Ex Parte 7,813,596 B2 et al

Patent Trial and Appeal Board

Aug 15, 2016

95000684 (P.T.A.B. Aug. 15, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,684 08/17/2012 7,813,596 B2 7571
23363 7590 08/15/2016
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/15/2016 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 VEDERI, LLC.
Patent Owner
____________

Appeal 2016-002008
Reexamination Control 95/000,684
Patent 7,813,596 B2
Technology Center 3900
____________

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

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF CASE
Google Inc. (Requester) made a third party request for inter partes
reexamination of U.S. Patent No. 7,813,596 B2 (“the ’596 patent”) to Enrico Di
Bernardo and Luis F. Goncalves, entitled System and Method for Creating, Storing
and Utilizing Images of a Geographic Location, issued October 12, 2010, and
assigned to Vederi, LLC. Claims 1, 4, 15, 16, 20, 21, and 23 were the subject of
the original reexamination. Claims 63–75 were subsequently added. PO App. Br.
3; 3PR App. Br. 1–2.1 Claims 1, 15, 16, 20, and 23 have been canceled. Id.
The Examiner’s Answer incorporates the RAN by reference (Ans. 1), which
rejects claims 4, 21, 63–66, 68–71, 74, and 75 and determines claims 67, 72, and 73
are patentable (RAN 1).
Patent Owner appeals the decision in the RAN rejecting claims 4, 21, 63–66,
68–71, 74, and 75 of the ’596 patent. PO App. Br. 3. Requester responded, and
Patent Owner rebutted. See generally 3PR Resp. Br. and PO Reb. Br.
Requester cross appeals the decision in the RAN determining claims 72 and
73 of the ’596 patent are patentable. 3PR App. Br. 2. Patent Owner responded, and
Requester rebutted. See generally PO Resp. Br. and 3PR Reb. Br.
Claim 67 has been indicated as patentable and is not argued by Requester.

1 Throughout this Opinion, we refer to: (1) the Action Closing Prosecution
(“ACP”) mailed September 24, 2013, (2) the Right of Appeal Notice (RAN)
mailed June 4, 2014, (3) the Patent Owner’s Appeal Brief (“PO App. Br.”) filed
September 3, 2014, (4) the Requester’s Respondent Brief (“3PR Resp. Br.”) filed
October 2, 2014, (5) the Patent Owner’s Rebuttal Brief (“PO Reb. Br.”) filed May
22, 2015, (6) the Requester’s Appeal Brief (“3PR App. Br.”) filed September 8,
2014, (7) the Patent Owner’s Respondent Brief (“PO Resp. Br.”) filed October 9,
2014, (8) the Requester’s Rebuttal Brief (“3PR Reb. Br.”) filed May 21, 2015, and
(9) the Examiner’s Answer (“Ans.”) mailed April 21, 2015.
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RAN 1–2, 4; see 3PR App. Br. 2.
An oral hearing was conducted on April 27, 2016. The transcript of the oral
hearing has been made of record.
We have been informed that the ’596 patent was the subject of litigation,
Vederi, LLC v. Google Inc., Case No. 2:10-CV-07747 (C.D. Cal.) and Vederi, LLC
v. Google Inc., Case Nos. 13-1057 and 13-1296.2 PO App. Br. 2; 3PR App. Br. 1,
20–21, Related Procs. App’x.
Additionally, we have been informed that this appeal may be related to:
(1) U.S. Patent No. 7,805,025 B2, which is the subject of inter partes
reexamination having been assigned Control No. 95/000,681,3 (2) U.S. Patent No.
7,239,760 B2, which is the subject of inter partes reexamination having been
assigned Control No. 95/000,682,4 and (3) U.S. Patent No. 7,577,316 B2, which is
the subject of inter partes reexamination having been assigned Control No.

2 Cases Nos. 13-1057 and 13-1296 were decided on March 14, 2014 and concerned
U.S. Patent Nos. 7,239,760 B2, 7,577,316 B2, 7,805,025 B2, and 7,813,596 B2
(the ’596 patent). Vederi, LLC v. Google, Inc., 744 F.3d 1376 (Fed. Cir. 2014),
rh’g en banc and cert denied. The Federal Circuit reversed the claim construction
of the district court, vacated the judgement, and remanded for further proceedings.
See id. at 1384; see also PO App. Br. 3. Notably, the disputed claim language
addressed by the Federal Circuit differs from the instant appeal.
3 The Board rendered an opinion in this inter partes reexamination, affirming the
Examiner’s decision to reject certain claims. Google Inc. v. Vederi, LLC, Appeal
No. 2015-001495, 2015 WL 4038967 at *17 (PTAB June 26, 2015). On request
for rehearing from both Google and Vederi, we maintained our position. Google
Inc. v. Vederi, LLC, Appeal No. 2015-001495, 2016 WL 807721 (PTAB February
29, 2016)
4 The Board rendered an opinion in this inter partes reexamination, reversing the
Examiner’s decision to confirm certain claims and entering new grounds of
rejection. See Google Inc. v. Vederi, LLC, Appeal No. 2015-004309, 2016 WL
3958474 at *9–10 (PTAB June 26, 2015).
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95/000,683.5 PO App. Br. 2; 3PR App. Br. 1.
Requester further indicates (1) the ’596 patent is a continuation of U.S.
Patent Nos. 7,577,316 B2, (2) U.S. Patent No. 7,577,316 B2 is a continuation of
U.S. Patent No. 7,239,760 B2, and (3) U.S. Patent No. 7,805,025 B2 is a
continuation of U.S. Patent No. 7,577,316 B2. PO App. Br. 2; 3PR Resp. Br. 1.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We affirm in part the Examiner’s decision to reject or not to reject claims
4, 21, and 63–75.
Canceled claim 1 and dependent claim 4 are relevant to this appeal and
reproduced below with emphasis added:
1. [Canceled] In a system including an image source and a user terminal
having a screen and an input device, a method for enabling visual navigation
of a geographic area from the user terminal, the method comprising:
receiving a first user input specifying a first location in the geographic
area;
retrieving from the image source a first image associated with the first
location, the image source providing a plurality of images depicting views of
objects in the geographic area, the views being substantially elevations
of the objects in the geographic area, wherein the images are associated with
image frames acquired by an image recording device moving along a
trajectory;
retrieving a map of at least a portion of the geographic area;
displaying the retrieved first image on a first display area of the screen
and the retrieved map on a second display area of the screen;
receiving a user selection of a position on the displayed map;
determining a second location based on the user selected position; and
retrieving from the image source a second image associated with the
second location.

5 This reexamination is currently on appeal to the Patent Trial and Appeal Board
(PTAB) and has been assigned Appeal No. 2016-002084.
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4. The method of claim 1,
wherein the first and second images are each a composite
image, wherein each composite image is created by processing pixel
data of a plurality of the image frames.

The ’596 patent 15:41–64, 16:6–9, PO App. Br. 45, Claims App’x.
A. Prior Art Relied Upon
Either the Examiner or Requester relies on the following as evidence of
unpatentability:
Lachinski6 US 5,633,946 May 27, 1997
Murphy US 6,282,362 B1 Aug. 28, 2001

Michael J. Shiffer, Augmenting Geographic Information with Collaborative
Multimedia Technologies, 11 Proc. Auto Carto. 367–376 (1993) (“Shiffer.”)

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”).

Toru Ishida et al., Digital City Kyoto: Towards A Social Information
Infrastructure, 1652 Lecture Notes in Artificial Int. from Int’l Workshop on
Cooperative Info. Agents 23–357 (1999) (“Ishida”).

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”).

6 Requester indicates that Lachinski was cited in its Comments to rebut Patent
Owner’s response and to explain how Yee’s four-view images are created. 3PR
Resp. Br. 9–10; February 1, 2013 Third Party Requester Comments 19–20.
Although not relying on Lachinski in the rejection, the Examiner discusses
Lachinski, indicating the reference was properly cited under 37 C.F.R.
§1.948(a)(2). See RAN 19–20.
7 Ishida is not numbered but we refer to the pages sequentially starting with page
23 like Requester. See, e.g., Request 16, 212–215.
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Kheir Al-Kodmany, Using Web-Based Technologies and Geographic Information
Systems in Community Planning, 7 J. Urb. Tech. 1–31 (Apr. 2000) (“Al-
Kodmany.”)

