VIRTUALLY ANYWHERE

Patent Trials and Appeals Board

Oct 9, 2020

13731918 - (D) (P.T.A.B. Oct. 9, 2020)

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.
13/731,918 12/31/2012 FONTAINE CARRINGTON WEEMS III 11887 1056
112389 7590 10/09/2020
Virtually Anywhere
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
Austin, TX 78701
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
10/09/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
kate@klspatents.com
office@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FONTAINE CARRINGTON WEEMS
Appeal 2019-003060
Application 13/731,918
Technology Center 2100
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
BRIAN D. RANGE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 16–29. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2017). Appellant identifies the real party in interest as Fontaine
Carrington Weems III. Appeal Br. 2.
Appeal 2019-003060
Application 13/731,918
2
CLAIMED SUBJECT MATTER
The claims are directed to content management for virtual tours
including exposing, within a virtual tour, a hotspot, the hotspot having an
associated a hyperlink to a third-party content management provider and
access code for accessing content from third-party content management
provider; receiving an invocation of the hotspot; invoking the hyperlink
associated with the hotspot; invoking the access code for accessing content
from third-party content management provider; receiving, from the third-
party content management provider, content; and displaying the received
content within the virtual tour. Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of content management for virtual tours, the
method comprising:
displaying a first virtual tour image including both a
rotatable panoramic image of a location and a clickable graphical
unit interface (GUI) object embedded within the rotatable
panoramic image of the location, the GUI object having an
associated hyperlink to a third-party content management
provider and access code for accessing media content from the
third-party content management provider, wherein the rotatable
panoramic image comprises a plurality of images stitched
together to create a 360 degree image of the location; wherein
the media content is related to a point of interest corresponding
to a visual element of the rotatable panoramic image;

receiving an invocation of the GUI object;

invoking the hyperlink associated with the GUI object;

invoking the access code for accessing media content from
the third-party content management provider;

Appeal 2019-003060
Application 13/731,918
3
receiving the media content related to the point of interest
corresponding to the visual element of the rotatable panoramic
image from the third-party content management provider; and

displaying within a frame embedded within the rotatable
panoramic image, the media content received from the third-
party content management provider and related to the point of
interest corresponding to the visual element of the rotatable
panoramic image;

wherein a location of the GUI object in the rotatable
panoramic image indicates a relationship between one or more
visual elements of the image and the content received from the
third-party content management provider for display in the
image; and

wherein a virtual tour owner has an account with the
content management provider and provides through the content
management provider media content related to the GUI object.
REFERENCES
The prior art relied upon by the Examiner is:
Colavin et al. US 2002/0140829 A1 Oct. 3, 2002
Berkema et al. US 2003/0003957 A1 Jan. 2, 2003
Rasmussen et al. US 2006/0139375 A1 June 29, 2006
Cardu US 2008/0222538 A1 Sept. 11, 2008
Samarasekera et al. US 2008/0291279 A1 Nov. 27, 2008
Vaittinen et al. US 2012/0240077 A1 Sept. 20, 2012
Rasmussen et al. US 2013/0073983 A1 Mar. 21, 2013

Appellant’s Admitted Prior Art Spec. ¶ 20 (AAPA)
Easypano, the Virtual Tour Way; Tourweaver 4.00 User Manual available at
http://www.easypano.com/download/tw manual.pdf pp. 1–11 (also available
at least 2011 via archive.org (PTO Form–892, mailed 9/22/2017)

Appeal 2019-003060
Application 13/731,918
4
REJECTIONS
Claims 1, 16, 20, 22, and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cardu, in view of EasyPano, in view of Berkema
in view of AAPA, in view of Rasmussen ‘375, and in further view of
Colavin.
Claims 2, 17, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cardu, EasyPano, Berkema, AAPA, Rasmussen ‘375, and
Colavin in further view of Samarasekera.
Claims 3, 4,18, 19, 21, 24, 25, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cardu, EasyPano, Berkema, AAPA,
Rasmussen ‘375, and Colavin in further view of Rasmussen ‘983.
Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cardu, EasyPano, Berkema, AAPA, Rasmussen ‘375, and
Colavin in further view of Vaittinen.
OPINION
35 U.S.C. § 103(a)
With respect to independent claims 1, 16, and 22, Appellant argues
the claims together. See Appeal Br. 9. Based on Appellant’s arguments, we
select independent claim 1 as illustrative and will address Appellant’s
arguments presented in both the Appeal Brief and Reply Brief. Dependent
claims 20 and 26 include similar recitations similar to the recitation so claim
1 that we discuss below and will thus stand or fall with illustrative claim 1.
Appellant sets forth arguments with respect to only the Cardu
reference. Appellant contends that the combination of references does not
teach the claimed “displaying a first virtual tour image including both a
rotatable panoramic image of a location and a clickable graphical unit
Appeal 2019-003060
Application 13/731,918
5
interface (GUI) object embedded within the rotatable panoramic image of
the location.” Appeal Br. 9; see generally Reply Br. 9–12. Appellant
further contends that the cited section of Cardu
describes that a “hotspot,” when activated, displays a map, and
that information related to the “hotspot” is displayed within an
“Image Information” field. Further, this section of Cardu is with
regard to FIG. 77, which depicts that the “Image Information”
field is in a separate frame than a frame including a panoramic
image, and that the map is also displayed in a separate frame
than the frame including the panoramic image.

