Apple Inc.

Patent Trials and Appeals Board

Jun 5, 2020

13917603 - (D) (P.T.A.B. Jun. 5, 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.
13/917,603 06/13/2013 Richard WILLIAMSON A00511C1 4475
151882 7590 06/05/2020
Invoke IP / Apple
84 W Santa Clara St, Suite 500
San Jose, CA 95113
EXAMINER
BUTTRAM, ALAN T
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
06/05/2020 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):
Apple@InvokeIP.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD WILLIAMSON, CHRISTOPHER BLUMENBERG,
MIKE MATAS, KIMON TSINTERIS, RYAN STAAKE, and ALEX KAN
____________________

Appeal 2019-001695
Application 13/917,603
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
IFTIKHAR AHMED, Administrative Patent Judges.

MacDONALD, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellant (Inventors) identifies Apple, Inc. (Applicant) as the real party-in-
interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1–4 and 10 are illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):
1. A computer-implemented method, comprising:
[A.] presenting a two-dimensional map containing a specified
location on a display with a field of view that is pointed
downward toward a street surface;
[B.] while presenting the two-dimensional map with the field of
view that is pointed downward toward the street surface,
receiving user input requesting a three-dimensional
panorama view of the specified location; and
[C.] in response to the user input requesting the three-
dimensional panorama view of the specified location,
presenting an animated sequence transitioning from the
two-dimensional map to the three-dimensional panorama
view of the specified location, where the animated sequence
presented in response to the user input includes
[i.] zooming into the specified location on the two-
dimensional map,
[ii.] transitioning from the zoomed two-dimensional map
to the three-dimensional panorama view with a field
of view showing a street surface at the specified
location, and
[iii.] spinning the three-dimensional panorama view such
that the field of view tilts up from the street surface to
a horizon in the three-dimensional panorama view of
the specified location.
2. The method of claim 1, wherein the user input includes selection of
a user interface element for invoking the three-dimensional
panorama view of the specified location.
3. The method of claim 2, wherein the animated sequence is
presented after completion of the selection of the user interface
element for invoking the three-dimensional panorama view of
the specified location.
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4. The method of claim 1, wherein the two-dimensional map and the
three-dimensional panorama view are both displayed in a
portrait orientation, and the method further comprises:
[D.] upon completion of the animated sequence, receiving a
second user input rotating the display to a landscape
orientation; and
[E.] presenting an orientation overlay on the three-dimensional
panorama view, where the orientation overlay indicates a
direction and an angular extent of the field of view.
10. The method of claim 1, further comprising:
[D.] receiving a notification that no panorama view for the
specified location is available;
[E.] presenting the animated sequence using a placeholder
panorama in place of the three-dimensional panorama
view;
[F.] upon completion of the animated sequence,
[i.] presenting an orientation overlay on the placeholder
panorama, where the orientation overlay indicates a
direction and an angular extent of the field of view of
the placeholder panorama; and
[ii.] presenting a perspective view of a street name
annotation and a perspective view of a navigation
indicator pointing in the direction shown in the
orientation overlay.

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REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Hancock US 5,642,106 June 24, 1997
Chen US 6,268,864 B1 July 31, 2001
Du US 2003/0011599 A1 Jan. 16, 2003
Oh US 2006/0132482 A1 June 22, 2006
Chau US 2008/0292213 A1 Nov. 27, 2008
Banerjee US 2008/0312819 A1 Dec. 18, 2008
Douris US 2009/0289956 A1 Nov. 26, 2009
Williamson US 8,493,408 B2 July 23, 2013

Google Earth User Guide (“Google Earth” hereinafter); ©2007
Google.