Nada Bates-Brkljac & John Counsell, Issues in Participative Use of an Historic
City Millennial Web Site, IEEE Proc. Int’l Conf. Info. Visualization 119–125 (July
2000) (“Bates.”)

B. Adopted Rejections
The Examiner maintains the following proposed rejection, for which Patent
Owner appeals:

Reference(s) Basis Claims RAN
Dykes § 102(a) 4 6–8
Yee § 102(b) 4, 63–66, 68–71, 74 8–10
Al-Kodmany § 102(a) 4 10–12
Bates § 102(a) 4 12–13
Murphy and Yee § 103(a) 4 14–15
Shiffer and Yee § 103(a) 4 16–17
Ishida and Dykes § 103(a) 4, 21, 75 17–19

PO App. Br. 6.

II. ISSUES ON APPEAL
We review the appealed rejections for error based upon the issues identified
by Owner, and in light of the arguments and evidence produced thereon. Cf.
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Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). “Any arguments or authorities not
included in the briefs permitted under this section or [37 C.F.R.] §§ 41.68 and 41.71
will be refused consideration by the Board, unless good cause is shown.” 37 C.F.R.
§ 41.67(c)(1)(vii).
Based on the disputed errors presented by Patent Owner and Requester, the
major issues on appeal are:
(1) Did the Examiner err in rejecting claims 4, 63–66, 68–71, and 74 by
finding Yee discloses “the first and second images are each a composite image,”
giving this phrase its broadest reasonable interpretation in light of the disclosure;
(2) Did the Examiner err in rejecting claims 4, 21, and 75 by determining
Ishida and Dykes teach or suggest “the images are associated with image
frames acquired by an image recording device moving along a trajectory” and
“determining a second location based on the user selected position”;
(3) Did the Examiner err in not adopting the proposed rejection of claims 72
and 73 under 35 U.S.C. § 102(b) based on Yee?

III. ANALYSIS
A. Claim Construction
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) (internal citations and quotations omitted). There is a
presumption that a claim term generally carries its ordinary and customary
meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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A patentee may rebut this presumption, however, by acting as his own
lexicographer, providing a definition of the term in the specification with
“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be
read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993).
Patent Owner and Requester discuss the limitations of claims 1, 4, and 15 in
their respective appeal briefs. We note that independent claims 1 and 15 have been
canceled. RAN 1. However, the claims on appeal depend directly or indirectly
from claims 1 (i.e., claims 4, 63–66, 68–71, and 74) and 15 (i.e., claims 21 and 75).
Thus, each appealed claims has the recitations of either claim 1 or 15.
1. “wherein the images are associated with image frames acquired
by an image recording device moving along a trajectory” of
independent claims 1 and 15 (“the Image Frames Limitation”)

The heart of this appeal concerns the claim construction of the phrase, “the
images are associated with image frames acquired by an image recording device
moving along a trajectory” in independent claims 1 and 15. We note that, in
Appeal No. 2015-001495, a portion of this above limitation was construed. We
determined “an image recording device moving along a trajectory” requires the
image recording device to move along a path, course or route, but that the path
need not be predetermined or specified. Google Inc. v. Vederi, LLC, Appeal No.
2015-001495, 2015 WL 4038967 at *13. Although discussed by Requester (3PR
App. Br. 16–18), whether the trajectory needs to be specific or preplanned is not in
dispute by Patent Owner in the instant appeal. Rather, Patent Owner focuses on
other aspects of the Image Frames Limitation— namely the word “moving” in the
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phrase “image frames acquired by an image recording device moving along a
trajectory” in claim 1. PO App. Br. 8–19.
Specifically, Patent Owner argues that the Examiner erred in his
construction of the above, quoted phrase. Id. Patent Owner contends that it is
unreasonable to construe the claims broad enough to encompass situations where
all the images are captured while the image recording device is stationary. PO
App. Br. 9. Patent Owner asserts that that the claim term “moving” in this
limitation should be given “meaning, [such that] image frames must be acquired
while the recording device is in motion.” PO App. Br. 9. In Patent Owner’s view,
the phrase means “that the image frames are acquired by an image recording
device that is in motion along the trajectory at the time of the acquisition. It does
not include the acquisition of image frames from a stationary image recording
device.” PO App. Br. 10. Patent Owner even further argues that this
understanding is the only construction consistent with the ’596’s patent disclosure.
PO App. Br. 10–17 (citing the ’5968 patent, Abstract, 2:27–31, 45–48, 3:46–60,
4:50–62, 5:18–22, 52–54, 6:56–62, 7:58–64, and U.S. Provisional App. No.
60/238,490 (“the ’490 provisional application”), pp. 8–9).
The Examiner and Requester, on the other hand, disagree. RAN 21–24
(citing 3PR November 25, 2015 Comments 7, 9); 3PR Resp. Br. 3–7. The
Examiner explains that claims 1 and 15 do not recite that “[the] image frames [are]
acquired by the device while moving along a trajectory (i.e., recording and moving
at the same time).” RAN 21 (underlining omitted); RAN 25–26 (referring to 3PR
Comments 14–15). The Examiner asserts that the claims and Patent Owner’s

