In re Kevin R. Imes  

Reviewing a final written decision of U.S. Patent Trial and Appeal Board (PTAB or Board), finding application claims unpatentable, the U.S. Court of Appeals for the Federal Circuit held that the Board erred in concluding that a prior art reference disclosing a removable memory card that could be used to transfer information via metal contacts thereby disclosed a “wireless” communications module, as well as that a prior art reference disclosing transmission of video files via email attachment or transmission of consecutive still images via email attachment thereby disclosed “streaming video.”  In re Kevin R. Imes, Case No. 14-1206 (Fed. Cir., Jan. 29, 2015) (Moore, J.).

The application in issue is directed to a device for communicating digital camera image and video information over a network.

In rejecting claims directed to a wireless communication module, the examiner found that a prior art patent (Schuetzle) disclosed the claimed second wireless communications module.  Schuetzle discloses a removable memory card that communicates information from a camera to a computer via metal contacts when the memory card is removed from the camera and inserted into the computer.  The examiner concluded that because no wires were used, Schuetzle disclosed a “wireless communication module.”  The Federal Circuit reversed, finding the “[t]he 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,” which states:  “[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.”

With respect to claims directed to streaming video, the examiner found that prior art reference (Knowles) disclosed the claimed streaming video as recited in the ’423 application.  In rejecting the claims, the examiner relied upon Knowles’ transmission of a series of emails with still image attachments and Knowles’ transmission of an email with a video file as disclosing streaming video.  The Federal Circuit reversed, finding the examiner’s construction unreasonable and “comports with neither the plain meaning of the term nor the specification,” which specifically distinguished streaming video from the transmission of still images and video files.