Ofstad, AndrewDownload PDFPatent Trials and Appeals BoardMay 28, 202013658794 - (D) (P.T.A.B. May. 28, 2020) Copy Citation 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. 13/658,794 10/23/2012 Andrew Ofstad 31730/15293-00 3005 12716 7590 05/28/2020 Marshall, Gerstein & Borun LLP (Google) 233 South Wacker Drive 6300 Willis Tower Chicago, IL 60606-6357 EXAMINER GOOD JOHNSON, MOTILEWA ART UNIT PAPER NUMBER 2616 NOTIFICATION DATE DELIVERY MODE 05/28/2020 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW OFSTAD Appeal 2019-001722 Application 13/658,794 Technology Center 2600 Before KRISTEN L. DROESCH, JOYCE CRAIG, and STEVEN M. AMUNDSON, Administrative Patent Judges. CRAIG, 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, 2, 4–16, and 18–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Google Inc. Appeal Br. 3. Appeal 2019-001722 Application 13/658,794 2 CLAIMED SUBJECT MATTER The claims are directed to displaying textual information related to geolocated images. Spec. Title, ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method in a computing device for providing information about geographic locations, the method comprising: providing, using one or more processors, an interactive three-dimensional (3D) display of geolocated imagery for a geographic area via a user interface of the computing device, including generating a view of the geolocated imagery from a perspective of a notional camera having a particular camera pose, wherein the camera pose is associated with at least position and orientation; receiving, via the user interface, a selection of a location within the interactive display; automatically identifying a symbolic location corresponding to the selected location, wherein at least textual information is available for the symbolic location; in response to receiving the selection of the location within the interactive display, displaying an expandable overlay window with a textual description of the symbolic location; receiving, via the user interface, a selection of the expandable overlay window; and in response to receiving the selection of the expandable overlay window, automatically and without further input via the user interface, (i) moving the position of the notional camera so as to directly face the selected location, and (ii) providing an expanded overlay window that includes a link to additional information related to the symbolic location. REJECTIONS Claims 8–13 stand rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite for failing to particularly point out and distinctly Appeal 2019-001722 Application 13/658,794 3 claim the subject matter which the applicant regards as the invention. Final Act. 2. Claims 1, 2, 4–16, and 18–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Meier et al. (US 2011/0276556 A1, published Nov. 10, 2011) (“Meier”), Douris et al. (US 2009/0289955 A1, published Nov. 26, 2009) (“Douris”), Chen et al., Automatic Detection and Recognition of Signs from Natural Scenes, IEEE Transactions on Image Processing, Vol. 13, No. 1, January 2004, pages 87– 99 (“Chen”), Kohli et al. (US 2012/0257814 A1, published Oct. 11, 2012) (“Kohli”), and Khan (US 2004/0001110 A1, published Jan. 1, 2004). Final Act. 2–11. Claims 1, 2, 4–16, and 18–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of Hamynen et al. (US 2007/0162942 A1, published July 12, 2007) (“Hamynen”) and Snavely et al. (US 2007/0110338 A1, published May 17, 2007) (“Snavely”). Final Act. 11–21. ANALYSIS Rejection of Claims 8–13 Under 35 U.S.C. § 112, Second Paragraph Claim 8 recites, in part, “receiving a selection of an expandable window overlaying the photographic image.” Appeal Br. A-2. The Examiner concluded that, because claim 8 fails to disclose an expandable window overlay, the claim is indefinite. Final Act. 2. In the Appeal Brief, Appellant did not address the indefiniteness rejection. Any arguments Appellant could have made, but chose not to make, in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-001722 Application 13/658,794 4 Accordingly, we affirm pro forma the Examiner’s rejection of claims 8–13 under 35 U.S.C. § 112, second paragraph. Rejection of Claims 1, 2, 4–16, and 18–20 Under 35 U.S.C. § 103(a) Rejection Based on Meier, Douris, Chen, Kohli, Khan We have reviewed the obviousness rejection of claims 1, 2, 4–16, and 18–20 over Meier, Douris, Chen, Kohli, and Khan in light of Appellant’s arguments that the Examiner erred. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made, but chose not to make, in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s arguments are not persuasive of error. We agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Answer (Ans. 26–31) and in the Action from which this appeal was taken (Final Act. 3–11). We provide the following explanation for emphasis. With respect to independent claim 1, Appellant contends the cited portions of Meier and Douris do not teach or suggest the limitation “in response to receiving the selection of the location within the interactive display, displaying an expandable overlay window with a textual description of the symbolic location,” as recited in claim 1. Appeal Br. 12–13. Appellant contends that the Examiner relied on Douris as teaching the disputed limitation. Id. at 13. Appellant argues that Douris “does not display an expandable overlay window with a textual description of the symbolic location in response to receiving a selection, via a user interface, of a location within an interactive display.” Id. Appeal 2019-001722 Application 13/658,794 5 We are not persuaded that the Examiner erred. The Examiner found that Meier teaches “receiving, via the user interface, a selection of a location within the interactive display,” as recited in claim 1. Final Act. 3 (citing Meier ¶ 99). We agree with the Examiner that Meier teaches or suggests selecting a position on a virtual map in order to receive location-based information related to the selected position. See Meier ¶ 99. The Examiner further found that Douris teaches “displaying an expandable overlay window with a textual description of the symbolic location,” as recited in claim 1. Final Act. 5 (citing Douris ¶ 39). Paragraph 39 of Douris teaches supported overlay information that identifies “entities such as physical locations, buildings, or individuals, as well as information associated with these entities.” See Douris ¶ 39. