In Re: Imes
778 F.3d 1250
Fed. Cir.2015Background
- Imes's patent application claims a digital-camera communications device with two wireless modules: a cellular module and a “low power high-speed” wireless module; claims at issue are 1–5, 34–42, and 43–47.
- Examiner rejected the claims as anticipated/obvious over prior art including Schuetzle, Knowles, Aihara, and Bodnar; the Board affirmed those rejections.
- Central dispute for claims 1–5: whether Schuetzle’s removable memory card or its components qualify as a second “wireless communication module.”
- Central dispute for claims 34 and 43 (and dependents): whether Knowles (and Knowles plus Bodnar) disclose a communications module “operable to wirelessly communicate streaming video to a destination.”
- The PTO construed “wireless” broadly to include metal-contact data transfer from an inserted removable card; the Board and examiner also equated Knowles’s queued transmission of still images (and a Sony press release about sending video clips as e-mail attachments) with “streaming video.”
Issues
| Issue | Imes's Argument | PTO/Board's Argument | Held |
|---|---|---|---|
| Whether Schuetzle’s removable memory card is a “wireless communication module” under the application’s claim language | "Wireless" should be read per the application as electromagnetic or acoustic waves through atmospheric space, so the metal-contact memory card is not wireless | Removable card is "wireless" because it communicates without a wire when removed and inserted into a host | Reversed: the Board erred; the application expressly defines wireless as wave-based through atmospheric space, so card contacts are not "wireless" |
| Whether Knowles (and a Sony Vaio press release) disclose a module "operable to wirelessly communicate streaming video to a destination" | Knowles transmits queued still images; that is not continuous streaming video; Sony press release showing video as e-mail attachments does not establish streaming | Knowles’s queued transmission equals continuous transmission; implementing Knowles on Sony Vaio (which can send video clips) shows streaming capability | Reversed: substantial evidence lacking; sending series of e-mails or video-file attachments is not streaming video or continuous transmission |
Key Cases Cited
- In re Kotzab, 217 F.3d 1365 (Fed. Cir. 2000) (standard of review for Board factual findings and legal conclusions)
- In re Leithem, 661 F.3d 1316 (Fed. Cir. 2011) (new grounds of rejection may not be raised on appeal where examiner never presented them)
- Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991) (use of a secondary reference to prove that a characteristic is necessarily present in a primary reference requires clear showing of inevitability)