Paper No. _____
`Filed: August 30, 2013
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`Filed on behalf of Google Inc.
`By: Cono A. Carrano (ccarrano@akingump.com)
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`Ruben Munoz (rmunoz@akingump.com)
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`Akin Gump Strauss Hauer & Feld LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036
`Tel. (202) 887-4000
`Fax. (202) 887-4288
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________________
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`
`
`Google Inc.
`Petitioner
`v.
`Grandeye Ltd.
`Patent Owner
`
`
`
`__________________________________
`
`CASE IPR: Unassigned
`__________________________________
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`
`
`DECLARATION OF JOHN R. GRINDON, D.SC., IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,542,035
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`

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`TABLE OF CONTENTS
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`Page
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`B.
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`C.
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`I.
`INTRODUCTION ........................................................................................... 1
`II.
`QUALIFICATIONS ........................................................................................ 2
`III. MATERIALS REVIEWED ............................................................................. 3
`IV. PERSON OF ORDINARY SKILL IN THE ART ........................................... 4
`V.
`OVERVIEW OF THE ’035 PATENT .............................................................. 4
`VI. THE CLAIMS OF THE ’035 PATENT ........................................................... 7
`VII. THERE IS NO SUPPORT FOR THE IPR CLAIMS IN
`APPLICATIONS FILED PRIOR TO JANUARY 12, 1998 ........................... 9
`No Disclosure Of Modeling Full Surround Image Data Prior To January
`A.
`12, 1998.................................................................................................................. 11
`No Disclosure Of Texture Mapping Image Data Onto A P-Surface Prior To
`January 12, 1998 ....................................................................................................12
`No Disclosure Of Various P-Surface Limitations Prior To January 12,
`1998........................................................................................................................12
`VIII. CLAIM CONSTRUCTION AND PATENTABILITY .................................. 13
`A.
`Claim Construction ................................................................................................13
`1.
`Full-Surround (Image) Data (Claims 1 And 11) ........................................13
`2.
`P-Surface (Claims 1, 3-5, And 11) .............................................................14
`3.
`Texture Mapping (Claims 1 And 11) .........................................................15
`Patentability ...........................................................................................................16
`1.
`Anticipation................................................................................................16
`2.
`Obviousness ...............................................................................................19
`IX. SUMMARY OF OPINIONS ......................................................................... 24
`The IPR Claims Are Anticipated And/Or Obvious In View Of The Prior
`A.
`Art ..........................................................................................................................24
`STATE OF THE ART AT THE TIME OF THE ALLEGED
`INVENTION ................................................................................................. 27
`Computer Graphics Mapping And Display Systems With Full-Surround
`A.
`Data ........................................................................................................................27
`1.
`Selecting .....................................................................................................29
`2.
`Texture Mapping Full-Surround Image Data Onto A P-Surface ...............32
`3.
`Displaying A Portion Of The P-Surface .....................................................35
`4.
`Providing Full-Surround Image Data .........................................................36
`The State Of The Art Of Computer Systems In General .......................................38
`
`X.
`
`B.
`
`B.
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`i
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`

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`C.
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`XI.
`IDENTIFYING RELEVANT PRIOR ART ................................................... 41
`XII. THE PRIOR ART REFERENCES ANTICIPATE AND/OR RENDER
`THE IPR CLAIMS OBVIOUS – DETAILED ANALYSIS ......................... 50
`A.
`Anticipation............................................................................................................50
`B.
`Obviousness ...........................................................................................................50
`It Would Have Been Obvious To Combine Various 3D To 2D
`1.
`Transformation Systems That Use Texture Mapping To Create
`Interactive Models .....................................................................................52
`Combining Miller, Gullichsen, And/Or Luken With Haeberli ..................55
`The Combination Of Lipscomb And Knowledge Of A Person Of
`Ordinary Skill In The Art ...........................................................................56
`The Combination Of QuickTime VR And Photo VR ..................................57
`4.
`Grounds 1, 6, And 8 In Combination With Gullichsen ..............................57
`5.
`Specific Grounds Of Unpatentability .....................................................................58
`Ground 1: The Photo VR Reference .........................................................58
`1.
