Question #17 from the April 2000 (AM) patent bar exam is in the Prometric database.
17. Smith invented a laminate. In a patent application, Smith most broadly disclosed the laminate as comprising a transparent protective layer in continuous, direct contact with a light-sensitive layer without any intermediate layer between the transparent protective layer and the light-sensitive layer. The prior art published two years before the effective filing date of Smith’s application included a laminate containing a transparent protective layer and a light-sensitive layer held together by an intermediate adhesive layer. Which of the following is a proper claim that would overcome a 35 U.S.C. § 102 rejection based on the prior art?
(A) 1. A laminate comprising a transparent protective layer and a light-sensitive layer.
(B) 1. A laminate comprising a transparent protective layer and a light-sensitive layer
which is in continuous and direct contact with the transparent protective layer.
(C) 1. A laminate comprising a transparent protective layer and a light-sensitive layer,
but not including an adhesive layer.
(D) (A) and (B).
(E) (B) and (C).
A recent test taker noted that the question currently asked on teh Prometric exam is a variant. The USPTO added a claim limitation distinction to correct the answer choice. The new question has two choices between using “Comprising” OR “Consisting of”. The correct answer is the same answer from April 00 am practice exam.
ANSWER: (E) is correct because (B) and (C) are correct. (A) does not overcome the prior art because the broad “comprising” language permits the laminate to include additional layers, such as an adhesive layer. MPEP 2111.03. (B) overcomes a 35 U.S.C. § 102 rejection because the claim requires a light-sensitive layer to be in continuous and direct contact with the transparent protective layer, whereas the prior art interposes an adhesive layer between the light-sensitive layer and transparent protective layer. (C) also avoids the prior art by using a negative limitation to particularly point out and distinctly claim that Smith does not claim any laminate including an adhesive layer. MPEP 2173.05(i).
Answer C is not correct.
Smith does not support an adhesive layer, Smith disclsoes an intermediate layer.
For C to be correct, C would be written as:
A laminate comprising a transparent protective layer and a light-sensitive layer,
but not including an intermediate layer.
se: I think you’re wrong:
Intermediate describes it’s location: in between the two other layers.
E is correct since B and C are correct.
I agree with mmm.
Variant reported on the exam:
Invention has 2 layers x + z “congruous all the way” in between the layers. Prior art has 2 layers x + z + “blah blah blah” in between the layers.
Question is which claim is anticipated. One answer choice: Claim says “comprising x and z”. Other choices include other stuff, not just x and z. Answer should be this claim mentioned because it’s broad enough to read on Prior Art.
One variant of this question appears as Q17 April 2000 AM. Note that in this question, two options are correct. Answer where layers x + z are congruent and an answer where x + z where there is a negative limitation specifically excluding the “bla bla bla”.
If A) read:
“(A) 1. A laminate CONSISTING of a transparent protective layer and a light-sensitive layer.”
Would it be correct as well?
Yes
Mmd7, I believe the answer to your question is yes.
Hey i just took the exam…A similar question arose, but asked “Which of the following is a proper claim that would NOT overcome a 35 U.S.C. § 102 rejection based on the prior art?” It was easy because “(A) 1. A laminate comprising a transparent protective layer and a light-sensitive layer.” was an answer. There was also “A laminate consisting a transparent protective layer and a light-sensitive layer.”
From the forum: “There was a lot of questions deal with overcoming/affirming rejections of obviousness. I had a variant of the duel layer invention with the adhesive middle layer. The question asked which of these claims would be rejected. The one I chose was “comprising of layer A and layer B” because it was open ended.”
2-layer laminate question – variant b/c added a claim limitation choice variation to correct answer choice. Same answer from April 00 am practice exam except had 2 choices b/t using “Comprising” OR “Consisting of”
Smith’s disclosure explicitly precludes an intermediate layer, be it adhesive or otherwise. Claim “c” covers nonadhesive intermediate layers, and is therefore not supported by Smith’s disclosure.
Assuming you are right, Smith has no support to an intermediate layer, it is a 112 issue, not relevant to this question. C is still correct regarding the question asked here: 102 rejection.
