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[oddtimeflux]

I want to phrase a claim which states "any of two inputs" computed correspondingly to "the other input" (i.e. to the input not chosen).

First, what do you suggest as the best phrasing?
One option I've thought about is putting both sides of the "computer correspondingly" in a markush group, yet that raises the option of one input computed correspondingly to itself.

Second, when some information is computed in any relation to other information, what is the best way to phrase that? "computed correspondingly", "providing context for computing...", etc.?

[khazzah]

I want to phrase a claim which states "any of two inputs" computed correspondingly to "the other input" (i.e. to the input not chosen).

First, what do you suggest as the best phrasing?

Not sure there is a "best" way to claim anything. But I'd write as "a first one of two inputs computed corresponding to a second one of the two inputs".

Reads on input A=first and input B=second. Also reads on input A=second and input B=first.

If you're concerned about the Examiner/invalidater interpreting broad enough to read on first=second, say "the second input different than the first".

some information is computed in any relation to other information, what is the best way to phrase that?
"computed correspondingly", "providing context for computing...", etc.?

I'm not sure what you mean "in relation to". Or if the "any" part is important.

The pattern I use most often is "based on". For example, "computing a speed based on a time and a distance". Is that relevant to what you're getting at?

[oddtimeflux]

Thanks Khazzah. Exactly what I needed.

I'll take the opportunity, if I may, to also ask:

1. I wish to claim a method of interacting with a system. I find that I can phrase it both as "instructions" for the user, and as "instructions" for the system. Example: "the step of operating a keyboard" (user) vs. "the step of detecting keyboard input" (system)
I don't think I can claim both in different sets of claims. What is your suggestion(s)?

2. In relation to the first question, the definition of the method can vary. For example, it can be "a method for interacting", yet it can also be "a method for obtaining/providing input" (obtaining/providing depending on whether it is for the user or the system), "a method for performing a function in an interface", etc.
I know that the premble sets no limitation for the claim, yet it does seem to be extremely important to choose the right one for the widest and/or most appropriate scope. Thoughts?

[khazzah]

phrase it both as "instructions" for the user, and as "instructions" for the system. Example: "the step of operating a keyboard" (user) vs. "the step of detecting keyboard input" (system)
I don't think I can claim both in different sets of claims. What is your suggestion(s)?

Sure, you *can* claim both. In the same claim. In different claims.

If you claim both user-view and system-view in the same claim, you've got a claim that no single entity infringes. That's almost useless under US law.

If you pick the user point-of-view, then you're stuck with the end user as the direct infringer. End users don't have deep pockets, so you enforce against the manufacturer/seller for contributory or inducing infringement. You have to first prove direct infringement by the user, then contributory/inducing for the manufacturer -- which is harder to prove than direct.

System point-of-view is one way to avoid these problems. Depending on exactly how the claim is written and interpreted, you may still have to enforce under contributory/inducing. But at least you have a shot at direct infringement.

[khazzah]

I know that the premble sets no limitation for the claim, yet it does seem to be extremely important to choose the right one for the widest and/or most appropriate scope.

The question of whether words in the preamble are limiting is a question of claim construction. Sometimes those words are limiting. Sometimes they're not. Lots of case law on the subject.

For this reason, some practitioners feel strong that the best preamble is "a method/system/apparatus comprising". Others feel that a descriptive preamble gives the Examiner something to focus on, and will use a wordier preamble for that reason.

[oddtimeflux]

So, in a case in which the preamble lacks descriptive substance, is the "purpose" of the method inserted as a step? The method must be for achieving something, and the only way I can see for describing what that is is by making it a step. Is that correct?

As for the second question - so I can claim a process in two different claims, each from a different perspective? Meaning that one has steps which are performed by the system (sensing, detecting, computing, etc.) and the other steps which are performed by the user (operating, inputting text, etc.) - which can basically be "the same" process which can have, as you mentioned, two different infringers. So that's allowed, yes?