Google Earth now available for the iPhone (“Google Earth iPhone”
hereinafter); October 26, 2008;
http://googlemobile.blogspot.com/2008/10/google-earth-now-
available-for-iphone.html.
REJECTIONS
A.
The Examiner rejects claims 1, 12, and 17 under 35 U.S.C. § 101
“because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.” Final Act. 2–4.
With respect to this rejection, we select claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(iv). Appellant does not separately argue claims 12

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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and 17. Except for our ultimate decision, we do not discuss the merits of the
§ 101 rejection of claims 12 and 17 further herein.
B.
The Examiner rejects claims 1–3, 12–14, 17, and 18 under 35 U.S.C.
§ 103 as unpatentable over the combined teachings of Google Earth, Chen,
and Oh. Final Act. 14–19. As to this § 103 rejection, Appellant presents
separate arguments for claims 1 and 3. Appeal Br. 21–33. Appellant does
not argue separate patentability for claims 2, 12–14, 17, and 18. With
respect to this rejection, we select:
claim 1 as the representative claim for claims 2, 12, 13, and 17; and
claim 3 as the representative claim for claims 14 and 18.
Except for our ultimate decision, we do not discuss the merits of the § 103
rejection of claims 2, 12–14, 17, and 18 further herein.
The Examiner rejects claims 4 and 11 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Google Earth, Chen, Oh, and
Google Earth iPhone. Final Act. 20–21. Appellant presents separate
arguments for claim 4. Appeal Br. 33–35. Appellant does not argue
separate patentability for claim 11. With respect to this rejection, we select
claim 4 as the representative claim for claim 11. Except for our ultimate
decision, we do not discuss the merits of the § 103 rejection of claim 11
further herein.
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The Examiner rejects claim 10 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Google Earth, Chen, Oh, and Hancock.3
Final Act. 26–27. Appellant presents separate arguments for claim 10.
Appeal Br. 35–37.
The Examiner rejects claims 5–9, 15, 16, 19, and 20 under 35 U.S.C.
§ 103 as unpatentable over the combined teachings of Google Earth, Chen,
and Oh, in various combinations with other references. Final Act. 21–26.
Appellant does not present separate arguments for claims 5–9, 15, 16, 19,
and 20. Thus, the rejections of these claims turns on our decision as to
claim 1.
C.
The Examiner rejects claims 1–3, 7–9, 11–14, 17, and 18 on the
ground of nonstatutory double patenting as unpatentable over claims 1, 3, 5,
7–9 and 11 of U.S. Patent No. 8,493,408 in view of Oh. Final Act. 4–10.4
The Examiner rejects claim 4 on the ground of nonstatutory double
patenting as unpatentable over claims 1 and 3 of U.S. Patent No. 8,493,408
in view of Oh and Google Earth. Final Act. 10–11.
The Examiner rejects claims 5, 6, 15, 16, 19, and 20 on the ground of
nonstatutory double patenting as unpatentable over claims 1 and 3 of U.S.
Patent No. 8,493,408 in view of Oh and Banerjee. Final Act. 11–13.

3 Misspelled as “Plancock” in the Final Action. Final Act. 26–27.
4 Independent claims 1, 12, and 17 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claim 1 of U.S. Patent No.
8,493,408 in view of Oh. Final Act. 7. Therefore, the rejection of
dependent claims 2, 3, 7–9, 11, 12, 14, and 18 is similarly based on Oh.
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The Examiner rejects claim 10 on the ground of nonstatutory double
patenting as being unpatentable over claims 1 and 3 of U.S. Patent No.
8,493,408 in view of Oh and Hancock. Final Act. 13–14.
Appellant does not present arguments contesting these nonstatutory
double patenting rejections of claims 1–20.
In the Answer, the Examiner states “Every ground of rejection set
forth in the [Final] Office action dated 12-15-17 from which the appeal is
taken is being maintained by the examiner.” Ans. 2. In addition, the
nonstatutory double patenting rejections of claims 1–20 are repeated.
Ans. 3–13.
Because Appellant’s Appeal Brief does not present arguments
contesting the nonstatutory double patenting rejections, we summarily affirm
the Examiner’s double patenting rejections. Except for our ultimate
decision, the merits of these rejections are not discussed further herein.
OPINION
We review the Examiner’s rejections in light of Appellant’s Appeal
Brief and Reply Brief arguments.
A. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101 under the Alice/Mayo
Framework.5 2019 Revised Patent Subject Matter Eligibility Guidance, 84