8 Patent Owner refers to ’316 patent. PO App. Br. 10–11. We presume that Patent
Owner intends to refer to the ’596 patent.
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admission “embrace alternate embodiments [as] disclosed in the [’596] patent,”
including those of both recording while moving and stopping along a trajectory.
See id.; RAN 21–24 (citing PO October 25, 2013 Response 23, the ’490
provisional application, pp. 8–9, and the ’596 patent 5:52–6:23); 3PR Resp. Br.
3–4, 7 (citing the ’596 patent 3:51–53, 4:56–58, 4:61–5:8, 7:55–64, 10:15–19, Fig.
9, and the ’490 provisional application 8–9). The Examiner further discusses
dependent claims 66 and 74 to support his claim construction for claims 1 and 15.
RAN 26–27; 3PR Resp. Br. 7.
Upon considering the claims in light the ’596 patent’s disclosure, we agree
with the Examiner’s understanding of the Image Frames Limitation. First, we
agree that the phrase, “while” is not in claims 1 and 15, such that the Image Frames
Limitation requires that the image frames are acquired while an image recording
device is moving along a trajectory. RAN 21, 25–26; 3PR Resp. Br. 6. As noted,
Patent Owner is free to amend the claims to include and clarify that such image
frames are acquired while the image recording device is moving. See RAN 21
(referring to 3PR Comments 7).
Patent Owner contends that reading claim 1 in the above fashion makes the
word “moving” superfluous. PO App. Br. 9. We disagree. Although claims 1 and
15 recite “an image recording device moving along a trajectory,” the cadence and
pace at which or amount that the image recording device moves is not recited.
Hence, our determination that the claims do not require the recording device to be
moving at the instant of image capture is not at odds with an interpretation that
requires some movement of the device, including modest or minuscule
movements, such that “moving” is given meaning.
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Moreover, as broadly as recited, the recitation of “image frames acquired”
preceding the phrase “by an image recording device moving along a trajectory”
does not require that the acquisition of the image frames occur at the time or while
the image recording device moves along a trajectory. See 3PR Resp. Br. 6
(discussing the phrase “moving along a trajectory.”) Also, there is no recitation
that “[the] image recording device [] is in motion during acquisition of at least
some of the images.” PO Reb. Br. 2.
Our understanding of the Image Frames Limitation in claim 1 is not
inconsistent with the disclosure of the ’596 patent. Some portions describe a
camera recording images “while moving along a path.” The ’596 patent 4:50–53;
see also the ’596 patent 5:52–54, 6:56–61. Yet, several other portions describe a
camera moving along the street and recording images. The ’596 patent, Abstract,
2:27–29, 3:47–48, 5:18–19, 7:58–60. Thus, some portions of the disclosure do not
exclude a scenario where the image frames are acquired separate from the camera
moving. See id.
In fact, as noted by the Examiner and Requester, the ’490 provisional
application, from which the ’596 patent claims priority, describes a scenario where
the camera obtains image frames both during stopping and while moving. The
’490 provisional application8–9. One skilled in the art would have recognized
such “stop and go” or slow movement in traffic would also occur in the
embodiments described in the ’596 patent. See the ’596 patent 7:55–64, Fig. 9,
cited in 3PR Resp. Br. 4 and RAN 23. Furthermore, as Requester states, the ’596
patent does not state that acquiring image frames will not occur when the image
recording device stops moving. See 3PR Resp. Br. 6. One even further portion
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describes the camera moves along a trajectory and records images on the trajectory
as a preference. The ’596 patent 3:54–57.
Patent Owner acknowledges that the vehicle will stop at intersections and
the image recording device will capture some images while the image recording
device has stopped. PO Reb. Br. 3–4. Patent Owner contends, however, that some
frames must be captured while the image recording device is moving. PO App. Br.
14–18; PO Reb. Br. 3. We are not persuaded for the above-stated reasons.
Additionally, both the Examiner and the Requester discuss another example
in the disclosure of obtaining image frames within a museum. The ’596 patent
3:51–53, cited in 3PR Resp. Br. 3; see also RAN 24. In particular, the ’596 patent
discusses the images may be obtained inside a museum to allow a user to navigate
its locale. The ’596 patent 3:51–53. This situation is emphasized by Requester to
illustrate an embodiment where images are captured while the camera is stationary
(e.g., not moving), but yet the camera still moves along a trajectory to obtain
images within the museum. See 3PR Resp. Br. 3–4. Patent Owner responds that
the camera is still moving in this scenario while acquiring image frames by using a
base or platform. PO App. Br. 16–17 (citing the ’596 patent 4:55–56). Even
assuming the image frames are captured while the camera moves inside a museum,
navigating the museum’s limited interior space, size, and obstacles (e.g., seating or
artwork spaced out throughout a room) suggests much slower camera movements.
Moreover, in order to obtain the detail of objects (e.g., artwork or artifacts) within
a museum, the camera must remain fairly still. Thus, this example supports
embodiments where image frames are acquired when the image recording device is
at best in limited motion.
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Granted, the ’596 patent describes an inertial navigation system 20 that has
accelerometers and/or gyroscopes. The ’596 patent 4:1–6 (referenced in PO App.
Br. 11–12). But, these features of system 20 are not claimed. Also, the ’596 patent
does not require use of the features. See the ’596 patent 4:4–6 (stating “[w]hen the
inertial navigation system 20 is used in conjunction with the GPS receiver 16, a
more accurate calculation of the positon information may be produced”) (emphasis
added).
Patent Owner further contends that the preamble of claim 1, “a method for
enabling visual navigation of a geographic area,” further supports “the only
construction [for the Image Frame Limitation] supported by the specification” (PO
App. Br. 10) is that at least some image frames are acquired while the image
recording device is moving along a trajectory. See PO App. Br. 10–11. In
particular, Patent Owner contends it would be impractical to acquire the image
frames by a stationary camera. Id. at 11, 14. We are not persuaded. The claim
does not recite the size of the geographic area. As such, the scope of claim 1 is
broad enough to include small areas and, in these scenarios, we fail to recognize
any impracticality. Moreover, we find insufficient evidence in the record to
demonstrate the disclosure has a sufficient relationship between the preamble’s
enabling visual navigation and the Image Frames Limitation, such that the only
possible construction of the Image Frames Limitation is that the image frames
must be acquired while the image recording device is moving.
Lastly, claim 66 depends indirectly from claim 1 and further recites that first
and second image frames are acquired by the different image recording devices at
the same point. PO App. Br. 55, Claims App’x. Using the principle of claim
differentiation, the Examiner contends that this further illustrates that the image
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recording device is not required to move while acquiring image frames. RAN 26.
That is, given (1) dependent claim 66 recites the composite image is created based
on two image frames acquired by image recording devices when the vehicle is at
the same point and (2) independent claim 1 is broader in scope than its dependent
claim 66, the scope of claim 1 must include embodiments where the image
recording device is not moving when acquiring image frames. See id. Requester
echoes the Examiner’s position and contrasts claim 1 with claim 65. 3PR Resp. Br.
7.
Patent Owner contends claim 66 encompasses a method of obtaining image
frames simultaneously but that the cameras are moving along the path. PO App.
Br. 17–18; PO Reb. Br. 5–6. Specifically, Patent Owner contends that claim 66
covers the embodiment described in column 4, line 63 through column 5, line 5 of
the ’596 patent of using multiple cameras to record objects from multiple viewing
directions. PO Reb. Br. 6 (quoting the ’596 patent 4:63–5:5). Even so, the breadth
of claim 1 in conjunction with dependent claim 66 includes acquiring the plurality
of images that depict views of objects in a geographic area from a single point and
thus includes a scenario where the image recording device is not moving at that
instant the image frames are taken. That is, claim 66 reinforces that claim 1
requires the image recording device moves along a trajectory but does not require
the device to be moving while acquiring the image frames. Claim 65 also
illustrates that images are acquired at a point as opposed to a segment, raising the
question as to whether movement is occurring at the instant the images are
captured.
Accordingly, construing the Image Frames Limitation as broad as reasonable
in light of the disclosure, we determine that the image recording device is required
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to move along a trajectory and image frames are acquired along the trajectory but
that the image frames do not have to be acquired while the image recording device
is moving along the trajectory. See 3PR Resp. Br. 2 (referring to motion and not in
motion).
2. “the first and second images are each a composite image, wherein
each composite image is created by processing pixel data of a
plurality of the image frames” of claim 4

Claim 4 recites “the first and second images are each a composite image,
wherein each composite image is created by processing pixel data of a plurality of
the image frames.” Patent Owner disputes the claim construction of the particular
phrase, “composite image,” finding the Examiner’s interpretation unreasonably
broad. PO App. Br. 19–23; PO Reb. 7–8.9 Patent Owner argues that:
The composite image presents a single new view of the objects
in the geographical area. The single new view is different from any of
the views depicted in any one of the image frames from which the
composite image is created, e.g., it can be a wider view. Moreover,
the new view is from a single location as if the viewer [was] at that
location.

PO App. Br. 19; see also PO App. Br. 23. To support this position, Patent Owner
cites to Figure 2 of the ’596 patent and composite image 40. Id. at 20. Patent
Owner further contends that “[n]othing in the ’596 patent suggests that two or

