Ex Parte 7,577,316 B2 et al

Patent Trial and Appeal Board

Sep 28, 2018

95000683 (P.T.A.B. Sep. 28, 2018)

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.
95/000,683 08/17/2012 7,577,316 B2 13557-105153.R2 1052
23363 7590 09/28/2018
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
UNITED STATES OF AMERICA
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/28/2018 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 2018-007271
Reexamination Control No. 95/000,683
Patent No. 7,577,316 B2
Technology Center 3900
__________________

Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)
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I. STATEMENT OF CASE
This proceeding involves U.S. Patent No. 7,577,316 B2 (the ’316
patent) issued August 18, 2009 to Enrico Di Bernardo and Luis F.
Concalves.
In an earlier Decision (“Dec.”) mailed August 15, 2016, we affirmed
the Examiner’s decision rejecting claims 13, 18–24, 36, 37, 39–41, and 43 of
the ’316 patent and reversed the Examiner’s decision not to adopt
Requester’s proposed rejection of claim 42. Dec. 29–30. We presented a
new ground of rejection for claim 42 based on Yee and Dykes. Dec. 26–30.
Patent Owner elected to reopen prosecution before the Examiner pursuant to
37 C.F.R. § 41.77(b)(1) (“PO Response”), submitting an amendment to
claim 42 and remarks. Requester filed comments under 37 C.F.R. § 41.77(c)
(“3PR Comments.”). On May 23, 2017, the Office granted Patent Owner
request to reopen prosecution for consideration of claim 42 and remanded
the proceedings to the Examiner. Order 4.
On remand, the Examiner maintains the new ground of rejection of
claim 42 in the “Examiner’s Determination Under 37 CRF [sic] 41.77(d)”
(“Ex. Deter.”) mailed February 8, 2018. Ex. Deter. 2. Patent Owner
submitted comments (“PO Comments”) as set forth in 37 C.F.R. § 41.77(e)
on March 8, 2018. Requester submitted a reply (“3PR Reply”) to the Patent
Owner’s comments as set forth in 37 C.F.R. § 41.77(e) on April 4, 2018.
This proceeding has been returned to the Board under 37 C.F.R.
§ 41.77(f).

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Claim Status
According to Patent Owner, claims 2–5, 11–15, 18–25, 27, 28, and
30–43 are pending and claims 1, 6–10, 16, 17, 26, and 29 are canceled. PO
Response 11–12. According to Patent Owner, claims 13, 18–24, and 36–43
are subject to reexamination. PO Response 11–12. Claim 38 has been
indicated as patentable. Dec. 2–3 (citing RAN 1, 4). The remaining claims
subject to reexamination have been rejected. Dec. 30. As noted, claim 42
was subject to the remand order and has returned to us. We address claim
42.
Our new Decision is deemed to incorporate the earlier Decision,
except for those portions specifically withdrawn. 37 C.F.R. § 41.77(f).
Claim 42 and claims 1, 20, and 36, from which claim 42 depends
directly or indirectly, read as follows:
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;
displaying an icon associated with an object in the
geographic area;
receiving a user selection of the icon; and
identifying a second location based on the user selection,

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20. The method of claim 1, 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.

36. The method of claim 20, wherein the first and second
images are each a composite image created by processing pixel
data of a plurality of the image frames.

42. The method of claim 36 wherein the image source
comprises images comprising views of 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 Response 2, 5, 8–9 (underlining currently amended language).
Prior Art
The following evidence of unpatentability is relevant to the new
ground of rejection presented in the August 15, 2016 Opinion:
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”).

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”).

Maintained Rejection
The Examiner maintains the following new ground of rejection:
Reference(s) Basis Claim Presented/Maintained
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Yee and
Dykes § 103(a) 42
Dec. 26–30;
Ex. Deter. 2–7

Contentions
Patent Owner asserts that Yee does not disclose a “panoramic view”
as now recited in claim 42. PO Response 16; PO Comments 2–7. Patent
Owner also argues Dykes does not teach capturing static objects between
first and second locations and thus does not disclose “substantially all the
static objects in the geographic area” as recited in claim 42. PO Response
16–19 (addressing Dykes’s Figure 4); PO Comments 7–10. Patent Owner
further contends Yee and Dykes collectively do not generate panoramic
images and thus do not suggest claim 42’s limitations. PO Response 19; PO
Comments 10. Below, we address the contentions.

II. ISSUE
Has Patent Owner presented sufficient amendments and remarks to
overcome the new ground of rejection for claim 42 presented in the August
15, 2016 Decision?