Also, Smith “most broadly” disclosed …the fact pattern is silent on if Smith provides support to an intermediate layer or not. So a 112 issue is unknown.
I think claim C is a still correct answer because this Q is asking ‘claim language’.
But, I’d like to point out a position of the adhesive layer in claim C.
where is the adhesive layer? on the transparent protective layer? under? or therebetween?
So, I think the claim C must be amended as “but not including an adhesive layer therebetween”.
if i’m wrong, please correct me.
I had a variant of this questions in my exam 1/19/10.
Repeat or close variant on 4/27/2011 MPEP E8R8
How can we claim a negative, i.e., excluding something?
The section allowing “Negative Limitations” is mentioned in the answer:
2173.05(i) Negative Limitations
The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies with the requirements of 35 U.S.C. 112, second paragraph.
Thanks for this – negative limitations throw me off.
Variant on July 12, 2011.
The answer was which is not the right one. – single answer.
The choice which says layer 1 and layer 2 comprising – since it can include another adhesive layer and doesnt explicitly say that they have to be in continuous contact. – same as mmd7 above
Easy one
WOW! I wished I looked at 2000 exams
got this one on 8/24/2011
Got this on 10/11/11 with the “consisting of” variant as an option.
got the variant of this on 11/7/11
Question was which of the following is a proper claim that would NOT overcome a 35 U.S.C. § 102 rejection
answer was the one that with ‘consisting of’
I think you mean ‘comprising.’ Open ended would not exclude adhesive layer and would not overcome rejection. (From mmD7 and comment 17 above)
Got this verbatim 2/2
I would love if someone could tell me if I have this right:
in the variant (which I’m still not sure I understand the question)
– the answer choice including “consisting of a transparent protective layer and a light-sensitive layer ” DOES overcome the prior art, since “consisting” denotes a closed list, thus by implication the claim does not include an intermediate layer (present in the prior art)
– the answer choice including “comprising” DOES NOT overcome the prior art since “comprising” denotes an open-ended list, leaving room for the prior art’s intermediate layer
I think that’s right, fox.
got this 6/29/12
Got this. 06.30.2012
I had this question phrased in the negative on 8/13.
I think se at the top may be correct. First, the question asks for a “proper claim” that would overcome the 102 rejection, so 112 issues ARE relevant.
Smith’s application discloses: “without any ‘intermediate’ layer between the transparent protective layer and the light-sensitive layer”
answer (c) [ 1. A laminate comprising a transparent protective layer and a light-sensitive layer, but not including an ‘adhesive’ layer. ] should NOT be correct because this claim is NOT a proper claim since it does not have support in the specification. In order for this to have support in the specification, and therefore be a “proper claim” the claim should recite: “not including an ‘intermediate layer’ ” instead of reciting “not including an ‘adhesive’ layer”.
The CRUX of the matter is that “adhesive layer” is a species of “intermediate layer.” Do you need literal support in the specification for a species of a NEGATIVE limitation?
Thoughts?
Depends on the POSITA.
“Note that a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support.” 2173.05(i)
Given the prior art, it’s possible that one skilled in the art would take the intermediate layer described in the specification to include an adhesive layer.
Note also that answer (c) would overcome the 102 objection regardless of whether or not it would then fail for a 112 rejection.
that’s reasonable. At least it means that this is not a clear-cut lack of support and including answer (c) is a “better” answer answer than excluding it. Thanks !
I had the variant today 12/27/12.
I chose consisting of…
It’s a confusing question.
Got a variant on 3/30/13. Facts were basically the same (used the word “contiguous”), but the question asked which would be rejected as anticipated?
(A) 1. A laminate comprising a transparent protective layer and a light-sensitive layer.
(B) 1. A laminate comprising a transparent protective layer and a light-sensitive layer which is in contiguous and direct contact with the transparent protective layer.
(C) 1. A laminate comprising a transparent protective layer and a light-sensitive layer, but not including an adhesive layer.
(D) 1. A laminate consisting of a transparent protective layer and a light-sensitive layer
(E) 1. A laminate consisting of a transparent protective layer and a light-sensitive layer which is in continuous and direct contact with the transparent protective layer.
Answer was A.