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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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BPAI Agrees With Examiner's Broadest Reasonable Interpretation of "Disposed Thereon"

Ex Parte Newby (BPAI Nov. 10, 2011)

In this decision concerning a rejection of claims directed to an asymmetrical carton for containing and dispensing a roll of sheet material, the BPAI agreed with the Examiner's broadest reasonable interpretation of the claim term "disposed thereon" and affirmed the rejection of claims.

Claim 1 of the application recited the limitation "one of said substantially planar side panels having at least one blade disposed thereon".  The Examiner relied on a dictionary definition of "dispose" as meaning "arrange" as the Examiner determined the specification did not provide a special definition of "disposed thereon."  The Examiner then determined that a prior art reference disclosing a carton made from paperboard that included a front panel with a serrated free edge disclosed that the serrated free edge was disposed upon the top edge of the side panel.

The appellants argued to the BPAI that "the claim language describing at least one blade disponsed upon a side panel is not subject to interpretation to inlcude a panel having an integral serrated edge which is not separable from the panel itself."  The appellants went on to argue that the prior art reference did not disclose a blade disposed on the edge, but instead disclosed a blade integral to and inseparable from the edge.

The BPAI disagreed with the appellants, finding that the specification did not suggest a specific definition to the term "disposed thereon" and therefore it was appropriate to consult a general dictionary to determine the broadest reasonable interpretation of the claim to one having ordinary skill in the art.  In this case, the dictionary selected (Merriam Webster's Collegiate Dictionary) defined "dispose" as "arrange" and the BPAI agreed with the Examiner "that the claim language does not preclude the blade from being integral with the one substantially planar side panel."