5 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).
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Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).6 “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).7
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

6 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
7 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
B. Examiner’s § 101 Rejection - Alice/Mayo - Part 1
2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines that
claim 1 recites an abstract idea:
Claim(s) 1, 12 and 17 is/are directed to a series of steps that
transition map data in an animated sequence from a street view
to a panoramic horizon view.
Final Act. 2.
The [claim] limitations are nothing more than mathematical
algorithms that process data within a generic computing
environment. There are no additional elements that may qualify
as significantly more than the judicial exception. The claims
simply describe the concept of gathering map images with a
computer and modifying map data into a different map view.
This idea is similar to the basic concept of manipulating
information using mathematical relationships that courts have
found to be an abstract idea. This process can also be achieved
with pencil and paper; and with a humans abstract thought
process. The claim amounts to a “black box” described only in
terms of inputs and outputs and is not specific to any particular
invention by the inventor. [] Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S._, 134 S. Ct. 2347 (2014).
Final Act. 3 (emphasis added).
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C. Appellant’s § 101 Arguments & Panel’s Analysis
2019 Revised Guidance Step 2A – Prong 1
Appellant contends:
The Final Office Action’s conclusion that the claims are
directed to an abstract idea is improper because it . . . fails to
meaningfully articulate and apply what the claim is directed to.
Appeal Br. 8.
Under the Revised Guidance:
To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) identify the specific limitation(s)
in the claim under examination (individually or in combination)
that the examiner believes recites an abstract idea; and
(b) determine whether the identified limitation(s) falls within the
subject matter groupings of abstract ideas enumerated in
Section I of the 2019 Revised Patent Subject Matter Eligibility
Guidance.
2019 Revised Guidance, 84 Fed. Reg. at 54.
Even though the Examiner’s Final Action was issued prior to the 2019
Revised Guidance, we follow the 2019 Revised Guidance in our review to
determine whether the Final Action provides sufficient articulated reasoning
as to why claim 1 recites an abstract idea or other patent-ineligible concept
(e.g., a law of nature). That is, we ask whether the rejection adequately
address both (a) and (b) supra.
We conclude, the § 101 rejection on appeal does not sufficiently
articulate how any claim limitation(s) fall within one of the subject matter
groupings of abstract ideas enumerated in Section I of the 2019 Revised
Guidance. Appellant’s arguments persuade us the Examiner fails to provide
sufficient articulated reasoning to support a conclusion that the specific
claim limitations that the Examiner labels as included in the abstract idea fall
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within one of the three groupings of abstract ideas identified in the 2019
Revised Guidance or otherwise recite an abstract idea. Therefore, we do not
sustain the rejection of claim 1 under 35 U.S.C. § 101.
D. § 103 – Claim 1
D. 1.
Appellant raises the following argument in contending that the
Examiner errs in rejecting claim 1 under 35 U.S.C. § 103.
Appellant does not concede that Google Earth is prior art
as no evidence has been presented that it qualifies as a printed
publication as of the priority date. The 2007 copyright date on
the document does not establish that the document was
sufficiently publicly available prior to November 19, 2008.
Appeal Br. 21 n.65.
We are unpersuaded by Appellant’s argument.
[T]he examination context involves a burden-shifting framework
under which the USPTO can shift the burden to the applicant to
come forward with rebuttal evidence or argument to overcome a
prima facie case. Ex Parte Albert, 18 USPQ 2d 1325 (BPAI
1984) (“[T]he Examiner met his burden of proof by setting forth
the nominal publication date. . . . The Patent and Trademark
Office is in no position to establish any thing beyond that. The
burden is clearly upon appellants to disprove the prima facie
publication date established by the examiner.”); see also In re
