How to Lose Your “Ordinary Dictionary Meaning” Argument at The Board of Patent Appeals

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences considered how the claim term “embedded” should be construed in Ex parte Benson, a case involving a 35 U.S.C. § 102 rejection.

The applicant urged the Board to adopt a narrower ordinary dictionary meaning, while the examiner relied on a broader interpretation that supported the anticipation rejection.

The Board concluded that the specification itself supported a meaning broader than the dictionary definition. Under the broadest-reasonable-interpretation standard, claim language must be read in light of how the term is used throughout the application.

The practical lesson is that an applicant should not rely on an ordinary-meaning argument without first confirming that the specification consistently supports that narrower meaning. If the disclosure broadens the term, a more precise claim limitation may be needed.

Careful claim drafting remains essential because the words selected in the claims and the way those words are described in the specification can determine whether a rejection is sustained or reversed.