  United States Court of Appeals
      for the Federal Circuit
                 ______________________

                IN RE KEVIN R. IMES
                 ______________________

                       2014-1206
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Application No.
09/874,423.
                 ______________________

               Decided: January 29, 2015
                ______________________

    JOHN S. ARTZ, Dickinson Wright PLLC, of Troy, Mich-
igan, 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 Alexan-
dria, 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.
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
2                                                 IN RE IMES




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 inde-
pendent 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 in-
cluding 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” com-
munication 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).
IN RE IMES                                               3




    The examiner found that Schuetzle’s wireless com-
munication interface in Figure 1 discloses the first wire-
less communications module and that Schuetzle’s
removable memory 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 com-
puter 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 com-
puter. 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 communica-
tion module.”
    We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Kotzab,
4                                                  IN RE IMES




217 F.3d 1365, 1369 (Fed. Cir. 2000). In this case, we
review the Board’s claim construction de novo. 1
    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 straight-
forward. The ’423 application expressly and unambigu-
ously defines wireless: “[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.” ’423 appli-
cation p. 46 l. 26 - p. 47 l. 1. The ’423 application consist-
ently uses the term “wireless” to refer to methods and
devices that carry waves through atmospheric space, such
as Bluetooth and various cellular protocols. E.g., id. p. 15
l. 20 - p. 16 l. 29, 46 ll. 20-25. The metal contacts of a
removable memory card do not carry a signal through
atmospheric space using electromagnetic or acoustic
waves, and thus removable memory card 35 is not a
wireless communication module under the broadest
reasonable interpretation of that term in view of the
specification.
   For the first time on appeal, the Patent Office ad-
vances an additional theory for why removable card 35


    1   Nothing in this case implicates the deference to
fact findings contemplated by the recent decision in Teva
Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841-42 (2015).
IN RE IMES                                                5



discloses the second wireless communications module.
Under this new theory, the Patent Office argues that
memory 34 and removable card 35 can each communicate
their data wirelessly through camera 30’s wireless com-
munication interface, such that memory 34 coupled with
the wireless communication interface forms a first wire-
less communication module and removable card 35 cou-
pled with the same wireless communication interface
forms a second wireless communication module. This
rationale was not articulated by the examiner or the
Board, and we will not consider it for the first time on
appeal. Even if the Board had used this reasoning below,
it would have constituted a new ground of rejection be-
cause it relies on “new facts and rationales not previously
raised to the applicant by the examiner.” In re Leithem,
661 F.3d 1316, 1319 (Fed. Cir. 2011). We therefore re-
verse the rejection of claims 1-5 without considering the
Patent Office’s new rationale articulated for the first time
on appeal.
     II. Rejections of Claims 34-42 and Claims 43-47
     Independent claims 34 and 43 each recite a communi-
cations device comprising, among other features, a “com-
munications module . . . operable to wirelessly
communicate streaming video to a destination.” The
examiner rejected claim 34 as anticipated by Knowles and
claim 43 as obvious over Knowles in view of U.S. Patent
No. 7,372,485 (Bodnar).       The examiner found that
Knowles discloses the recited communications module
operable to wirelessly communicate streaming video to a
destination. Knowles discloses a wireless digital camera
system that transmits images over the Internet. Knowles
col. 6 ll. 23-29. Knowles’s camera system allows a user to
take multiple consecutive still images and queues the
images so that they can be serially transmitted to a server
while allowing the user to take subsequent pictures
without waiting for the previous picture to be transmit-
6                                                      IN RE IMES




ted. Id. Figs. 12, 18, col. 10 ll. 6-48, col. 12 l. 36 - col. 13 l.
29. The server then transmits the images via e-mail. Id.
col. 13 ll. 48-60. Noting that Figure 12 of Knowles shows
a repetitive loop where images are transmitted so long as
they are in the queue, the examiner concluded that
Knowles discloses “streaming video.”             The examiner
explained that “[a] continuous process of sending images
is the equivalent of streaming video.” J.A. 154-55. The
examiner also noted that Knowles discloses that its
invention can be implemented on a Sony Vaio C1 Picture-
book that incorporates a digital camera. The examiner
then cited a press release explaining that the Sony Vaio
C1 Picturebook can send both still images and digital
video clips over the Internet as e-mail attachments.
    The Board affirmed. It construed “operable to wire-
lessly communicate streaming video to a destination” as
“capable of wirelessly communicating continuous video
transmission.” Like the examiner, it determined that the
Figure 12 embodiment of Knowles and the implementa-
tion on a Sony Vaio C1 Picturebook disclose this limita-
tion.
    We see no error in the Board’s construction of the
streaming video limitation as “capable of wirelessly
communicating continuous video transmission.” There is,
however, no substantial evidence supporting its determi-
nation that Knowles discloses streaming video. Knowles
discloses a system that sends a series of individual still
images as e-mail attachments. Sending a series of e-mails
with attached still images is not the same as streaming
video. Such a construction is unreasonable as it comports
with neither the plain meaning of the term nor the speci-
fication. Streaming video is the continuous transmission
of video. A series of e-mails with attachments does not
meet the definition of “streaming” and still images do not
meet the definition of “video.”
IN RE IMES                                                      7