III. ANALYSIS
A. Yee Suggests the Recited “Panoramic View” in Claim 42
Among other limitations, claim 42 recites “the first and second
images1 each provide a panoramic view of objects at respectively the first

1 The phrase “the first and second images” in claim 42 and claim 36, from
which claim 42, lacks antecedent basis. PO Response 8–9 (emphases
added). Patent Owner indicates support for the limitation comes from the
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and second locations to allow a user to visually navigate the area from the
user terminal.” PO Response 9 (underlining omitted). During examination
of a patent application, a claim is given its broadest reasonable construction
“in light of the specification as it would be interpreted by one of ordinary
skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citation omitted).
Turning to the Specification for an understanding of the phrase
“panoramic view,” the ’316 patent describes generating “a composite image
that provide[s] a panoramic view of the locale.” The ’316 patent, Abstract.
The ’316 patent also states “[t]he composite images preferably provide a
wider field of view of the location than any single image frame acquired by
the camera 10. In essence, the composite images help provide a panoramic
view of the location.” The ’316 patent 5:47–51, Fig. 1. The Specification
fails to discuss an angle of view or range that a panoramic view or a wider
field of view encompasses. Moreover, the Specification does not state the
composite image providing a wider field of view of a location than any
single image is a panoramic view but rather that a composite image
preferably has a wider field of view and helps provide a panoramic view.
The ’316 patent 5:47–51, quoted in PO Comments 4.
Given the above discussion, the ’316 patent does not equate an image
having a panoramic view to an image with a wider field of view than a
single image frame a camera can acquire. Nor does claim 42. See Ex.
Deter. 4 (stating claim 42 “fail[s] to reflect that the composite image has a

Specification. PO Response 12 (citing the ’316 patent 2:45–48 and 5:47–
51).
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wider field of view than the acquired image.”). That being said, one
ordinary understanding of the word, “panoramic,” includes “a photograph
that includes a wide view of a scene or a group of people made by a
panoramic camera or by joining separate photographs.” PO Comments 4
(quoting WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY). This
definition indicates a panoramic view has a wide view of a scene. Another
ordinary meaning of “panoramic” includes “(of a view of picture) with a
wide view surrounding the observer; sweeping.”2 Patent Owner also
provides us with a definition of “panoramic image” to include “a wide field
of view image, up to a full view of 360°.” PO Comments 4–5 (quoting from
S. Peleg et al., PANORAMIC IMAGING WITH HORIZONTAL STEREO IN
PANORAMIC VISIONS: SENSORS, THEORY, AND APPLICATIONS (2000)).
Although not claiming “a panoramic image,” this definition reinforces “a
panoramic view” has a wide view of a scene and does not requires a 360°
view. Thus, we construe an ordinary understanding of the phrase “images
each provide a panoramic view of objects” to mean each image provides a
wide or sweeping view, which may or may not be a full 360° view. See Ex.
Deter. 4 (stating “a wider field of view (i.e., a panoramic view)”).
As noted by the Examiner and Requester, Yee suggests composite
images that provide a large or wide view surrounding the observer. Ex.
Deter. 4 and 3PR Reply 5 (both citing Yee 389). Namely and as discussed
in the previous Opinion (Dec. 18–20), Yee teaches collecting street data
(Yee 388), including various views and “composites of them” (Yee 389).

2 Panoramic, Oxford Dictionaries, available at
https://en.oxforddictionaries.com/definition/us/panoramic.
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The described views in Yee include a “curbside view,” a “street view,” and a
“real estate view left and right” view. Yee 389. Thus, Yee’s “composites of
them” (Yee 389) would include a composite/image containing multiple
views. See PO Comments 4 (discussing a panoramic view involves “a
composite of multiple images (‘by joining separate photographs’).”). For
example, Requester discusses “Yee discloses that at least some of its
composite images are panoramic because it describes forming images with
various views.” 3PR Reply 5 (quoting Yee 389).
Moreover, one skilled in the art would have recognized “composites”
of such views can produce a large or wide view surrounding the observer.
See Yee 389. Requester notes and we agree that “composites of these
images would result in wider, panoramic views.” 3PR Reply 5 (discussing
the “real estate view left and right” view). As an example, a composite of
(1) a “curbside view, front and back” with a “street view, front and back” or
(2) a “curbside view, front and back” with a “real estate view left and right,”
as suggested by Yee (see Yee 389), produces a wide or large view
surrounding the observer (e.g., a panoramic view). Yee also teaches its
cameras “can go from wide angle to a zoomed-in view” (Yee 391), and as
such, images captured by Yee’s cameras include wide angle views. Thus,
Yee at least suggests composites of some of its disclosed views would
predictably yield no more than “a panoramic view of objects at respectively
the first and second locations” as recited in claim 42.
Additionally, contrary to Patent Owner’s assertion (PO Comments 5),
the new ground does not propose that any possible composite image in Yee
provides a panoramic view. See Dec. 21–22 (discussing substituting
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Dykes’s panoramic technique of forming composites with Yee’s), 26–30;
see also Ex. Deter. 4–7. The proposed rejection is based on obviousness,
and “the literature of the art[ are] relevant for all they contain.” In re Heck,
699 F.2d 1331 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,
1009 (CCPA 1968)). Yee suggests some of the disclosed views when
formed as “composites of them” would “provide a panoramic view of
objects at respective[] first and second locations” as recited. See also PO
Comments 4 (stating “Patent Owner submits that not all images that are
‘composite[s]’ (under the Examiner’s definition) are ‘panoramic.’”)
Thus, even presuming, without agreeing, Yee teaches some composite
embodiments are in “opposite directions” (PO Comments 4) or “non-
contiguous” (PO Response 7), Yee suggests other composites form
contiguous, wide views surrounding the observer (e.g., panoramic views).
As noted in the next subsection, Dykes further teaches a known technique to
those skilled in the art of creating composite images and providing
panoramic views.
B. Dykes Teaches and Suggests “Substantially All the Static Objects
in the Geographic Area” in Claim 42

