Second Reference Can Be Used to Show Inherent Disclosure If Missing Characteristic Is "Necessarily Present" In First Reference

In re Imes, ___F.3d___(Fed. Cir. Jan. 29, 2015) (Lourie, MOORE, Chen) (No. 2014-1206, PTAB) (1 of 5 stars)

Federal Circuit reverses the Board's rejection of claims relating to a device for communicating digital camera image and video information over a network, and remands for further proceedings.

Federal Circuit disagreed with the Board's conclusion that the Schuetzle prior art reference, which disclosed a "removable memory card" with metal contacts that communicated with the computer system, disclosed a "wireless communication module." The Board's construction of a "wireless" system was inconsistent with the broadest reasonable interpretation in view of the application, because a removable memory card was not "wireless." In addition, Federal Circuit declined to consider an argument that the Patent Office raised first time on appeal, and added a footnote indicating that the case did not implicate the deference to fact finding required by the Supreme Court's Teva opinion.

Federal Circuit further determined that certain claims were not invalid under § 102 and § 103 based on the Knowles prior art reference, because Knowles's serial transmission of still images does not satisfy the broadest reasonable construction of the claim phrase "streaming video." Federal Circuit also concluded that the combination of Knowles and a second reference did not inherently disclose continuous image transmission since there was no evidence that continuous image transmission was necessarily present in the first reference.

Authors: Leah A. Edelman, Cherylyn Esoy Mizzo