BTW, why is proving contributory or inducing infringement harder? I mean, in my case specifically. I have a user performing a method (which I patented) by using a system which facilitates the method and sold to said user by company X. Even if the system isn't itself patented, company X is intentionally promotes practice of the method. So in such a case, say if company X actively markets the system for using it to perform my method, I don't see a problem.
Also, it seems to me that a method for steps the system performs also puts company X as inducing infringement, or otherwise one might logically argue that the infringer, in that case, is the system itself.

One last thing. you suggested the phrasing: "computing a speed based on a time and a distance" as alternative to using "in relation", which I agree is preferable. What do you think about "computing a time in the context (or contextually?) of a distance"? I suggest this because in my claims I don't recite an outcome ("speed", in you suggestion). I just want to recite information A computed "based on" information B (I used your phrasing here, so it might also fit). Another way to approach this is the computation itself ("the computation of information A determined by information B", how about that?).

[MYK]

I know that the premble sets no limitation for the claim, yet it does seem to be extremely important to choose the right one for the widest and/or most appropriate scope.

The question of whether words in the preamble are limiting is a question of claim construction. Sometimes those words are limiting. Sometimes they're not. Lots of case law on the subject.

For this reason, some practitioners feel strong that the best preamble is "a method/system/apparatus comprising". Others feel that a descriptive preamble gives the Examiner something to focus on, and will use a wordier preamble for that reason.

I don't remember who said (or wrote) it, but I remember being told recently that the preamble will be considered limiting when it hurts you for it to be limiting, and will be considered non-limiting when it hurts your case for it to be non-limiting. 

[MYK]

So, in a case in which the preamble lacks descriptive substance, is the "purpose" of the method inserted as a step? The method must be for achieving something, and the only way I can see for describing what that is is by making it a step. Is that correct?

Do you need it as a limitation?  If not . . . putting in a limitation of purpose would mean that an infringer would have to use the method for that purpose in order to infringe.  The less limited, the better.

One last thing. you suggested the phrasing: "computing a speed based on a time and a distance" as alternative to using "in relation", which I agree is preferable. What do you think about "computing a time in the context (or contextually?) of a distance"? I suggest this because in my claims I don't recite an outcome ("speed", in you suggestion). I just want to recite information A computed "based on" information B (I used your phrasing here, so it might also fit). Another way to approach this is the computation itself ("the computation of information A determined by information B", how about that?).

You might be running into problems with statutory subject matter there.  I may be mistaken, but my understanding is that pure math still cannot be claimed -- there must be some effect.  Picking an optimal RGB color value by (doing the following mathematical steps) to calculate [R,G,B] is statutory, but merely (doing the following mathematical steps) is iffy.

Bilski should be out soon, though, and may have a significant impact on such claims.  Or maybe not.  The Supreme Court is like that sometimes.

[oddtimeflux]

MYK...

So, in a case in which the preamble lacks descriptive substance, is the "purpose" of the method inserted as a step? The method must be for achieving something, and the only way I can see for describing what that is is by making it a step. Is that correct?

Of course I do not wish to insert a limitation where one isn't required. But in most cases a purpose, either in the form of a final step (to which my question still stands - if using just "method comprising...", does the outcome need to be in the form of a (final) step?) or in the preamble, must be included. One cannot claim a method comprising steps which stand alone without them being for a certain utility (as the patentability requirements state, even). Correct me if I'm wrong but a method including a step of mixing substance A with substance B is not patentable if you don't include "for obtaining a substance C".

One last thing. you suggested the phrasing: "computing a speed based on a time and a distance" as alternative to using "in relation", which I agree is preferable. What do you think about "computing a time in the context (or contextually?) of a distance"? I suggest this because in my claims I don't recite an outcome ("speed", in you suggestion). I just want to recite information A computed "based on" information B (I used your phrasing here, so it might also fit). Another way to approach this is the computation itself ("the computation of information A determined by information B", how about that?).

Of course I do not intend of claiming pure math. I claim a process in which one type of input is computed with another type of input for a system to perform a certain function (of the system) which was never before achieved by such a computation by such systems.

[khazzah]

The method must be for achieving something
and the only way I can see for describing what that is is by making it a step. Is that correct?

A method comprising: multiplying a first input by a second input.

I suppose the "purpose" of this method is do perform multiplication. But that doesn't need to go in the preamble.

