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I'm wondering what the best way to match prior art to a claim you feel is invalid. I have found examples applicants use with the USPTO, so I would imagine using that same format to invalidate a claim may be helpful. Do you have any suggestions on what would be useful in the right column, while keeping it short and simple?

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Are you looking for a way to analyze it for yourself or to present to others? If it is to others who are they - what is the audience ? – George White Dec 23 '13 at 0:17
I'm looking for any advice on how to best narrow or invalidate a claim. Like a worksheet that one can use before posting prior art to ensure that it has all the requirements. The audience could be this website, the USPTO, an attorney, and so forth. – Robert Tesla III Dec 23 '13 at 15:04
A claim chart is a very good short hand. For lack of novelty every element of the claim must be taught in a single embodiment in a single document and not just the presence of the elements but their interrelationship. For an obviousness rejection the elements can come from multiple documents but there also needs to be some logic as to why someone would put them together that way. An actual rejection is in an more narrative form. – George White Dec 23 '13 at 17:45

4 Answers 4

Claim chart is the way to go, but keep in mind that sometimes it's hard to find citations in prior art that would closely match the claim feature (which is an appropriate way to prepare the chart). Indicating which images and passages correspond to said feature might be more convenient especially having in mind that you do not want a narrow explanation provided by citations but rather indicate specific and abstract knowledge that reader may get from the text.

Take a look at the final/non-final rejections that patent examiners provide while analyzing patent's novelty. Check for instance US 6873940 using PAIR: open an 'Image File Wrapper' and take a look at "10-20-2003 Non-Final Rejection". You'll see that examiner is taking claim features and indicating the places in prior art where to look for corresponding details and sometimes with explanation of correspondence.

My suggestion is to provide both the claim chart and more abstract indications (that might be scattered through multiple passages/images) of corresponding features. But claim chart is a standard way for claim invalidation. At least having both will help the process of gathering arguments.

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the best way is to use pictures and product proofs (screen clips from product manuals etc).

Map it tick for tack, everything that is a element must be shown.

Using too much text (as is the modern standard) confuses and dilutes the points.

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A patent claim document must include a data input device comprising: an input surface adapted to be locally exposed to a pressure or pressure force, a sensor means disposed below the input surface for detecting the position of the pressure or pressure force on the input surface and for outputting an output signal representing said position and, an evaluating means for evaluating the output signal of the sensor means.

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The short answer is preparing the claim charts. Map the claims of the subject patent with the prior art in a feature by feature manner. You can use color mapping or different text mapping which suits your purpose.

If the prior art is a patent, then also include the indexing i.e from where you got the matter from the patent.

If the prior art is a non-patent, then do include the pictures of the products.

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