Board of Patent Appeals Decides Broadest Reasonable Interpretation of Term “On”

MARK TERRY, ESQ.

The Board reversed an obviousness rejection after deciding that the examiner had interpreted the ordinary claim term “on” too broadly. The application involved forming solid-immersion lenses on a resist film.

Using the ordinary dictionary meaning and the specification, the Board construed “on” to require direct or indirect physical contact. The cited reference instead showed a lens array spaced above the photoresist rather than in contact with it.

The examiner treated a structure located above the photoresist as being “on” it, but the Board found that construction unreasonably broad. Because the reference did not disclose the required relationship, it did not teach the disputed limitation.

The decision illustrates that the broadest reasonable interpretation standard has limits. For common words not specially defined in the specification, applicants should compare the examiner’s construction with ordinary usage, dictionary definitions, and the disclosure itself.