`Ground 2: The Photo VR And Gullichsen References ..............................78
`2.
`Ground 3: The Gullichsen Reference .......................................................93
`3.
`Ground 4: The Gullichsen And Haeberli References .............................132
`4.
`Ground 5: The QuickTime VR And Photo VR References ......................179
`5.
`Ground 6: The Miller Reference In View Of Knowledge Of A
`6.
`Person Of Ordinary Skill In The Art ........................................................212
`Ground 7: The Miller And Haeberli References ....................................257
`Ground 8: The Miller, Haeberli, And Gullichsen References ................308
`Ground 9: The Luken And Haeberli References .....................................400
`Ground 10: The Luken, Haeberli, And Gullichsen References ..............425
`Grounds 11 And 12: The Lipscomb Reference .......................................450
`Grounds 13-22: Grounds 1-4, 6-12 With The QuickTime VR
`Reference .................................................................................................484
`XI. CONCLUSION ............................................................................................ 488
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`2.
`3.
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`7.
`8.
`9.
`10.
`11.
`12.
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`ii
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`
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`I, John R. Grindon, D.Sc., declare as follows:
`I.
`
`INTRODUCTION
`1.
`
`I have been retained by Google Inc. (“Petitioner”) as an independent
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`expert consultant in this proceeding.1 I am being compensated at my standard rate
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`of $400 per hour for the time I spend on this matter. No part of my compensation is
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`dependent on the substance of my testimony or the outcome of this proceeding. I
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`have no other interest in this proceeding.
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`2.
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`I understand that this proceeding involves U.S. Patent No. 7,542,035
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`(the “’035 Patent”) (Ex. 1003), the application for which was filed on June 25,
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`2003, as U.S. Patent Application No. 10/602,666 (the “’035 Patent Application”),
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`and issued on June 2, 2009. The ’035 Patent is also the subject of an ex parte
`
`reexamination proceeding – App. No. 90/012,689 (the “’035 ex parte
`
`reexamination”).
`
`
`1 I have also been retained by Petitioner as an independent expert in two
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`other Inter Partes Reexaminations involving U.S. Patent Nos. 6,243,099 (the “’099
`
`Patent”) (Ex. 1001) and 8,077,176 (the ’176 Patent) (Ex. 1002). I hereby
`
`incorporate by reference my declarations filed in those actions and all supporting
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`exhibits to those declarations.
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`1
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`3.
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`I have been asked to provide my opinions regarding the state of the
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`relevant technology at the time of the alleged invention of the ’035 Patent and the
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`patentability of Claims 1, 7, 13, 22, 33, 44, 53, 54, 69, 73, 78, 80, 82-84, 86, 89,
`
`98, 102, 105, 113, 115, 118-121, and 123 of the ’035 Patent (the “IPR Claims”).
`
`My opinions are set forth below.
`
`II. QUALIFICATIONS
`I received a Bachelor of Science degree in electrical engineering from
`4.
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`the University of Missouri at Rolla in 1961. I received a Master of Science degree
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`in electrical engineering from the Massachusetts Institute of Technology in 1962,
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`and a Doctor of Science degree in electrical engineering from Washington
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`University in St. Louis in 1970.
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`5.
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`From 1962 through 1987, I worked in various capacities including as
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`a Branch Chief of Electronics at McDonnell Douglas Corporation. Among other
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`work there, I led an engineering research and development team for advanced
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`autonomous Cruise Missile guidance employing imaging laser radars, including
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`development of scene analysis algorithms using three-dimensional (3D) imagery.
`
`6.
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`From 1985 through 1990, I worked as Executive Vice President and
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`Director of Research at Cencit, Inc., a startup company engaged in the research and
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`development of 3D electronic imaging systems based upon digital video image
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`processing and software algorithms. I developed the concept and led the design and
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`
`
`2
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`

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`implementation of a 3D computer vision system for non-contact shape digitization,
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`and a computer-controlled four-axis DNC milling machine to replicate physical
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`models of scanned objects.
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`7.