Antor Media Corp., 689 F.3d 1282, 1287-89 (Fed. Cir. 2012)
(establishing a burden-shifting framework regarding
presumptive enablement of a prior art printed publication cited
by an examiner); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (establishing that the prima facie case is a procedural
device that shifts the burden of production to the applicant and
that the USPTO sets forth a prima facie case when its rejection
satisfies the notice requirement of 35 U.S.C. § 132); In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (establishing a
burden-shifting framework regarding prima facie cases of
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obviousness); In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(establishing a burden-shifting framework regarding rejections
based on findings of inherency).
Ex parte Grillo-Lopez, Appeal 2018-006082 (PTAB Jan. 31, 2020)
(Precedential) (emphasis added).
We determine the Google Earth copyright date is sufficient to
establish the Examiner has met his burden of proof by setting forth a
nominal publication date in 2007. We do not find evidence presented by
Appellant that would lead us to conclude the Google Earth document was
not sufficiently publicly available prior to November 19, 2008.
Separately, our review of the Google Earth document determines that
it invites the reader to download and install the Google Earth application at
page 1 and references Version 4.1 of Google Earth at page 3 thereof.
Further evidence establishes that this version of Google Earth was the
current version for four months spanning May-August 2007. See Google
Earth 4.1 released; https://www.zdnet.com/article/google-earth-4-1-
released/May 12, 2007; “Google just recently released Google Earth 4.1”.
Google Earth 4.2 Released – New Night Sky Feature; Google Earth Blog;
August 22, 2007; https://www.gearthblog.com/blog/archives
/2007/08/google_earth_42_rele.html.
D. 2.
Also, Appellant raises the following arguments in contending that the
Examiner errs in rejecting claim 1 under 35 U.S.C. § 103.
Google Earth certainly does not disclose “an animated sequence
transitioning from the two-dimensional map to the three-
dimensional panorama view of the specified location” in
response to user input requesting the three-dimensional
panorama view of the specified location while presenting a two-
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dimensional map with the field of view that is pointed downward
toward the street surface.
Appeal Br. 24.
Chen does not provide “an animated sequence” or transition
“from the two-dimensional map to the three-dimensional
panorama view.” Chen certainly does not disclose “an animated
sequence transitioning from the two-dimensional map to the
three-dimensional panorama view of the specified location” in
response to user input requesting the three-dimensional
panorama view of the specified location while presenting a two-
dimensional map with the field of view that is pointed downward
toward the street surface.
Appeal Br. 24–25.
Oh certainly does not disclose the specific animated sequence
including zooming into the specified location on the two-
dimensional map, transitioning from the zoomed two-
dimensional map to the three-dimensional panorama view with a
field of view showing a street surface at the specified location,
and spinning the three-dimensional panorama view such that the
field of view tilts up from the street surface to a horizon in the
three-dimensional panorama view of the specified location.
Appeal Br. 26.
We are not persuaded by Appellant’s arguments. First, Appellant
does not address the actual reasoning of the Examiner’s rejection. Instead,
Appellant attacks each of the Google Earth, Chen, and Oh references
individually for lacking a teaching that the Examiner relied on a combination
of Google Earth, Chen, and Oh to show. For example, the rejection does not
rely on Google Earth or Chen for teaching the “three-dimensional panorama
view” (Appeal Br. 24–25) aspect disputed by Appellant. See Final Act. 16
(finding Oh teaches, “three-dimensional panorama view of the specified
location”). Further, the rejection does not rely on Oh for teaching the “tilts
up” (Appeal Br. 26) aspect disputed by Appellant. See Final Act. 6 (finding
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Google Earth teaches, “the field of view tilts up from the street surface to the
horizon”). One cannot show nonobviousness by attacking references
individually when the rejection is based on a combined teachings of the
references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining the
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references).
