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