9 Patent Owner refers to claims 13, 18, 23, and 36 when discussing the “composite
images” limitation. PO App. Br. 19. However, claims 13, 18, and 36 are not the
subject of this reexamination, and claim 23 has been canceled. RAN 1. Upon
review, Patent Owner appears to be confusing the claims of this proceeding with
the claims of U.S. Patent No. 7,577,316 B2, which is also subject to a
reexamination proceeding assigned Control No. 95/000,683. For purpose of this
Opinion, we assume Patent Owner intended to refer to claim 4.
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more separate and independent images depicting separate and distinct views of
different objects is a ‘composite image’ as used in the ’596 patent simply because
they are displayed simultaneously on a screen.” Id. at 23.
The Examiner, on the other hand, finds the phrase, “composite image,”
includes combining four images into a single image. See RAN 28. The Examiner
incorporates the Requester’s Comments on pages 17 through 19 and 34 of the
response filed November 25, 2013. Id.; RAN 30. In these comments, Requester
argues Patent Owner is reading limitations from a particular embodiment
improperly into the claims. 3PR November 25, 2013 Comments 18; 3PR Resp.
Br. 8.
Upon review, we agree with the Examiner and Requester. When
considering the disclosure, the ’596 patent discusses creating “composite images”
by synthesizing images, image data, or image frames. The ’596 patent, Abstract,
2:22–24, 34–36, 3:46–49, 5:45–47. This disclosure also states image data from
each selected image frame 42 is extracted and combined to form the composite
image. Id. at 5:66–6:1. None of these discussions state that the composite image
is a “new view” or that the view is “different from any of the views depicted in any
one of the image frames” as Patent Owner contends. PO App. Br. 19; see 3PR
November 25, 2013 Comments 18. Patent Owner further points to other
discussions in the ’596 patent, contending these portions provide context for the
term “composite image” as something different from those described in the
Background of the Invention section. PO Reb. Br. 7 (citing the ’596 patent 1:50,
54, 58–60). Yet, claim 4 does not reflect the noted differences (e.g., a single
image, an image having a wider field of view than any acquired image).
Additionally, the portion cited by the Patent Owner to support a wider field of view
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understanding of “composite image” is described as a preference. The ’596 patent
2:36–39 (stating “[p]referably, the composite image . . .”) (emphasis added).
Also, most of the discussion in the ’596 patent does not address how the
images are synthesized or combined to form the composite image. See the ’596
patent 2:22–24, 34–36, 3:46–49, 5:45–47. Other portions of the ’596 patent state a
preference that the composite image provides a panoramic view or a field of view
that is wider than that of a single image acquired by an image recording device, or
detail how image data extracted from each image frame creates a composite image
on a column-by-column basis. Id. at Abstract, 2:36–39, 5:47–51, 6:1–5; Fig. 2.
We stress, however, that the ’596 patent describes these characteristics and how to
combine the information as preferences of a composite image. See id.
Patent Owner even further discusses the ’490 provisional application to
which the ’596 patent claims priority. PO App. Br. 20–21. According to Patent
Owner, there is a discussion in the ’490 provisional application of a composite
image that provides a 360º view. PO App. Br. 21 (citing U.S. Provisional App.
No. 60.238,490, p. 8). Yet, claim 4 has not recited language that the “composite
image” is an image that provides 360 degrees of view. See id. Accordingly, we
determine the disclosure of the ’596 patent does not define the phrase “composite
image” with the reasonable precision necessary to require this phrase to mean a
new, different, or 360º view.
The plain and ordinary meaning of “composite” includes “something that is
made up of different parts.”10 A single image consisting of data from four reduced

10 Definition of “composite” (noun). Merriam-Webster’s Online Dictionary, 11th
ed., available at http://www.merriam-webster.com/dictionary/composite (last
visited July 1, 2016).
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image frames is something made from different parts (e.g., a composite). Also, an
ordinary meaning of (1) “synthesize” 11 includes “to make (something) by
combining different things” or “to combine (things) in order to make something
new,” and (2) “combine,”12 includes “to unite into a single number or expression.”
In other words, given its broadest, reasonable construction consistent with the
disclosure, the phrase “composite image” includes a single image created by
combining different image data or by uniting image data.
Accordingly, we agree that Patent Owner is importing limitations from
disclosed embodiments of the ’596 patent improperly into the recited phrase,
“composite image.”
Patent Owner does not dispute the remainder of claim 4’s limitations of
“each composite image is created by processing pixel data of a plurality of the
image frames.” To be sure, Patent Owner discusses an image having “pixel values
that are computed from pixel values of each of the image frames from which the
composite image is created.” PO App. Br. 20. But, Figure 2 and its description in
the ’596 patent are described as an illustration of a composite image (the ’596
patent 5:52) and a preference— not a requirement —to extract column image data
from each image frame. The ’596 patent 6:1–5.

11 Definition of “synthesize.” Merriam-Webster’s Online Dictionary, 11th ed.,
available at http://www.merriam-webster.com/dictionary/synthesize (last visited
July 1, 2016).
12 Definition of “combine” (def. 1c). Merriam-Webster’s Online Dictionary, 11th
ed., available at http://www.merriam-webster.com/dictionary/combine (last visited
July 1, 2016).

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Patent Owner further refers to the district court proceeding, Vederi, LLC v.
Google Inc., Case No. 2:10-CV-07747 (C.D. Cal.). PO App. Br. 19 n.1. In that
proceeding, Patent Owner and Requester agreed that a “a composite image created
by processing pixel data of a plurality of the image frames” means “an image
formed by combining two or more image frames at the pixel level.” Id. Although
noted, we are not obligated to follow the same claim construction as the district
court. See In re Trans Texas Hold’gs Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007)
(citation omitted) (noting the PTO was not a party to the district court litigation
and that “[c]laims are given ‘their broadest reasonable interpretation, consistent
with the specification, in reexamination proceedings.’”).
The ’596 patent describes how image data is extracted from each frame and
the composite image is created on a column-by-column basis. The ’596 patent
6:1–15. Yet, this passage discusses a preferred technique of how image data is
combined. See id. To be sure, the claims require “processing pixel data of a
plurality of image frames.” But, this recitation does not recite how the pixel data
of the images frames are processed, such that the image frames must be combined
at the pixel level or that pixel values of the composite image are computed from
pixel values of two or more image frames. We see no specific limitation that
“processing” involves generating pixel values for the composite image, such that
pixel data of the composite image must be computed from two or more image
frames. See PO App. Br. 15.
Applying the ordinary meaning of “processing,” claim 4 requires no more
than taking in and using the pixel data from two or more image frames to create a
composite image. We therefore construe the limitation of “processing pixel data of
a plurality of image frames” requires no more than taking in and using pixel data
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from two or more image frames to create the composite image, which includes an
image created by combining different image data or by uniting image data as
previously discussed.
B. Did the Examiner err in determining that Yee teaches the composite
image as recited?
1. Lachinski
At the outset we address a procedural issue raised by Patent Owner. Patent
Owner argues that the citation to Lachinski by Requester was improper and should
be excluded from consideration. PO App. Br. 23–24. Lachinski was cited by the
Requester to explain Yee’s mobile mapping system and various features disclosed.
See RAN 20. Requester contends that its reliance on and discussion of Lachinski
is proper under 37 C.F.R. § 1.948(a)(2). 3PR Resp. Br. 18–19.
The propriety of whether a reference was properly submitted under § 1.948
is a petitionable matter. Because this issue is not appealable, the Board will not
decide this issue. See MPEP §§ 1002 and 1201, 9th ed. (Oct. and Nov. 2015
respectively); see also In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)
(stating that there are many kinds of decisions made by examiners, “which have
not been and are not now appealable to the board or to this court when they are not
directly connected with the merits of issues involving rejections of claims, but
traditionally have been settled by petition to the Commissioner.”)
2. Composite Image
Claims 4, 63–66, 68–71, and 74 are rejected under 35 U.S.C. § 102(b) based
on Yee. RAN 8–12. Except for claims 65 and 69, the claims are argued
collectively. PO App. Br. 27–31. We select claim 4 as representative of claims 4,
63, 64, 66, 68, 70, 71, and 74. 37 C.F.R. § 41.67(c)(1)(vii). To repeat, claim 4
recites “the first and second images are each a composite image.”
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In rejecting claim 4, the Examiner relies on Yee and incorporates by
reference the Request and Claim Chart CC-B. RAN 9–10 (citing Request 79–97
and Claim Chart CC-B). The Examiner also discusses “rolling video” or “single-
frame images” that depict object elevations, including curbside views, front and
back, street view, and real estate view left and right. RAN 8–9. The Request, in
turn, cites to Yee’s discussion of various views, including “composite of them,” to
teach each recited “composite image” and how the image is created. Request 87–
88 (quoting Yee 389), Claim Charts CC-B 8 (quoting Yee 389).
Notably, Patent Owner does not dispute that Yee discloses the Image Frame
limitation. See PO App. Br. 27–30. That is, Yee discloses image frames captured
while an image recording device moves along a trajectory. Yee 390 (discussing
taking 30 frames per second while moving down the road). Thus, under either the
Patent Owner or the Examiner’s claim construction of the Image Frames
Limitation, Yee discloses this recited feature of claim 1.
On the other hand, Patent Owner disputes that Yee teaches the recited first
or second “composite image” of claim 4 when properly construed in light of the
’596 patent’s disclosure. PO App. Br. 27–30; PO Reb. Br. 8–10. Patent Owner
refers to Section VII.A.3 of its brief, contending that Yee fails to disclose a
composite image. PO App. Br. 27. Specifically, in Section VII.A.3, Patent Owner
argues the Examiner relies upon a changed meaning for composites in determining
that Yee anticipates claim 4. See PO App. Br. 21–22. Patent Owner asserts that
the discussion in Yee of composites includes “side-by-side views” or “multiple
views, such as a 4-view display.” PO App. Br. 22. Patent Owner contends that
each view is depicted in a separate image and cannot be a composite as recited,
which requires a single view of objects. PO App. Br. 22–23.
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As discussed above in the Claim Construction section, we determine the
phrase “composite image” includes a single image created by combining different
image data or by uniting image data but does not require a single new image with a
single new view as urged by Patent Owner. PO App. Br. 28. Moreover, as for the
remaining phrase that “each composite is created by processing pixel data of a
plurality of the image frames,” we determine that the recitation does not recite how
the pixel data of the images frames are processed, such that the acquired image
frames must be combined at the pixel level or that pixel data of the composite
image must be computed from two or more image frames. Rather, claim 4 requires
only using pixel data from two or more image frames to create the composite
image. Based on this understanding, we determine Yee teaches the recited
“composite image” recitation.
Yee states “[s]ome of the specific data to be collected and made available. . .
include: curbside view, front and back; street view, front and back; real estate view
left and right; real estate and address zoom, 4-view; and composites of them.” Yee
389 (emphasis added). The Examiner finds that this portion of Yee explicitly
discloses a composite image (i.e., “composite of them”), such as “a composite
display of (for example) a curbside view with a front and back view is a new view
manipulated at the pixel level and synthesized from multiple images.” RAN 28.
Given how the language “composite of them” is separate from the other described
views, including the 4-view, we determine the Examiner’s position is reasonable.
Patent Owner contends the Examiner changes the meaning of composite in
determining Yee teaches the recited “composite image” and focuses on a 4-view
embodiment. PO App. Br. 21–22, 28; PO Reb. Br. 8–10. We are not persuaded
and find no deviation in Yee from the ordinary meaning of the term “composite.”
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Yee explicitly teaches the collected data includes composites of them, which refers
back to the various other described views (e.g., curbside, front and back, street, real
estate view left and right, and 4-views). Yee 389. Importantly, identity of
terminology is not required, but Yee actually discloses “composites.” See In re
Bond, 910 F.2d 831 (Fed. Cir. 1990). Additionally and although not required by
the claim, the Examiner finds and we agree that Yee provides a “composite” that
includes, for example, “a curbside view with a front and back view” as “a new
view.” RAN 28.
The argument that Yee’s discussion to include composites “teaches away
from creating composite images with its process” is unavailing. PO App. Br. 28–
29. In particular, as already stated, Yee discloses composites (Yee 389) and the
images are acquired as the vehicle moves down the road (Yee 390; PO App. Br.
28). Patent Owner contends that the user would “manually review[] the raw image
frames and select[] the most appropriate image” which is slow and costly. PO
App. Br. 28. Patent Owner has provided insufficient support, however, for the
assertion that Yee’s review would be performed manually and would be costly.
PO App. Br. 28.13 In response, Requester further indicates that Lachinski, which
addresses a GeoSpan system at least similar to Yee, discusses the manual process
is not used to generate composites. 3PR Resp. Br. 12 (citing Lachinski 5:25–40).
We thus are unpersuaded that Yee teaches away from creating a composite
image with its process as argued. Id. In any event, claim 4 does not exclude such
manual selection but rather just recites “each composite is created by processing

