Written by Mark Terry 

In a decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner’s 103 obviousness rejection based on the unreasonableness of the Examiner’s interpretation of the word “on.”
The case of Ex parte Goruganthu (Appeal No. 2010-005235) involved a method of making lenses. The claims involved methods for forming solid immersion lenses on a resist film. One of the central issues was the meaning of the claim term “on.” What does the term “on” mean?

The Board began by first contruing the claim term:

            We begin by noting that while the term “on” is not expressly defined in the Specification, the broadest reasonable meaning of this term in its ordinary usage is a function word to indicate direct or indirect physical contact. See, e.g., pages 1574 and 1575 of WEBSTER’S THIRD NEW WORLD INTERNATIONAL DICTIONARY (G. & C. Merriam Webster, 1971) (on defined as “used as a function word to indicate contiguity or dependence.”).

            Based on the dictionary definition of the term “on,” the Board followed by construing the Applicant’s claim:

“Thus, the claim requires forming an array of solid immersion lenses in direct or indirect physical contact with the resist film. This is a reasonable interpretation in light of the Specification as it teaches that its solid immersion lens array 36 may be formed directly on (i.e., in direct physical contact with) the underlying resist film.”

            Then, the Board went on to define what the Examiner found in the prior art:

“The Examiner maintains that Hugle teaches the disputed claim feature because Hugle’ s Figure 4 illustrates a lens array 34 that is spaced above photoresist 35 (corresponding to the claimed resist film feature required by the claims) such that the lens array 34 is on the photoresist”

            So the Examiner found a prior art reference that showed a lens array located over, but not touching, a photoresist. Was the Examiner correct in concluding that since the prior art showed A spaced above B, this would obviate a claim reciting A “on” B? The Board did not think so.

“Given the proper construction of the term ‘on’ discussed above, we determine that the Examiner’s interpretation of the term ‘on’ to include a position that is spaced above the photoresist 35 is unreasonably broad.” See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). … nowhere does Hugle teach that the lens array is formed ‘on the resist film’ as required by the claims.

            The Examiner simply directs us to no credible evidence to support the position that a person having ordinary skill in the art would have understood Appellants’ disclosure to support this broader interpretation.”

In short, the Board found that a prior art reference showing a lens array space above, but not touching, a photoresist, was not the same as, and does not obviate, a claim reciting a lens array “on” a photoresist. Consequently, the Examiner’s rejection was reversed.

            What does this mean for patent practitioners? It means that when dealing with claims terms that comprise everyday language, you should challenge claim rejections that interpret that language too broadly. The BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). In cases involving everyday language that is not defined in the specification, the dictionary definition is used to construe that claim language. So get your dictionary out and make sure the Examiner didn’t go beyond the dictionary definition. If he did, you may have grounds for a reversal, as in the Ex parte Goruganthu case.

Mark Terry is a registered patent attorney and a Board Certified Specialist practicing in the South Florida area for more than a decade.