In re Imes

Use of a Second Reference to Establish Inherency of the First Reference Must Make Clear That the Missing Characteristic Is "Necessarily Present" in the First Reference


January 29, 2015


Last Month at the Federal Circuit - February 2015

Judges: Lourie, Moore (author), Chen

[Appealed from: Board]

In In re Imes, No. 14-1206 (Fed. Cir. Jan. 29, 2015), the Federal Circuit reversed the Board's construction of the term "wireless" and its rejection of claims 1-5, as well as the Board's rejections of claims 34-47, and remanded for further proceedings.

The patent application at issue, U.S. Patent Application No. 09/874,423 ("the '423 application"), is directed to a device for communicating digital camera image and video information over a network. The examiner rejected claim 1 and dependent claims 2-5 on the basis of obviousness over the combination of U.S. Patent Nos. 6,762,791 ("Schuetzle"); 6,223,190; and 7,173,651 ("Knowles"). The examiner also rejected claim 34 as anticipated by Knowles and claim 43 as obvious over Knowles in view of U.S. Patent No. 7,372,485. The Board affirmed the examiner's rejections of all pending claims on the bases of either anticipation or obviousness. On appeal, the applicant only challenged the rejections of certain independent claims and the dependent claims that relied upon them.

Turning first to the rejection of claims 1-5, the Federal Circuit held that the Board erred in concluding that Schuetzle's removable memory card disclosed the '423 application's claimed second wireless communication module. The Court explained that determining whether Schuetzle's removable memory card was a wireless communication module turned on the construction of the term "wireless." The Court found that the Board's construction of the term "wireless" was inconsistent with the broadest reasonable interpretation in view of the '423 application's specification because it included communications along metal contacts of the removable memory card and the computer system. The Court found that the construction of "wireless" was "straightforward" because the '423 application "expressly and unambiguously defines wireless: '[w]ireless refers to a communications, monitoring, or control system[ ] in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire.'" Slip op. at 4 (alterations in original) (citation omitted). Because the '423 application consistently referred to methods and devices that carry waves through atmospheric space, and the metal contacts of a removable memory card do not carry a signal through atmospheric space, the Court found that Schuetzle's removable memory card was not a wireless communication module under the broadest reasonable interpretation of the '423 application's specification. The Court also discussed the PTO's additional theory for why Schuetzle's removable memory card disclosed the second wireless communications module, which the PTO advanced for the first time on appeal. The Court, however, would not consider the PTO's argument because it was not previously articulated by the examiner or the Board. Thus, the Court reversed the PTO's rejections of claims 1-5 of the '423 application.

The Court next addressed claims 34-47 and found no error in the Board's construction of the streaming video limitation but found that there was not substantial evidence supporting the Board's determination that Knowles disclosed streaming video. The Court found that Knowles disclosed a system that sends a series of individual still images, which the Court stated did not meet the definition of "streaming" or "video." Specifically, the Court stated that the '423 application distinguished image transmission from video transmission and that "[t]hese distinctions in the specification and prior art support the common-sense conclusion that image transmission is not the same as video transmission." Id. at 7. The Court further found that substantial evidence did not support the PTO's finding that Knowles's reference to the Sony Vaio C1 Picturebook disclosed the streaming video limitation. Particularly, the Court noted that the examiner did not rely on Knowles but instead relied on a second reference, a press release announcing the new Vaio notebook computer, which showed the characteristics of the Sony Vaio C1 Picturebook. The Court explained that "[a] second reference may be used to show that a feature is inherent in a first reference if the first reference is silent with regard to the inherent feature. However, the evidence must make clear that the missing characteristic is 'necessarily present' in the first reference." Id. at 8 (quoting Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir. 1991)). The Court found, however, that the press release did not disclose that the Sony Vaio C1 Picturebook was capable of either "streaming video" or "continuous video transmission." Slip op. at 8. Ultimately, the Court determined that the record did not reflect the examiner's or the Board's explanation as to how implementation of Knowles's disclosed image transmission method on a Sony Vaio C1 Picturebook disclosed either "streaming video" or "continuous video transmission." Id. at 8-9. Thus, the Court held that the Board erred in its finding that Knowles disclosed the streaming video limitation.

Accordingly, the Court reversed the rejections of claims 1-5 and 34-47, and remanded.

Summary authored by Corinne Miller LaGosh, Esq.