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but 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. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, Appellant attacks Douris individually, even though the Examiner relied on the combination of Meier, Douris, Chen, Kohli, and Khan in rejecting claim 1. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appellant has not persuaded us that the combined teachings of Meier and Douris, relied on by the Examiner, would not have at least suggested the disputed limitation to an artisan of ordinary skill. For these reasons, we are not persuaded that the Examiner erred in finding that the combined teachings of Meier, Douris, Chen, Kohli, and Khan teach or suggest “in response to receiving the selection of the location Appeal 2019-001722 Application 13/658,794 6 within the interactive display, displaying an expandable overlay window with a textual description of the symbolic location,” as recited in claim 1. Appellant next contends that the cited portions of the references fail to teach or suggest the limitation “in response to receiving the selection of the expandable overlay window, automatically and without further input via the user interface, (i) moving the position of the notional camera so as to directly face the selected location,” as recited in claim 1. Appeal Br. 14. Appellant argues that, while Douris describes “overlay information ... with respect to identified entities” (citing Douris ¶ 29) and that a user may place an order by “virtually touch[ing] a ‘Start Order Now’ button” (citing Douris ¶ 51), “the system in Douris does not move the position of the notional camera in response to receiving a selection of the ‘Start Order Now’ button.” Appeal Br. 14. Appellant further argues that “none of Chen, Kohli, and Khan mentions an expandable overlay window, much less moving the position of the notional camera in response to receiving a selection of an expandable overlay window.” Id. at 15. We are not persuaded that the Examiner erred. The Examiner found that Khan teaches that “the view from the view point is automatically faced toward the model” (citing Khan ¶ 46) and “moving a view point of a camera from two dimensional input such as a mouse stroke, stylus movement, etc.” (citing Khan ¶ 47). Final Act. 6. We agree with the Examiner that Khan teaches that a viewpoint of a view of a model is moved and then automatically faced toward the model and appropriately distanced from the model. See Khan ¶ 46. Appellant argues that, by requiring the position of the notional camera to be moved so as to directly face the selected location, the claim language at Appeal 2019-001722 Application 13/658,794 7 least implicitly requires the position of the notional camera to be moved from a position that does not directly face the selected location to a position that directly faces the selected location. Appeal Br. 15. Appellant argues that Khan does not teach this type of movement, as the system in Khan is always directly facing the model. Id. Appellant, however, does not present persuasive argument or objective evidence in support of Appellant’s argument. Rather, Appellant cites various portions of Khan, including the Background section. Id. (citing Khan ¶¶ 2, 12, 43). The cited portions, however, do not persuade us that the Examiner erred in finding that Khan teaches or suggests “moving the position of the notional camera so as to directly face the selected location,” as recited in claim 1. With regard to Appellant’s argument that Khan does not teach or suggest “in response to receiving the selection of the expandable overlay window,” as recited in claim 1, the Examiner found that Douris teaches in Figures 5 and 7 that a user selects an action on the overlay window, which then expands the presentation of information associated with the selected location. Final Act. 5 (citing Douris Figs. 5, 7). Appellant has not rebutted persuasively the Examiner’s findings. Nor has Appellant addressed the combined teachings of Douris and Khan, relied on by the Examiner. See Mouttet, 686 F.3d at 1333 (citing Keller, 642 F.2d at 425) (“The test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art.”). For these reasons, we are not persuaded that the Examiner erred in finding that the combined teachings of Meier, Douris, Chen, Kohli, and Khan teach or suggest the limitation “in response to receiving the selection Appeal 2019-001722 Application 13/658,794 8 of the expandable overlay window, automatically and without further input via the user interface, (i) moving the position of the notional camera so as to directly face the selected location,” as recited in claim 1. Next, Appellant contends that the cited portions of the prior art fail to teach “in response to receiving the selection of the expandable overlay window, automatically and without further input via the user interface ... ii) providing an expanded overlay window that includes a link to