the separate views of Yee are amenable to being
combined into panoramic views” and thus Yee’s composites are not “panoramic.”
Req. Reh’g 6 (citing Yee 391 and contending the captured views are “non-adjacent
and non-overlapping”); see also Req. Reh’g 7. We are not persuaded.
As noted by Requester, “Patent Owner cherry-picks [an] example of forming
a composite using only the front and right views that do not overlap” while
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“disregard[ing] that Yee actually teaches using ten cameras, with each of the tens
cameras capturing a different 63 degree view.” 3PR Comments 6 (contrasting the
diagram in Req. Reh’g 7 where each camera covers non-overlapping 63 degrees
views with Yee 391). That is, Yee discloses ten cameras, “each covering 63
degrees, would encompass an absolute total of 630 total degrees” and that “some
of the cameras would necessarily have to overlap on the horizontal plane with the
63-degree views provided by some other cameras.” 3PR Comments 6 (citing Yee
391). We further note that each of Yee’s 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 street’s perspective (e.g., a panoramic view). Also, when
compositing at least one of the curbside or street views with a ‘real
estate view, left and right,’ the resulting composite covers a wide
expanse (e.g., front, back, left and right) or yet another ‘panoramic
view’ 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
some—not all—of Yee’s composite form a panoramic view. That is, when
compositing some of the ten camera’s 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 72’s “first and second images each provide a panoramic view of
objects at respectively the first and second locations.”
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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. 10–13, 27. We stated “to the extent Yee is
viewed as suggesting, but not necessarily disclosing, composites that ‘provide a
panoramic view of objects’ at a location as recited, we alternatively present a new
ground of rejection for claim 72 under § 103 based on Yee and Dykes.” 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. 10–11.
Patent Owner states “the images captures by Yee are not suitable for
stitching” and thus there is no reason why an ordinary artisan would combine Yee
and Dykes to arrive at claim 72. Req. Reh’g 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 Dykes’s stitching
technique, which requires overlapping images, to form composites in Yee. See id.
at 8–9. Patent Owner asserts applying Dykes’s stitching technique to Yee would
result in “discontinuities.” 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,
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such that when combined into a composite, the resulting image forms “a panoramic
view” 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 “a
panoramic view of objects” at locations as recited in claim 72. Moreover, one
skilled in the art would have recognized applying Dykes’s stitching technique to
Yee would be one known manner of forming Yee's composites (see Decision 2, p.
10–11) and would yield the predictable results of “‘provid[ing] a panoramic view
of objects’ at a first and second location as recited in claim 72” (Decision 2, p. 11).
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we disagree
with Patent Owner that Decision 2 does not provide “any plausible explanation
why a person of ordinary skill in the art would have combined the teachings of Yee
and Dykes.” Req. Reh’g 8.
Patent Owner argues Dykes’s captured images that populate an “image
source” do not capture “substantially all static objects in the geographic area.”
Req. Reh’g 9–10. This argument essentially repeats contentions presented
previously by Patent Owner and addressed in Decision 2. See Decision 2, pp.
11–12. We remain persuaded. First, the rejection relies on both Yee and Dykes.
Decision 2, pp. 11–12 (citing Yee 389–90 and Dykes 134–35, 140–42); see also
Decision 1, p. 36 (quoting Yee 389, 391–92). Patent Owner does not dispute (see
Req. Reh’g 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
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hidden objects to create a comprehensive view (e.g., substantially all static objects
in the geographic area). Yee 389–90, noted in Decision 2, p. 11; see also 3PR
Comments 10–11 (citing Yee 391–92 and noting “[t]here is no dispute that Yee
discloses this limitation because it describes collective images using a GeoVan.”).
Thus, even presuming, without agreeing, that Dykes’s museum example does not
teach claim 72’s “substantially all static objects” limitation, Yee teaches this
limitation and no “hindsight reasoning” has been used in concluding the references
teach claim 72’s limitations. Req. Reh’g 10.
Regarding Dykes, we adopt Requester’s comments as our own. 3PR
Comments 7–10 (citing Dykes 134, 141–46, Fig. 6). Specifically, Dykes teaches
that “extensive data sets of panoramic images are” produced for “museums
displaying their holdings” (Dykes 134, quoted in 3PR Comments 7–8), and these
taught “panoramic images” in Dykes would encompass many museum objects
beyond its “holdings” contrary to Patent Owner’s contentions. 3PR Comments 8.
Also, in Decision 1, we stated “claim 72 requires the image source to have a
considerable number of static objects— but not all—in the geographic area to
allow a user to visually navigate the area from the user terminal.” Decision 1, p.
36 (emphasis added), quoted in 3PR Comments 8. Claim 72’s language does not
require each image provide a panoramic view capturing substantially all static
objects in the geographic area but that “the image source” contains substantially all
the objects in the geographic area. See 3PR Comments 8 (quoting the ’596 patent
2:46–49 and stating “substantially all the static objects” in claim 72 means “the
image source must capture enough images so the user can visually navigate an area
of interest.”).
