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[oddtimeflux]

I'm struggling with several elements in my claims (which I'm drafting). They are particular by the fact that they CAN perform something.
Was wondering what is the preferred way to "claim" such a function (i.e. the function that they CAN perform). Is it by "including means for..."? "adapted for..."?

[klaviernista]

There are any number of ways that you can add a functional limitation to the claims.  You have already identified a few, namely means plus function language and "adapated" or configured" language.  I'll reserve comment on the use of means plus function language, as it presents a whole host of issues and I rarely use it.  You may also want to consider simply reciting the function as associated with the component, e.g., "An apparatus, comprising: an element X for performing function Y . . . ."

You should note, however, that examiners will rarely give functional limitations weight (particularly in apparatus claims), unless the function imparts some "meaningful" (e.g., structural or operational) difference to the claimed invention.  For clarification on that point, read In re Schreiber, where the court upheld the rejection of a claimed popcorn dispenser based on prior art describing an oil can.

Best,

-Klav

[JimIvey]

I think "can" is sometimes fine in claims.  For example, "side A has a slot A defined therein into which tab B can be inserted."  "Can" is used to define, at least to some degree, the structure of slot A.

However, it's sometimes okay to claim that a thing actually does something rather than it can do the thing.  For example, if someone makes an object capable of doing the thing but never ever does it, that might be okay to the patent holder -- think of a monkey wrench that can drive nails: if it's never used that way, hammer sellers should be cool with that.

Another approach is to claim that it does the thing in response to something else.  For example, consider a device capable of pounding rice into mochi.  "a pounding mechanism that pounds rice into mochi when the lever is moved to a second position."

Regards.

[oddtimeflux]

I think "can" is sometimes fine in claims.  For example, "side A has a slot A defined therein into which tab B can be inserted."  "Can" is used to define, at least to some degree, the structure of slot A.

However, it's sometimes okay to claim that a thing actually does something rather than it can do the thing.  For example, if someone makes an object capable of doing the thing but never ever does it, that might be okay to the patent holder -- think of a monkey wrench that can drive nails: if it's never used that way, hammer sellers should be cool with that.

Another approach is to claim that it does the thing in response to something else.  For example, consider a device capable of pounding rice into mochi.  "a pounding mechanism that pounds rice into mochi when the lever is moved to a second position."

Thanks, Jim (and klaviernista of course). Your first paragraph actually nailed (no pun intended) my specific issue, as the elements I'm personally claiming are of structural nature, and I'm not sure I want to get "means of" into this. In fact, in some variations there are no "means for" - the elements just "can" perform a certain task.

I didn't quite get the point of your second paragraph.

The third, however, is also very productive to me as I'm also dealing with relationships between elements. I've actually never encountered such type of phrasing before but I don't seem to find anything wrong with it.