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[khazzah]

does describing a function for a user's action ...  provide limitation?
For example, I know I won't be allowed "a user bashing head on keyboard",

By "won't be allowed" you mean that the Examiner will reject your claim as ... what ... indefinite?

I see nothing wrong with this format. You've written a method step that describes an action "bashing head on keyboard". You've also described the actor, which isn't strictly necessary, but isn't prohibited.

>but I might get "a user bashing head on keyboard for providing random input".

The Examiner will probably ignore the "for providing input" as INTENDED USE. FOR is a big red trigger word.

If you really want to claim this interaction, I'd try something like "providing random input by a user bashing head on a keyboard".

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?

If you recite elements in the alternative -- whether you use the clunky Markush or you simply use OR -- then prior art disclosing any *one* of those elements anticipates the limitation.

"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.

Ahhh... You're now heading into advanced claim drafting territory. This is what I call  "claiming a capability". Or "claiming a mode", if only one works at a time.

From the cases I've read at the BPAI, most attempts to do this fail. That is, the BPAI reads the Applicant's attempt to do this as simply claiming in the alternative, and then affirms the Examiner's rejection because the prior art teaches one of the alternatives.

My gut reaction to your particular choice of wording is that your claim would fail to distinguish over the art.

[oddtimeflux]

>but I might get "a user bashing head on keyboard for providing random input".

The Examiner will probably ignore the "for providing input" as INTENDED USE. FOR is a big red trigger word.

If you really want to claim this interaction, I'd try something like "providing random input by a user bashing head on a keyboard".

I don't see how your suggestion is any more limiting from the examiner's standpoint (I don't see it probably cause I don't know any better). One may ask "why is the user bashing its head?", the answer to which is still intended use. The "providing" bit, in the face of the logic of intended use, seems to require some sort of reception action ("registering random input provided by..."), in which case I start reciting actions of the device, not the user, which as you said would never be infringed.

What I basically have is a device performing a first series of actions in a method which (hopefully) is novel. I also have a user performing a second series of actions "with" or "on" the device, such a series being novel only if some of these actions cause a reaction by the device. So either the second series is not patentable, or I should find a way to incorporate said reaction, such as by the user further reacting to the reaction, like: "(a) user performing action X; and (b) user performing action Y in reaction to action Z performed by the device".

I'd appreciate any suggestions.

BTW, "by" sounds suspicious. I also have "a device comprising means for obtaining input BY performing action X", which can also be recited as "a device comprising means for performing action X for obtaining input". Which of these two options, if any, is valid?

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?

If you recite elements in the alternative -- whether you use the clunky Markush or you simply use OR -- then prior art disclosing any *one* of those elements anticipates the limitation.

"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.

Ahhh... You're now heading into advanced claim drafting territory. This is what I call  "claiming a capability". Or "claiming a mode", if only one works at a time.

From the cases I've read at the BPAI, most attempts to do this fail. That is, the BPAI reads the Applicant's attempt to do this as simply claiming in the alternative, and then affirms the Examiner's rejection because the prior art teaches one of the alternatives.

My gut reaction to your particular choice of wording is that your claim would fail to distinguish over the art.

Right. I always wondered how to call it. "Claiming a capability" sounds about right.
So what do you suggest?

I have a device whereat input can (?) be registered by a user performing any one of three operations on the device. Only the third recited operation is itself novel (it is actually a combination of the first and second recited operations).

I might settle for "whereat input IS registered by a first operation AND a second operation being detected by the device", but I'm still taking suggestions.

[khazzah]

>but I might get "a user bashing head on keyboard for providing random input".

The Examiner will probably ignore the "for providing input" as INTENDED USE. FOR is a big red trigger word.

If you really want to claim this interaction, I'd try something like "providing random input by a user bashing head on a keyboard".

