This tab enables users to understand how an claim element is explained in the prior art references by examiners during the prosecution history and by petitioners/complainants during the post-grant proceedings. It compares each claim element with the paragraphs of the official documents that mention the claim element.
At the first glance of Claim Insights tab, a table showing the summary of how each claim is disclosed in the file wrappers or dockets of a prior art reference. The disclosure by prior art references in relation to each claim is defined as % in Claim Insights Summary, suggesting how extensive the elements of a claim by terms are explained in relation to the prior art.
For example, the first claim has five elements and four of them are disclosed by a certain prior art reference or multiple references to any extent; the disclosure can be presented as 80% when the four claim elements are fully explained by one prior art reference. It may end up with 40%, 50% or 60% if some elements are not fully disclosed. In summary, the higher the percentage, the more likely the claim terms are disclosed in the prior art’s file wrappers or docket entries. More is to be explained.
The disclosures are further categorized:
- Disclosure by Single Reference: it reveals the highest average percentage of the claim element disclosures among all the single references in the file wrappers (Prosecution History) or dockets (Post-Grant);
- Disclosure by Multiple References: it reveals the average percentage of the highest claim element disclosures across all the references in the file wrappers (Prosecution History) or dockets (Post-Grant);
How is the “average percentage” calculated? It is based on the actual percentage of each element of a given claim with respect to a prior art reference cited in file wrappers or dockets. When any of a claim element’s terms is found in the documents of the reference, its disclosure will account for a certain percent against the total of the claim terms identified by QI.
To calculate the average percentage of the claim “Disclosure by Single Reference” seen in the Claim Insights Summary Table, we further translate the percentages into three groups: 0, 0.5 and 1, (ie, 0%=0, 1%~99%=0.5, and 100%=1), and then multiply them by weighting. For example, US7773588 below discloses 10 out of 11 elements with two of 0% and 8 of 100%, making the average percentage 80% (=0 x 2/10 + 100% x 8/10). On calculating the average percentages of all the other prior art references in Prosecution and then Post Grant, QI at last determines “80%” as the highest in both respectively.
Furthermore, we calculate “Disclosure by Multiple References” by assigning a claim percentage to one of the three assigned groups (0, 0.5 and 1), multiplied by weighting. Different from “Disclosure by Single Reference” using percentages from one single reference, this time QI chooses the biggest percentage of the same claim element across all the prior art references. Using Claim 1 of US7773588 against the prosecution history for example, the maximum % across all the 11 claim elements are 0% (#1.01 and #1.04) and 100% (the rest 8 elements) respectively, with one “N/A” (#1.09). As the percentage 0% is assigned as 0, and 100% as 1, we end up calculating the % in Claim Insights Summary for the Prosecution History’s Disclosure by Multiple References with 80% (=0 x 2/10 + 1 x 8/10). Please note that “N/A” is not taken into calculation.
After selecting a claim, a table is provided on a per-claim-element basis with % of keywords, or claim terms, disclosed by each reference in the file wrappers and dockets. In the example of US7773588 in Prosecution History, the claim element #1.08 has claim terms that are disclosed by three prior art references in terms of 66% (against US2005/0125696) and 100% (against US7346076 and US6963583 respectively).
Select A Claim
You can directly click on either the claim element number or the percentage of disclosure of each prior art reference to find the detailed mapping of the claim element with the prior art reference(s) and the corresponding paragraphs in the file wrappers such as the examiner’s opinion. Continuing with the example of claim element #1.08 of US7773588B2, let’s click on the disclosure percentage “66%” in correspondence to the prior art reference US2005/0125696.
On the left-hand side, the content of the claim element is provided with the auto-generated claim terms highlighted in either black texts (color boxes) or blue texts. The prior art US2005/0125696 found in the office action 20091209-CTNF, for example, discloses the claim terms “protocol” and “target communication”, but not “multimedia data stream”. This explains why it ends up with the percentage of 66% (= 2 out of 3) as suggested on the previous page.
To expand all the paragraphs featuring “protocol” and/ or “communication device”, click on Show All.
You can also switch to another claim element by clicking its corresponding round icon with the claim element number or go back to the previous table by clicking corresponding links.
On the right-hand side, the OA in the file wrapper along with its corresponding case/ event type (prosecution or post grant) and legal basis (35 U.S.C.§ 102 or 103) are provided with the terms highlighted in black texts with the same color boxes to review the examiner’s comments by comparison. If you want to check on the full OA in either .pdf or text format, you can click on the file wrapper link (for example, it is “20190624-Petition” in the above illustration) for a thorough review.
If there are multiple relevant excerpts, you can use Filter to pick the one related to a specific case or legal basis.
Claim Amended or Cancelled
What’s more, QI highlights claim-related remarks with labels of Claims Amended (A) or Claims Cancelled (C) to facilitate claim construction with intrinsic evidence provided by the office actions or dockets.
In the case of #7.08, the prior art reference US7346076 (20080521-CTNF) and the remark (20080819-REM) to it reveal the reasoning and at least one part of the claims were amended. That being said, it is NOT necessarily the claim #7, or the element #7.08.
Wanna do your own keyword listing? You can choose a prior art reference, and then click on the Highlighter icon to personalize keywords by Saving to Keyword Set. Or simply use it to quickly search a certain keyword or phrase in the full text.
For viewing those prior references with remarks only, check the Remarks Box to screen out those which don’t come with remarks. In the example of US7773588B2, Post-Grant does not come with remarks.
It’s screened out after the box is checked.