In IN RE IMES, Appeal No. 2014-1206, the Federal Circuit reversed claim rejections based on an erroneous claim construction, holding that the broadest reasonable interpretation cannot focus solely on a literal interpretation of claim terms.

Applicant’s patent application was directed toward a device for communicating digital image and video information over a network.  Claim 1 included, among other features, first and second wireless communication modules.  Claim 34 included, among other features, a module to wirelessly communicate streaming video.  The examiner rejected claim 1 by finding a prior-art removable memory card was “wireless” because “no wire is utilized.”  The examiner also rejected claim 34 based on prior art that disclosed emailing a series of images.  The Board affirmed.

On appeal, the Federal Circuit reversed.  The Federal Circuit held the examiner’s construction of “wireless” was inconsistent with the broadest reasonable interpretation, especially in view of the specification which expressly defined “wireless” to refer to methods and systems for carrying waves through atmospheric space.  A removable memory card did not carry a signal through atmospheric space.  The Federal Circuit rejected an additional theory of anticipation because it was advanced by the PTO for the first time on appeal and would have constituted a new ground for rejection had it been considered by the Board.  The Federal Circuit also reversed the examiner’s rejection of claim 34, determining that a series of emails with images, or even with video, is not the same as “streaming video,” which was properly construed in light of the specification as “continuous video transmission.”