I don't see how your suggestion is any more limiting

It's not :-)

from the examiner's standpoint

Oh, from the standpoint of some Examiners it's better because it doesn't use the magic word FOR. '

"providing" bit, in the face of the logic of intended use, seems to require some sort of reception action
("registering random input provided by...")

Huh. The "by the user" is supposed to clarify that the user is doing the providing. So no infringement problem there.

If your point is that the verb "providing" implies a recipient ... well, you might be right about that. But I say there is a fine but important distinction between *referring* to another actor and actually positively reciting the other actor. (I call this "passive" or "inferential" recitation.)

What I basically have is a device performing a first series of actions in a method which (hopefully) is novel. I also have a user performing a second series of actions "with" or "on" the device, such a series being novel only if some of these actions cause a reaction by the device. So either the second series is not patentable, or I should find a way to incorporate said reaction, such as by the user further reacting to the reaction, like: "(a) user performing action X; and (b) user performing action Y in reaction to action Z performed by the device".
I'd appreciate any suggestions.

I like the idea of "in reaction to".

BTW, "by" sounds suspicious. I also have "a device comprising means for obtaining input BY performing action X", which can also be recited as "a device comprising means for performing action X for obtaining input". Which of these two options, if any, is valid?

Which do I like? I don't see a substantial difference between the two.

BTW, stay away from the strong word "valid". Or "patentable". I'm not telling you what's valid or patentable or infringeable. All I'm saying is what I like based on my limited experience. There are no right answers to claim construction. Always depends on what words you use in your claims, exactly what your spec says, and for infringement purposes, what is said during prosecution.

That is, be warned that your mileage mileage may vary.

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.

The above first characterization of the device sounds different than this second characterization:

I have a device whereat input can (?) be registered by a user performing any one of three operations on the device. Only the third recited operation is itself novel (it is actually a combination of the first and second recited operations).

The first characterization led me to to believe that having two modes was inventive. But in the second characterization, you say that it's the combination that's inventive. That is, it's not that the device can accept two types of inputs, but what it does with these inputs: combine them.

If it's the combination that's inventive, claim that.

"whereat input IS registered by a first operation AND a second operation being detected by the device",

Yeah, something like that.

[oddtimeflux]

"providing" bit, in the face of the logic of intended use, seems to require some sort of reception action
("registering random input provided by...")

Huh. The "by the user" is supposed to clarify that the user is doing the providing. So no infringement problem there.

If your point is that the verb "providing" implies a recipient ... well, you might be right about that. But I say there is a fine but important distinction between *referring* to another actor and actually positively reciting the other actor. (I call this "passive" or "inferential" recitation.)

What I basically have is a device performing a first series of actions in a method which (hopefully) is novel. I also have a user performing a second series of actions "with" or "on" the device, such a series being novel only if some of these actions cause a reaction by the device. So either the second series is not patentable, or I should find a way to incorporate said reaction, such as by the user further reacting to the reaction, like: "(a) user performing action X; and (b) user performing action Y in reaction to action Z performed by the device".
I'd appreciate any suggestions.

I like the idea of "in reaction to".

Again, thanks.

OK, so I can recite "providing" either as a step of the invention, or as a reference to what is happening (in which case the action of providing itself is not a part of the method), right? How do I make each case clear?

For example:

For a device method -
Is it clear from the following that the step is "registering" and not "bashing", so not to cause an infringement problem:
"a) registering input from a user bashing head on keyboard" (while the bashing may not be a part of the step (the method is for a device detecting bashing and registering it), it IS defining of the step, so I'm not sure it is right to put it like that).

This alternative, of course, has the infringement issue (correct me if I'm wrong):
"a) a user bashing head on keyboard; and
b) registering input from said bashing"
Because in each step another "element" is doing the action.

Another method (for the user) might read:
"a) bashing head on keyboard in response to device output (or - to device outputting visuals)"
Here, the bashing IS part of the method, whereas the "outputting" is not. Is it clear that it is only a reference and not an actual step of the claim?

[oddtimeflux]

Bump, please.