D. 3.
Further, Appellant raises the following arguments in contending that
the Examiner errs in rejecting claim 1 under 35 U.S.C. § 103.
Taking the collective disclosure of Google Earth, Chen and Oh,
the references still fail to teach “an animated sequence
transitioning from the two-dimensional map to the three-
dimensional panorama view of the specified location,” as none
of the references mention transitioning from the two-dimensional
map to the three-dimensional panorama view of the specified
location. Likewise, the references fail to teach an “animated
sequence presented in response to the user input includes
zooming into the specified location on the two-dimensional map,
transitioning from the zoomed two-dimensional map to the three-
dimensional panorama view with a field of view showing a street
surface at the specified location, and spinning the three-
dimensional panorama view such that the field of view tilts up
from the street surface to a horizon in the three-dimensional
panorama view of the specified location” as none of the
references discloses such a sequence in response to a user input.
Appeal Br. 26 (emphasis added).
We are not persuaded by Appellant’s argument. Appellant merely
recites the particular language of claim 1 and asserts none of the cited prior
art references disclose the claim limitations. Without more, this fails to
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constitute an argument on the merits. See 37 C.F.R. § 41.37(c)(1)(iv); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
D. 4.
Furthermore, Appellant raises the following arguments in contending
that the Examiner errs in rejecting claim 1 under 35 U.S.C. § 103.
To establish a prima facie case of obviousness under M.P.E.P.
§§ 2141-43, Office personnel are required to provide a reasoned
explanation as to why the invention claimed would have been
obvious to a person of ordinary skill in the art at the time of the
invention. See M.P.E.P. § 2143; see also M.P.E.P. § 2142.79
However, the Final Office Action’s stated explanation does not
provide such a reasoned explanation to support its conclusion.
Appeal Br. 27.
It is unclear from this analysis whether the Final Office Action
intends to invoke one of, both of, or a mixture of the exemplary
rationales of MPEP §§ 2143(I)(E) and 2143(I)(G), but the
requirements are not met.
Appeal Br. 28.
Appellant quotes the Examiner’s reasoning:
One of ordinary skill in the art could have a reasonable
expectation of success to combine two like systems where both
systems process animated data. Therefore, it would have been
obvious to one of ordinary skill in the art, at the time of the
invention, to modify the invention of Google Earth with the
features of panoramic images as taught by Chen. The
motivation would have been panoramic images are extremely
well known in the art and would have been obvious to at least try
in the “horizon view” of Google Earth.
Appeal Br. 27 (quoting the Final Action at page 16, lines 1–8) (emphasis
added).
One of ordinary skill in the art could have a reasonable
expectation of success to combine two like systems where both
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systems use maps. Therefore, it would have been obvious to one
of ordinary skill in the art, at the time of the invention, to modify
the invention of Google Earth as modified by Chen with the
features of 2D to 3D transition as taught by Oh. The motivation
would have been a viewer receives a sense of the connectedness
of the scenes from the transitional images (abstract).
Appeal Br. 28 (quoting the Final Action at page 17, line 16 through page 18,
line 2) (emphasis added).
Appellant then argues that the Examiner’s “obvious to try rationale”
and “teaching, suggestion, or motivation rationale” (i.e., “connectedness”)
are flawed (id. at 28–29) and “the Final Office Action simply appears to use
hindsight” (id. at 29–31).
We are not persuaded by Appellant’s arguments. First, although
Appellant reads the Examiner’s phrase “obvious to try in” as an obvious to
try rationale, we read the Examiner’s combination of the teachings of
Google Earth and Chen as one of mere substitution. We agree with the
Examiner that a “panoramic image” (taught by Chen) would have been
obvious to try in place of (substituted for) the “horizon view” taught by
Google Earth.
[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a
predictable result.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
Second, we disagree with Appellant’s argument that the Examiner errs
in modifying the combined teachings of Google Earth and Chen using the