In the event that Yee does not suggest the recited “images each
provide a panoramic view of objects,” the new ground does not rely
exclusively on Yee to teach the recited “first and second images” which are
composite images (claim 36) and further “provide[s] a panoramic view of
objects” as recited in claim 42. Dec. 26–30; Ex. Deter. 6–7. The new
ground additionally discusses Dykes’s teachings and more particularly,
Dykes’s technique of generating panoramic images. Dykes 134, 139–40,
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Fig. 2, cited and discussed in Dec. 28–29. These passages in Dykes teach
and show creating panoramic views by stitching multiple images (e.g.,
images located in the upper left of Figure 2) together, resulting in “a
continuous panorama (bottom).” Dykes 135, Fig. 2, reproduced both in 3PR
Comments 5 and 3PR Reply 8. This panoramic image “allows the user to
navigate across the virtual space between features.” Dec. 29 (citing Dykes
139–40).
Concerning Dykes, Patent Owner discusses Figure 4, arguing Dykes
does not teach capturing substantially all the static objects between where
the panoramas are taken. PO Response 16–19. Figure 4, however, is not
discussed when addressing claim 42. Dec. 28–29. Patent Owner further
comments the static objects located between the recited “first and second
locations” must be “in the geographic area” and “therefore must be among
‘substantially all the static objects in the geographic area’ as recited in claim
42.” PO Comments 8. According to Patent Owner,
Because Dykes does not depict images of substantially all of
the objects between its panoramas, and because the area
between the panoramas is part of the “geographic area,” Dykes
does not appear to disclose “images comprising views of
substantially all the static objects in the geographic area” as
recited in claim 42.