13 Patent Owner footnotes a reference entitled “GEN-2 City Tour BBC & CNBC
1995, January 1, 2004” and states the reference was submitted January 7, 2013.
We are not able to locate this reference. In any event, the title of this article does
not indicate that it relates to the GPS and video data collection of Yee.
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pixel data of a plurality of the image frames.” Moreover, many of the disputed
features (e.g., slow, cost, precision, complexity) (PO App. Br. 28–29) are not
commensurate in scope with claim 4.
Patent Owner further cites to a reference14 to support their position that
Yee’s 4-view is not a composite. PO App. Br. 22–23, 28. In particular, Patent
Owner reproduces a 4-view example in its appeal brief, asserting this is not a
single view and thus not a composite. PO App. Br. 22–23. Yet, this is just one
image example of GEOVISTA data, which was acquired by GEOSPAN discussed
in Yee. Also, as previously stated, Yee discloses various examples, including a
“composites of them” separate from the “4-view.” Yee 389. Yee explicitly
discloses “composites” (id.; see RAN 28) and “them” refers back to the other
views, including a front and back curbside view, a front and back street view, a left
and right real estate view. Thus, Yee teaches creating “composites” of these
various views.
As for the “4-view” example in Yee, Yee does not provide any more details
how the view is formed. Presuming the example in GEOVISTA is the only “4-
view” described in Yee, Patent Owner argues this is not “a composite image” as
recited including being “created by processing pixel data of a plurality of image
frames.” PO App. Br. 22–23, 27–28. Although contending Lachinski should not
be considered (PO App. Br. 23–24), Patent Owner further argues that Lachinski
separately processes the pixels of four images and “is not equivalent to ‘combining

14 Patent Owner states this reference is entitled, “Geospan Brochure” and was first
cited by Patent Owner on January 2, 2013 as Exhibit C. PO App. Br. 22 n.2.
However, our records include a submission on January 7, 2013 entitled “Drive
around town on your PC with GEOVISTA” (GEOVISTA) with page 2 appearing
to have the same figure reproduced on page 22 of Patent Owner’s Appeal Brief.
We presume Patent Owner intended to refer to GEOVISTA.
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two or more image frames at the pixel level.’” PO App. Br. 28. Claim 4, however,
does not recite combining image frames at the pixel level, but rather merely
processing pixel data of the image frames. We thus do not find this argument
commensurate in scope with claim 4.
Nevertheless, some similarities exist between what is shown in Patent
Owner’s example and what Yee and Lachinski disclose. Yee discusses “images
can be displaced as rolling video of four views in a frame . . . .” Yee 392.
Lachinski further states:
The four-view generator 62 has four inputs 82, allowing signals
from four of the video cameras 50 to be input simultaneously. The
generator 62 reduces the image represented by each signal to one-
fourth of its original size and then combines the reduced images to
form a single video image by placing each of the reduced images into
one of the four corners of an output image.

Lachinski 5:25–31 (emphasis added), cited in 3PR Resp. Br. 11; Fig. 3. This
supports that the 4-view discussed in Yee (Yee 389) includes four images, one in
each of four corners that is reduced in size. Lachinski 5:25–31; Fig. 3. Lachinski
also states the generator produces “a single video image” that includes four
reduced size images. Id.
Moreover, Yee teaches that data from the four images, which includes its
pixel data, are used to create the reduced-sized images. The “four views in a
frame” discussed in Yee (Yee 392) or the “single video image” with four-views,
each one-fourth of its original size that form “reduced images” is further explained
in Lachinski (Lachinski 5:25–31). This image is a single image that is made up of
different parts or image frames (e.g., image data from multiple views) and uses and
combines pixel data from each of the different view image frames to create the
single image. Yee therefore teaches “a composite image” as broadly as recited.
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As indicated above, claims 63, 64, 66, 68, 70, 71, and 74 are argued as a
group, referring back to claim 4. PO App. Br. 30. We are not persuaded for
reasons previously addressed.
Accordingly, we determine that the Examiner has not erred in rejecting
claims 4, 63, 64, 66, 68, 70, 71, and 74 based on Yee.
3. Claims 65 and 69
Claims 65 and 69 are separately argued. PO App. Br. 30–31. Claim 65
recites:
[E]ach composite image is created based on a first one of the
image frames acquired by a first image recording device of the image
recording devices when the vehicle is at a first point in the trajectory
and a second one of the image frames acquired by the first image
recording device when the vehicle is at a second point in the
trajectory.