teachings of Oh based on the reasoned motivation that “a viewer receives a
sense of connectedness of the scenes from the transitional images.” Oh,
Abstract. Appellant repeatedly points out the importance of a user’s
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“mental” connection of the starting and ending views (images). Spec. ¶¶ 67,
70, 73. This is exactly the issue addressed by Oh’s inter-scene transition
method. “Assuming a simple case of two panoramic scenes, even when the
acquisition positions are very close, it is often difficult for the viewer to
mentally connect the two scenes.” Oh ¶ 5.
Third, we have reviewed the rejection for improper hindsight and find
none. Contrary to Appellant’s hindsight argument, we conclude the
Examiner’s rejection of claim 1 takes into account only knowledge that was
within the level of ordinary skill in the art at the time the invention was
made. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
E. § 103 – Claim 3
Appellant raises the following arguments in contending that the
Examiner errs in rejecting claim 3 under 35 U.S.C. § 103.
The Final Office Action asserts that it would be obvious to
a person of ordinary skill in the art to manually select the
sequence of operations, and––relying on In re Venner, 120
USPQ 192––that the claims merely automate manual activity
which has accomplished the same result involving only routine
skill in the art. The Final Office Action’s reliance on In re
Venner is mistaken.
First, as discussed above, none of the references, alone or
in any combination, establish the sequence of operations. Thus,
even though a person of ordinary skill in the art might be able to
manually select multiple navigation buttons in Google Earth to
perform claimed the animated sequence, the animated sequence
of claim 1 is not obvious by any means (nor would it result in
transitioning from two-dimensional map to a three-dimensional
panoramic view).
[Second, g]iven that the claimed animated sequence is not
obvious and the claim is not replacing a manual activity which
has accomplished the same result, In re Venner is inapplicable.
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Appeal Br. 32 (emphasis added).
We are not persuaded by Appellant’s argument. As to Appellant’s
“First” argument, for the reasons discussed supra, we find Appellant’s
arguments unpersuasive with respect to claim 1.
As to the second argument, we find Examiner’s reliance on In re
Venner to be unnecessary. The Examiner cites to paragraphs 69–73 of Oh as
teaching “a method provides a transition, in a computer system having a
display that simulates motion between a first scene and a second scene. The
method includes receiving an indication of a viewpoint in the second scene
towards which a transition is to be made.” We conclude that the claimed
“animated sequence is presented . . .” is taught by Oh as simulates motion at
paragraph 71.
To simulate motion, “transitional objects” are created.
Transitional scenes incorporating these transitional objects are
displayed to simulate motion from the first scene to the second
scene.
Oh ¶ 71.
F. § 103 – Claim 4
F. 1.
Appellant raises the following argument in contending that the
Examiner errs in rejecting claim 4 under 35 U.S.C. § 103.
The Final Office Action (page 20), relying on Google Earth page
8, suggests that Google Earth (in view of Chen) “teaches
presenting an orientation overlay . . . where the orientation
overlay indicates a direction and an angular extent of the field of
view.” Page 8, however, discloses navigation controls which do
not indicate the direction and the angular extent of the field of
view.
Appeal Br. 34.
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As to Appellant’s assertion, we are not persuaded. We agree with the
Examiner that moving the “tilt slider 1” (“[m]ove the slider”) and rotating
the “navigation ring 6” (“drag the rotation ring”) indicates a direction and an
angular extent of the field of view.
F. 2.
Also, Appellant raises the following argument in contending that the
Examiner errs in rejecting claim 4 under 35 U.S.C. § 103.
[The] “iPhone” and its “features of orientation” have not been
qualified as prior art. These terms are not explained in any detail
and it is unclear under what basis the Final Office Action
intended to qualify as prior art (e.g., a patent application, printed
publication, public use, on sale, etc.). Thus, without further
evidence, “iPhone” and its “features of orientation” have not
been qualified as prior art.
Appeal Br. 34 (emphasis added).
As to Appellant’s argument, we are not persuaded. The Examiner
finds:
