Recent test takers report that question #44 from the October 2003 (PM) test is in the patent bar exam database.
44. In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following statements regarding claim interpretation is the most correct?
(A) A claim having the transition term “comprising” is limited to only the limitations, elements or steps recited in the claim, and is not inclusive or open-ended of other unrecited elements or steps.
(B) The transition term “consisting essentially of” limits the claim to the limitations recited in the claim and additional elements or steps which do not materially affect the basic and novel characteristics of the claimed invention.
(C) A claim having the transition term “consisting of” is not limited to the elements or steps recited in the claim, but can include elements or steps other than those recited in addition to any impurities ordinarily associated therewith.
(D) A claim which depends from a claim which claims an invention “consisting of” the recited elements or steps can add an element or step to further limit the claimed invention.
(E) All of the above.
ANSWER: (B) is the most correct answer. MPEP § 2111.03 (fourth paragraph) states, in reliance upon In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976), that “[t]he transitional phrase ‘consisting essentially of’ limits the scope of a claim to the specified materials or steps ‘and those that do not materially affect the basic and novel characteristic(s)’ of the claimed invention.” (A) is incorrect. The statement is contradicted by MPEP § 2111.03 (second paragraph), which states, in reliance upon Genentech, Inc. v. Chiron Corp., 112, F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) that “[t]he transition term ‘comprising’, which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. (C) is incorrect. The statement is contradicted by MPEP § 2111.03 (third paragraph), which states, in reliance upon In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931) that “[t]he transitional phrase ‘consisting of’ excludes any element, step , or ingredient not specified in the claim.” (D) is incorrect. The statement is directly contradicted by MPEP § 2111.03 (third paragraph), which states “[a] claim which depends from a claim which ‘consists of’ the recited elements or steps cannot add an element or step.” (E) is incorrect because (A), (B) and (C) are incorrect.