Use Of A Second Reference To Establish Inherency Of The First Reference Must Make Clear That The Missing Characteristic Is 'Necessarily Present' In The First Reference

In In re Imes, No. 14-1206 (Fed. Cir. Jan. 29, 2015), the Federal Circuit reversed the Board's construction of the term "wireless" and its rejection of claims 1-5, as well as the Board's rejections of claims 34-47, and remanded for further proceedings.

The patent application at issue, U.S. Patent Application No. 09/874,423 ("the '423 application"), is directed to a device for communicating digital camera image and video information over a network. The examiner rejected claim 1 and dependent claims 2-5 on the basis of obviousness over the combination of U.S. Patent Nos. 6,762,791 ("Schuetzle"); 6,223,190; and 7,173,651 ("Knowles"). The examiner also rejected claim 34 as anticipated by Knowles and claim 43 as obvious over Knowles in view of U.S. Patent No. 7,372,485. The Board affirmed the examiner's rejections of all pending claims on the bases of either anticipation or obviousness. On appeal, the applicant only challenged the rejections of certain independent claims and the dependent claims that relied upon them.

"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 email messages. 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 characteristic is 'necessarily present' in the first reference. Id." Slip op. at 8 (citation omitted).

Turning first to the rejection of claims 1-5, the Federal Circuit held that the Board erred in concluding that Schuetzle's removable memory card disclosed the '423 application's claimed second wireless communication module. The Court explained that determining whether Schuetzle's removable memory card was a wireless communication module turned on the construction of the term "wireless." The Court found that the Board's construction of the term "wireless" was inconsistent with the broadest reasonable interpretation in view of the '423 application's specification because it included communications along metal contacts of the removable memory card and the computer system. The Court found that the construction of "wireless" was "straightforward" because the '423 application "expressly and unambiguously defines wireless: '[w]ireless refers to a communications...