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I had a previous question about stating a specific class of computing device, or input method of a computing device. This is a related follow-up question.

Assume a form of click-and-drag-over interaction is stated in the first independent claim because it's a key feature of the invention as a preferred embodiment (regardless of whether actually stated as "preferred.") With the mention of "touchscreen device" dropped from the independent claim as previously recommended here, how does it look to have something like this in one of the dependent claims?:

[stated task] is accomplished by means other than icon dragging, the other means including but not limited to successive click-selection with a moving cursor or selection by voice command or eye-tracking control.

or as an alternate structure, using a Markush claim construction such as:

[stated task] is accomplished by means other than icon dragging, the other means selected from the group consisting of:
a) successive click-selection with a moving cursor
b) successive selection by voice command or eye-tracking control.

Which construction, if either, is better?


REVISION for comment: Still assuming the independent claim(s) states a drag-and-drop method of interaction, how about this revised version of the dependent claim?:

The method of claim x wherein detecting user selection of [state what is being selected] can be accomplished by a means selected from the group consisting of:
a) detecting successive click-selection of icons by a moving cursor;
b) detecting successive selection of icons by voice command;
c) detecting successive selection of icons by eye-tracking control;
d) detecting successive selection of icons by other assistive technology.

––In the above statement, would "can be accomplished" be more inclusive than "is accomplished"? (I am thinking "is accomplished" could imply use of only the alternate input method(s) but does not also include the originally claimed method which is drag-and-drop.)

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    I had to start with the premise so I didn't answer the question because the premise doesn't work out, but if I were to choose between these two structures (which I wouldn't, see my answer), the first one doesn't limit the scope by saying it can be only this or that means while the second has a more modular wording which makes adding or removing parts easier if needed in prosecution, especially if you have to add something from the description. The modular wording thing is very important in Europe where anything not literally cited from the description into the claims will be troublesome. – DonQuiKong Jan 21 '18 at 11:13
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    That just as some feedback concerning your ideas. – DonQuiKong Jan 21 '18 at 11:14
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    Btw: “including but not limited to“ == “comprising“ – DonQuiKong Jan 21 '18 at 11:15
  • patents.stackexchange.com/q/19030/18033 this seems related to your “means other than“, aka negative feature, issue – DonQuiKong Jan 22 '18 at 15:07
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Your dependent claim, if I understand your question correctly, won't be allowable for two reasons:

1: A dependent claim may not leave out any limitation of the independent claim it depends on. Your first claim says “by drag and drop“ the second says “claim one plus something other than drag and drop“.

Combined, your second claim says “by drag and drop and not by drag and drop“. Which is not doable an therefore not allowable.

A possible solution would be to add the proposed list with drag and drop and click and etc. to the first claim.

2: Formalities: a claim should not have a negative feature. “by something else than drag and drop“ does, in most cases, not clearly define what's inside of the scope but only what's outside. There is some discussion about when and how this is allowable, especially concerning a recent US case and a EPO decision, but they relate to either not needing a special item (e.g. doing only a when everyone else thought you needed to do a + b and then claiming a without b) or excluding prior art in prosecution mostly. I can't say with certainty that a negative feature like that is impossible, but you will run into issues with clarity and insufficient disclosure, so you should probably not do this if you can't foresee the problems that will arise.

So what could you do?

Claim 1: “selected by selection means“

Claim 2:“the selection means being one of the group comprising ...“.

This way you are not limiting yourself to any specific selection means and can still go back to one or more if necessary.

  • Please see “REVISION for comment” above, and comment if you can. – Charles Jan 21 '18 at 18:25
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    @Charles the dependent claims may not be broader than the independent claims neither. If your independent claim states drag and drop the dependent ones can only specify the drag and drop requirement, not make it optional / interchangeable. – DonQuiKong Jan 21 '18 at 19:38
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    In different words, if someone infringes a dependent claim, they infringe the independent claim. Always. If not, your claims are not allowable. Actually, you could have only the independent claim and get the same protection. The dependent claims are only just in case to make prosecution easier if the independent one doesn't hold. – DonQuiKong Jan 21 '18 at 19:41
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I agree with DonQuiKong's answer in that your dependent claim seems to be broader than your independent claim, which is not appropriate. I will therefore limit myself to your later question about "can be accomplished".

Importantly, "can be accomplished" is not really a useful limitation, since you're only stating that it's possible, not that it actually occurs. It would only be good for distinguishing against prior art in which it was explicitly impossible to detect user selection in any of the noted ways, which is unlikely. In this way, your dependent claim is extremely weak, and verging on pointless.

It would be much more usual to say "detecting user selection comprises one of: detecting successive...".

As an aside, you may have heard of the limits of means-plus-function wording in the US. It's beyond the scope here, but you may wish to look into it, given you've used it in all of your claims.

  • Based on the suggestions, I have rewritten the independent claim and the relevant dependent claim. The reference to an input method is now much more broad, no mention of a specific method such as touchscreen interaction. – Charles Jan 23 '18 at 3:35

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