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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. 15–17, 27. Patent Owner contends
“the plain language of the claim” is that the “requested street number” is “a
separate limitation so that [the requested street number] would not have been one
the ‘alternatives’ listed in the Markush group.” Req. Reh’g 12; see also id. at 13.
Patent Owner argues we are imported the Specification’s disclosure improperly
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into claim 73 by assuming the recited “requested street number” must be part of
the Markush group. Req. Reh’g 12. We are not persuaded.
This argument is similar to that previously presented in response to the
Examiner’s Determination and was addressed in Decision 2. Decision 2, pp.
15–16. As Requester indicates, Patent Owner does not dispute claim 73’s
recitation “the entered arbitrary address specifying information selected from a
group consisting of street name, city, state, and zip code” is a closed Markush
group. 3PR Comments 14. As such, the plain language of claim 73 includes a
Markush group where the entered arbitrary address’ information is “selected from
a group consisting of street name, city, state, and zip code” (i.e., closed group
consisting of street name, state, city, and zip code). See Decision 2, p. 16 (stating
“the claim recites the address ‘information’ 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 ‘information.’”).
Nor does Patent Owner dispute the further recitation to “the entered arbitrary
address specifies a requested street number” in claim 73 is “another type of
information (i.e., ‘street number’)” that is part of the “entered arbitrary address.”
See 3PR Comments 14; see also id. at 14–15. That is, as previously stated, “Patent
Owner never explains the distinction between these two types of information, and
the plain language of the claim and the specification . . . contradict Patent Owner’s
position.” Decision 2, pp. 16 (quoting Requester’s Comments in Opposition to
Patent Owner’s 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 “entered
arbitrary address” to be a part of the previously recited Markush group (i.e., “the
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entered arbitrary address specifying information selected from a group consisting
of street name, city, state, and zip code”). Req. Reh’g 12. We disagree for reasons
previously explained. Decision 2, pp. 15–16. Specifically, we did not import
language from the disclosure into claim 73 but rather construed claim 73’s
language, including its Markush group, in its broadest reasonable light consistent
with the ’596 patent’s disclosure. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). That is, we determined a “street number” along with
a street name, a city, and a state are all examples of information that the entered
arbitrary address specifies because the ’596 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 ’596 patent 12:17–22, Fig. 16); see also 3PR Comments 15–16.
We therefore disagree that claim 73 recites “the ‘requested street number’ . .
. so that it would not have been one of the ‘alternatives’ listed in the Markush
group.” Req. Reh’g 12. For the above reasons, we also disagree that our
alternative interpretations (i.e., Interpretation 1 and Interpretation 2) of claim 73
are “improper.” Req. Reh’g 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 – Yee (Interpretation 1)
In Decision 1, we newly rejected claim 73 under 35 U.S.C. § 102 based on
Yee. Decision 1, pp. 37–41. In Decision 2, we affirmed the Examiner’s decision
to maintain this rejection. Decision 2, pp. 18–19, 27. Patent Owner asserts that,
when claim 73 is “properly construed,” Yee does not disclose claim 73’s
limitations. Req. Reh’g 13. We disagree.
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In Decision 2, we stated claim 73 has “two plausible constructions” given
that the claim is indefinite. Decision 2, p. 17. The two constructions are: (1)
Interpretation 1, where “the additional limitations do not further limit the claim”
and (2) Interpretation 2, where “the ‘requested street number' [is] part of the closed
Markush group.” Decision 2, p. 17. Interpretation 1 is a plausible construction,
because as we have discussed above and in Decision 2 (Decision 2, pp. 15–17),
claim 73 recites a closed Markush group for the “entered arbitrary address” that
excludes “a requested street number.” Based on our understanding of claim 73
under Interpretation 1, Yee discloses claim 73’s limitations. Decision 2, p. 18
(citing Decision 1, pp. 37–40 and Deter. 2, 7–8).
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 – 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. 18–20, 27. Patent Owner argues Lachinski
does not accept an arbitrary address (Req. Reh’g 14), relates to address range
construction (Req. Reh’g 14–15), and relates to operations an operator performs
when constructing a database (Req. Reh’g 14–15). Based on this understanding,
Patent Owner concludes Lachinski does not teach claim 73’s limitations related to
specifying a “first location” for retrieving a first image associated with a first
location. Req. Reh’g 15.
One cannot show non-obviousness by attacking references individually
where the rejection—as is here—is 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.