Patent Owner argues that Lachinski discloses a 4-view generator to generate the
first and second images from a first point rather than a first and second point
respectively as recited. PO App. Br. 30 (citing Lachinski 5:25–40).
For the reasons discussed above, we disagree. In particular, Yee explicitly
teaches creating composites of “them,” which includes “a composite display of (for
example) a curbside view with a front and back view.” RAN 28; Yee 389.
Because “them” refers to the views taken from different perspective (e.g., curbside,
front, back), the images are taken at different points in a trajectory, including a first
and second point respectively. See Yee 389. Moreover, even assuming
Lachinski’s 4-view is exemplary of Yee’s system, Yee does not describe how the
data may be acquired or require that the views are all taken at the same point.
Lachinski 5:25–40. Rather, Lachinski states that the images are obtained from the
cameras (e.g., 50A–J) in spaced relationship to each other (e.g., different points).
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See id. 4:35–66 and 5:25–60, Fig. 3; see also RAN 30. As such, we disagree with
Patent Owner that Yee’s 4-view embodiment acquires all the images at the same
point in a trajectory.
Regarding claim 69, this claims recites “the first and second images each
provide a panoramic view of objects at respectively the first and second locations.”
Patent Owner contends that the Examiner does not provide any reason for the
rejection, other than incorporating Requester’s comments. PO App. Br. 30–31.
Patent Owner further contends that Requester does not contend Yee teaches the
features of claim 69, such as a “‘panoramic view.’”15 PO App. Br. 31.
Patent Owner is correct that the Examiner refers to the Requester’s
Comments when rejecting claim 69. RAN 9–10 (referring to pages 43–49 of “the
Comments.”) We presume that the comments the Examiner is referring to are the
Requester’s comments filed on May 22, 2013 (“3PR May 22, 2013 Comments.”)
Yet, when discussing claim 69, the proposed rejection relies on Dykes— not Yee.
3PR May 22, 2013 Comments 47–48 (citing Dykes 137).
At oral hearing, Requester was asked to clarify the rejection of claim 69.
Oral H’g 32–33. In response, Requester asserts no specific argument was
presented for claim 69. See Oral H’g 40. As summarized above, we disagree.
Requester further refers to Lachinski, contending that it shows what is recited.
Oral H’g 40–41 (stating Lachinski describing combining images to form a
composite and “a panorama being a flavor of [a] composite.”)
Yet, the rejection is based on Yee— not Lachinski — and Yee at best
discloses “composite of them” with no details whether such a composite is a

15 At one point, Patent Owner refers to claim 68. PO App. Br. 31. We assume for
purposes of the Opinion that Patent Owner intended to refer to claim 69.
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panorama. Moreover, even if Lachinski discloses what is inherently in Yee,
column 5 of Lachinski discusses forming a single image by placing reduced
images into one of four corners. Lachinski 5:25–40. There is no discussion of a
panorama in this portion. See id.
Accordingly, based on Yee, we determine that the Examiner has not erred in
rejecting claim 65 but has erred in rejecting claim 69.
C. Ishida and Dykes – Claims 4, 21, and 75
Claims 4, 21, and 75 are rejected under § 103 based on Ishida and Dykes.
RAN 17–19. For this rejection, Patent Owner argues claims 4, 21, and 75 together.
PO App. Br. 40–42. We select claim 4 as representative.
Unlike the rejection based on Yee, Patent Owner argues that neither Ishida
nor Dykes acquire image frames with a moving recording device. PO App. Br.
40–41. In essence, Patent Owner is disputing the features found in canceled
independent claim 1, from which claim 4 depends. As discussed above in the
Claim Construction section, we determined that recitation, “the images are
associated with image frames acquired by an image recording device moving along
a trajectory” requires the image recording device to move along the trajectory but
not necessary that the device acquires images while moving. Given the above
understanding, Patent Owner’s argument that Dykes and Ishida’s recording device
do not move when acquiring the image frames does not fully consider the breadth
of the claim 4. Id. Moreover, Patent Owner admits that Dykes teaches taking
images as students travel from one location to another (PO App. Br. 25) and thus
the image recording device (e.g., a camera) is moving along a trajectory and
acquiring images at different location on the trajectory. See 3PR Resp. Br. 9.
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Even so and presuming the correct claim construction requires the image
recording device to move while acquiring image frames, we consider what one
skilled in the art would have recognized and known given Ishida’s and Dykes’
teachings under an obviousness analysis. For Dykes, Patent Owner refers to
Section VII.C.1, arguing Dykes does not teach “an image recording device moving
along a trajectory.” PO App. Br. 40–41. In this section, Patent Owner asserts that
Dykes’ discussion of students taking images as they travel from one location to
another, but that the camera is placed on a tripod and kept stationary. PO App. Br.
25–26. For this reason, Patent Owner argues that Dykes does not disclose an
image recording device captured images while moving along a trajectory. PO
App. Br. 26. We are not persuaded.
First, Dykes is silent regarding whether the camera is moving while
acquiring images. See generally Dykes. Thus, Patent Owner’s assertion that
Dykes “appears” to use a tripod and the camera is “stationary” is not supported
with adequate evidence. PO App. Br. 25 (citing Dykes 134). Second, Dykes
discusses an example of taking images of a slope at locations along a footpath to
obtain a panoraMap students. Dykes 146. Although there is no discussion of the
method used to obtain the images, one skilled in the art would have recognized that
some camera movement may result when obtaining images.
For example, one skilled in the art would have recognized that some image
recording device movement would have occurred while acquiring photos in certain
situations, such as when the captured objects may be in motion themselves. Also,
even when the student is supposedly still or at given location, ordinarily skilled
artisans would have recognized that some camera movement occurs when
obtaining images naturally, such as moving closer or further from a subject or
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swaying. Notably, as mentioned earlier in the Claim Construction section of this
Opinion, the recited movement of the camera includes those that are small or
infinitesimal. Thus, even presuming, without agreeing, Dykes’ camera is required
to move when acquiring images to teach the Image Frame Limitation in claims 1
and 15, the claimed movement need not be large and one skilled in the art would
have recognized that some camera movement (e.g., moving in, moving out, or
swaying) occurs when a user is capturing an image.
Patent Owner also contends that Ishida does not cure the purported
deficiency of Dykes and “merely provides a system that allows a user to explore an
imprecise 3D model of a virtual area.” PO App. Br. 41. We are not persuaded for
the reasons discussed above concerning Dykes. Moreover, the rejection does not
rely on Ishida to teach this disputed feature. RAN 18 (referring to Dykes when
discussing the limitation of the device that moves along the trajectory); see also
RAN 19 (incorporating the Request for claims 4 and 21 and Claim Chart CC-G).
In particular, the proposed rejection relies on Dykes to teach “the images are
associated with image frames acquired by an image recording device moving along
a trajectory” or the Image Frames Limitation. Request 216–217 (citing Dykes
146).
Next, Patent Owner argues that neither Ishida nor Dykes discloses
“determining a second location based on the user selected position,” as recited in
claim 1 and refers to Section VII.C.1.b. PO App. Br. 41. But in Section VII.
C.1.b, Patent Owner specifically argues that Dykes fails to teach another recitation
of “receiving a user selection of a position on the displayed map” in claim 1
because the selection is based on a hot-linked symbol within the panorama and not
“on the displayed map,” as recited. PO App. Br. 26. Patent Owner further asserts
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that the selecting of icons displayed on an overhead image discussed in Dykes is a
two-step process that fails to teach the three-step process in claim 1 that includes
the above disputed “determining” step. PO App. Br. 26–27 (citing Dykes 142).
We find these arguments unavailing. The rejection proposes to teach the
“receiving a user selection of a position on the displayed map” in Dykes. Request
218–219 (citing Dykes 141). In particular, Dykes teaches a user clicking on
multiple symbols on the map to obtain new views, including panning images. Id.
(citing Dykes 140–141, Fig. 4). For example, Figure 4 of Dykes shows a map of
Haytor Down and linked panoramas. Dykes 141. The symbols on the map (e.g.,
panoraMap) identify locations of panoramas. Dykes 140–141. When the symbols
on a map are clicked, a viewer is revealed and symbols within the viewer provide
links to other panoramic images. See id. As such, the rejection does not rely on
the hot-linked symbols within panorama as argued. See PO App. Br. 26 (citing
RAN 7). Rather, Dykes discloses “[s]ymbols . . . on the map” reveal panoramic
images when clicked (Dykes 141) and thus allows for “receiving a user selection of
a position on the displayed map,” as recited.
As for the contention related to two-step process in Dykes versus three-step
process of the claims, we are not persuaded. As preliminary matter, we are not
sure what three steps Patent Owner refers to, as steps (1) and (3) of the three step
process are described the same. PO App. Br. 27 (describing both steps (1) and (3)
as “retrieving from the image source a second image associated with the second
location.”) We further disagree that Dykes does not teach determining a second
location based on the selected position. Dykes teaches the symbols on the map
“show[] the locations of [the] panoramic images” and are spaced apart. Dykes
141. Clicking on one symbol on the map and then a different symbol on the map
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(e.g., receiving user selections of different positions on the displayed map)
determines a second location (e.g., the different symbol) based on the user
selection position. See Dykes 141.
Lastly, Patent Owner contends that the Examiner has not presented a reason
to combine Ishida and Dykes and that Dykes teaches away from such a
combination with Ishida. PO App. Br. 42–43. Specifically, Patent Owner argues
Ishida concerns a two-dimensional (2D) map with a three-dimensional (3D) model
of city that a user can navigate. PO App. Br. 42 (citing Ishida 24). In Patent
Owner’s view, Dykes concerns a method of storing and displaying multimedia data
in association with specific locations on map, which is distinct and incompatible
with Ishida. Id. (citing Dykes 131 and Ishida 27). In particular, Patent Owner
contends that “it is unclear how a person of ordinary skill in the art at the time [of]
the invention was made would have combined the 3D virtual environment of
Ishida with the student media database at specific locations (including panoramas)
of Dykes.” PO App. Br. 42–43.
We are not persuaded. As noted in In re Keller, 642 F.2d 413 (CCPA 1981),
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of
the primary reference; nor is it that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.

