In re Kevin R. Imes, No. 2014-1206, 2015 U.S. App. LEXIS 1395 (Fed. Cir. Jan. 29, 2015) (Moore, J.). Click Here for a copy of the opinion.

The PTO rejected Imes's patent application (U.S. 09/874, 423) directed to a device for communicating digital camera images and video information over a network. Imes appealed.

The appeal disputed the PTO's view of the scope and meaning of the prior art. The PTO determined that a removable memory card in the Scheutzle reference was a wireless communication, because no wire was used. The Federal Circuit disagreed, holding that this "is inconsistent with the broadest reasonable interpretation in view of the specification." The specification unambiguously referred to methods and devices that "carry a signal through atmospheric space using electromagnetic or acoustic waves," which does not apply to the metal contacts of a removable memory. The court also refused to consider other PTO arguments on the basis that they were new grounds of rejection, i.e. "new facts and rationales not previously raised to the applicant by the examiner."

The PTO also found that the claimed communications modules "operable to wirelessly communicate streaming video to a destination" were disclosed (and anticipated) by the Knowles reference. The PTO equated a continuous process of transmitting images over the internet (in Knowles) to streaming videos (in the claims). The PTO considered such streaming to be inherent in Knowles and relied on: (1) Knowles' disclosure that its invention can be used on a Sony Vaio C1 Picturebook and (2) a press release explaining that the Picturebook can send both still images and digital videos over the internet.

A second reference may be used to show an inherent feature in a first reference, if the missing feature is shown to be "necessarily present" in the first reference. Here, the Federal Circuit concluded "no substantial evidence support[s] [the PTO's] determination that Knowles discloses streaming video." The court held that "[a] series of e-mails with attachments does not meet the definition of 'streaming' and still images do not meet the definition of 'video.'" In addition, the Sony Vaio press release disclosed that it can send out "digital video clips and still pictures...attached to e-mail messages," which is not the same as "streaming video" or "continuous video transmission." Because the record did not provide substantial evidence that "Knowles discloses, expressly, inherently, or even implicitly, streaming video capabilities," the PTO erred in concluding that Knowles anticipates Imes's claimed invention.

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