Test takers report a #33 from the October 2003 (AM) patent bar exam is in the current question pool.
33. Which of the following phrases taken from an independent claim has an antecedent basis problem according to the patent laws, rules and the procedures as related in the MPEP?
(A) “the center of the circle having …,” where the claim does not previously recite that the circle has a “center.”
(B) “the major diameter of the ellipse being …,” where the claim does not previously recite that the ellipse has a “major diameter.”
(C) “the outer surface of the sphere being …,” where the claim does not previously recite that the sphere has an “outer surface.”
(D) “the lever of the machine being located …,” where the claim does not previously recite a “lever.”
(E) “the area of the rectangle being …,” where the claim does not previously define an “area.”
ANSWER: (D) is correct. “Inherent components of elements recited have antecedent basis in the recitation of the components themselves.” MPEP § 2173.05(e). The MPEP provides an analogous example: “the limitation ‘the outer surface of said sphere’ would not require an antecedent recitation that the sphere have an outer surface.” Id. (A), (B), (C), and (E) are all examples of things which inherently have the claimed characteristic and do not have an antecedent basis problem; that is, all circles have a center, all ellipses have a major diameter, all spheres have an outer surface, and all rectangles have an area, and these characteristics need not be provided with express antecedent basis. The ellipse example is from Bose Corp. v. JBL Inc., 61 USPQ2d 1216, 1219 (Fed. Cir. 2001) (“There can be no dispute that mathematically an inherent characteristic of an ellipse is a major diameter.”). The lever recited in (D) is not an inherent component of a machine and therefore requires express antecedent basis.
