Categories: Claim Construction Date: Feb 12, 2015 Title: In re Imes: Construing “wireless” and “streaming”
|Title||In re Imes, No. 2014-1206 (Fed. Cir. Jan. 29, 2015).|
|[I: “wirelessly”] The central dispute is whether Schuetzle discloses a second wireless communication module. […] The examiner thus construed “wireless” as including communication along the metal contacts of the removable memory card and the computer system when the memory card is inserted into the computer. According to the examiner, the metal contacts are not a wire. |
In re Imes, at *2-3.
|[II: “streaming”] The examiner found that Knowles discloses the recited communications module operable to wirelessly communicate streaming video to a destination.|
Id. at *5.
|[I: “wirelessly”] We hold that the Board erred in concluding that Schuetzle’s removable memory card 35 discloses the claimed second wireless communication module. […] The metal contacts of a removable memory card do not carry a signal through atmospheric space using electromagnetic or acoustic waves, and thus removable memory card 35 is not a wireless communication module under the broadest reasonable interpretation of that term in view of the specification.|
Id. at *4.
|[II: “streaming”] Sending a series of e-mails with attached still images is not the same as streaming video. Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification. Streaming video is the continuous transmission of video. |
Id. at *6.
|Procedural History||Kevin Imes’s U.S. patent application no. 09/874,423 is directed to a device for communicating digital camera image and video information over a network. The Patent Trial and Appeal Board affirmed the examiner’s rejections of all pending claims 1-14 and 16-47 as either anticipated by or obvious over various references. On appeal, Mr. Imes challenges only the rejections of independent claims 1, 34, and 43 and of their dependent claims 2-5, 35-42, and 44-47, by virtue of their dependence from the inde- pendent claims. He does not challenge the rejections of claims 6-14 and 16-33.|
In re Imes, at *1-2.
|Legal Reasoning (MOORE, Lourie, Chen)|
|I. Analysis: “wirelessly”|
|Claim at issue||Independent claim 1 recites an electronic device including a memory for storing digital images, a display for displaying the images, and an input device for receiving a request for communication. The device includes a housing that stores first and second wireless communication modules. The first wireless communication module is a cellular communication module, and the second wireless communication module is a “low power high-speed” communication module.|
In re Imes, at *2.
|construction of "wireless"||Whether removable memory card 35 is a wireless communication module turns on the construction of the term “wireless.” The Patent Office’s construction of “wireless” to include communications along metal contacts of the removable memory card and the computer system is inconsistent with the broadest reasonable interpretation in view of the specification. The construction of “wireless” is straight- forward. 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.” ’423 application p. 46 l. 26 - p. 47 l. 1. The ’423 application consistently uses the term “wireless” to refer to methods and devices that carry waves through atmospheric space, such as Bluetooth and various cellular protocols. E.g., id. p. 15 l. 20 - p. 16 l. 29, 46 ll. 20-25. The metal contacts of a removable memory card do not carry a signal through atmospheric space using electromagnetic or acoustic waves, and thus removable memory card 35 is not a wireless communication module under the broadest reasonable interpretation of that term in view of the specification.|
Id. at *4.
|II. Analysis: “streaming”|
|claim at issue||Independent claims 34 and 43 each recite a communications device comprising, among other features, a “communications module . . . operable to wirelessly communicate streaming video to a destination.”|
In re Imes, at *5.
|Knowles reference||Knowles discloses a wireless digital camera system that transmits images over the Internet. Knowles col. 6 ll. 23-29. Knowles’s camera system allows a user to take multiple consecutive still images and queues the images so that they can be serially transmitted to a server while allowing the user to take subsequent pictures without waiting for the previous picture to be transmitted. Id. Figs. 12, 18, col. 10 ll. 6-48, col. 12 l. 36 - col. 13 l. 29. The server then transmits the images via e-mail. Id. col. 13 ll. 48-60.|
Id. at *5-6.
|Examiner/Board Findings||The examiner rejected claim 34 as anticipated by Knowles and claim 43 as obvious over Knowles in view of U.S. Patent No. 7,372,485 (Bodnar). The examiner found that Knowles discloses the recited communications module operable to wirelessly communicate streaming video to a destination. […] The examiner explained that “[a] continuous process of sending images is the equivalent of streaming video.” J.A. 154-55. The examiner also noted that Knowles discloses that its invention can be implemented on a Sony Vaio C1 Picture- book that incorporates a digital camera. The examiner then cited a press release explaining that the Sony Vaio C1 Picturebook can send both still images and digital video clips over the Internet as e-mail attachments. The Board affirmed.|
Id. at *5-6.
|still images not video||Knowles discloses a system that sends a series of individual still images as e-mail attachments. Sending a series of e-mails with attached still images is not the same as streaming video. Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification. Streaming video is the continuous transmission of video. A series of e-mails with attachments does not meet the definition of “streaming” and still images do not meet the definition of “video.”|
Id. at *6.
|intrinsic record||The ’423 application consistently distinguishes image transmission from video transmission, as does the prior art cited by the Patent Office. The ’423 application re- peatedly describes embodiments where an “image,” “digi- tal image,” or “image information” is communicated over the Internet. See, e.g., ’423 application p. 10 l. 12 - p. 16 l. 11,p.19l.7-p.20l.12,p.24l.13-p.25l.5. Italso repeatedly associates these “images” with still pictures such as “photos” or “photographs.” E.g., id. p. 7 ll. 10-12, p. 26 ll. 6-13, p. 28 ll. 8-18, p. 30 ll. 2-15, p. 31 ll. 7-23, p. 37 ll. 2-12, p. 41 l. 26 - p. 42 l. 16. The embodiments disclosing transmission of images do not in any way disclose transmission of video. In contrast, only two embodiments in the ’423 application (one of which is the claimed streaming embodiment) disclose transmitting “streaming video,” “video files,” or “video information.”|
Id. at *7.
|no inherency||[T]he examiner relied on a press release in which Sony announced its new Vaio notebook computer to show the inherent characteristics of the Sony Vaio C1 Picture- book. In particular, this press release indicates that the digital camera is capable of capturing digital still images and video clips and sending them as attachments to e-mail messages. J.A. 239-40. 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. See Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir. 1991). However, the evidence must make clear that the missing character- istic is “necessarily present” in the first reference. Id. Here, the Sony Vaio press release does not disclose that the Sony Vaio C1 Picturebook is capable of “streaming video” or “continuous video transmission.” The press release only discloses that the Sony Vaio C1 Picturebook can send out “digital video clips and still pictures . . . attached to e-mail messages.” Sending out an e-mail message with a video file attached does not disclose streaming video or, as construed, continuous video transmission.|
Id. at *8.
|Because the Board incorrectly construed “wireless” and its rejection of claims 1-5 is not supported under the correct construction, and because the Board’s conclusion that Knowles discloses a communications module opera- ble to wirelessly communicate streaming video to a destination is not supported by substantial evidence, we reverse the rejections of claims 1-5 and 34-47 and remand.|
In re Imes, at *9.