    The ’423 application consistently distinguishes image
transmission from video transmission, as does the prior
art cited by the Patent Office. The ’423 application re-
peatedly describes embodiments where an “image,” “digi-
tal image,” or “image information” is communicated over
the Internet. See, e.g., ’423 application p. 10 l. 12 - p. 16 l.
11, p. 19 l. 7 - p. 20 l. 12, p. 24 l. 13 - p. 25 l. 5. It also
repeatedly associates these “images” with still pictures
such as “photos” or “photographs.” E.g., id. p. 7 ll. 10-12,
p. 26 ll. 6-13, p. 28 ll. 8-18, p. 30 ll. 2-15, p. 31 ll. 7-23, p.
37 ll. 2-12, p. 41 l. 26 - p. 42 l. 16. The embodiments
disclosing transmission of images do not in any way
disclose transmission of video. In contrast, only two
embodiments in the ’423 application (one of which is the
claimed streaming embodiment) disclose transmitting
“streaming video,” “video files,” or “video information.”
Id. p. 21 l. 6 - p. 22 l. 15, p. 32 ll. 7-13. The video embodi-
ments describe sending video of a wedding so that a user
can attend “the event in a ‘virtual’ manner,” id. p. 22 ll. 4-
12, or communicating video of a baseball game captured
with a digital video recorder, id. p. 32 ll. 7-13. The Sony
Vaio press release cited by the Patent Office similarly
distinguishes between images and video, disclosing a
camera “that can capture digital still images as well as
video clips.” J.A. 239. These distinctions in the specifica-
tion and prior art support the common-sense conclusion
that image transmission is not the same as video trans-
mission. Thus, Knowles’s disclosure of sending a series of
e-mails with images attached does not disclose streaming
video.
     We also hold that substantial evidence does not sup-
port the Patent Office’s finding that Knowles’s reference
to a Sony Vaio C1 Picturebook discloses the streaming
video limitation. Knowles itself indicates that its inven-
tion may be implemented on a number of different devic-
es, including the Sony Vaio C1 Picturebook. Knowles col.
8                                                 IN RE IMES




6 l. 61 - col. 7 l. 13. Knowles does not mention any specific
features of the Sony Vaio C1 Picturebook other than that
it incorporates a digital camera. Id. col. 7 ll. 10-12.
Instead, the examiner relied on a press release in which
Sony announced its new Vaio notebook computer to show
the inherent characteristics of the Sony Vaio C1 Picture-
book. 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 e-
mail messages. J.A. 239-40. 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 character-
istic is “necessarily present” in the first reference. Id.
Here, the Sony Vaio press release does not disclose that
the Sony Vaio C1 Picturebook is capable of “streaming
video” or “continuous video transmission.” The press
release only discloses that the Sony Vaio C1 Picturebook
can send out “digital video clips and still pictures . . .
attached to e-mail messages.” Sending out an e-mail
message with a video file attached does not disclose
streaming video or, as construed, continuous video trans-
mission. In fact, the ’423 application distinguishes be-
tween streaming video and sending a video file: “a user
may want to wirelessly communicate streaming video or a
video file.” ’423 application p. 21 ll. 22-23 (emphasis
added). The Sony Vaio press release does not discuss
streaming or continuous transmission of anything—it
merely discloses sending a video file as an attachment to
an e-mail.
    Nowhere in the record did the examiner or the Board
explain how implementing Knowles’s disclosed image
transmission method on a Sony Vaio C1 Picturebook
discloses streaming video or continuous video transmis-
IN RE IMES                                               9



sion. Instead, both the Board and the examiner found
that Knowles discloses continuous image transmission
and that Knowles can be implemented on the Sony Vaio
C1 Picturebook, which is capable of sending video files via
email. J.A. 6, 9-10, 154-55. These two findings do not
provide substantial evidence that Knowles discloses,
expressly, inherently, or even implicitly, streaming video
capabilities. For these reasons, we hold that the Board
erred in concluding that Knowles discloses the claimed
“communications module . . . operable to wirelessly com-
municate streaming video to a destination.”
                       CONCLUSION
    Because the Board incorrectly construed “wireless”
and its rejection of claims 1-5 is not supported under the
correct construction, and because the Board’s conclusion
that Knowles discloses a communications module opera-
ble to wirelessly communicate streaming video to a desti-
nation is not supported by substantial evidence, we
reverse the rejections of claims 1-5 and 34-47 and remand.
             REVERSED AND REMANDED