Keller, 642 F.2d at 425. Thus, there is no requirement to show how to incorporate
Dykes’ database of images within Ishida’s 3D environment. See 3PR Resp. Br. 18
(citing In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)).
Nonetheless, Dykes is relied upon to teach a technique for acquiring images
frames using a camera that moves along a trajectory— not to teach specific types
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of images to use with Ishida’s system. RAN 18. Additionally, the Request
provides a reason to combine the teachings of Dykes with Ishida in order to
acquire images of a large geographic area in an efficient manner. RAN 18 (citing
Request 211–212); see also 3PR Resp. Br. 17–18 (citing ACP 15–16, Dykes 146,
and Ishida, Abstract, 27). Requester further states that Dykes teaches this efficient
technique for collecting images provides a reason to use Dykes process “to help
build the 3D models in Ishida” that are generated from photos. 3PR Resp. Br. 18
(citing Dykes 142 and PO App. Br. 42). We find this position reasonable.
As Patent Owner indicates, Ishida teaches using 2D photographs to add
texture and detail to buildings in its 3D model. PO App. Br. 42 (citing Ishida 27).
For example, Ishida discusses a 3D interface that uses photos mapped onto 3D
blocks and 2D planes to build the Shijo Shopping Street 3DML (3D Modeling
Language) implementation, for example. Ishida 27–28, Fig. 3. Thus, as Requester
indicates, Ishida obtains photographs of a region that are used to create the 3D
interface in Ishida. Dykes teaches one such known technique for acquiring images
of a region along a trajectory that can be integrated with other data. Dykes 146.
As such, one skilled in the art would have recognized using Dykes’ image
acquisition technique— not necessarily the images acquired in Dykes as Patent
Owner contends (PO App. Br. 42–43) —is an effective method for building
Ishida’s 3D blocks and that using the technique with Ishida’s 3D interface would
have yielded the predictable result of integrating captured images with Ishida’s 3D
blocks in an efficient manner. See id.; RAN 18 and 3PR Resp. Br. 18.
Furthermore, Patent Owner fails to demonstrate sufficiently that one skilled
in the art would not recognized how to use panoramic images as taught by Dykes
within Ishida. Such panoramic images would further augment Ishida’s 3D
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interface by providing a greater angle of view of a block, such as the Shijo
Shopping Street, for the user. Accordingly, the record provides various reasons to
combine Dykes with Ishida.
Finally, Patent Owner contends that “Ishida appears to discourage the use of
images” because problems exists when downloading GIF (Graphics Interchange
Format) or JPEG (Joint Photographic Experts Group) compressed photos. PO
App. Br. 43 (citing Ishida 27). However, this purported problem is described as
existing with “any site on the WEB using many graphics.” Ishida 27.
Additionally, neither Ishida nor Dykes requires compressed GIF or JPEG formats.
Yet, even presuming without deciding Patent Owner is correct that problems will
exist that render the combined system somewhat inferior if GIF or JPEG images
are used, this Ishida/Dykes approach does not teach away from the combination or
make claim 4 patentable. See In re Gurley, 27 F.3d 551 (Fed. Cir. 1994).
Accordingly, we determine that the Examiner has not erred in rejecting
claim 4 and claims 21 and 75 not separately argued.

REQUESTER’S CROSS APPEAL
The Examiner did not adopt the following proposed rejection,16 for which
Requester appeals:

Reference(s) Basis Claims RAN
Yee § 102(b) 72 and 73 ACP 2–3, 24; RAN 2, 4

16 This rejection was proposed by Requester in comments after the ACP on
November 25, 2013. 3PR’s Comments 42–43.
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3PR App. Br. 5.
Requester appeals the Examiner’s conclusion that claims 72 and 73 are
patentable. 3PR App. Br. 2, 5; RAN 1. Claims 72 and 73 both depend from
claim 4. PO App. Br. 56, Claims App’x. As explained above, Yee discloses the
elements of claim 4.
1. Claim 72
Claim 72 recites “the image source comprises substantially all the static
objects in the geographic area to allow a user to visually navigate the area from the
user terminal.” Regarding this claim, the Examiner found that this claim is
patentable because the prior art fails to teach or suggest an image source “to
‘substantially all the static objects in the geographic area.’” ACP 24. Patent
Owner argues the Examiner improperly limits this limitation. 3PR App. Br.
12–13. We agree.
Patent Owner does not rebut the findings concerning Yee for claim 72 or
Requester’s claim construction for claim 72. See generally PO Resp. Br. Rather,
Patent Owner repeats arguments concerning claim 4. PO Resp. Br. 10. As stated
above, we are not persuaded.
Nonetheless, turning to the ’596 patent, the disclosure discusses the static
objects at two locations. First, as noted by Requester, the disclosure repeats what
is recited or that the image database (e.g., an image source) contains substantially
all of the static objects in the geographic area to allow for visually navigation.
The ’596 patent 2:46–49, cited in 3PR App. Br. 13. Second, the ’596 patent
discusses a database that provides a visual representation of at least the static
objects in the entire area without the “substantially all” language. The ’596 patent
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10:13–16. Unfortunately, neither portion of the ’596 patent describes what is
meant by “substantially all.”
Requester does not provide us with evidence of an ordinary understanding of
the phrase, “substantially all,” but asserts that it means “a sufficient quantity of
images of objects are stored in the image database (or ‘image source’ in claim 72)
to allow the user to visually navigate the area” in the context of the claim. 3PR
App. Br. 13 (bolding omitted). Our understanding is aligned with Requester. An
ordinary meaning for “substantial” includes “considerable in quantity: significantly
great” and “being largely but not wholly that which is specified.”17 As such, claim
72 requires the image source to have a considerable number of static objects— but
not all — in the geographic area to allow a user to visually navigate the area from
the user terminal.
Yee teaches its database includes data concerning:
[A]ccurate street location and names, selected infrastructure items
such as power poles, street lights, traffic signals, guard rails, highway
striping, etc[.]; houses; pavement conditions; individual house
addresses; and intelligent vehicle highway systems data such as speed
limits, speed zones, turn restrictions, one-way street data and street
signs can be viewed and further located if desired.