Appeal Br. 11. Appellant also argues, “cited portions of Cardu, however, do
not explicitly state that the location of the hotspot indicates that the visual
element and the media content have any relationship.” Appeal Br. 14.
The Examiner finds
all of the three mentioned elements [Cardu’s “Image
Information” field and map are displayed in frames separate from
the “frame including the panoramic image”] are displayed in the
same window, which can also be considered a “frame.”
Therefore, at least this interpretation meets the argued element of
the claims. . . . All of the named elements are displayed in Cardu
because they are related to the same location or point of interest.
For example, tours, maps, and pictures of the same location are
shown in the Applicant- references Fig. 77 of Cardu.
Non-Final Act. 18–19.
We note that the term “frame” is not disclosed in the Cardu reference
and “window” is only found in limited paragraphs the Cardu reference. See
Cardu ¶¶ 263 “opens a pop-up window”; 287 “Help: Provides context
sensitive help to the user. This opens a new window providing the
information about the User Interface.” The Rasmussen ‘375 reference also
discloses in paragraph 43 “the browser window space is used to display the
main and secondary maps.” Additionally, the Rasmussen reference
Appeal 2019-003060
Application 13/731,918
6
discloses in paragraph 7 “displaying a viewing frame on one of the main
map or the secondary map, wherein the map that has the viewing frame
shows a geographic area that is larger than geographic area shown by the
other map.”
The Examiner uses the broadest reasonable interpretation of the plain
language to interpret the claimed “frame” to be the rectangular totality of the
screen.2 Ans. 18–19. Here, the Examiner finds that because all the
information is displayed on the same screen at the same time and, therefore,
it has a “relationship.”
Neither the Appellant nor the Examiner have provided definition or
limiting contacts for the claimed “frame.” We note that the Specification
gives some context for the “frame” and paragraphs 9 and 10 Rasmussen
‘375 reference evidence the use of multiple viewing frames.3

2 We leave it to the Examiner to determine whether the express claim
language “displaying within a frame embedded within the rotatable
panoramic image” (emphasis added) has a written description support or is
different from the disclosed “displayed within the virtual tour.” Spec. 7:5,
16, 21, 26; 10:19; 13:8, 11–12, 15.

3 The Rasmussen ‘375 reference discloses:
[t]he system may be configured to provide a viewing frame on
one of the main map or the secondary map, wherein the map that
has the viewing frame shows a geographic area that is larger than
geographic area shown by the other map. In one particular case,
the viewing frame, secondary map, and main map move in a
synchronous relationship, in response to user input. In another
particular case, the viewing frame, secondary map, and main map
move in a serial relationship, in response to user input. In another
particular case, the viewing frame, secondary map, and main map
move in a partially synchronous relationship, in response to user
input. The system can be configured to enable each of the main
map and the secondary map to be independently set to one of a
Appeal 2019-003060
Application 13/731,918
7
Common usage of the term “frame” can also be found in computer
terminology where a “frame” is “[o]ne complete scan of the active area of a
display screen.”4 The term “frame” may also be defined as “[i]n computer-
speak, a frame is a rectangular area absolutely positioned on the display
screen. In the online world, a frame refers to a single section of a Web page
that’s been coded to display ‘frames.’”5 The term “frame” in “[g]raphics
and desktop publishing programs . . . In these programs, frames are
rectangular areas meant for inserting graphics and text. They allow users to
place objects wherever they want to on the page.”6
We note that the disclosure in the Cardu reference is very limited with
respect to Figures 77 and 78, but Figures 77 and 78 include areas with no
reference numerals or associated description. Looking at the originally filed
drawings from the patent application of the Cardu reference, Figure 77

traditional type, satellite type, or hybrid type map. Thus, the user
could, for example, simultaneous view a detailed close-up
satellite map on the secondary map, and a traditional zoomed out
map on the main map.
. . .
At least two of the viewing frame, secondary map, and main map
can be programmed or otherwise configured to move in a
synchronous relationship, in response to user input.
Rasmussen ‘375 ¶¶ 9–10.