Google Earth as modified by Chen and Oh fails to teach the map
and the panorama are both displayed in a portrait orientation (It
is well known the iPhone can operate in either the landscape or
portrait orientation), and the method further comprises: upon
completion of the animated sequence, receiving a second user
input rotating the display to a landscape orientation; (user rotates
the iPhone to landscape orientation).
Final Act. 20 (emphases added). Thus, we understand the Examiner finds
that a person of ordinary skill in the art would understand the operation of an
iPhone. As the MPEP explains,
Any obviousness rejection should include, either explicitly or
implicitly in view of the prior art applied, an indication of the
level of ordinary skill. A finding as to the level of ordinary skill
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may be used as a partial basis for a resolution of the issue of
obviousness.
. . .
“A person of ordinary skill in the art is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d
at 1397. “[I]n many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a
puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may
also take into account “the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418, 82
USPQ2d at 1396.
In addition to the factors above, Office personnel may rely on
their own technical expertise to describe the knowledge and
skills of a person of ordinary skill in the art. The Federal Circuit
has stated that examiners and administrative patent judges on the
Board are “persons of scientific competence in the fields in
which they work” and that their findings and that their findings
are “informed by their scientific knowledge, as to the meaning of
prior art references to persons of ordinary skill in the art.” In re
Berg, 320 F.3d 1310, 1315, 65 USPQ2d 2003, 2007 (Fed. Cir.
2003).
MPEP § 2141(II)(C). Thus, we are persuaded that the Examiner’s findings
are sufficient to support this rejection.
Here the Applicant is Apple, Inc. Thus, Applicant is well positioned
to respond to the Examiner’s determination that the Apple “iPhone” and its
“features of orientation” are prior art as to this application on appeal. See
for example, Forstall et al., US 2008/0165144 A1, published July 10, 2008,
entitled “Portrait-Landscape Rotation Heuristics for a Portable Multifunction
Device” and assigned to Apple Inc.
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G. § 103 – Claim 10
Appellant raises the following argument in contending that the
Examiner errs in rejecting claim 10 under 35 U.S.C. § 103.
The solution of Hancock pointed to in the Final Office Action-
using dead-reckoning and the visual gyroscope when a map of
the roadway is not available-has nothing to do with the user
interface handling of missing data of panoramic views.
Appeal Br. 37.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“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. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
Particularly, we agree with Appellant that the language of claim 10
requires “a placeholder [view] in place of [an unavailable] view,” and we
disagree with the Examiner’s reasoning that Hancock alone without more is
sufficient to show the disputed claim limitation. We conclude, consistent
with Appellant’s arguments that there is insufficient articulated reasoning to
support the Examiner’s finding that Hancock discloses the argued claim
limitation.
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Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 10 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.
CONCLUSION
Appellant has shown the Examiner erred in rejecting claims 1, 12, and
17 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter.
Appellant has shown the Examiner erred in rejecting claim 10 as
being unpatentable under 35 U.S.C. § 103.
The Examiner has not erred in rejecting claims 1–9 and 11–20 as
being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 1, 12, and 17 as patent ineligible
under 35 U.S.C. § 101 is reversed.
The Examiner’s rejection of claim 10 as being unpatentable under
35 U.S.C. § 103 is reversed.
The Examiner’s rejections of claims 1–9 and 11–20 as being
unpatentable under 35 U.S.C. § 103 are affirmed.
The Examiner’s provisional rejection of claims 1–20 as being
unpatentable on the ground of nonstatutory double patenting is affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 12, 17 101 Eligibility 1, 12, 17
1–20 Non-statutory
Double Patenting
1–20
1–20 103 Google Earth User
Guide, Chen, Oh, the
iPhone, Hancock,
1–9, 11–20 10
Overall
Outcome

1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED