IN RE KEVIN R. IMES
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Application No. 09/874,423.
JOHN S. ARTZ, Dickinson Wright PLLC, of Troy, Michigan, for appellant. Of counsel were BRYAN JOSEPH SCHOMER and FRANK MICHAEL SMITH.
NATHAN K. KELLEY, Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, for appellee. With him on the brief were THOMAS W. KRAUSE, Deputy Solicitor, JOSEPH G. PICCOLO and JOSEPH MATAL, Associate Solicitors.
Before LOURIE, MOORE, and CHEN, Circuit Judges.
[113 U.S.P.Q.2d 1523] Moore, Circuit Judge.
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 independent claims. He does not challenge the rejections of claims 6-14 and 16-33. We have jurisdiction under 28 U.S.C. § 1295(a)(4). For the reasons discussed below, we reverse and remand.
I. Rejection of Claims 1-5
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.
The examiner rejected claim 1 and dependent claims 2-5 as obvious over the combination of U.S. Patent Nos. 6,762,791 (Schuetzle), 6,223,190 (Aihara), and 7,173,651 (Knowles). The central dispute is whether Schuetzle discloses a second wireless communication module. Schuetzle discloses a system where a camera 30 can send image information to a computer system 20 via a wireless communication interface, via a tethered interface, and/or by inserting a removable memory card 35 into system 20. Schuetzle col. 1 ll. 20-30, col. 4 ll. 16-25, Fig. 1 (below).
The examiner found that Schuetzle's wireless communication interface in Figure 1 discloses the first wireless communications module and that Schuetzle's removable memory [113 U.S.P.Q.2d 1524] card 35 discloses the second wireless communications module. The examiner concluded that removable memory card 35 was " wireless" because to communicate information to computer system 20, it " must be removed from [camera] 30 and inserted into the computer system 20. In other words, no wire is utilized." J.A. 175 (emphasis added). 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. The Board affirmed the rejection, noting that Schuetzle's " wireless data communication transfer from a removable media card" discloses a " wireless communication module."
We review the Board's factual findings for substantial evidence and its legal conclusions de novo. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). In this case, we review the Board's claim construction de novo.
We hold that the Board erred in concluding that Schuetzle's removable memory card 35 discloses the claimed second wireless communication module. 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 straightforward. The '423 application expressly and ...