4 Free On-line Dictionary of Computing website, last accessed 9/11/2020
9:30 am; https://foldoc.org/frame.

5 NetLingo website; last accessed 9/11/2020 9:35 am;
https://www.netlingo.com/dictionary/f.php.

6 Tech Terms website; last accessed 9/11/2020 9:40 am
https://techterms.com/definition/frame.
Appeal 2019-003060
Application 13/731,918
8
includes “image information” area, “Directory and HotSpots” tabs, “blue
navigator moves map” or “Navigation” area (which is the main map with a
number “2”), framed image area in the middle of the screen (which is a
zoomed version of the smaller map number “2” from the bottom left corner
with additional zoom capability and navigation), a framed image area at the
top middle of the screen (a street level image of a portion of the larger map
at street level) and two advertising areas on the right side of the screen with
discernible labels “Test Banner 4” and “Global Tour Gateway.” From this
limited disclosure, the Examiner postulates the rejection. (See Cardu ¶¶
285–313 describing Figures 75–85.) We further note that the time frame of
the Cardu reference was from 2005–2006.
The limited disclosure corresponding to Figures 75–85 makes it
difficult to appreciate what is specifically disclosed or suggested by the
Cardu reference with regards to the user interface rather than the
developer/administrator interfaces. Moreover, we find that the majority of
the disclosure of the Cardu reference is directed more towards the
development of the city tour by an administrator (“admin”) rather than the
end user interface. From the disclosure with regards to the hotspots and the
development of the tour, it is not clear that the hotspots are displayed on or
within the displayed map image with additional content that is linked to that
hotspot on/within the same frame as the map. Rather, the media content
received from the third-party for the hotspot is not clearly taught or
suggested, by a preponderance of the evidence, as “displaying within a
frame embedded within the rotatable panoramic image,” as claimed.
We further note that the Examiner’s rejection is based upon a
combination of the various teachings and suggestions of the six prior art
references where the Rasmussen ‘375 reference was relied upon by the
Appeal 2019-003060
Application 13/731,918
9
Examiner to disclose and suggest the hotspot display within the map. Non-
Final Act. 7–8; see also Ans. 6, 7, 8.
The Examiner additionally argues that “[w]hile language such as
‘frame embedded within the rotatable panoramic image,’ this is not the
limitation argued by Appellant here. Further, Rasmussen [‘375] was cited
against that limitation, which Appellant ignores.” Ans. 6.
We disagree with the Examiner and find that independent claim 1
recites the express language the Examiner argues. We further find the
Examiner has not made a specific finding regarding “displaying within a
frame embedded within the rotatable panoramic image, the media content
received from the third-party content.” The Examiner cites Figure 1B of
Rasmussen ‘375 reference, but Figure 1B has two separate and distinct
frames within the same rectangular area on the screen and the secondary
map is not taught or suggested “within a frame embedded within the
rotatable panoramic image.”
We note that some of the additionally cited paragraphs of the Cardu
reference have teachings or suggestions for embedding links, but we are left
to speculate as to the implementation in the totality of the user interface.
(See generally Cardu ¶¶ 42, 97, 98, 103, 107, 108, 112–113, 114.)7

7 [0042] e. URL embedding for linkage to other websites that would have
further information regarding the hotspot.

