Q17 April 2000 AM

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 lightsensitive

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).

17. 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 lightsensitive 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).