additional information related to the symbolic location,” as recited in claim 1. Appellant argues that, even assuming that the additional billboards 702–706 in Douris Figure 7 can be mapped to an expanded overlay window that includes a link to additional information related to the symbolic location (“Learn More” links), the additional billboards 702–706 are not presented in response to receiving a selection of an expandable overlay window, as claim 1 requires. Appeal Br. 18. We are not persuaded of Examiner error. The Examiner found that Douris teaches in Figures 5 and 7 that a user selects an action on the overlay window, which then expands the presentation of information associated with the selected location. Final Act. 5 (citing Douris Figs. 5, 7). Appellant’s argument that Douris’s additional billboards in Figure 7 are not presented in response to receiving a selection of an expandable overlay window is unavailing. The Examiner concluded that it would have been obvious to an artisan of ordinary skill that selecting “Learn More” on the expandable overlay window in Douris Figure 7 “would expand information with a search term associated with the selected location.” Final Act. 5–6. Appellant has not persuasively rebutted the Examiner’s findings of fact and conclusion of obviousness. Appeal 2019-001722 Application 13/658,794 9 For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Meier, Douris, Chen, Kohli, and Khan teaches or suggests the limitation “in response to receiving the selection of the expandable overlay window, automatically and without further input via the user interface . . . ii) providing an expanded overlay window that includes a link to additional information related to the symbolic location.” Appellant also challenges the Examiner’s rationale for combining the teachings of Douris and Khan, arguing that one of ordinary skill in the art would not have combined the references. Appeal Br. 18. Appellant argues that “a problem specifically solved by Khan of how to manipulate a three- dimensional model with a single input to view different parts of the model surface while keeping the model virtually facing the artist and at a constant distance” does not occur in Douris or any of the other references. Id. We are not persuaded that the Examiner erred. It is well settled that the “use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). Moreover, a rejection based on obviousness only needs to be supported by “some articulated reasoning with some rational underpinning” to combine known elements in the manner required by the claim. KSR, 550 U.S. at 418. Here, the Examiner has set forth articulated reasoning with rational underpinnings for the combination. Final Act. 7. With regard to Appellant’s contention of improper hindsight (Appeal Br. 18), Appellant has not identified any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was Appeal 2019-001722 Application 13/658,794 10 not otherwise within the level of ordinary skill in the art at the time of invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor has Appellant provided objective evidence of secondary considerations, which “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Appellant also argues that combining the teachings of Douris and Khan is improper because it “would require a change in the principle of operation of the Khan software.” Appeal Br. 19. Appellant argues that combining Douris and Khan would require selecting the model in Khan and changing Khan’s operation from moving a camera or brush about a model in response to input to the left or the right of the model to a system that is able to adjust the viewing angle based on a selection of the model itself. Id. We are not persuaded that the Examiner erred in combining the teachings of Douris and Khan. It is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” Mouttet, 686 F.3d at 1332 (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. See Keller, 642 F.2d at 425. Accordingly, we sustain the Examiner’s § 103(a) rejection of independent claim 1, as well as the Examiner’s § 103(a) rejection of independent claims 8 and 14, not argued separately with particularity. Appeal Br. 11. We also sustain the Examiner’s § 103(a) rejection of dependent claims 2, 4–7, 9–13, 15, 16, and 18–20, not argued separately with particularity. Id. at 20. Appeal 2019-001722 Application 13/658,794 11 Rejection Based on Hamynen and Snavely In the Appeal Brief, Appellant did not address the Examiner’s § 103(a) rejection of claims 1, 2, 4–16, and 18–20 over Hamynen and Snavely. In the Reply Brief, Appellant addressed the Examiner’s rejection for the first time. Reply Br. 2–6. Appellant, however, has waived arguments directed to the rejection of the pending claims over Hamynen and Snavely because Appellant presented the arguments for the first time in the Reply Brief, without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2018); accord Ex parte Borden, 93 USPQ2d 1473, 1473–74 (BPAI 2010 (informative opinion) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Accordingly, we affirm pro forma the Examiner’s § 103(a) rejection of claims 1, 2, 4–16, and 18–20 over Hamynen and Snavely. DECISION We affirm the decision of the Examiner rejecting claims 1, 2, 4–16, and 18–20. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8–13 112, second paragraph Indefiniteness 8–13 1, 2, 4–16, 18–20 103(a) Meier, Douris, Chen, Kohli, Khan 1, 2, 4–16, 18–20 1, 2, 4–16, 18–20 103(a) Hamynen, Snavely 1, 2, 4–16, 18–20 Overall Outcome: 1, 2, 4–16, 18–20 Appeal 2019-001722 Application 13/658,794 12 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 Copy with citationCopy as parenthetical citation