Yee 389, quoted in 3PR App. Br. 13. As such, Requester provides adequate
evidence that a considerable quantity of static objects are captured in Yee’s system.
See id. Additionally, Yee discusses a visual interface system allowing a user to
navigate geographic areas. Yee 391–92, cited in 3PR App. Br. 14.

17 Merriam-Webster Online Dictionary, definitions [3b] and [5] of “substantial,”
available at http://www.merriam-webster.com/dictionary/substantially (last visited
June 28, 2016)
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Accordingly, the Examiner erred in determining Yee does not anticipate
claim 72.
2. Claim 73
Claim 73 recites “the first location specified by the first user input address 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.” When discussing patentability for this claim, the Examiner states it
“is limited to a closed group of address parameters.” ACP 24. Requester contends
that the Examiner construed the claim to require “all four limitations of ‘street
name, city, state, and zip code.’” 3PR Resp. Br. 15. But, when construed
properly, Requester argues the phrase “selected from a group consisting of” refers
to one or more of these items in the list. Id. Patent Owner counters that the
Examiner’s construction is correct. PO Resp. Br. 11–12.
We agree with Requester. The phrase, “selected from a group consisting of
A, B, and C,” is known as Markush-type claim, which recites multiple, distinct
invention. See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1924). As such,
the prior art need only demonstrate the entered arbitrary address specifying
information is one alternative in the Markush group (e.g., street name, city, state,
or zip code) —not all as best understood from Examiner’s remarks (see ACP 24).
See Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1298 (Fed. Cir.
2009), cited in 3PR Reb. Br. 5. As noted by Requester, the ’596 patent further
supports this understanding when discussing the database can be searched for a
street name as well as a city state, or country if applicable. See 3PR App. Br. 15
(citing the ’596 patent 13:34–37).
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Additionally, Requester illustrates Yee teaches a user inputting an address
that includes a street name to retrieve images. 3PR Resp. Br. 15 (citing Yee 391–
92); see Yee 391–92 (discussing a “[s]treet address entry” at Yee 392 and street
name recording at Yee 391); see also 3PR Reb. Br. 2, 6 (discussing Yee 391–92).
But, Patent Owner contends that this entered address in Yee is not “an arbitrary
address,” as recited. PO Resp. Br. 12. Specifically, Patent Owner argues that the
phrase, “arbitrary address” means “‘any potential addresses (assigned and
unassigned) in the geographic area, not preselected or constrained by the system.’”
PO Resp. Br. 7. This understanding by Patent Owner is based on an ordinary
meaning of “arbitrary,” a district court’s construction, and the ’596 patent’s
disclosure. PO Resp. Br. 7–8 (citing the ’596 patent 7:15–20).
However, Patent Owner provides no citations to an ordinary meaning for
“arbitrary” or a citation to the district court’s understanding, amounting to mere
attorney argument that cannot take the place of evidence in the record. See Estee
Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). As such, this part
of the argument is not probative. Moreover, as previously noted, we are not
obligated to follow the same claim construction as the district court. See Trans
Texas, 498 F.3d at 1298.
Turning to column 7, this part of the ’596 does not discuss addresses but
rather “an arbitrary value” for a time phase. See the ’596 patent 7:15–20. In fact,
when discussing entering an address, there is no discussion that the address is
arbitrary, unassigned, or unconstrained by the system. Rather, the ’596 patent
discusses entering “an address of the location”— not some random address — and
returning a map corresponding to the address. The ’596 patent 11:45–46,
12:20–26, 32–35, 13:23–37, 55–61. There is no discussion of the address being
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any potential address, unassigned, or “not preselected” as argued. See PO Resp.
Br. 7; 3PR Reb. Br. 2, 6. Moreover, claim 73 does not recite showing an image of
the location along a street where the address would be located “[i]f the selected
address does not correspond to an address assigned to an actual building.” PO
Resp. Br. 8. We thus are not persuaded that the phrase “arbitrary address” in claim
73 must be any potential addresses, including those that are unassigned, in the
geographic area, which is not constrained by the system.
Regardless and even using Patent Owner’s construction, entering an existing
address, such as in Yee, is “arbitrary” because an existing address is one potential
address in a geographic area. See Yee 392. Additionally, using an ordinary
understanding of “arbitrary” and Patent Owner’s analogy of a person picking any
number between 1 and 100 is an “arbitrary number” (PO Resp. Br. 8), Yee’s
entered address is an arbitrary address because the entered address depends on the
user’s decision or discretion to enter such address.18 Lastly, Requester points out
and we agree that Yee allows the user to select a point of a street segment or a
location on a map (e.g., an arbitrary address of a first location specified by the first
user input that specifies at least a city or street) and to retrieve information for that
location. 3PR Reb. Br. 6 (citing Yee 391–92). We agree.
Requester even further discusses Lachinski to support its position. 3PR
Resp. Br. 16; 3PR Reb. Br. 6–7. However, Lachinski was not cited in the proposed
rejection under 35 U.S.C. § 102 based on Yee. Moreover, to the extent that
Requester is relying on Lachinski for an inherent property of Yee (3PR Resp. Br.

18 Requester further discusses the Examiner’s position taken in another
reexamination proceeding, Control No. 95/000,683, where “arbitrary” was found to
mean “arbitrary to someone’s perspective and that perspective may broadly and
reasonably belong to a user.” 3PR Reb. Br. 6.
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16 (stating Lachinski “describes the same GeoSpan system as Yee as discussed in
Section VII.A.2.”), we are not persuaded as previously discussed. That is,
although there are many similarities between Lachinski and Yee (e.g., describing
the vehicle that captures images with multiple camera and GPS data developed by
GeoSpan), we also cannot state with certainty that all the details in Lachinski
describe the “same” system as Yee, including how the addresses are matched to
geography.
For the above-stated reasons, we determine that claim 73 is anticipated by
Yee under § 102.
3. Claim 69
Although not proposed by Requester, we reject claim 69 under 35 U.S.C.
§ 103(a) as obvious over Ishida and Dykes. Claim 69 depends from claim 4, for
which we sustain the rejection as previously discussed. We refer above for details
of the obviousness rejection of claim 4.
Claim 69 further limits claim 4 by reciting “the first and second images each
provide a panoramic view of objects at respectively the first and second location.”
Dykes specifically acquires image frames and creates panoramas. Dykes 134–35.
In particular, Dykes teaches or suggests stitching images from different points of
view together to form a composite image using the overlap feature to form a
continuous panorama with a wider field of view. Id. This further demonstrates
how image frames can be combined together to create composites. See id. As
such, Dykes teaches and suggests that recited first and second images provide a
panoramic view of objects at the respective first and second locations as recited.
Accordingly, we determine the claim 69 is rendered obvious based on Ishida
and Dykes.
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REMAINING REJECTIONS
The above discussions address all the claims on appeal and are dispositive,
rendering it unnecessary to reach the propriety of any remaining contentions. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984); see also Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).

IV. CONCLUSION
The Examiner’s decision to reject (1) claims 4, 63–66, 68, 70, 71, and 74
based on Yee and (2) claims 4, 21, and 75 over Ishida and Yee is affirmed.
The Examiner’s decision that claim 67 is patentable is affirmed.
The Examiner’s decision to reject claim 69 based on Yee is reversed.
We do not sustain the Examiner’s decision determining claims 72 and 73 are
patentable.
We present new grounds of rejection for claims 69, 72, and 73.

V. TIME PERIOD FOR RESPONSE
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes a new
ground of rejection. Section 41.77(b) provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.” That section also provides
that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to the
new grounds of rejection to avoid termination of the appeal proceeding as to the
rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must
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be either an amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. The request
for rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” 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), “[t]he times for
requesting rehearing under paragraph (a) of this 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, 2683 (8th ed., Rev. 8, July
2010).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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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.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

FOR PATENT OWNER:

LEWIS ROCA ROTHGERBER CHRISTIE LLP
PO BOX 29001
Glendale, CA 91209-9001

FOR THIRD-PARTY REQUESTER:

STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE N.W.
WASHINGTON, DC 20036