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`Since 1990, I have worked as an independent consultant, doing
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`business as John R. Grindon & Associates. My curriculum vitae, including a list of
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`publications, patents, and cases in which I have previously testified as an expert, is
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`attached as Exhibit 1006.
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`III. MATERIALS REVIEWED
`In addition to my own knowledge and experience in the image
`8.
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`processing, computer graphics, and three-dimensional (3D)/two-dimensional (2D)
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`modeling and rendering art, and of those of ordinary skill in the art, I reviewed the
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`references that were cited on the face of the ’035 Patent and references mentioned
`
`in the ’035 Patent specification. I also reviewed the prosecution and ex parte
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`reexamination histories of the ’035 Patent and its related grandparent, U.S. Patent
`
`No. 6,243,099. I further reviewed related patent applications (including
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`provisionals) and patents related to the ’035 Patent through continuations or
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`continuations-in-part. Further, I reviewed Petitioner’s First Amended Non-
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`Infringement, Invalidity, and Unenforceability Contentions, served July 30, 2013 in
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`case no. 1:12-cv-1352 (N.D.N.Y.) (“View 360 Litigation”), and consider the art
`
`cited therein to be additional evidence of the knowledge of one of ordinary skill in
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`3
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`

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`the art at the time of the alleged invention. See Ex. 1026 (listing the cited
`
`art). Finally, I reviewed all the references and documents that I have cited and
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`applied in this declaration and that have been cited in the Inter Partes Review
`
`Petition. I have relied on the foregoing for the opinions stated herein.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`
`9.
`
`Counsel for Petitioner has informed me that the content of a prior art
`
`reference should be interpreted the way a person of ordinary skill in the art would
`
`have interpreted the reference at the time of the ’035 Patent’s alleged invention. In
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`my opinion a person of ordinary skill in the art would have a Bachelor of Science
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`degree in electrical engineering or computer science, with 3 to 5 years of
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`experience
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`in
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`image processing, computer graphics, and/or 2D or 3D
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`rendering/modeling. For purposes of this Petition only, this is the standard that I
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`applied to my analysis.
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`10.
`
`I have worked with engineers and designers with similar educational
`
`and work backgrounds to this. Thus I am familiar with the knowledge and
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`capabilities of one of ordinary skill in the art as outlined above, and I have
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`analyzed the ’035 Patent within that context.
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`V. OVERVIEW OF THE ’035 PATENT
`11. The ’035 Patent discloses a computer graphics system that allows a
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`user to essentially “look around” a location without physically being there. ’035
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`4
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`Patent 8:44-45. This is accomplished by using “full-surround image data” to
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`texture map the visible world onto what the ’035 patent refers to as a “p-surface.”
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`Id. at 4:56-60, 7:37-38.
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`12. The ’035 Patent specification defines full-surround image data as
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`“data which samples the points P. This data encodes, explicitly or implicitly, the
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`association of a color value with a given direction from a given point of projection.
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`It should be mentioned at this point that full-surround image data is useful in many
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`fields of entertainment because, when delivered to many viewers, it enables the
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`construction of an independent viewing system defined below.” Id. at 7:3-10.
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`13. The specification defines the term p-surface as “a computer graphics
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`representation of any surface with a well-defined inside and outside, where there
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`exists at least one point x inside (neither intersecting, nor lying outside) the surface
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`which may be connected to every point of the surface with a distinct line segment,
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`no portion of which said line segment lies outside the surface or intersects the
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`surface at a point not an endpoint. The union of all such points x form the region X
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`of the p-surface.” Id. at 7:21-32. For purposes of the patent a p-surface can be
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`thought of as a closed (or periodic), three-dimensional surface containing within it
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`at least one point from which all points on the interior of the surface can be viewed
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`directly, without any of the lines of view passing through any other part of the
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`surface. The specification further discloses:
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`5
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`

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`[I]n the case where the p-surface used to model the visible world is a
`good approximation of a sphere, that is, a substantially better model
`than a tetrahedron or a cube, and where the view point of that
`representation is close to the approximate center of that p-surface,
`then by allowing the viewer to move the viewpoint away from center
`point to a point close to the surface of the p-surface, an independent
`viewing system is achieved in circular perspective.
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`Id. at 9:27-35.