[0097] The screen allows the admin to add, edit, delete and move a map
hotspot to the city tour. On clicking the Manage City Hotspots (Map
Hotspots) link, the Hotspot on Map screen is displayed as shown below:

[0098] (See Appendix-FIG. 20)

Appeal 2019-003060
Application 13/731,918
10
We find that the Examiner relies upon an unreasonably broad
interpretation of the claim limitation as being the totality of the display
screen area. Non-Final Act. 18 (“all of the three mentioned elements
[panoramic image, “Image Information” area, HotSpot tab] are displayed in
the same window, which can also be considered a ‘frame’”). Moreover, the
Examiner does not address Appellant’s specific response to the proffered
distinction, and the Examiner maintains that Appellant’s argument is not
commensurate in scope with the argued limitation. Ans. 5–6.
Additionally, Appellant argues that the Cardu reference describes an
“information field” that is related to the hotspot in Figure 77, but Cardu does

[0103] The admin can add hotspots to the City map by clicking the Add
Hotspots button. Then the admin will be prompted with a marker to select a
particular location in the map. After selecting a location a new screen titled
“Add City Hotspot Details” will be displayed as shown below:
[0104] (See Appendix-FIG. 22)

[0107] The admin can edit the existing hotspots. On placing the marker on
the existing hotspot the admin is prompted with three options-Edit Hotspot,
Delete Hotspot and Move Hotspot. By clicking on the Edit Hotspot option
the admin will be displayed with Edit Hotspot Details screen as shown
below. The fields are populated with the existing information in editable
mode.
[0108] (See Appendix-FIG. 23)

Fig. 23 shows XY coordinate indications for the screen/map

[0112] (See Appendix-FIG. 24)
1.4.1.6 Manage Picture Hotspots (Picture Hotspots)