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Cir. 1986). Specifically, when addressing claim 4, from which claim 73 depends,
the rejection relies on Yee to teach “receiving a first user input specifying a first
location in the geographic area” and “retrieving from the image source a first
image associated with the first location.” Decision 1, pp. 21 (citing Request 79–97
and Claim Chart CC-B); Request 81–82 (citing Yee 391–92); Claim Chart CC-B,
pp. 2–3 (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 “a “[s]treet address entry” 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 “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.” Decision 2, p. 19–20 (citing Lachinski 3:27–29, 16:33–17:13); see also
3PR Comments 17.
Also, we agree with Requester that Lachinski teaches an address can be “a
user supplied address” and that address parsing/matching is achieved using a
database. 3PR Comments 19 (citing Lachinski 16:63–17:3). Other passages in
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Lachinski discuss using the database to retrieve images by image matching. 3PR
Comments 19 (citing Lachinski 17:15–17). We thus disagree that Lachinski only
teaches or suggests to one skilled in the art using its technique in “a preliminary
step in the construction of address ranges” as Patent Owner asserts. Req. Reh’g 14
(citing Lachinski 17:39–51).
To the extent Patent Owner asserts Lachinski’s entered addresses are not
“arbitrary” addresses because they preexist (see Req. Reh’g 14), we agree with
Requester that this alleged claim interpretation was rejected in Decision 1.
Decision 1, pp. 38–99, quoted in 3PR Comments 18. In particular, we found that
the phrase “arbitrary address,” when construed in light of the ’596 patent’s
disclosure, is not any potential address, which is unconstrained by the system.
Decision 1, pp. 38–39 (citing ’596 patent 7:15–20, 11:45–56, 12:20–26, 12:32–35,
13:23–37, 13:55–61). Moreover, we further relied on Yee for this teaching.
Decision 1, p. 39 (citing Yee 391–92).
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

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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 – 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. 25–27. Patent Owner refers to its discussion in
“Section (II)(2)” in asserting that there is no reason why one skilled in the art
would have combined Yee and Dykes to arrive at claim 76’s invention. Req.
Reh’g 17–18; see also Req. Reh’g 18–19. We are not persuaded for previously
stated reasons. See also 3PR Comments 25.
We additionally note that Decision 2 provides a reason to combine Dykes’s
technique with Yee, including (1) Dykes’s stitching technique is a known process
for creating composites that provide panoramic views and an artisan would have
recognized the technique can substitute for Yee’s 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 132–36, 139–41, Fig. 2); see also 3PR Comments
26. Moreover, despite Patent Owner’s urging that some of our reasoning is not
“connected to the more salient feature of generating composite images” (Req.
Reh’g 18), our rationale is linked to the claimed feature that “the first and second
image provide . . . panoramic views” 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.
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B. 35 U.S. C. § 103 – 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. 40–41. In Decision 2, we affirmed the Examiner’s
decision to maintain this rejection. Decision 2, pp. 23–25, 27. Patent Owner first
refers the argument in “section (II)(2)” that Dykes does not teach “the image
source comprises substantially all the static objects in the geographic area” as
recited in claim 72 to assert Ishida and Dykes fail to teach the recited “image
source providing a plurality of images depicting views of objects in the geographic
area” as recited in claim 1, which claim 76 depends indirectly. Req. Reh’g 15.
We are not persuaded because these two limitations are not commensurate in
scope, including claim 1 does not include the “substantially all the static objects”
limitation that is in claim 72. See 3PR Comments 21 (stating “it does not require
providing images of ‘substantially all the static objects’ as in claim 72.”).
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 17–19
for claim 4 dependent from claim 1 (incorporating Request 182–210 and Claim
Chart CC-G)); see also RAN 17–18 (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 76’s
limitations. Req. Reh’g 15–17. Specifically, Patent Owner contends Dykes’s
teaching of “museums displaying their holdings” (Dykes 134) would suggest
numerous ways to capture images and “would not necessarily results in ‘wherein
the first and second images provide overlapping panoramic views at the first and
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second locations’ as recited in claim 76.” Req. Reh’g 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 “to provide overlapping panoramic
views” as recited. We further agree with Requester that Dykes teaches “panoramic
images” 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 “a small overlap” (Dykes 135, Fig. 2,
cited in Decision 2, p. 24). See also 3PR Comments 23–24 (citing Decision 2, pp.
24–25 (discussing Figure 4)). Patent Owner does not dispute the finding related to
page 135 and Figure 2 in Dykes explicitly stating taken images have “a small
overlap” (Dykes 135). Req. Reh’g 16 (acknowledging Dykes discuses images
“captured by a camera having a ‘small overlap’ so that they may be ‘stitched’ to
form a ‘seamless panorama.’”).
Patent Owner also contends Dykes’s technique is “labor-intensive” and
“would have discouraged the capture of redundant information (e.g., multiple
images of the same holdings) in the form of multiple overlapping panoramic
images.” Req. Reh’g 17. This argument is speculative and without factually
supported objective evidence. See In re Huang, 100 F.3d 135, 139–40 (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.
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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