In Re Kevin R. Imes


Docket No. 2014-1206

LOURIE, MOORE, CHEN
January 29, 2015

Brief Summary: PTAB affirmation of examiner’s findings of obviousness and anticipation reversed and remanded as claim/prior art interpretations not reasonable “under the broadest interpretation of [the terms] in view of the specification”.

Summary: Mr. Imes appealed PTAB / examiner’s rejection of all pending claims of Ser. No. 09/874,423 relating to a wireless communication device as anticipated or obvious; the FC panel reversed and remanded. One group of claims was rejected as obvious in view of three prior art patents, concluding the metal contacts of the prior art was not a wire (construing “‘wireless’ as including communication along the metal contacts of the removable memory card and the computer system” and PTAB noting “‘wireless data communication transfer from a removable media card’ discloses a ‘wireless communication module’”). The FC panel disagreed, finding “[t]he construction of ‘wireless’ [to be] straightforward…The ‘423 application expressly and unambiguously defines wireless: ‘[w]ireless refers to a communicatios, monitoring, or control system[] in which electromagnetic or acoustic waves carry a signal through atmospheric space rather than along a wire” and “[t]he metal contacts of a removable memory card do not carry a signal” in that way (“removable memory card 35 is not a wireless communication module under the broadest interpretation of that term in view of the specification”). A new rationale presented by the PTO for the first time in this appeal was not considered. Another set of claims relating to wirelessly communicating streaming video were rejected as anticipated by a prior art patent, the examiner contending that “[a] continuous process of sending images is the equivalent of streaming video”, and the Board affirmed. The FC did not argue with the Board’s construction of the streaming video limitation as ‘capable of wirelessly communicating continuous video transmission” but did not agree that “[s]ending a series of e-mails with attached still images is [] the same as streaming video” (“Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification. The ‘423 application consistently distinguishes image transmission from video transmission, as does the prior art….”) Thus, the Board decisions were reversed and remanded.

This entry was posted in Anticipation (35 USC 102), Claim Construction, Obviousness. Bookmark the permalink.

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