[0113] Picture Hotspots screen allows the admin to add or
edit picture hotspots to the City Tour. On clicking the Manage
Picture Hotspots link, the “Hotspot on Picture” screen will be
displayed as shown below:
[0114] (See Appendix-FIG. 25)
Appeal 2019-003060
Application 13/731,918
11
not explicitly state that the location of the hotspot indicates that the visual
element and the media content have any “relationship.” Appeal Br. 14. The
Examiner finds that, “there is no requirement that Cardu must ‘explicitly
state’ such a concept in order to meet the contested limitation, and Appellant
provides no legal basis or precedent supporting such a positon” where
“Cardu meets the limitation at least implicitly.” Ans. 7 (emphasis added).
We disagree with the Examiner and find that the limited
disclosure of the Cardu reference does not specifically/explicitly or
implicitly teach or suggest the “displaying within a frame embedded
within the rotatable panoramic image, the media content received
from the third-party content.” Although the Cardu reference discloses
the “admin” having some ability to “add/delete/Edit” hotspots and
their placement in an “edit mode” (Cardu ¶ 107), the details of the
user interface are less detailed. The Examiner’s findings regarding
the “implicit” teachings are not well supported by a preponderance of
the evidence.
The Examiner further finds that:
Nonetheless, as a third notion, Cardu meets Appellant’s
characterization, while it differs from what is actually claimed,
that the location of the hotspot indicates that the visual element
and the media content have a relationship because Cardu
provides, “[w]hen the user selects a hotspot under the
“Hotspots” tab then the activated hotspot is displayed on the
map, the related 3600 panoramic picture or video will be loaded,
the promotional banner will be displayed and linked to their
Website and Email and simultaneously the information related
to the selected hotspot appears in the “Image Information” field.
The hotspots can also be activated in two ways: By selecting a
hotspot under the “Hotspot” [1] By placing a cursor over a
hotspot. This displays a thumbnail providing a preview or more
Appeal 2019-003060
Application 13/731,918
12
information about the hotspot. [2] By clicking on the hotspot the
hotspots are activated.”
The selection of a particular hotspot under the “Hotspots”
tab causes the activated hotspot to appear on the map. In other
words, the hotspot is specifically selected and its appearance on
the map indicates both that it is related to all visual elements of
the map and panoramic image, and also that the “information
related to the selected hotspot” is what appears in the “Image
Information” field. Therefore, it follows that the “information
related” to the hotspot is also related to the image and its visual
elements, and that the location of the particularly selected hotspot
(“on the map”) indicates that the visual element and the media
content have a relationship.
Ans. 8 (emphasis deleted, emphases added).
In the Reply Brief, Appellant repeats the arguments from the Appeal
Brief, and we note that the Examiner’s line of reasoning and analysis of the
Cardu reference lack any specific citations to the text or to specific elements
in the drawings. This may be because most of the user interface diagrams in
the Figures 75–78 have no specific description, illustration, or correlation
between the two portions of the disclosure. Consequently, although the
Examiner explains his “implicit” teachings (Ans. 7), the Examiner does not
start the Examiner’s analysis from any specific teachings or suggestions in
the Cardu reference. Although the Cardu reference teaches and suggests the
use of an image and some relationship of hotspots added by the
Administrator in development or design of the virtual tour and display
thereof on the image, the Cardu reference does not specifically teach or
suggest displaying corresponding content from activation within the frame
of the displayed image. Although the Examiner mentions the Rasmussen
’375 reference as also teaching display within the frame of the panoramic
image (Ans. 6–7), Figure 1B of Rasmussen ‘375 clearly shows the main map
Appeal 2019-003060
Application 13/731,918
13
136 within a frame which is modified and the secondary map 155 within a
separate frame.
The Examiner contends that Appellant’s arguments are not
commensurate in scope with claim 1’s limitations and “[n]owhere in the
argued limitation is required ‘embedded within a frame within the
panoramic image’” (Ans. 5), but we find the argued limitation is expressly
recited in the second “displaying” limitation. The Examiner does not
specifically address the argued limitation, and the Examiner does not
identify a specific teaching or suggestion in any of the prior art references.
Rather, the Examiner relies upon an unreasonably broad interpretation of the
claimed “frame” and relies upon “implicit” teachings regarding the prior art
references.
To buttress the Examiner’s finding of displaying “within a frame
embedded within the rotatable panoramic image,” the Examiner relies upon
the teachings of the Rasmussen ‘375 reference which clearly teaches two
distinct “frames.” Additionally, the Examiner speculates that the whole
window/screen is the same “frame” so that both the content from the third
party content provider and the map would be “embedded within a frame
within the panoramic image.” The Examiner further identifies that the
Rasmussen ’375 reference teaches or suggests this limitation. Ans. 6; Non-
Final Act. 7.
Appellant argues that:
The cited portions of Cardu describe an Information Field that is
displayed related to the hotspot. According to Cardu in Figure
77, the Information Field includes audio, email link, and web link
radio buttons for receiving additional information regarding the
hotspot. The cited portions of Cardu, however, do not explicitly
state that the location of the hotspot indicates that the visual
Appeal 2019-003060
Application 13/731,918
14
element and the media content have any relationship. Because
the cited portions of Cardu do not explicitly state that the location
of the hotspot indicates that the visual element and the media
content have any relationship, the cited portions of Cardu do not
teach or suggest the location of the GUI object in the rotatable
panoramic image indicates a relationship between one or more
visual elements of the image and the content received from the
third-party content management provider for display in the
image, as recited in claims 1, 16, and 22 of the present
application.
Appeal Br. 14.
The Examiner finds that the Rasmussen ‘375 reference discloses
(quoting Rasmussen Abstract and citing Figure 1b):
Digital mapping techniques are disclosed that provide more
flexibility to the user through the use of multiple views of map
information, including a secondary map and a main map. The
secondary map can provide the user with either a zoomed out or
in relative to the main map, or a different type of map view (e.g.,
satellite images). The secondary map can be turned on and off
by the user. The secondary map may include one or more
viewing frames that indicate views (e.g., current and alternate
views) of the main map. The user can move the main map,
viewing frame, or secondary map to achieve desired map views.
During such movement, the relationship between the main and
secondary maps can be synchronous, partially synchronous, or
serial.
Non-Final Act. 7–8 (emphasis added).
But as evident from Figure 1B of Rasmussen ‘375, the main map and
the secondary map are in separate “frames” and cannot teach or suggest the
claimed “displaying within a frame embedded within the rotatable
panoramic image, the media content received form the third-party content
management provider and related to the point of interest corresponding to
the visual element of the rotatable panoramic image” as proffered by the
Appeal 2019-003060
Application 13/731,918
15
Examiner. See also Rasmussen ‘375 Figures 2a–2c with separate “frames,”
and corresponding disclosure in ¶¶ 25–44; 32 “Note that the secondary map
155 in this embodiment is distinct and separate from the main map 135, but
effectively in-laid within the original space occupied by the main map.”
(Emphasis added).
As a result, we cannot agree with the Examiner that either the Cardu
reference or the Rasmussen ‘375 reference teaches or suggests the claimed
“displaying within a frame embedded within the rotatable panoramic image,
the media content received from the third-party content management
provider and related to the point of interest corresponding to the visual
element of the rotatable panoramic image.”
A preponderance of the evidence must show nonpatentability before
the PTO may reject the claims of a patent application. In re Caveney, 761
F.2d 671, 674 (Fed. Cir. 1985). Here, the Examiner has provided limited
citations to the Rasmussen ‘375 reference and limited citations to the Cardu
reference in the statement of the rejection and Response to Argument
sections. As a result, we are left to speculate as to the propriety of the
Examiner’s factual findings and conclusion of obviousness based upon these
speculative findings.
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness.” In re Kahn, 441
F.3d 977, 985–86 (Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350,
1355 (Fed. Cir. 1998)).
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
Appeal 2019-003060
Application 13/731,918
16
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“A rejection based on section 103 clearly must rest on a factual basis.
. . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis.” Id.
“Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior art so that
the claimed invention is rendered obvious.” Fritch, 972 F.2 at 1266 (citing
In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).
Here, the Examiner bears the initial burden of factually supporting
any prima facie conclusion of obviousness with an articulation of the
reason(s) why the claimed invention would have been obvious. We find the
underlying factual findings by the Examiner are not well supported by the
portions of the Cardu and Rasmussen ‘375 references as articulated in the
Appeal 2019-003060
Application 13/731,918
17
Non-Final Action and Examiner’s Answer. Therefore, the Examiner’s
conclusions are mere conclusory statements which lacks some rational
underpinning based upon facts to support the Examiner’s legal conclusion of
obviousness. Therefore, we cannot agree with the Examiner that a
preponderance of the evidence supports the Examiner’s factual findings and
conclusion of obviousness of illustrative independent claim 1.
We find that the Cardu reference is directed more towards a disclosure
of the development of the virtual tour map and sets forth little detail to the
user interface during a virtual tour. Paragraphs 285–313 of the Cardu
reference suggest that a separate window listing the hotspots tabs available
for the user and that the hotspots are indicated on the panoramic image as
“associated pulsing hotspots” (Cardu ¶ 288), but the corresponding content
(“the media content received from the third-party content management
provider and related to the point of interest corresponding to the visual
element of the rotatable panoramic image,”) is presented in a separate frame
outside the rotatable panoramic image frame rather than “displaying within a
frame embedded within the rotatable panoramic image.”
Although the content is displayed on the same screen, the content is
displayed in a different frame, and the Examiner has not addressed this
difference from the claimed invention and merely cited to the Rasmussen
‘375 reference which also does not teach or suggest an embedded frame
within the panoramic image.
As a result, we cannot sustain the Examiner’s obviousness rejection of
illustrative independent claim 1 and independent claims 16 and 22 which
contain similar limitations.

