Transparent layer / light sensitive layer

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 the 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).