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`14. Thus, the specification further discloses viewing in either circular or
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`linear perspective. According to the specification, circular perspective occurs
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`automatically when the view point is moved away from the center of the p-surface.
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`Id. at 9:11-12. Circular perspective images are markedly different from traditional
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`linear perspective images. Id. at 9:27-35. Unlike in linear perspective, in circular
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`perspective straight lines appear curved, giving the circular image a warped
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`appearance. This difference is illustrated in Figures 5-6, reproduced below. Figure
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`5 depicts “the concept of linear perspective” while Figure 6 depicts viewing
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`images in circular perspective. Id. at 5:64-65.
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`
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`6
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`

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`
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`’035 Patent Figures 5 and 6
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`15. This concept of circular perspective has been known in the art for
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`some time. For example, the named inventor admitted that as early as 1992 he had
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`already disclosed “‘de-warping’ a ‘full-surround image’ captured by a fish-eye lens
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`and camera … whether in linear or circular perspective.” Declaration of Ford
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`Oxaal, April 15, 2013 (Ex. 1016) at 2; Minds-Eye-View Screenshot (Ex. 1017)
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`(According to the named inventor’s company website, circular perspective has
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`been known in the art since at least the 1970s).
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`VI. THE CLAIMS OF THE ’035 PATENT
`16. The claims of the ’035 Patent “relate[] to a method and apparatus for
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`viewing full-surround, e.g., spherical, image data.” ’035 Patent 1:49-53.
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`7
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`17. The independent claims of the ’035 Patent recite some or all of the
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`following limitations: (1) providing full surround image data; (2) texture mapping
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`that data onto a p-surface; (3) selecting a view point and/or direction of view; and
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`(4) displaying a portion of the texture-mapped p-surface.
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`18. As explained above, I have been asked to determine the patentability
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`of the IPR Claims, and in the remaining sections of this declaration, I have focused
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`exclusively on these claims.
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`19. The IPR Claims include the seven independent claims of the ’035
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`Patent, all of which are directed to the four steps identified above or minor variants
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`thereof. Claim 53, reproduced below, is representative:
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`53. A method, comprising:
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`texture mapping full-surround image data onto a p-surface to
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`generate a texture map that is substantially equivalent to projecting
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`the image data onto the p-surface from a point of projection to thereby
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`generate a texture mapped p-surface,
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`selecting a direction of view from a viewpoint; and
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`displaying a portion of the texture mapped p-surface based on the
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`selecting; wherein the p-surface comprises polygons approximating at
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`least a portion of a sphere.
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`8
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`20.
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`Independent claims 1 and 22 are nearly
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`identical
`
`in scope.
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`Independent claims 7, 13, 33, and 44 are similar but further include minor variants,
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`for example, related to how the image data is captured (e.g., texture mapping image
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`data from the wide-angle lens or capturing a first texture p-surface data
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`set…captured from a wide-angle lens).
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`21. Although the ’035 Patent states that its novelty lies in displaying
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`portions of the p-surface in circular perspective (’035 Patent 3:1-6), the
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`independent claims do not limit viewing to circular perspective.
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`22. The dependent claims of the ’035 Patent are directed to such
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`additional concepts as deriving the full-surround image data from source image
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`data (claim 54), allowing a user to interact with the viewing system with an input
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`device (claims 78, 80, 113, and 115), providing a user with the option of zooming
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`in on imagery (claims 82 and 118), generating a plurality of p-surfaces (claims 84
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`and 120), and enabling multiple users to independently view a selected portion of
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`the p-surface (claims 86 and 123).
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`VII. THERE IS NO SUPPORT FOR THE IPR CLAIMS IN
`APPLICATIONS FILED PRIOR TO JANUARY 12, 1998
`23. The ’035 Patent was filed on June 25, 2003 and issued on June 2,
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`2009. It claims priority to provisional patent application 60/071,148 (the “’148
`
`Provisional”) (Ex. 1018). The ’035 Patent is also a continuation-in-part of U.S.
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`
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`9
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`

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`Patent No. 5,903,782 (the “’782 Patent”) (Ex. 1019), which claims priority to
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`provisional patent application 60/066,800 (the “’800 Provisional”) (Ex. 1024).