>claim a process in two different claims, each from a different perspective?
>Meaning that one has steps which are performed by the system (sensing, detecting, computing,
>the other steps which are performed by the user (operating, inputting text, etc.)

Yes, it's "allowed". Meaning there is no per se rule against it. Note that having independent claims from different perspectives *may* lead to a restriction requirement. That's a whole nother question.

>BTW, why is proving contributory or inducing infringement harder?

I suppose by "harder" I mean more expensive. It's more expensive because it involves two kinds of proof (direct infringement and contrib/induce). Also more expensive because contrib/induce involves more evidence and more analysis than does direct.

Doesn't mean that you won't be able to find such evidence in a particular case. It just means more work, and thus more $.

But I also think that contrib/induce are "harder" in the sense that they're less likely to prevail in many cases. That is, that you're less likely to be able to find the sorts of convincing evidence that you need.

>What do you think about "computing a time in the context (or contextually?) of a distance"?

At first blush, seems indefinite to me. *I* certainly don't know what that means, where I do know what "based on" means. But I suppose if your spec explained it well enough, it might work.

>I just want to recite information A computed "based on" information B
>Another way to approach this is the computation itself
> ("the computation of information A determined by information B", how about that?).

Well, now you've opened up a whole nother topic. Are there differences between these claim styles?

• computing A based on B
  
• A computed based on B
• the computation of A determined by B

I'm not sure a typical Examiner would appreciate the differences, but I think that Yes, there are subtle differences. But, frankly, don't have the time or energy to get into that.

[oddtimeflux]

Thanks so much, khazzah.

There's only one this remaining and that is whether I should insert the "purpose" as a step (which is not multiplication).

Generally (note that this is purely to exemplify the situation), I have a method for using input from two different sources to select between functions (i.e. to determine which function to perform). Now, the performing of the function can be defined in the method ("a method for performing a function, compriding...") or as a step ("a method comprising... a step for selecting between a plurality of functions by computing input A and input B"). What should I pick?

[khazzah]

There's only one this remaining and that is whether I should insert the "purpose" as a step (which is not multiplication).

Generally (note that this is purely to exemplify the situation), I have a method for using input from two different sources to select between functions (i.e. to determine which function to perform). Now, the performing of the function can be defined in the method ("a method for performing a function, compriding...") or as a step ("a method comprising... a step for selecting between a plurality of functions by computing input A and input B"). What should I pick?
[/quote]

As a general rule, you want to explicitly recite as few steps as possible to distinguish over the prior art.

So if you need "selecting a function based on input from two different sources" to distinguish, make this an explicitly recited element. If not, don't.

[oddtimeflux]

Khazzah. I'm sorry I did not make it clear. I do need this limitation. I just wonder if it can be recited as a step, even though it is the goal, purpose or outcome of the method (i.e. the method is "for" the purpose of -insert step here-).

[khazzah]

Since you say the feature is needed to distinguish over the art, then under my general rule, it goes in the body of the claim as a recited step. If you put in the preamble, you risk the Examiner ignoring it.

[oddtimeflux]

First, khazzah and MYK, thank you very much. You "input" (pun intended) was very helpful.

I do have a follow-up for what I described as an interaction method from the "point of view" of the user. In such a method, does describing a function for a user's action (similarly to what's done in means-plus-function device claims) provide limitation?

For example, I know I won't be allowed "a user bashing head on keyboard", but I might get "a user bashing head on keyboard for providing random input".
Note that this example is of course a simplification and my invention isn't so straightforward and includes a series of "user actions" for a series results comprising the method.
Further note that I also file claims from the device "point of view", such as "registering input from detecting bashing on keyboard".

Also another quick one:
If I recite a Markush group in which one member of the group is known in prior art, does the inclusion of other elements (known in the art or otherwise) make such a claim valid?

For example:
"A device including an element X and an element Y, wherein input is obtained by an operation selected from  a group consisting of:
a) element X operated; and
b) element Y operated."

Now say that obtaining input by element X operated and by element Y operated is known in the art, but I want to claim a device which CAN obtain input from two such optional operations, and such a device is novel.