Houston Patent Attorney: Battling Back the “Reasonableness” Standard in Patent Law

IN RE Kevin R. Imes is a decent case patent attorneys can use when a patent Examiner at the USPTO is being truly unreasonable in a patent rejection.pciture

IN RE Kevin Imes is a patent case dealing with claims from patent application no. 09/874,423. Independent claim 1 of the ‘423 applications 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. (Emphasis added).

During prosecution of this case, the examiner rejected the claims in the ‘423 application in view of a plurality of references, and the main dispute is whether one of the references disclose “a second wireless communication module.” The Schuetzle reference discloses a camera with a communication interface that can send image information via a tethered, wireless interface (the first communication module) or a removable memory card (the second communication module). The examiner in this case stated that the second communication module was wireless because it could be removed from the camera and inserted into a different port. Therefore, no wires were required to transmit the data.

The court of appeals in this case held that the patent board erred in concluding that Schuetzle’s removable memory card discloses the claimed second wireless communication module. The Board reasoned that the construction of “wireless” to include communications along metal contacts of the removable memory card and computer system is inconsistent with the broadest reasonable interpretation in view of the specification. Specifically, the court of appeals held that the metal contacts of a removable memory card do not carry a signal through space, because the memory card required metal contacts (wires).


  1. This is a really good case to use when the examiner is taking what is known as the “broadest reasonable interpretation” standard a little too far. In this case, the Examiner was not only wrong that the memory card could wirelessly transmit data because the memory card required a direct connection; the examiner also stretched what was reasonably broad in view of the specification. Most of the times I tend to see an Examiner’s point that prior art references COULD possibly be construed in a different way. This is one of those cases, where it is technically somewhat hard to argue that the memory card isnt wireless because it isnt directly connected to the camera. However, under the broadest reasonable interpretation standard it would be hard to argue this interpretation. This is a good case to cite to when an examiner is being unreasonable broad.
  2. Although Imes was a winner in this case, the case will be brought back to the patent examiner to review the case. Upon reviewing the case again, the examiner may be able to find new prior art showing the two separate wireless communications modules. In cases like this where you are arguing technicalities and there may be prior art out there that is better art, I recommend companies building patent families and fighting the good fight on a child application. This is just because Imes probably spent several years waiting for the patent to be heard by the appeals board, and then another year waiting for the court of appeals to hear the case. Without building the patent portfolio is would take a long time for Imes to be able to inforce infringement.
By | 2015-02-04T12:30:29+00:00 February 3rd, 2015|Blog, Patent Attorney Takeaways|Comments Off on Houston Patent Attorney: Battling Back the “Reasonableness” Standard in Patent Law