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`24.
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`I understand that a claim of priority to an earlier application requires,
`
`among other things, that the earlier application support the claims in the later
`
`application. I further understand that claims that recite subject matter not disclosed
`
`in the earlier application cannot receive the benefit of priority from the earlier
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`application.
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`25.
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`I have reviewed the prosecution history of the ’035 Patent as well as
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`the patents and applications to which it claims priority (i.e., the ’800 Provisional,
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`the ’782 patent, and the ’148 Provisional) in view of IPR Claims. Accordingly, it is
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`my opinion that the IPR Claims recite subject matter that is not disclosed until at
`
`least January 12, 1998, the filing date of the ’148 Provisional, as there is no
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`support for the subject matter of the IPR Claims in the earlier filed ’782 Patent.
`
`26. Specifically, there is no mention or support in the ’782 Patent or its
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`parent ’800 Provisional Application, for at least the following IPR Claim
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`limitations:
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`• modeling image data, as recited in independent claims 1, 7, 13, 22, 33,
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`and 44.
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`• texture mapping image data, as recited in independent claims 1, 7, 13, 22,
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`33, 44, and 53.
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`10
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`• p-surface limitations, as recited in independent claims 1, 7, 13, 22, 33,
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`44, and 53.
`
`27. The ’782 Patent and its parent applications disclose a device for
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`capturing “three-hundred and sixty degree spherical visual data set in order to
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`provide the input for software algorithms . . . .” ’782 Patent 1:55-57; see also ’148
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`Provisional 4:20-23;’035 Patent 9:65-66. However, they do not disclose modeling
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`and interacting with the data once it is captured, which is the subject matter
`
`claimed in the IPR Claims.
`
`A. No Disclosure Of Modeling Full Surround Image Data Prior To
`January 12, 1998
`28. The concept of modeling image data, for example by texture mapping
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`it onto a p-surface, as opposed to capturing image data, is not disclosed in the ’782
`
`Patent or its parent application. As described above, the ’782 Patent, and the
`
`applications leading to it, merely disclose an image generator device. The concept
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`of modeling full surround image data is not disclosed until the ’148 Provisional
`
`Application, which was filed on January 12, 1998.
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`11
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`B. No Disclosure Of Texture Mapping Image Data Onto A P-Surface
`Prior To January 12, 19982
`29. The IPR Claims recite texture mapping data onto a p-surface. There
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`is, however, no disclosure in the ’782 Patent nor its parent applications of either
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`texture mapping or a p-surface. The first time there is mention of such subject
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`matter is in the ’148 Provisional.
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`C. No Disclosure Of Various P-Surface Limitations Prior To
`January 12, 1998
`30. The IPR Claims include a number of p-surface limitations, such as
`
`selecting a viewpoint within a p-surface or displaying a portion of a texture
`
`mapped p-surface. However, the ’148 Provisional is the first disclosure of p-
`
`surface. As noted above, there is no disclosure of p-surface in the ’782 Patent or its
`
`parent applications.
`
`31. Accordingly, at least for the foregoing reasons, the IPR Claims recite
`
`subject matter that is not disclosed until at least the ’148 Provisional—January 12,
`
`1998 (the “Priority Date” or the “date of the alleged invention”). My opinion
`
`regarding the Priority Date of the IPR Claims is consistent with the findings of the
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`Examiner during the ex parte reexamination of the ’099 Patent, the grandparent of
`
`2 In the View 360 Litigation (No. 1:12-cv-1352 (N.D.N.Y.)), View 360
`
`alleged that the ’099 Patent is entitled to a priority date “at least as early as” May
`
`31, 1996, but has not provided support for this position. See Ex. 1025.
`
`
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`12
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`

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`the ’035 Patent. See Order Granting Request for ex parte reexamination, Dated
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`10/23/2012 (Ex. 1020) at 6 (“Claim 11 does not get the effective filing date of the
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`parent application 08/749,166 and the provisional application 60/006,800, because
`
`P-Sphere [sic] is not supported by the parent applications.”).