PO Comments 8. We are not persuaded.
As noted by the Examiner (Ex. Deter. 6) and Requester (3PR Reply
3–4, 7), Patent Owner’s arguments are not commensurate in scope with
claim 42. Claim 42 does not require the first and second images are adjacent
to teach other or provide a continuous “panoramic view of objects”
collectively. See 3PR Reply 3–4. Additionally, claim 42 does not require
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the first and second images which “each provide a panoramic view of
objects at respectively the first and second locations” include all the “images
comprising views of substantially all the static objects in the geographic
area.” PO Response 9. That is, the first and second images, as recited, may
include only a portion of the geographic area (see 3PR Reply 4), whereas
additional images in combination with the first and second images comprise
“substantially all the static objects in the geographic area” as recited.
Regardless, when combining Dykes’s teaching with Yee as previously
discussed, the combination results in adjacent images being stitched together
and thus would further suggest generated, composite images can overlap and
provide a continuous panoramic view that also comprises “views of
substantially all the static objects in the geographic area” as recited. See
3PR Reply 3. For example, Dykes’s Figure 2 describes and shows “a
continuous panorama (bottom)” view produced from multiple frames
stitched together and that images can be taken in close proximity (e.g., in a
museum or building). Dykes 134–135, Fig. 2. Similarly, Yee suggests
capturing substantially all the static objects in a geographic area. Yee 389
(listing various objects that can be viewed), cited in Dec. 28; see also Ex.
Deter. 5 (quoting Yee 389 and citing Dec. 28). When combining these
teachings and although not required by claim 42, such resulting views would
depict images of substantially all of the objects between its panoramas.
Patent Owner next asserts the Examiner misconstrues the recited
“substantially all static objects” to mean a “considerable number of object.”
PO Comments 8–9 (citing Ex. Deter. 6–7). Patent Owner contends the
phrase “‘a considerable number of’ is different from the plain meaning of
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‘substantially all.’” PO Comments 9. In attempt to draw this purported
distinction, Patent Owner presents an analogy to an opinion poll. PO
Comment 9. This argument is unavailing.
As addressed in our previous decision, we have considered the ’316
patent’s Specification in understanding the phrase “substantially all.” Dec.
27 (citing the ’316 patent 2:45–48, 10:12–15). The Specification’s
discussion, however, does not limit our understanding of the phrase
“substantially all” to that discussed in column 10. Dec. 27. Although
column 10 may inform our construction of the recited phrase “substantially
all the static objects in the geographic area,” we decline to import such an
embodiment into claim 42. Nonetheless, we previously stated Yee teaches
such data is collected (Dec. 28 (quoting Yee 389)) and Dykes further teaches
created a panorama that covers substantially all the static objects in an area
(Dec. 29 (citing Dykes 139–40, Fig. 2). See also Ex. Deter. 6–7 (addressing
Dykes).
In our previous Decision, we also presented the plain meaning of the
term “substantial” to include “considerable in quantity: significantly great”
and “being largely but not wholly that which is specified.” Dec. 28 n.15
(citing MERRIAM-WEBSTER ONLINE DICTIONARY, defs. [3b] and [ 5]). In
turn, we construed the phrase “substantially all the static objects in the
geographic area” in claim 42 to require a considerable number of static
objects but not all the objects in the geographic area. Dec. 28 (stating “claim
42 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.”). Patent Owner provides no
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countering definition. PO Comment 9. Instead and without supporting
evidence, Patent Owner discusses an opinion poll, attempting to contrasts
the phrase “substantially all” with a considerable number. See PO Comment
9. Counsel’s arguments cannot take the place of factually supported
objective evidence. See In re Huang, 100 F.3d 135, 139–40 (Fed. Cir.
1996).
For the above reasons, we disagree that the record fails to provide
“specific reasoning” (PO Comment 9) how Dykes’s Figure 2, when
combined with Yee, teaches or shows the recited “images comprising views
of substantially all the static objects in the geographic area.” PO Comments
9–10.
C. Yee and Dykes Teach and Suggest
the Recited “Panoramic View” in Claim 42

Patent Owner finally contends because Yee does not teach generating
panoramic views, “there is no apparent reason why a person of ordinary skill
in the art at the time of the invention was made would combine the teachings
of Yee and Dykes.” PO Comments 10. We are not persuaded.
As previously stated, Yee teaches collected data that are “composites”
of other views. Yee 389. Creating composites of differing views (e.g., (1) a
curbside view, front and back and a street view, front and back or (2) a
curbside view, front and back and a real estate left and right view) suggests
to one skilled in the art generating an image that provides a wide view
surrounding the observer and segues into Dykes’s teaching to create
panoramic imagery by stitching multiple frames/views together. Dykes
132–35, 139–40, Fig. 2; see also Dec. 21–22. One skilled in the art would
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have recognized that substituting Dykes’s teaching for Yee’s predictably
results in generating composite images, each providing a panoramic view of
objects. See Dec. 22. Moreover, we presented multiple reasons with some
rational underpinning for combining the references. Dec. 22, 29; see also
3PR Comments 6 (discussing Dykes providing a display to the user to
navigate an area), 10–11 (citing Dec. 21–22).
We thus disagree that the record has not established a reason why an
ordinarily skilled artisan would have combined the teachings of Yee and
Dykes to arrive at claim 42.

IV. CONCLUSIONS
The Examiner’s decision to reject claims 13, 18–24, 36, 37, 39–41,
and 42 under 35 U.S.C. § 103 based on Yee and Dykes remains affirmed as
set forth in the August 15, 2016 Decision.
The Examiner’s decision that claim 38 is patentable is affirmed.
Patent Owner’s response is insufficient to overcome the new ground
of rejection set forth in the Decision, and the rejection of claim 42 based on
Yee and Dykes is maintained.
In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
in opposition to the request and additional requests for rehearing must be in
accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
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section, for requesting further rehearing under paragraph (c) of this section,
and for submitting comments under paragraph (b) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for
an inter partes reexamination proceeding “commenced” on or after
November 2, 2002 may not be taken “until all parties' rights to request
rehearing have been exhausted, at which time the decision of the Board is
final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.304, 1.956, and 41.79(e). See 37
C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED
37 C.F.R. § 41.77(f)

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