Appeal 2019-003060
Application 13/731,918
18
Dependent claims

With respect to the dependent claims, the Examiner relies upon
additional prior art references, and Appellant relies upon the arguments
advanced with respect to illustrative independent claim 1. Because the
Examiner has not identified how the additional prior art references remedy
the noted deficiency above with respect to illustrative independent claim 1,
we do not sustain the Examiner’s additional obviousness rejections.
With respect to the second rejection, Appellant relies upon the
arguments advanced with respect to illustrative independent claim 1 which
we found to be persuasive of error in the Examiner’s factual findings or
conclusion of obviousness. Appeal Br. 15. Therefore, we do not sustain the
rejection of claims 2, 17, and 23.
With respect to the third rejection, Appellant relies upon the
arguments advanced with respect to illustrative independent claim 1 which
we found to be persuasive of error in the Examiner’s factual findings or
conclusion of obviousness. Appeal Br. 15. Therefore, we do not sustain the
rejection of claims 3, 4, 18, 19, 21, 24, and 25.
With respect to the fourth rejection, Appellant relies upon the
arguments advanced with respect to illustrative independent claim 1 which
we found to be persuasive of error in the Examiner’s factual findings or
conclusion of obviousness. Appeal Br. 16. Therefore, we do not sustain the
rejection of claims 28 and 29.
CONCLUSION
The Examiner’s obviousness rejections are reversed.
Appeal 2019-003060
Application 13/731,918
19
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 16, 20,
22, 26
103 Cardu, EasyPano,
Berkema, AAPA,
Rasmussen ‘375,
Colavin
1, 16, 20,
22, 26
2, 17, 23 Cardu, EasyPano,
Berkema, AAPA,
Rasmussen ‘375,
Colavin,
Samarasekera
2, 17, 23
3, 4, 18, 19,
21, 24, 25,
27
103 Cardu, EasyPano,
Berkema, AAPA,
Rasmussen ‘375,
Colavin,
Rasmussen ‘983.
3, 4, 18, 19,
21, 24, 25,
27
28, 29 Cardu, EasyPano,
Berkema, AAPA,
Rasmussen ‘375,
Colavin, Vaittinen
28, 29
Overall
Outcome
1–4, 16–29

REVERSED