`
`VIII. CLAIM CONSTRUCTION AND PATENTABILITY
`32. My opinions are based on my understanding of the principles of
`
`patent claim interpretation and patentability assessment set forth by statutes and
`
`federal court decisions.
`
`A. Claim Construction
`I understand that a claim term subject to IPR is given its broadest
`33.
`
`reasonable interpretation in light of the specification according to one of ordinary
`
`skill in the art at the time of the invention.
`
`1.
`Full-Surround (Image) Data (Claims 1 And 11)
`34. The specification defines full-surround image data as “data which
`
`samples the points P [as shown in Figure 2]. This data encodes, explicitly or
`
`implicitly, the association of a color value with a given direction from a given point
`
`of projection.” ’035 at 7:3-6.
`
`
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`13
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`

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`
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`’035 Patent Fig. 2
`
`35.
`
`In view of the specification, full-surround (image) data includes
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`omnidirectional coverage of an environment, from the real world or the visual
`
`world, that could allow a user to view the entire scene when displayed.
`
`2.
`P-Surface (Claims 1, 3-5, And 11)
`36. The specification defines p-surface as follows: “a computer graphics
`
`representation of any surface with a well-defined inside and outside, where there
`
`exists at least one point x inside (neither intersecting, nor lying outside) the surface
`
`which may be connected to every point of the surface with a distinct line segment,
`
`no portion of which said line segment lies outside the surface or intersects the
`
`surface at a point not an endpoint. The union of all such points x form the region X
`
`of the p-surface.” ’035 Patent 7:24-33. The specification notes that cubes, spheres,
`
`polyhedra, and cylinders are all examples of p-surfaces. Id. at 7:34-37.
`
`
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`14
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`37. Only in view of the intrinsic record, one of ordinary skill would have
`
`understood that a p-surface can be a closed (or periodic) 3D surface containing
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`within it at least one point from which all points on the interior of the surface that
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`can be viewed directly, without any of the lines of view passing through any other
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`part of the surface. Convex surfaces and the given examples are p-surfaces by the
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`explicit definition in the specification, as are non-convex surfaces for which the
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`direct-line-of-view condition is met.
`
`3.
`Texture Mapping (Claims 1 And 11)
`38. The specification uses but does not explicitly define “texture
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`mapping.” One of ordinary skill would have understood this term to encompass
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`any processes that uses a computer to apply a color or a pattern of colors, such as
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`an image, when rendering a 2D or 3D object for display. Therefore, the broadest
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`reasonable interpretation of this term in view of the specification is “to apply color
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`data to a virtual shape or polygon.”
`
`39. For the remaining claim terms I have applied the broadest reasonable
`
`constructions. I also considered the agreed constructions from a litigation in which
`
`Patent Owner is currently asserting the ’035 Patent (No. 1:11-cv-2188 (N.D. Ill.)).
`
`See generally Sentry 360 Claim Construction Agreed Terms (Ex. 1021). One of
`
`ordinary skill in the art would consider these agreed constructions to be the
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`broadest reasonable interpretation.
`
`
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`15
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`B.
`40.
`
`Patentability
`
`I understand that subject matter disclosed in a patent may be found
`
`unpatentable (not novel) in this proceeding if there is a preponderance of the
`
`evidence that it is anticipated or rendered obvious by the prior art. See 35 U.S.C. §
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`316(e). I also understand for this proceeding that prior art references must be
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`patents or printed publications. See 35 U.S.C. § 311(b).
`
`Anticipation
`
`1.
`I understand that a claim is unpatentable due to anticipation if every
`
`41.
`
`limitation of the claimed subject matter undergoing inter partes review is found in
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`a single prior art written reference, either expressly or inherently. I understand that
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`the description in a written reference does not have to be in the same words as the
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`claim, but all the limitations must be there, either expressly or inherently, so that
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`someone of ordinary skill in the art looking at the reference would have everything
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`necessary to make and use the claimed subject matter.
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`42. The disclosure of the prior art reference may be inherent rather than
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`express if the prior art necessarily functions in accordance with, or includes, the
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`claim limitations it anticipates.
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`43.
