U.S. Patent No. 7,542,874 relates to display of inspection data from commercial furnaces (pages 2-3). For on-sale bar, the dispute turned on whether the offered services prior to the application included “generating a display of at least a portion of said partitioned data arranged to represent said physical geometry of said tube segments and enable visual detection of a problem area comprising one or more of said tube segments” (pages 8-9). The offer for sale fit within example 1 of the specification (page 14). The claims as originally drafted covered example 1 (page 16). There was not clear and unmistakable disclaimer to remove example 1 from the claim scope in amending the claims to include the above quoted language (page 16). The prior art showed a strip chart, so the claims were allowed over the prior art due to the representation of the physical geometry (pages 17-18). Since the claims relate to a portion of the data, example 1 representing just a portion rather than the entire geometry is not excluded (page 18). Since example 1 is within the claim scope, the prior sale invalidates the claims (page 18).
Hindsight: “Comprising” and other terms allowing for non-limiting additions may result in the claim being overly broad in an invalidity analysis. This very breadth may save the day in an infringement analysis. The balance may be hard to predict. Using different breadth in different independent claims to overcome a prior art reference may preserve options for invalidity and infringement. One claim could have required display of the partitioned data rather than a portion of that data.