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?
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
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:
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
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.
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 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
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.