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`I have been informed that what constitutes a “prior art” reference for a
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`patent undergoing inter partes review is defined by the patent statutes, 35. U.S.C.
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`§ 101 et seq. More specifically, what is disclosed in a patent is unpatentable for
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`anticipation if:
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`• § 102(a): The claimed subject matter was known or used by others in the
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`United States before the date of the claimed subject matter.
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`• § 102(a): The claimed subject matter was patented or described in a printed
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`publication in the United States or a foreign country before the date of the
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`invention. 3
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`• § 102(b): The claimed subject matter was patented or described in a printed
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`publication in the United States or a foreign country more than one year
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`prior to the date of the application to which the claimed subject matter
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`claims priority.4
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`3 See 35 U.S.C. § 102(a) (“A person shall be entitled to a patent unless ‒ (a)
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`the invention was known or used by others in this country, or patented or described
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`in a printed publication in this or a foreign country, before the invention thereof by
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`the applicant for patent, . . . .”).
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`4 See 35 U.S.C. § 102(b) (“A person shall be entitled to a patent unless – . . .
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`(b) the invention was patented or described in a printed publication in this or a
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`foreign country or in public use or on sale in this country, more than one year prior
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`to the date of the application for a patent in the United States, . . . .”).
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`• § 102(e)(1): The claimed subject matter was described in a published patent
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`application that was filed by another person in the United States before the
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`date of the claimed subject matter.5
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`• § 102(e)(2): The claimed subject matter was described in an issued patent
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`whose application was filed by another person in the United States before
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`the date of the claimed subject matter.6
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`5 See 35 U.S.C. § 102(e)(1) (“A person shall not be entitled to a patent
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`unless – . . . (e) the invention was described in – (1) an application for patent,
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`published under section 122(b), by another filed in the United States before the
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`invention by the applicant for patent or (2) a patent granted on an application for
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`patent by another filed in the United States before the invention by the applicant
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`for patent, except that an international application filed under the treaty defined in
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`section 351(a) shall have the effects for the purposes of this subsection of an
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`application filed in the United States only if the international application
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`designated the United States and was published under Article 21(2) of such treaty
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`in the English language; . . . .”).
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`6 See id.
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`2. Obviousness
`I understand that the patent system protects real innovation, not
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`44.
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`ordinary creativity or common sense that yields predictable results.
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`45.
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`I understand that to be patentable, an invention must not have been
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`obvious to a person of ordinary skill in the pertinent art at the time of the invention.
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`A claim is unpatentable for obviousness if the difference between the subject
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`matter sought to be patented and the prior art are so insubstantial that the subject
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`matter, as a whole, would have been obvious at the time of the invention to a
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`person having ordinary skill in the art to which that subject matter pertains.
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`46.
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`In determining whether a claimed subject matter is unpatentable for
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`obviousness, one should consider the scope and content of the prior art, the level of
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`ordinary skill in the relevant art, the differences between the claimed subject matter
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`and the prior art, and whether the claimed subject matter would have been obvious
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`to one of ordinary skill in the art in light of those differences. I understand that
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`hindsight must not be used when comparing the prior art to the invention for
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`obviousness.
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`47. Obviousness may be shown by demonstrating that it would have been
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`obvious to modify what is taught in a single piece of prior art to create the claimed
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`invention.
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`48. Obviousness may also be shown by showing that it would have been
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`obvious to combine the teachings of more than one item of prior art. In
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`determining whether a piece of prior art could have been combined with other prior
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`art or with other information within the knowledge of one of ordinary skill in the
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`art, the following approaches and rationales may be considered:
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`• Some teaching, suggestion, or motivation in the prior art that would have led
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`one of ordinary skill to modify the prior art reference or to combine prior art
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`reference teachings to arrive at the claimed subject matter;
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`• Combining prior art elements using known methods to yield predictable
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`results;
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`• Simple substitution of one known element for another to obtain predictable
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`results;
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`• Use of a known technique to improve similar devices (methods, or products)
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`in the same way;
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`• Applying a known technique to a known device (method, or product) ready
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`for improvement to yield predictable results;
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`• Applying a technique or approach that would have been “obvious to try”
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`(choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of suc